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British Broadcasting Corporation v. Registrant (187640) info@fashionid.com +1.25255572 [2005] GENDND 2100 (20 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

British Broadcasting Corporation v. Registrant (187640) info@fashionid.com +1.25255572

Case No. D2005-1143

1. The Parties

The Complainant is British Broadcasting Corporation of London, United Kingdom of Great Britain and Northern Ireland, represented by an internal representative.

The Respondent is Registrant (187640) info@fashionid.com +1.25255572, Beautiful British Columbus Weather of Vancouver, Canada.

2. The Domain Name and Registrar

The disputed domain name <bbcweather.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2005. On November 4, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On November 7, 2005, OnlineNic, Inc. d/b/a China-Channel.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. The Center verified that 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 November 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2005.

The Center appointed Stefan Abel as the sole panelist in this matter on December 8, 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.

4. Factual Background

The Complainant is an international media organization. It provides broadcasting activities, news gathering and reporting (including weather reporting) in numerous countries.

The Complainant is the registered owner of the trademark BBC in various classes including the Canadian trademark 603304, registered for entertainment services, education services and broadcasting services, claiming use on these services since at least as early as 1940. The Complainant is also the registered owner of the Canadian trademark 754778, registered for entertainment and education services through the provision of radio and television broadcasting and broadcasting services, registered on June 6, 2000. Further to that, the Complainant’s trademarks include the Chinese trademark 837998 for BBC, registered for data transmission, data broadcasting and news information and news agency services on May 7, 1996, and the Chinese trademark 829907, registered on April 7, 1996 for entertainment and educational services, production, presentation and rental of television and radio programs etc.

The Complainant is particularly active in providing news in various languages via the Internet at various domain names that include their BBC trademarks like the news sites at <bbcworld.com>, <bbcworldservice.com>, <bbccanada.com> and <bbcchinese.com>. The Complainant’s Internet services contain weather forecasts for numerous countries and regions all over the world. The Complainant provides this information under the title “BBC Weather” through a special service unit, the “BBC Weather Centre”.

Surveys reflect a remarkable reputation of the Complainant’s broadcasting services in many countries all over the world, including China and Canada.

The Respondent registered the contested domain name on April 20, 2002. The Respondent’s site at the disputed domain name contains a large number of links to numerous commercial websites under different categories such as business, cars, education, insurance, legal, shopping as well as providing a commercial search engine.

The term “Beautiful British Columbus Weather” that forms part of the Respondent’s Registrant details cannot be found on that site, or on any other site on the Internet, except on one site which has no apparent connection with the Respondent.

The Registrant seems to have been involved as the respondent in seven previous administrative proceedings in which the respondents were identified as “Registrant info@fashionid.com”. All of those proceedings resulted in the Respondent’s domain names being transferred to the respective complainants.

The Respondent’s reported address in most of these cases was a Chinese address and in two cases an address in the British Virgin Islands. The domain name <fashionid.com> that forms part of the Respondent’s email address and identity in this administrative proceeding and in the previous proceedings is owned by a Hong Kong Registrant.

5. Parties’ Contentions

A. The Complainant

In summary, the Complainant’s contentions are as follows:

The Complainant was founded in the 1920s. It is one of the most well known international media organizations in the world. The Complainant’s BBC trademarks are well known in Hong Kong/China and also in Canada, where the Complainant started broadcasting services in 1932.

BBC WEATHER is an unregistered trademark of the Complainant, in which very substantial good will and reputation has been developed on a global basis.

The disputed domain name is confusingly similar to the Complainant’s BBC trademarks and its unregistered BBC WEATHER trademark.

The Respondent has no rights or legitimate interest in respect of the domain name. It has included the terms “Beautiful British Columbus Weather” in its Registrant details only after the Complainant asked it to transfer the domain name in order to feign a legitimate interest in respect of the domain name. The Respondent’s domain name is clearly intended to trap Internet users who are attempting to reach the Complainant’s “BBC Weather” website. It is likely that consumers will be misled into believing that the website available at the domain name is associated with or sponsored by the Complainant, which will be damaging to the good will and integrity of the BBC marks.

The Respondent has a well established pattern of registering and using domain names containing the trademarks of well known third party organizations in bad faith. By registering the disputed domain name the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation of the Respondent’s website.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides for a transfer of a domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) to (iii) of the Policy:

- the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out the circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith.

A. Identical or Confusingly Similar

The domain name at issue is confusingly similar to the BBC trademarks. The disputed domain name consists of the Complainant’s BBC trademark in combination with the generic term “weather”. The word “weather” indicates typical services, namely information on weather and weather forecasts, that the Complainant provides under its BBC trademark. The term “weather” added to the Complainant’s trademark in the domain name therefore does not only lack any distinctive character with regard to the Complainant’s trademark but reinforces the confusing similarity of the domain name to the Complainant’s BBC trademarks.

As a general rule, the addition of a generic term to a domain name consisting of a trademark rarely excludes a finding of confusing similarity under the Policy. This finding is consistent with a number of previous UDRP decisions (see e.g. Grupo Televisa, S.A., Televisa S.A. de C.V., Comercio Mas, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Registrant info@ fashionid.com 9876543210, WIPO Case No. D2003-0735 <televisaespectaculos.com>).

The Panel finds that the first element of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Respondent is not licensed or otherwise authorized by the Complainant to use its registered or unregistered trademarks or to register the disputed domain name.

The designation “Beautiful British Columbus Weather” which the Respondent has put into its Registrant details cannot be found on the website linked to the disputed domain name or in any other context on the Internet, except for on one site which has no apparent connection to the Respondent.

In addition, the Respondent has already been found in several other UDRP proceedings to have no rights or legitimate interests in several other domain names and was found to have registered and used these domain names in bad faith.

Finally, the Respondent does not use the disputed domain name in connection with a particular website providing weather information, as the descriptive part of the disputed domain name indicates, but uses the domain name for a site containing links to various subjects, such as business, cars, insurance, legal, shopping, etc.

By producing evidence on these four circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.

The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent, such as the lack of rights or legitimate interests in the domain name. Producing evidence that the Respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP decisions (see e.g. Belupo d. d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 <belupo.com>).

C. Registered and Used in Bad Faith

The Complainant has established this element in accordance with paragraphs 4(b)(ii) and (iv) of the Policy for the following reasons:

The Respondent has engaged in a pattern of conduct preventing trademark owners from reflecting their marks in corresponding domain names. There are at least seven UDRP decisions ordering the Respondent to transfer different domain names that were identical or confusingly similar to trademarks of different trademark owners (see, for example, Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499 <bradfordbingley.com> and LTD Commodities, Inc. v. Registrant info@fashionid.com 9876543210/Registrant, WIPO Case No. D2002-1062 <ldtcommodities.com>).

Although the respondents’ addresses in these prior UDRP cases differ from the address shown in the Whois database for the Respondent in the current case, the Panel finds that the entity behind all these domain name registrations is most likely the same entity. The Respondent is identified by the email address info@fashionid.com, which is part of the respondents’ details in the previous UDRP cases, and it can be noted that using fictious addresses is common in cybersquatting cases.

Furthermore, the Panel finds that, by using the domain name to offer links to commercial websites, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s BBC trademarks as to the source, sponsorship and affiliation of the website for the following reasons:

The domain name combines the Complainant’s trademarks with a term which is descriptive of one of the Complainant’s fields of service, namely weather reporting. In addition to that, the Respondent’s website provides, among other things, links to weather forecasting services and Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is an official site of the Complainant, sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.

The Panel finds that the Respondent acted intentionally. It is hardly conceivable that the Respondent did register the domain name without having the Complainant’s BBC trademarks in mind. The only reason for registering the disputed domain name in good faith could be that the Respondent meant to use the disputed domain name as an abbreviation for “Beautiful British Columbus Weather” that forms part of its Registrant details. However, this reason appears to be feigned, since such a term cannot be found to exist, not even on the website at the disputed domain name.

The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious considering that the Complainant and its BBC trademarks have been registered in both alleged countries of residence of the Respondent (Canada, the Respondent’s place of residence according to the registration details on the Whois database and China, the Respondent’s other alleged place of residence as indicated in the other prior UDRP proceedings) years before the registration of the disputed domain name and that these trademarks are known to a large part of the public of these countries.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bbcweather.com> be transferred to the Complainant.

Stefan Abel
Sole Panelist

Dated: December 20, 2005