Yorkshire Television Limited v. Internet Commerce, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yorkshire Television Limited v. Internet Commerce, Inc.

Case No. D2003-0237

1. The Parties

The Complainant is Yorkshire Television Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Linklaters of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Internet Commerce, Inc. of Las Vegas, Nevada, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <yorkshiretelevision.com>. This domain name is registered with Intercosmos Media Group d/b/a directNIC.com. ("the Registrar") whose mailing address is 650 Poydras Street, Suite 1150, New Orleans, Louisiana, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center")

on March 25, 2003. On March 27, 2003, the Center transmitted

by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar

verification in connection with the domain name at issue. On March 27, 2003,

Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center

its verification response. In response to a notification by the Center that

the Complaint was administratively deficient by reason of a change in the name

of the Respondent, the Complainant filed an amendment to the Complaint on April 8, 2003.

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 April 16, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

May 6, 2003. Having received no communication from the Respondent

by the due date, the Center on May 7, 2003, sent a Notification of

Default to the Respondent.

The Center appointed James G. Fogo as the sole Panel member in this matter

on May 15, 2003, having received from the Panelist an executed Statement

of Acceptance and Declaration of Impartiality and Independence, as required

by the Center to ensure compliance with the Rules, paragraph 7.

The Panel finds that it was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules. It has also independently determined

and agrees with the assessment of the Center that the Complaint meets the requirements

of the Policy, the Rules and the Supplementary Rules.

The language of the administrative proceeding is English, the language of the

registration agreement.

4. Factual Background

The Complainant, Yorkshire Television Limited is one of the largest television

companies in the United Kingdom. It was established in 1968, initially providing

programme production and broadcasting service to the Yorkshire region and extending

to adjacent counties to the north and south of Yorkshire. In time, it obtained

an international audience through exporting its programs to EU and non-EU countries.

Yorkshire Television programmes have been sold and shown in at least 48 countries

worldwide including North America. It is estimated that programmes of Yorkshire

Television shown in the United Kingdom reach more than 12 million viewers and

substantially more viewers watch programmes abroad. For more than 35 years,

the Complainant has built up substantial value and good will in the trade mark

throughout the United Kingdom and abroad.

The complainant is the owner of three United Kingdom registrations of the mark

YORKSHIRE TELEVISION as follows:

1. UK Trade Mark Reg. No. 1272941, registered July 10, 1992 Class

35

2. UK Trade Mark Reg. No. 1274832, registered April 3, 1992 Class

38

3. UK Trade Mark Reg. No. 1277476, registered May 8, 1992 Class 41.

The domain name <yorkshiretelevision.com> was created on December 2, 2002,

and registered to Telmex Management Services of Tortola, British Virgin Islands.

The Registrar of the domain name was directNIC.com.

The Complainant advised that it first became aware of the registration of the

domain name in issue when receiving complaints that a domain name <yorkshiretelevision.com>

was linking to either an escort service or to pornographic content.

On February 7, 2003, an executive of the Complainant’s parent company directed

a complaint to the service provider hosting the web site. He called attention

to the server’s hosting terms, one of which provided that use of redirectional

services to provide adult/illegal material was unacceptable. He requested the

deactivation of the Respondent’s site or the freezing of the user’s account,

if immediate transfer were not possible. Neither step was immediately taken.

As of March 7, 2003, one who accessed the Respondent’s domain name would have

been linked immediately and automatically to "ttp://temptationsatwork.com"

a page containing a sexually-suggestive photo of a female model, the flags of

fifteen countries and the invitation "Welcome to the english version of

Temptations@Work!" This welcome message was followed by a dynamic text

which referred to a new form of global staffing, ready to supply a variety of

staff including, inter alia, hosts, escorts, translators, dinner dates

and "our famous SEXETARIES".

On or about March 13, 2003, the identity of the registration was changed to

Lost in Space SA with an address at Palma de Mallorca, Spain. The domain name

in issue resolved to "http://pinksatpalma.com," which contained symbols

for "male" and "female," reference to a club "PINKS".

A similar dynamic text included reference to the opening of the venture on May 1, 2003,

and the offering of luxury apartments and bed and breakfast accomodation on

the island. The administrative and technical contacts changed, but the telephone

and fax numbers for the address of this registration in Spain were identical

to numbers given for Telmex at Tortola.

On or about March 19, 2003, the identity of the registration was again changed,

this time to easyspace, with an address said to be 33 Minories, London, UK,

EC1 4RR.

A different administrative and technical contact was named.

On March 25, 2003, the Complaint of Yorkshire Television Limited was received

by the Center. On the same date, the identity of the registration was again

changed, to Internet Commerce, Inc. at the address Suite 3650, North Green Valley

Pk Road, Henderson, Las Vegas, Nevada, 89104, United States of America. The

administrative and technical contact named was Louise Alcock at the same address.

The address proved to be incomplete and no acknowledgement or response from

this source was received. It can be noted that the telephone and fax numbers

given for Internet Commerce, Inc. were the same as those given for both Telmex

and Lost in Space SA.

By April 3, 2003, the Center was able to report that the current Registrar

had confirmed that the disputed domain name registration had been locked and

no further transfers could take place while the case was under consideration.

When, on April 4, 2003, the disputed domain name was viewed, it now

pointed to a web site entitled "Movie Haven", an adult site with

many explicit pictures, offering online movies for download.

5. Parties’ Contentions

A. Complainant

The Complainant seeks to have the domain name <yorkshiretelevision.com>

transferred to it.

The Complainant asserts that the disputed domain name is identical to its registered

trade mark, by incorporating its distinctive trade mark in its entirety. The

Complainant also considers the disputed domain name to be confusingly similar

to its trade mark.

The Complainant considered that a member of the public viewing the domain name

address would most likely assume that persons responsible for the domain name

were licensed or sponsored by the Complainant.

The Complainant further asserts that the Respondent has no rights or legitimate

interests in the domain name.

The Complainant has never licensed or authorized the Respondent’s use of the

Complainant’s trade mark in a domain name. To the contrary, it sought to prevent

this use within a short time after the domain name was registered. The Complainant

identified itself by the words "Yorkshire Television" for more than

35 years. The Respondent, under any of its various names, was never commonly

known as Yorkshire Television. The Respondent cannot establish a right or legitimate

use when employing the domain name to attract Internet users for commercial

gain and diverting them to a pornographic site.

The Complainant contends that the Respondent registered and is using the domain

name <yorkshiretelevision.com> in bad faith.

The Respondent registered and is using the domain name to make illegitimate

commercial use, intentionally diverting users to a different site creating a

likelihood of commercial confusion for the Respondent’s financial gain. The

Respondent’s acts tarnished the marks of Yorkshire Television when initially

it associated the name with an escort service and later when it used the domain

name to direct users to a site offering the sale of pornographic movies. In

each case, the Respondent acted in bad faith.

The Complainant also submits that the repeated changes in the Registrant’s

identity and content information over a short period of time, as well as incomplete

or inaccurate or omitted information, was deliberate and intended to avoid or

delay enforcement under the UDRP proceeding. It should amount to an act of bad

faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Paragraph 5(e)

of the Rules provides that if a Respondent does not submit a Response, in the

absence of exceptional circumstances, the Panel shall decide the dispute based

on the Complaint.

No exceptional circumstances are known. Findings may therefore be made on the

basis of the information contained in the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel "decide a complaint

on the basis of the statements and documents submitted in accordance with the

Policy, Rules and any rules and principles of law that it deems applicable.

The Complainant has the burden of demonstrating three elements by reason of

Paragraph 4(a) of the Policy.

(i) that the Complainant has rights in a trade mark or service mark with which

the Respondent’s domain name is identical or confusingly similar;

(ii) that the Respondent has no rights or legitimate interests in the domain

name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns registrations of the trade mark "YORKSHIRE TELEVISION"

with which the domain name <yorkshiretelevision.com.> is virtually identical.

The Respondent has removed the space between the two words, but this is a requirement

when registering any domain name. The additional element "com"is a

TLD, which is ignored for the purpose of assessing similarity.

The Complainant’s trade mark has been used for more than ten years before the

Respondent’s registration of the domain name. The trade mark has been widely

used, associated with the television productions performed in the United Kingdom

and sold in many countries of the world. The adoption by the Respondent of an

essentially identical domain name would clearly create confusion.

The Panel holds that the Complainant has met the first element of paragraph

15(a) of the Rules.

B. Rights or Legitimate Interests

The Respondent has failed to file a Response and thereby has not asserted any

rights or legitimate interests. However, the Complainant must establish that

the Registrant has no right or legitimate interest in the domain name.

The Panel accepts that in the field of television creation and transmission,

the name and trade mark of Yorkshire Television are widely known after more

than 35 years of use. The Panel concludes that in placing the words "yorkshire"

and "television" together side by side, the Respondent knew well that

it was using a valued name of the Complainant.

The Complainant has never licensed or otherwise permitted the Respondent to

use the domain name in issue. From the very beginning of this dispute, it was

third parties who complained that the domain name was being used as an escort

service or pornographic content and so drew the fact to the attention of the

Complainant.

It seems clear that the objective of the Respondent under its various names

has been to use the domain name to divert consumers to another web site in a

manner misleading and not bona fide, and to tarnish the trade mark of the Complainant.

When these proceedings had formally commenced, after a delay for which the

Respondent, Internet Commerce, Inc. was responsible, it was shown that the domain

name had been diverted to an adult web site offering pornographic movies for

sale. There is no evidence that the Respondent ever made a legitimate non-commercial

or fair use of the domain name without intent to make money, to misleadingly

divert consumers, or to tarnish the mark.

Accordingly, the Panel finds that the Respondent has no rights or legitimate

interests in respect of the domain name.

C. Registered and Used in Bad Faith

There is no logical explanation for the Respondent’s choice of the contested

domain name other than a desire to associate it with the trade mark or domain

names of the Complainant. The spellings were identical. The Respondent’s use

of the domain name since its acquisition was to attract consumers by a well

known name and then divert to a different web site offering the sale of pornographic

movies. The acts of the Respondent also create confusion with the Complainant’s

trade mark and tarnish the trademark. Under paragraph 4(b)(iv) of the Policy,

acts in such circumstances are considered to be evidence of bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy

and Paragraph 15 of the Rules, the Panel orders that the domain name, <yorkshiretelevision.com>

be transferred to the Complainant.

James G. Fogo

Sole Panelist

Dated: May 29, 2003