European Broadcasting Union v. Transtrend BV

WIPO Case No. D2001-0468

Outcome: Transfer
Domain names: eurovision.tv, eurovisiontv.com
Complainant: European Broadcasting Union
Respondent: Transtrend BV
Panelist: Tony Willoughby
Decided: 20 Jun 2001
Language: English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0468.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

European

Broadcasting Union v. EasySkies BV

Case No.D2001-0468

1. The Parties

The Complainant is European

Broadcasting Union, Ancienne Route 17a), Case postale 45, CH-1218 Grand-Saconnex,

Switzerland.

Represented by Dr Werner

Rumphorst, Director, EBU Legal Department.

The Respondent is EasySkies

BV, Moerweide 23, NL-2811 JC Reeuwijk, The Netherlands.

Represented by Steinhauser

& Hoogenraad, (Ms Carien van Boxtel), PO Box 75140, NL-1070 AC Amsterdam,

Netherlands.

2. The Domain Names

and Registrars

The Domain Names are <eurovision.tv>

and <eurovisiontv.com>.

The Registrars are Tucows

Inc. and The .tv Corporation International.

3. Procedural History

The Complaint was received

by WIPO by email on March 30, 2001 and in hardcopy form on April 2, 2001. The

Complainant filed additional annexures to the Complaint on

April 6, 2001. On April

11, 2001 WIPO requested an amendment to the Complaint. The amendment was received

by email on April 12, 2001. WIPO has verified that the Complaint satisfies the

formal requirements of the Policy, the Rules and the Supplemental Rules and

that payment was properly made. The Administrative Panel ("the Panel")

is satisfied that this is the case.

The Complaint was properly

notified in accordance with the Rules, paragraph 2(a). The Registrars have confirmed

that <eurovision.tv> and <eurovisiontv.com> ("the Domain Names")

were registered through Tucows Inc. and The .tv Corporation International and

that EasySkies BV is the current registrant. The Registrars have further confirmed

that the Policy is applicable to the Domain Names.

On April 25, 2001, WIPO

notified the Respondent of the Complaint in the usual manner and informed the

Respondent inter alia that the last day for sending its Response to the Complainant

and to WIPO was May 14, 2001. The Response was received on May

14, 2001.

The Panel was properly

constituted. The undersigned Panelist submitted a Statement of Acceptance and

Declaration of Impartiality and Independence.

No further submissions

were received by WIPO or the Panel, as a consequence of which the date scheduled

for the issuance of the Panel’s Decision is June 10, 2001.

4. Factual Background

The Complainant is a professional

non-profit association of national broadcasters. On behalf of its 69 member

organisations in 50 countries throughout the European Broadcasting Area, the

Complainant operates, inter alia, the Eurovision Network, organises radio and

television programme exchanges (such as Eurovision News and Eurovision Sports)

co-ordinates international productions and co-productions (such as The Eurovision

Song Contest – since 1956) and provides a range of other operational services

(such as the Eurovision Communications Satellite Network – since 1962).

The Complainant is the

proprietor of an international trade mark and service mark registration (IR634693)

dated April 21, 1995 for goods and services in Classes 9 (carriers of sound

recordings, optical data etc) and 38 (communications services, transmission

of radio and television programmes etc) for a device mark incorporating the

word "Eurovision" as a prominent element.

Originally the domain name

<eurovision.tv> was registered in the name of DomainXelect at Transtrend

BV and the domain name <eurovisiontv.com> was registered in the name of

EasyDN.com at Transtrend BV. In the case of both the Domain Names the Administrative

and Technical Contacts were Gerard Van Vliet. In the case of both of the Domain

Names the address for the original registrants was Admiraleitskade 50, NL-3063

ED NL.

On January 19, 2001, the

Complainant wrote to the then registrants at the registration address notifying

them of the Complainant’s rights in and to the word Eurovision, observing that

the Domain Names were connected to no active sites and requesting information

as to the registrants’ proposed uses for the Domain Names.

On January 29, 2001, the

Respondent’s representative responded on behalf of Mr. Gerard Van Vliet and

the correspondence continues on the basis that the Respondent’s representative

is representing Mr. Gerard Van Vliet and Transtrend BV. Indeed, it was the Respondent’s

representative who introduced the heading to the letters "20012945: Transtrend/EBU".

The substance of the Respondent’s

representative’s initial position acting on behalf of Mr.

Van Vliet and Transtrend BV was that:-

(i) his clients were

prepared to abandon the domain name <eurovisiontv.com> and to transfer

the registration to the Complainant at cost;

(ii) his clients were

"familiar with the term ‘Eurovision’ that is used to distinguish certain

supra-national broadcasting activities between public national broadcasters

in Europe";

(iii) there has been

no infringement of the Complainant’s rights – "my client uses the word

‘Eurovision’ therefore in the strict literal sense, namely vision on the Euro

and on Europe.";

(iv) the .tv domain

was used because the .com domain was not available. The .tv suffix "represents

the abbreviation of the island Tuvalu and does not refer to the activities of

[the Complainant].";

(v) there was never

any intention to sell the <eurovision.tv> domain name;

(vi) Eurovision is of

limited distinctiveness and it is doubtful if the scope of its protection allows

the Complainant to take any action in respect of the Domain Names.

The above points were made

by the Respondent’s representative in a letter dated February

7, 2001. The Complainant’s response dated February 16, 2001, was hostile. The

Complainant pointed out that the website which was by then connected to one

of the Domain Names had not existed at the time the correspondence commenced.

The Complainant expressed the view that the website was a "fake" and

pointed to the disingenuous explanation for the .tv domain.

On March 20, 2001, the

Respondent’s representative replied on behalf of the original registrants but

not giving way. He explains the use of the .tv domain in the following terms,

namely "… the extension .tv has relevance in the world of financial information,

because market quotes are relayed via terminals (ie tv screens)".

At some stage in March,

believed to be shortly before or shortly after the date of that letter the Domain

Names were transferred to the Respondent.

On March 30, 2001, the

Complainant responded that it had commenced this complaint procedure under the

Policy. Other allegations are made in the letter but it is not necessary to

deal with them at this stage.

On April 25, 2001, in response

to an email from WIPO addressed to the Respondent, Mr.

Gerard Van Vliet, the Chief Executive Officer of Transtrend BV states:-

"The email to which

we hereby respond has apparently been sent in error to our email address (ie

to an email address of Transtrend BV, a firm specialising in asset management).

Therefore we "literally" return the email sent by you because we are

not – and have never been – involved in the buying and selling of domain names.

As a consequence there can neither be a domain name dispute, nor a WIPO procedure,

in which Transtrend BV is a party. Please take good note of the above."

On May 1, 2001, a letter

was received by WIPO from Transtrend BV in the following terms:-

"Last week an envelope

(DHL Airway Bill 4540648711) was received by us, apparently in error. As we

receive many packages from couriers, this unfortunately happens from time to

time.

You addressed your envelope

to "EasySkies, Admiraleitskade 50, Rotterdam NL 3063, The Netherlands".

As we do not have an activity

named EasySkies, nor do we know of one in the large office building we reside

in, we therefore return your package."

For the record, the Panel

regards these two communications as being of significance given the terms of

the Response which is quoted almost verbatim at paragraph 5B below. The Panel

has in mind in particular the introductory "preamble" to the Response.

5. Parties’ Contentions

A. Complainant

The Complainant contends

as follows:-

A. Trademark rights

owned by the Complainant

The Complainant is a professional

non-profit association of national broadcasters. On behalf of its 69 member

organizations in 50 countries throughout the European Broadcasting Area, the

Complainant operates, inter alia, the Eurovision network, organizes radio

and television programme exchanges (such as Eurovision news and Eurovision sports),

coordinates international (co-) productions (such as the annual Eurovision Song

Contest – since 1956) and provides a range of other operational services (such

as the Eurovision communications satellite network - since 1962).

The Complainant is the

owner of the international collective trademark and service mark IR 634 693

"Eurovision" (word plus logo), as registered on April 21,1995 for 28 countries

in Europe and North Africa, for the goods "carriers of sound recordings, optical

data and other carriers of European origin" and the services "communications

services; transmission of radio and television programmes; telex services; telephone

services (operation of a telephone network); transmission of messages via radio;

collection and supply of news; transmission of sounds and images via satellite".

These countries are Algeria, Germany, Austria, Belarus, the Benelux countries,

Bosnia-Herzegovina, Bulgaria, Croatia, Egypt, Spain, Former Yugoslav Republic

of Macedonia, Russia, France, Hungary, Italy, Liechtenstein, Morocco, Monaco,

Poland, Portugal, Moldova, Czech Republic, Romania, Slovenia, Ukraine, Yugoslavia.

The same trademark is also

registered in a significant number of other European countries for which the

application was made on a national basis (e.g. the United Kingdom, Switzerland,

and the Nordic countries).

The trademark is in continuous

and extensive use by the Complainant and its members.

Ever since the beginnings

of television broadcasting, the Complainant and its members have also used the

word "Eurovision" for all kinds of television services, and particularly

for the Complainant's permanent international network and for television programming.

Earlier trademark registrations of the previous version of the logo by the Complainant

or its members also included the word Eurovision. With that word, the Complainant

has achieved international recognition and critical acclaim for television broadcasting

services, and the use of that word has come to be recognized by the relevant

circles as indicating the source of such services offered exclusively by the

Complainant or its members. As a result, the Complainant also has "common law"

rights in the word Eurovision as such.

For example, for decades

the annual Eurovision Song Contest final has been broadcast simultaneously in

more than 20 countries in Europe. This year's Eurovision Song Contest, on May

12, 2001, is going to be broadcast live over the Internet; the technical

preparations for that major event have recently started. It is expected that

the Internet transmission of the Song Contest final will become at least as

popular as the traditional television broadcast, particularly when Internet

broadband services are available on a larger scale.

Moreover, through the long,

continuous and extensive use of the Eurovision mark in connection with Complainant's

and its members' services, the mark has become well known within all the relevant

circles of the field of television broadcasting, so that Eurovision is to be

considered a well-known service mark.

The reputation of, and

protection for, the Eurovision trademark of the EBU is confirmed by a recent

decision of the WIPO Arbitration Centre (which is available at the WIPO's Internet

site at https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0737.html).

B. Factual and legal

grounds

1. Similarity between

the trademark and the domain name

It is undisputed that the

international trademark (service mark) and the two domain names in question

are confusingly similar. The dominant part of both the mark and the domain names

is the identical word Eurovision.

2. Rights or legitimate

interests in respect of the domain name

The Respondent is a firm

acting on behalf of three other companies, of which at least EasyDN.com is in

the business of registering and selling domain names.

The Respondent has not

shown that itself or any of its companies has any prior rights or any legitimate

interests in respect of any of the domain names in question. To the Complainant,

the Respondent has not provided any evidence of circumstances giving rise to

such a right or interest. The Respondent has not indicated that it made any

type of search on prior trademarks or similar rights for the word Eurovision

in Europe. On the other hand, the Respondent has admitted being familiar the

word Eurovision being used to distinguish broadcasting activities.

The Eurovision mark, with

or without the words "Song Contest", is not a word which traders in the field

of television services would legitimately choose for such services unless seeking

to create the impression of an association with the Complainant or any of its

members.

3. Registration and

Use in bad faith

The domain names are registered

and used by the Respondent in bad faith. These intentions on the part of the

Respondent follow on from an assessment of the actual circumstances.

On January 19, 2001, after

noting the registration of the domain names <eurovision.tv> and <eurovisiontv.com>

without permission, the Complainant sent a letter informing the Respondent of

its ownership of the Eurovision trademark and requiring an explanation as to

the intentions for the use of the domain names, which, at that time, were not

used for any website. On the deadline for the reply set by Complainant, notably

January 29, 2001, Complainant received a letter from the legal representative

of the Respondent, stating that a reply would be given on February 5, 2001.

On February 7, 2001, the legal representative replied on behalf of all holders

of the domain name registrations that the Respondent would be willing to abandon

and transfer the name <eurovisiontv.com>, but that such was not the case

with the name <eurovision.tv>, since a web site under that domain name

was created with a view to provide business and background information on the

"Euro" currency. According to that reply, the only reason for the Respondent

to have chosen <eurovision.tv> for such website was that the domain name

<eurovision.com> was no longer available. Also, it was claimed that it

had never been the intention of the Respondent or its companies to transfer

or sell the domain names to any third party.

On February 16, 2001, the

Complainant replied that there were various reasons to doubt the truthfulness

of the Respondent's arguments, and that the actual circumstances of the matter

indicated that the sole intention of Respondent's recently designed website

was to create a "smokescreen" with the purpose of avoiding being condemned of

a trademark infringement under Benelux trademark law. In short, the main reasons

for this view of the Respondent were the following :

- no website under the

URL www.eurovision.tv existed before the Respondent received Complainant's letter

(which implied more than seven months inactivity);

- the argument that

it had been the intention at the moment of registration of the domain name <eurovision.tv>

to develop a website with a "vision" on the Euro currency (for which, in any

event, a domain name which distinguishes the word "Euro" more clearly would

have been far more likely) did not find any serious support in the actual content

or design of the website in question, as it lacked any communicative "message",

let alone vision, on the said currency;

- the argument that

the top level extension <eurovision.tv> was chosen only because the top

level name <eurovision.com> was no longer available (and not because of

its attractiveness for a sale to a company offering television services) was

largely contradicted by the registration of <eurovisiontv.com>.

The Complainant therefore

urged the Respondent to reconsider its position. After the Complainant had sent

a reminder, on March 14, 2001, the legal representative replied on March

20, 2001, claiming that the Respondent did not act in bad faith and that the

actual use of the domain name <eurovision.tv> for the website in question

was justified.

In the meantime, another

Respondent's website at www.easydn.com made it apparent that the Respondent's

company EasyDN.com had registered numerous other domain names with the purpose

of selling them to third parties. On March 1, 2001, that company transferred

the domain name <eurovisiontv.com> to another company, called EasySkiesBV,

which appeared to have taken over the responsibility for the design of EasyDN.com's

website and the website under www.eurovision.tv. On the latter's website, it

became also apparent that, even on the date of the Respondent's second reply,

both domain names in question continued to be offered for sale. As of

today, both domain names are still being offered for sale.

From this conduct, it must

be concluded that on both dates of registration of the two Eurovision names

(by DomainXelect and EasyDN.com), the Respondent had no genuine interest in

actually using the domain names for any purpose of its own, whether or not any

such purpose could be regarded as fair, non-commercial or otherwise legitimate.

Also, the second attempt by the Respondent to "justify" the fake website under

"www.eurovision.tv" could easily be unmasked by pointing out the irrelevancy

of the new arguments and the contradictory nature of the Respondent's own activities.

It cannot be denied that

the practice of the Respondent, and in particular its company EasyDN.com, consists

of hoarding a large quantity of domain name registrations for the purpose of

selling with obvious knowledge (or at least intentionally taking the risk) of

the fact that some of these names may be confusingly similar to another's trademark.

The Respondent has therefore deliberately engaged in a "pattern of conduct"

of registering domain names, partly utilizing existing trademarks in which the

Respondent has no rights or legitimate interests. Concerning the two "eurovision"

names, the Respondent had the primary intent of preventing the Complainant from

reflecting the Eurovision trademark in a corresponding domain name. Such "pattern

of conduct" is evidence of the respondent's registration and use of the disputed

domain names in bad faith pursuant to paragraph 4(b)(ii) of the Policy: see

Guerlain S.A. v. Peikang, (WIPO decision

D2000-0055).

In particular, the Respondent

intentionally failed to disclose its continuing offer for sale of any of the

Eurovision domain registrations, even after it was fully informed on the Complainant's

ownership of the Eurovision trademark. This lack of openness indicates that

the Respondent was aware of the "cybersquatting" nature of its

own registration practices. Moreover, the activities of Respondent's company

EasyDN.com show that it feels no reluctance whatsoever to act in complete contradiction

to the instructions given to and/or received from its legal representative,

and this made the filing of this Complaint without any further correspondence

with the Respondent or its legal representative a necessity.

The Respondent's continuing

offer on one of its companies' websites to sell both domain names in question

confirms the mala fide nature of its practice. After all, a legitimate

sale of the domain names would presuppose that the registrations were chosen

independently and legitimately, and were not specifically created or registered

for the purposes of eliciting a sale (see the WIPO Eurovision decision,

as cited above). Not only the fact that both Eurovision name registrations were

apparently made with the Respondent's actual knowledge that they were confusingly

similar to another party's trademark, but also the continuing making the names

available for sale despite the Respondent's knowledge of the trademark owner's

objections, and the obvious attempt to mislead the Complainant by designing

a fake website under one of the domain names clearly contradict such independent

and legitimate choice.

If mala fide entrepreneurs

were to be allowed to escape from liability for the bad faith registration and

use of domain names by simply setting up fake or "smokescreen" websites for

the domain names concerned after being contacted by the trademark owners, then

both trademark law and the UDRP would run the risk of being deprived of much

of their effectiveness to combat unlawful cybersquatting. Consequently, as a

matter of principle, such practices cannot be tolerated.

With respect to the domain

name <eurovisiontv.com>, there is no evidence that the respondent has

taken any positive action in relation to this name, i.e. other than offering

it for sale. It has been decided by various administrative panel decisions of

the WIPO Arbitration and Mediation Center that such inaction, called "passive

holding" of a domain name, must be regarded as a circumstance of evidence of

bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy,

see Telstra Corporation Limited, (supra) and Compaq Computer Corporation

v. Beric (WIPO decision D2000-0042).

It is further worth noting

that the Complainant has been involved in a number of previous domain name disputes,

i.e. including both various out-of court settlements and one recent proceedings

before a WIPO panel (see WIPO Case D2000-0737

as cited above). This must be seen as a strong indication that its trademark

is being targeted by cybersquatters for commercial purposes. There is no evidence

which could create the impression that this case is an exception thereto."

B. Respondent

The Response is as follows:-

Preamble

Prior to this procedure,

the domains involved were registered under the name of DomainXelect.com at

Transtrend B.V. The registration was filed by Mr. Van Vliet in his capacity of

representative of the company in the process of being formed and which temporally

operated under the name DomainXelect.com. This company is now called Easyskies

B.V. (Respondent). At the time of the registration, DomainXelect.com or Easyskies

B.V. i.o. had its temporally domicile at the office of Transtrend B.V.,

which company is one of the main clients of Respondent. In the meantime, the

company Easyskies B.V. has been established and took over all rights and obligations,

including all domain name registrations of the company in the process of being

formed.

Complainant wrongly assumed

that Transtrend B.V. was the Respondent in this case. Even after the correction

of the previous complaint on request of the Case Manager of the WIPO Arbitration

and Mediation Center […] Complainant wrongfully maintained its specification

of Transtrend B.V. as a party to this procedure. Respondent wishes to challenge

this specification explicitly. The actual course of events is as follows:

The domains involved were

registered by DomainXelect.com on request of Transtrend B.V., a major client

of Respondent, who placed an order at Respondent to develop a website the content

of which should be fully dedicated to the Euro currency. To make sure its client

could choose between several domain names, Respondent registered a series of

domain names amongst which were the domain names involved, including EuroDN.com,

Euroland.tv, Eurolandmark.com, Eurolandmarks.com and Euromarkets.tv.

For the sake of this procedure, Transtrend B.V. has to be considered the (co)-user

of the domain names involved and has therefore an interest of its own to defend

itself against the claim of Complainant, but can not be involved in this procedure

as the Respondent. For the sake of brevity, when mentioning ‘Respondent’ in

this Response Respondent refers to itself and its client Transtrend B.V.

unless it is mentioned otherwise. For the sake of clarity Respondent explicitly

points to the fact that:

- Easyskies B.V. is

the registrant of the domain names involved and is also hosting the website

that is operated under these domain names;

- Transtrend B.V. is

the user of the domain names and operator or proprietor of the website

that is operated under these domain names.

Domain names and trademark

are not confusingly similar

Complainants trademark

is almost identical to the disputed domain names. Trademark and domain names

are however not confusingly similar because of the following reasons:

a. The trademark EUROVISION

is a figurative trademark restricted to class 9 and 38 and especially restricted

to services related to television broadcasting. Respondent is not using the

domain names for services related to television broadcasting. Respondent and

its client are active in the field of financial services (class 36) and the

websites under the domain names are clearly at first sight not related to television

broadcasting. For further information on Respondent please visit its website

www.easyskies.com and on its client Transtrend visit www.transtrend.com.

b. Furthermore, the

relevant circles relating to television broadcasting are very small and very

specialized and do have the knowledge to distinguish the trademark from the

domain names. Even more so because they do know the particular services that

Complainant provides. It is not likely that these relevant circles will confuse

the website under the domain names with Respondent's activities. Respondent

has never used the domain names for this purpose and has no plans whatsoever

to use the domain name <eurovision.tv> or the domain name <eurovisiontv.com>

for services in the field of television broadcasting and is willing to state

so on paper.

c. Respondent uses the

domain name <eurovision.tv> in order to promote its activities in this

field. The website www.eurovision.tv / eurovisiontv.com is specifically used

by Respondent to have a relevant platform enabling him to give its vision on

the European currency, the Euro; hence the descriptive term 'EUROVISION': a

vision on the Euro and the European investment market and other issues concerning

his market, including foreign exchange. The websites under the domain names

underline the activities of Respondent and provide a service to its (potential)

clients. Respondent is not interested in the (alleged) interest which the domain

names can generate because of the similarity with the trademark of Complainant,

simply because these 'accidental' visitors (if any) are unlikely potential customers

of Respondent. The information and services, which Respondent provides do not

target Complainant's 'customers'. Under Dutch law these facts provide a legitimate

reason to register and use a domain name that is similar to a trademark. The

President of the Court in Amsterdam did for instant recently judged that the

domain name garnier.nl, although similar to the trademark of GARNIER (shampoo),

was not infringing upon the trademark because the domain name holder intended

the website to promote the French singer Laurent Garnier (Pres. Rb Amsterdam,

October 12, 2000, KG 00/2190 OdC). It is obvious that absence of bad faith together

with the fact that there is no infringing use of the trademark when it is being

used for different services does provide an opportunity to legitimately register

and use the domain name for a website for different services.

The total absence of any

relation to the services that Complainant provides is clear. Respondent does

provide financial services. Therefore there can be no confusion as to the origin

of the website under the domain names <eurovisiontv.com> and <eurovision.tv>.

EUROVISION is not a well

known trademark

a. Respondent contests

the notoriety of the ‘plain’ trademark EUROVISION. Complainant's claim of notoriety

of the trademark for services of television broadcasting is not substantiated

with any reports apart from an earlier WIPO arbitration case concerning the

domain name eurovision.org, which was transferred to Complainant EBU. Complainant

has stated that this WIPO arbitration (Case

No: D2000-0737) has confirmed the notoriety of the trademark EUROVISION

and thus can be considered a well-known service mark within all circles of the

field of television broadcasting. Respondent can not see how the Complainant

can come to the conclusion from WIPO-Arbitration

D2000-0737 that the trademark EUROVISION is well-known. The panel certainly

did not come to this conclusion. The outcome of this decision was based on bad

faith solely.

b. Respondent is familiar

with the term 'Eurovision' only in combination with the term 'Song Contest'.

Without the addition 'Song Contest' the mere trademark EUROVISION is not well

known to the public. The chance that the public might get confused as to the

origin of the website under the domain name eurovision.tv or eurovisiontv.com

is slim, especially because the content of the website under the domain names

has clearly nothing to do with the activities of Complainant.

No bad faith

a. Complainant suggests

that the fact that Respondent is using the domain name under the ccTLD .tv and

is using 'tv' in the gTLD is reason to conclude that Respondent is or was familiar

with the trademark EUROVISION of Complainant and acted therefor in bad faith.

As in Case DTV 2000-0005 (menshealth.tv)

in § 6.3 the Panel did not take into consideration the suggestiveness of the

country code suffix .tv. Moreover the suffix .tv has never been exclusively

reserved for use with television broadcasting related services. It is a ccTLD

and because of the widespread use of it, it is being used as a sort of gLTD,

recognizable for users on the internet. As a commercial enterprise Respondent

did prefer the gTLD .com but this domain name was already registered (and not

used!) by someone named Cezary Ian Glebocki (first registered in February 2000).

b. A second choice was

the domain name <eurovision.tv>, which was still available in June 2000.

All other generic domains such as <eurovision.com> and <eurovision.net>

were not available anymore. As an international orientated company, Respondent

has a legitimate interest in obtaining a (top level) domain that is generic.

Alongside the availability of the international or generic ccSuffix ‘.tv’, Respondent

has its specific and legitimate reasons to use the term 'tv' as a ccSuffix in

the domain name eurovision.tv which has nothing to do with television broadcasting.

The financial market in which Respondent is active is also known as 'Monitor-trade'

(in Dutch: Schermen-handel) because dealers/traders/analysts and investors,

to which Respondent provides services, do not physically trade but conduct their

business through monitoring (physically checking the development of stockprices

on tv-monitors) the stock-exchange. Using the ccTLD .tv is therefore recognizable

for (potential) clients. Respondent uses the websites under the domain names

(they are mirrored) as an extra service to its clients and potential clients.

Typical clients are dealers, traders and analysts.

c. Because of the potential

harm which can derive from allegations of the Complainant (‘hijacking’, ‘bad

faith’ etc), Transtrend B.V. is not using its trademark (registered in the Benelux

for financial services (only) since February 5,1998 and trademark applications

for a similar Community trademark and a U.S. federal trademark and tradename

TRANSTREND on the websites under the domain names yet. Respondent is

a reputable well-established investment manager and advisor, licensed by the

Securities Board of the Netherlands ("STE") and registered trading advisor with

the Commodity Futures Trading Commission ("CFTC"). Transtrend does not wish

to be involved in any procedure of this nature. Because of all allegations made

to the address of Respondent and to avoid legal proceedings, Respondent wanted

to settle the matter as far as the domain name <eurovisiontv.com> was

concerned. This is why Respondent has offered this domain name to Complainant

for the cost of transferral. The main interest of Respondent is in the domain

name eurovision.tv. The domain name <eurovisiontv.com> is only meant to

route visitors to <eurovision.tv> since web browsers like Microsoft Explorer

and Netscape Navigator do usually append the suffix .com when the user does

not specify any. Forgetting to type the . (dot) does therefor route the user

to the website of Respondent as well. Apparently Complainant is not interested

in this domain name since he did not react on this offer to avoid any procedures

and instead started these proceedings. Again, this behaviour suggests that Complainant

is not at all interested in the domain names (it is not using eurovision.org

and eurovision.net!) but is more interested in exploring the limitations of

its trademark EUROVISION.

d. Besides Transtrend

B.V. Complainant did also involve EasyDn.com. Easyskies B.V. provides web related

services and maintains the website for Transtrend B.V. EasyDn.com is involved

in domain name trade. In several rulings, your Panel has stated that ‘offering

a domain name for sale at a value above the cost of registration, is prima facie

evidence of bad faith. Like a trade mark, a domain name is a tradable commodity,

and there is no reason why a bargain should not be struck between a willing

buyer and a willing seller for the legitimate transfer of a registered domain

name at a value which reflects its commercial worth to the parties’, case D2000-0737,

(eurovision.org), case D2000-0016 (allocation.com).

Selling domain names is therefor no evidence of bad faith. These parties can

therefore not be characterized as a domain name grabber or cybersquatter as

Complainant did in the previous correspondence, nor can they be characterized

as mala fide. They do not make it their business to register trademarks

in order to enrich himself at the expense of the trademark holder, and can therefore

not be compared with companies like NameSpace in the Netherlands or even with

any other mala fide registrants. More important: there has never been

any attempt to sell the domain names to Complainant or any intent to do so.

The domain names involved were always intended to be used by Respondent and

are now being used by Respondent.

e. Respondents website

is – like every start-up website on the Internet -still under constant reconstruction

and revision; in his website development activity Respondent adds new content

and other improvements on a regular basis, as Respondent has been doing in all

of its other websites as well.

Legitimate interests in

the domain names

a. Since the European

market is more and more an interesting market for global finance and investment;

especially with the introduction of the single European currency the Euro, investment

advisors like Respondent are more and more pressed to accommodate their clients

who always appreciate relevant financial news and customized news services.

The website under the domain names further provides a promotional tool for Respondent

to focus attention on its services. Respondent specifically uses the websites

under the domain names in order to keep its customers and potential customers

up to date on financial issues. For this purpose Respondent keeps track of financial

news on a daily basis and places hyperlinks to selected articles and websites,

including its own.

b. Another purpose of

the website is to keep track of the interests of the financial world in relation

to the specific articles which Respondent provides hyperlinks to. Respondent

keeps track of how often the site is being visited and how often the specific

articles are being read. The behaviour of the visitors on the website does give

Respondent a tool to get some insight on the interest that the financial world

has on issues raised in these specific articles.

c. Respondent and its

client do have the need to be able to create a website under a descriptive domain

name that is easy to remember in order to attract as much interested visitors

to its website.

d. As an advisor and

provider of services in the field of finance Respondent has a legitimate interest

in the domain names since Respondent uses the website under the domain names

to offer extra services to its existing clients and potential clients and keeps

Respondent up to date on the interests of its (potential) clients. The offering

of these services is bona fide and the use of the descriptive term 'eurovision'

is a logical choice for a domain name and the according website on which these

services are being offered. The relevance for Respondent to make use of the

domain names eurovision.tv and eurovisiontv.com is obvious: financial services

provided under descriptive domain names such as eurovision.tv are more and more

important to be noticed on the internet. The domain name eurovision.tv is easy

to remember because of its descriptiveness in the field of particular financial

services and the vision an advisor in this field may have.

e. Respondent does not

infringe any (trademark) right of Complainant, since she operates under the

domain name a website that is fully devoted to the Euro, the European currency

and to Europe. Respondent uses the word ‘Eurovision’ therefore in the strict

literal sense, namely (a) vision on the Euro and on Europe. Under trademark

law, Respondent can invoke therefore ‘due cause’ as mentioned in article 13A,

section 1 under c and b of the Benelux Trademark Act (BTA).

Complainant has no interest

in the domain names

a. Complainant has won

its WIPO-case (D2000-0737) about the domain

name eurovision.org: the panel concluded that this domain name should be transferred

to Complainant EBU. As a supranational semi-governmental organization this domain

name should suffice to be noticed on the Internet. Moreover Complainant did

also register the domain name eurovision.net. Respondent does not understand

why Complainant still needs the domain names <eurovision.tv> and <eurovisiontv.com>.

Complainant is not using its domain names <eurovision.org> or <eurovision.net>

and instead uses the domain name <songcontest.com> to promote its

Eurovision Song contest on the internet.

b. Clearly Complainant

wishes to explore how far its trademark-rights will stretch. As far as Respondent

is concerned: no further since the trademark EUROVISION is descriptive and can

be legitimately used for domain names for services that do not relate to the

services for which the trademark of Complainant is registered.

A refutation of the arguments

made by Complainant concerning the manner in which the domain name(s) is/are

allegedly identical or confusingly similar to a trademark or service mark in

which the Complainant claims it has rights.

6. Discussion and Findings

General

According to paragraph

4(a) of the Policy, the Complainant must prove that

(i) The Domain Names

are identical or confusingly similar to a trade mark or service mark in which

the Complainant has rights; and

(ii) The Respondent

has no rights or legitimate interest in respect of the Domain Names; and

(iii) The Domain Names

have been registered and are being used in bad faith.

The Response makes it clear

that the user of the domain names, Transtrend BV (CEO Mr. G Van Vliet), is very

concerned to ensure that it is not deemed to be a party to this proceeding.

The Panel accepts that for formal purposes the Respondent is correctly identified,

it being the registrant of the Domain Names at the time these proceedings were

commenced. Nonetheless, for the same reason that the Respondent in its Response

uses the term "Respondent" to refer to both the Respondent and Transtrend

BV and given too that Mr. Van Vliet appears to have been a prime mover behind

all the original registrants as well as the Respondent, for all practical purposes

in relation to this proceeding it makes sense to treat all those entities as

one and the same. The Panel proposes to do just that.

Identical or confusing

similarity

The Domain Names comprise

in one shape or form the name "Eurovision", which is an important

name and trade mark and service mark of the Complainant, and the letters "tv"

which for most purposes are regarded as an abbreviation of the word "television".

The fact that in one of the Domain Names the letters "tv" appear as

an abbreviation for the island of Tuvalu is irrelevant.

The Panel acknowledges

that the Complainant’s trade mark registration is for a device incorporating

the word "Eurovision" and not for the word itself. However, "Eurovision"

is a prominent element of that registered trade mark and certainly in the expression

"Eurovision Song Contest" the name Eurovision is widely known throughout

Europe as being a reference to the organizer of that contest, namely the Complainant.

The Panel finds that the

Complainant has rights in the trade mark and service mark Eurovision in relation

to television related services and that the Domain Names, both of which feature

the letters "tv" in association with "Eurovision", are confusingly

similar to a trade mark and service mark in which the Complainant has rights.

Rights or legitimate interest

of the Respondent

The Respondent is not known

by the name Eurovision and provides no genuine service (commercial or non-commercial)

under or by reference to the name Eurovision. The Respondent is no more connected

with television than anybody else who uses computers.

If, when registering the

Domain Names the Respondent or its predecessors had had any serious intention

of registering Domain Names indicating an interest in the Euro, there are any

number of other combinations that would have been more apt than the Domain Names.

Those responsible for registering

the Domain Names must have had the Complainant in mind when effecting those

registrations. The Panel finds it inconceivable that a sophisticated commercial

operation of the kind that the Respondent and its predecessors claim to be could

not have appreciated that when they were registering the Domain Names they were

registering domain names clearly and exclusively referable to the Complainant

i.e. names in which they could have no legitimate interest.

The Policy in paragraph

4(c) provides the Respondent with a number of examples of circumstances, which

if found by the Panel to be present, will constitute demonstration of rights

and/or legitimate interests in respect of the Domain Names. The Respondent has

made no serious attempt to demonstrate any of those circumstances.

The purported justification

for the inclusion of the letters "tv" in the Domain Names does not

stand up to scrutiny. Initially the Respondent’s representative when providing

an explanation to the Complainant ignored the existence of the <eurovisiontv.com>

domain name and said that the <eurovision.tv> domain name was selected

in the .tv domain because there was no other top level domain available. The

fact of the matter is that if the Respondent needed to select an alternative

domain, being a country domain, there are many domains closer to home than the

island of Tuvalu. The fact that the <eurovisiontv.com> domain name was

registered makes it plain that the "tv" element of the names was regarded

as being an important part of the Domain Names. Contrary to the impression given

by the Respondent’s representative, the choice of the Tuvalu domain was deliberate

and not a fall-back position. The Complainant then draws to the Respondent’s

representative’s attention that "tv" indicates television services

and that the Respondent and its predecessors have no connection with television

services. The Respondent’s representative responds by explaining that the Respondent’s

services do involve television because market quotes are provided on tv screens.

In the view of the Panel that explanation is disingenuous.

The Panel finds that the

Respondent has no rights or legitimate interests in respect of the Domain Names.

Bad Faith

Paragraph 4(b) of the Policy

sets out a non-exhaustive list of circumstances which if found by the Panel

to be present shall be evidence of the registration and use of the Domain Names

in bad faith.

The Complainant relies

in part on paragraph 4(b)(i) of the Policy stating that the evidence supports

the contention that the Respondent’s intention was to sell the Domain Names

for a valuable consideration in excess of the Respondent’s out-of-pocket expenses.

The Panel is of the view that it is quite likely that the registrations were

made for that purpose. While the Respondent has given evidence of a mistake

in relation to the names up for sale on one of the websites associated with

the Respondent, for reasons given below the Panel is unable to accept the Respondent’s

evidence with confidence.

However, quite apart from

that evidence, the Panel is of the view that ultimate sale was the likely intent

of the Respondent and its predecessors, partly because that is often the only

reason that anybody would deliberately register the name of another without

justification, partly because the Respondent and its predecessors made no attempt

to use the Domain Names until after the Complainant had first raised the complaint

with them, and partly because when the "use" did commence it was,

in the view of the Panel, a hasty use of convenience rather than a genuine use.

The Panel does not believe

the Respondent and its predecessors intended to block the Complainant within

the meaning of paragraph 4(b)(ii) of the Policy otherwise than as part of an

intention to sell the Domain Names to the Complainant.

Another possibility is

that the Respondent and its predecessors intended to use the Domain Names to

attract visitors to its website, the visitors believing that they were visiting

a website of the Complainant. If the intention of the Respondent and its predecessors

was, as they claim, to make a genuine commercial use of the Domain Names connected

to a website, then the Panel believes that that was the likely motivation.

In the result the Panel

finds that if the Respondent and its predecessors had no intention of using

the Domain Names, registration was with a view to selling them to the Complainant

for a valuable consideration in excess of their out-of-pocket expenses. If on

the other hand the Respondent and its predecessors intended to make genuine

commercial use of the Domain Names, it was for commercial gain and with the

intention of attracting visitors to their website who were intending to visit

a website of the Complainant (i.e. a deceptive use within the meaning of paragraph

4(b)(iv) of the Policy).

The Panel has been reinforced

in its belief that the registration and use of the Domain Names has been in

bad faith by the nature of the reasons put forward by and on behalf of the Respondent

and its predecessors for selection of the Domain Names and by the manner in

which Transtrend BV and its acting CEO, Mr. Van Vliet, conducted themselves in

their communications with WIPO in April/May and quoted above. In the case of

the former the reasons given were, in the view of the Panel, disingenuous and

in the case of the latter the behaviour was, to say the least, irresponsible.

In both cases it was not conduct consistent with a good faith approach to the

Domain Names.

The Panel finds that the

Domain Names were registered and are being used in bad faith.

7. Decision

In light of the foregoing

findings namely that the Domain Names are identical or confusingly similar to

a trade mark or service mark in which the Complainant has rights and that the

Respondent has no rights or legitimate interest in respect of the Domain Names

and that the Domain Names have been registered and are being used in bad faith,

the Panel directs that the Domain Names, <eurovision.tv> and <eurovisiontv.com>

be transferred to the Complainant.

Tony Willoughby

Sole Panelist

Dated: June

6, 2001

More cases by this complainant

European Broadcasting Union v. Domain4sale — D2000-0737 · eurovision.org · Transfer · 25 Aug 2000