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Maori Television Service v. Damien Sampat [2005] GENDND 1491 (1 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maori Television Service v. Damien Sampat

Case No. D2005-0524

1. The Parties

The Complainant is Maori Television Service, Auckland, New Zealand, represented by Chapman Tripp, Barristers & Solicitors, of New Zealand.

The Respondent is Damien Sampat, Auckland, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <maoritv.com> is registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2005. On May 17, 2005, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On May 23, 2005, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 3, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for a Response was June 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2005.

The Center appointed Clive L. Elliott as the sole panelist in this matter on July 19, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On July 7,  2005 the Respondent (through Damien at damiensampat@hotmail.com and copied to Stephen Guntrip” at sguntrip@hotmail.com) responded to the case manager at the Center. He stated:

“We did however recieve (sic) an email on the 18th of May, 2005 with the subject line of “Acknowledgement of Receipt of Complaint” and goes on to give my case no and your name as my case manager, but there is no mention of any hearing date. It just says” A Complaint that satisfies all of the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy will be notified by us to the Respondent in accordance with Rules, Paragraph 4(a). The Respondent will then have 20 calendar days within which to submit a Response….I did not take possession of the hard copy of the complaint until early June, and recieved (sic) two identical copies of the complaint, one from the WIPO and one from Chapman Tripp. Both are titled “Complaint Transmittal Coversheet” and both state I have no duty to act at this time.”

The relevance of this communication is discussed below.

4. Factual Background

The Complainant has operated as a national television broadcaster in New Zealand under the name “Maori Television” for more than 12 months and has operated a website at www.maoritelevision.com since November 2001

The Complainant is required by statute to use the television medium to revitalise Maori language and culture, being the language and culture of New Zealand’s indigenous people.

The Respondent is prevented from using the name “Maori Television” or any similar name likely to mislead in New Zealand by virtue of the name protection provisions of the Maori Television Service (Te Aratuku Whakaata Iriangi Maori) Act 2003.

The Complainant is the registered proprietor in New Zealand of the trade mark “Maori Television” (in logo form) for, among other things, television and Internet services. The Complainant is also the applicant in New Zealand for the word mark “Maori Television” for the same services.

It is unclear what the Respondent does apart from having an interest in the disputed domain name. He does however appear to reside in New Zealand. The Complainant is unclear as to the Respondent’s activities and the Respondent has not indicated what they are.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that through its operations and commercial and social activities, it has built up and owns valuable goodwill in the names and marks “Maori Television” and “Maori Television Service’ in relation to broadcasting and the Internet.

The Complainant submits that “Maori Television Service” and “Maori Television” are common law trade marks in New Zealand, well known to members of the public and that the domain name <maoritv.com> is confusingly similar to the marks “Maori Televisions Service” and “Maori Television”.

The Respondent’s website redirects to the website of a prominent New Zealand politician, at <donbrash.com>. Dr Brash is the leader of the opposition has been critical of Government funding of the Complainant.

It is asserted that by redirecting the website in this manner, the Respondent is intentionally creating confusion with the Complainant’s mark as to its sponsorship, affiliation and endorsement. Furthermore, the Complainant notes that 2005 is an election year in New Zealand and it says that the Respondent is causing deliberate embarrassment to the Complainant by redirecting Internet users to Dr. Brash’s website in this manner.

On March 15, 2004, the Complainant sent the Respondent a cease and desist letter, putting the Respondent on notice of its rights. The Respondent advised the Complainant’s authorised representative that he did not intend taking any action in respect of domain name as requested unless legal proceedings were issued against him.

In its Second Supplementary Filing the Complainant provides further details of the public discussion and dissemination of information about the launch and operation of the Maori Television Service. It asserts that this supports its argument that the Respondent knew or ought to have known about the service and the rights the Complainant claimed in the service/name. It submits that this evidence supports its allegations of bad faith against the Respondent.

B. Respondent

The Respondent did not reply in substance to the Complainant’s contentions. That is, notwithstanding the fact that he acknowledged that:

- He took possession of the hard copy of the Complaint in early June;

- He knew that he had 20 calendar days within which to submit a Response;

- But that he had no duty to do so.

This indicates that the Respondent was aware of the allegations made against it by the Complainant but chose to remain silent.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered or applied for and uses “Maori Television” and “Maori Television Service’ (for convenience “Maori Television’) in relation to broadcasting and the Internet.

The Panel accepts that the mark Maori Television or Maori TV is descriptive of television services delivered by or for Maori in New Zealand. However that is not to say that the mark Maori Television does not function as a trade mark and would not provide its proprietor with enforceable rights.

The Panel finds that on the submissions and evidence lodged and in the absence of any attempt to suggest otherwise, that the domain name serves to identify the Complainant. If an entity was to set up a business or re-direction site under the name Maori Television, the Complainant would, as a matter of practicality, be able to restrain use of the name, whether by way of passing off, an unfair trading action or by virtue of the name protection provisions (S.11) of the above Maori Television Service Act 2003.

Accordingly, the Panel finds that the ground is made out.

B. Rights or Legitimate Interests

In Museum of New Zealand Te Papa Tongarewa v. Greg Nicolas, (WIPO Case No. D2004-0288) the Hon Sir Ian Barker dealt with a situation not unlike the present. The Panel was prepared to accept as a matter of judicial notice, that the building of the national museum of New Zealand (Te Papa) was a matter of considerable publicity throughout the country. While the creation of the Maori TV channel may not necessarily have generated the same level of publicity, it was certainly a matter of relatively widespread debate and coverage in New Zealand.

In rejecting the respondent’s contention that the domain name Te Papa had been registered by the respondent to create a website extolling the beauties and advantages of the many places he had visited and of New Zealand, Sir Ian Barker found that:

“The Exciting People and Places Around,” the full name for the initials, does not immediately call to mind a website where Filipino migrant workers would find either inspiration as to other places where they might live or solace from their current adversities.”

Accordingly, he concluded that the inference could be drawn that the name, “The Exciting People and Places Around,” was one concocted to give legitimacy to the disputed domain name. In the present case, the Respondent has not even tried to explain or justify its actions. The inference that arises is that he does not have a reasonable explanation or if he has he has chosen to not share it with the Panel.

The Complainant alleges (without contradiction) that the Respondent’s website redirects to <donbrash.com> and that that website contains views critical of the Government’s funding of the Complainant. Likewise, the Complainant’s submission that the Respondent is intentionally creating confusion is not disputed.

Based on the assertions and evidence to hand it appears that disputed domain name is being used to redirect Internet users to a website essentially unconnected with the Complainant but critical of its creation and/or operation. In the Panel’s view, the potential public harm which the Policy is designed to deal with is not necessarily limited to buying products or using a competitor’s services by way of some form of direct deception. The confusion or deception in the present case is likely to arise by attracting members of the public to a website which purports to be that of a specialist, statutorily created broadcaster, only to find that it is in fact a website designed to criticise or express a view about the broadcaster. The Policy is not meant to cut across freedom of expression, even highly critical expression. However, in the present case there is nothing in the domain name itself to suggest that users will be directed to a criticism site or an unrelated site which may contain views in some respects critical of the Complainant. In the Panel’s view, in the absence of any evidence or clarification from the Respondent, this does not appear to amount to legitimate conduct.

In the Panel’s view, the public has the right to not be misled about who they are dealing with. They are entitled to know, upfront, whether they are contacting/dealing with a broadcaster involved with Maori related issues and not an individual, group or political party seeking, whether directly or indirectly, to criticise or express a view on the broadcaster.

On this basis the Panel finds that the ground is made out.

C. Registered and Used in Bad Faith

A finding of bad faith may be made whether the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain: see Façonnable SAS v. Names4Sale (WIPO Case No. D2001-1365), Vakko Holding Anonim Sti. v. Esat Ist (WIPO Case No. D2001-1173). The Respondent being a New Zealand resident, the Panel considers that it is most unlikely that he did not know of the name/mark, Maori Television, when he registered the domain name in question.

Given the findings above that the domain name is confusingly similar to the Complainant’s name/mark and that the Respondent has deliberately used the domain name to redirect Internet users to an unrelated third party site, and drawing the inference that the Respondent had the requisite knowledge, the Panel finds that the domain name was registered and is being used in bad faith.

Again the Panel finds the ground is made out.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that:

i) The disputed domain name is confusingly similar to the Complainant’s trade mark and;

ii) The Respondent has no rights or legitimate interests in the domain name; and

iii) The domain name was registered and is being used in bad faith;

and the Panel orders that the domain name <maoritv.com> be transferred to the Complainant.

Clive L. Elliott
Sole Panelist

Date: August 1, 2005