The Complainant is Euronews SA of Écully, France represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Manager of Indianapolis, Indiana, United States of America.
The disputed domain name <euronewsradio.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On August 23, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On August 24, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2011.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 29, 2011. 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.
The Complainant is Euronews, one of the largest international news channels. It is the owner of the following trademark registrations, among others:
|
TRADEMARK |
COUNTRY |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
EURONEWS |
International |
534139 |
January 23,1989 |
|
EURONEWS |
International |
688672 |
November 6, 1997 |
|
EURONEWS |
International |
767011 |
July 17, 2001 |
|
EURONEWS |
United States |
2758033 |
January 18, 2001 |
The disputed domain name was registered on October 2, 2000. According to evidence submitted by the Complainant, uncontested by the Respondent, particularly an extract obtained by the Complainant from domaintools.com, the disputed domain name has been transferred several times. This evidence suggests that as of November 30, 2000, the registrant of the domain name was one IGGI Networks, Inc, of Florida, USA. As of November 7, 2005, the registrant on record was shown as “Pending Renewal or Deletion,” of Virginia, USA. As of June 24, 2007, the registrant on record was one eCorp of Indiana, USA. Domaintools.com shows that by July 14, 2008, the registrant on record was Domain, Manager, eCorp of Indiana, USA. By February 11, 2010, the registrant on record was Domain Manager of Indiana, USA . This changed later on, because the September 30, 2010 domaintools.com cache shows Moniker Privacy Services as the registrar. Finally, by February 7, 2011, the domaintools.com record shows Domain Manager of Indiana, USA, as the registrant, and this entity has continued being so until now.
1. The Domain name is identical or confusingly similar to the Complainant’s trademarks.
The Complainant argues the following:
That the disputed domain name is confusingly similar to the Complainant’s EURONEWS trademarks and company name as it wholly incorporates the Complainant’s trademark in the term EURONEWS, with the mere addition of the term RADIO (and cites CBS Broadcasting Inc. v. Forhart – Michael Engelhart, WIPO Case No. D2010-0284).
That the addition of the term RADIO is prone to reinforcing the risk of confusion between the disputed domain name and the Complainant’s trademarks in the term EURONEWS.
That the term RADIO corresponds to a type of service covered by the Complainant’s trademark registrations and refers to radio and television broadcasting activities which are a key activity of the Complainant.
That by registering a domain name which reproduces the Complainant’s exact trademark in the term EURONEWS, the Respondent has undoubtedly created confusing similarity with the Complainant’s trademark.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts the following:
That the Respondent has no rights or legitimate interests in the disputed domain name.
That numerous previous UDRP panels have found that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (citing The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).
That there is no suggestion that the Respondent could possibly invoke any of the circumstances listed in paragraph 4(c) of the Policy which sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
That the Respondent is not commonly known by the term EURONEWS, and that the Respondent has not secured or even sought to secure any trademark rights in the term EURONEWS.
That the Respondent has not made, and is not currently making any legitimate noncommercial or fair use of the disputed domain name.
That the Respondent uses the disputed domain name to point to a website which reproduces the Complainant’s word mark in the term EURONEWS and contains targeted linking and advertising regarding competitors of the Complainant, such as <news.bbc.co.uk>, <newspaper.uk>, “CNN News”, “BBC News 24”, “Guardian Newspaper” and “International Tribune”.
That by clicking on some of the links found on the website to which the disputed domain name points, an Internet user would be redirected straight to the websites of some of the Complainant’s main competitors.
That the Respondent undoubtedly derives some financial gain though pay-per-click or other types of revenue generating arrangement/scheme.
That there are no legitimate reasons which could explain why the Complainant’s EURONEWS trademark is used by the Respondent in connection with these activities except to seek to ride on the Complainant’s goodwill in the term EURONEWS, tarnish the reputation of the Complainant and mislead customers.
That the Respondent is not an authorized dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its distinctive and renowned trademarks EURONEWS.
That the Respondent cannot claim it made demonstrable preparations to use the disputed domain name prior to notification of this dispute by the Complainant in connection with a bona fide offering of goods or services.
3. The Domain name has been registered and is being used in bad faith.
The Complainant alleges the following:
That the disputed domain name has been registered and is being used in bad faith.
That the trademark EURONEWS is distinctive and renowned internationally and has been continuously used for at least twenty years, and that there is no evidence of any actual or contemplated good faith use of the disputed domain name by the Respondent.
That the disputed domain name has been transferred since the date of its registration.
That according to the response to question 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition makes clear, “while the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith”. The Complainant’s argument was precisely followed by the panel in the Surcouf v. Shen Kaixin, WIPO Case No. D2009-0407, where the panel, stated that “the relevant time to make this [the bad faith registration] assessment is at some point after [the time] when the record shows that the disputed domain name was transferred from one Xiaijie Yu to the present [r]espondent”. The Complainant alleges that panels have repeatedly found that transfer to a new registrant constitutes “registration” for purposes of paragraph 4(a)(iii)’s determination of bad faith. (The Complainant cites BMEzine.com, LLC. V. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882; and No Zebra Network Ltda v. Baixaki.com, Inc., WIPO Case No. D2009-1071).
That it is inconceivable, in view of the significant visibility and goodwill of the Complainant worldwide and particularly in the USA, that the Respondent did not have the Complainant and its EURONEWS trademarks in mind when acquiring the disputed domain name in its name at a time when the Complainant already had very significant goodwill and reputation across the world, including in the USA, the country of residence of the Respondent. The Complainant cites eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.
That, in relation with the above, the disputed domain name could not have been chosen for any reason other than seeking to benefit from the goodwill and reputation attached to the Complainant’s EURONEWS trademarks and to attract Internet users to the Respondent’s website.
That the addition of the term RADIO which refers to one of the fields of activity of the Complainant and to services covered by the Complainant’s trademarks, is prone to reinforcing the risk of confusion between the disputed domain name and the Complainant’s trademark EURONEWS and is further evidence that the Respondent was familiar with the Complainant and registered the disputed domain name with the Complainant in mind.
That the term EURONEWS is an unlikely combination of words which does not make sense unless it refers to the RADIO of EURONEWS, like BBC RADIO or CNN RADIO would refer to the radios of the BBC and CNN and corresponding domain names <bbcradio.com> and <cnnradio.com> would not make sense otherwise.
That the creation of Euronews International News Channel in 1992 and launch in 1993 was given substantial media coverage internationally and particularly in the USA so that it could not have been ignored by the Respondent who acquired the disputed domain name at least thirteen years after the creation of EURONEWS.
That the Respondent was trying to intentionally attract Internet users to visit its website with the intention of fraudulently benefiting from public confusion by deriving some financial gain through pay-per-click or other types of revenue generating arrangement/scheme.
That the Respondent has already been involved in UDRP disputes which the Respondent has lost and the present factual background suggests a pattern of bad faith conduct on the Respondent’s part in relation to the disputed domain name, which is contrary to the principles of fair competition and fair commercial practices.
That a search carried out on the Respondent, using the contact details disclosed by Moniker, reveals that the Respondent is or was the registrant of a certain number of infringing domain names which reproduce(d) the trademarks of third parties and point to websites containing targeted advertising and linking. These domain names are, for instance the following: <disnetchannels.com>, <amexfunds.com>, <bentleychannel.com>, <nasdaq50.com>.
That given the above, the Respondent has already been involved in UDRP disputes which the respondent has lost (and cites Artnews, L.L.C. v. Ecorp.com, NAF Claim No. FA000095231, and The Conference Board, Inc. v. Domain Manager and eCorp.com, WIPO Case No. D2010-0302).
That the present factual background strongly suggests a pattern of bad faith conduct on the Respondent’s part in relation to the disputed domain name, which is contrary to the principles of fair competition and fair commercial practices.
The Respondent did not reply to the Complainant’s contentions.
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
(i) the disputed domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and
(iii) the disputed domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these elements are present.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true the reasonable allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Complainant is the owner of the trademark EURONEWS, in different jurisdictions, including the USA, where the Respondent is domiciled. The disputed domain name <euronewsradio.com> is confusingly similar to said trademark. The disputed domain name incorporates the trademark EURONEWS in its entirety, with the addition of the term “radio” which is a generic term.
The addition of said generic term “radio” to the trademark EURONEWS does not add a distinctive character to the disputed domain name, and it does not eliminate the confusing similarity between said trademark and the disputed domain name (see CBS Broadcasting Inc. v. Forhart – Michael Engelhart, WIPO Case No. D2010-0284; see also Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184).
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. (See Diageo Brands B.V., Diageo North America, Inc, and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627).
Considering that the disputed domain name <euronewsradio.com> is confusingly similar to the Complainant’s trademark EURONEWS, the first requirement of the Policy has been fulfilled.
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
The Respondent has not submitted evidence showing the existence of use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Complainant’s Complaint, not contested by the Respondent, shows that the Respondent is using the disputed domain name to divert Internet users to a web site with links to competitors of the Complainant, like <news.bbc.co.uk>, <newspaper.uk>, “CNN News”, “BBC News 24”, “Guardian Newspaper” and “International Tribune”. This cannot be considered to be a bona fide offer of services. See Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364; and Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437.
The Respondent has not proven to have been commonly known by the disputed domain name. The trademark EURONEWS is famous around the world. This trademark is known by the consuming public around the world, especially in Europe and in the USA. Therefore, there is no evidence at hand that the Respondent could have chosen or used the disputed domain name in a legitimate manner. The Respondent had constructive notice of the Complainant’s trademark EURONEWS, as a result of the Complainant’s trademark registrations in the USA. The Respondent most likely had actual knowledge of the Complainant’s trademark, because said Respondent caused or authorized the disputed domain name to be associated to websites of the Complainant’s direct competitors. This does not look like a coincidence.
The Respondent’s use of <euronewsradio.com> is not legitimate. It is also commercial. Having the disputed domain name resolve to a website with links to Complainant’s competitors within a pay-per-click model has the objective of misleadingly diverting consumers for profit.
Additionally, Respondent is not an authorized dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its trademark EURONEWS.
This Panel finds no rights or legitimate interests on the side of the Respondent. The second element of the Policy has been fulfilled.
According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) you have registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Following Surcouf v. Shen Kaixin, BMEzine.com, LLC. V. Gregory Ricks / Gee Whiz Domains PrivacyService, and No Zebra Network Ltda v. Baixaki.com, Inc. (supra), this Panel considers that in this case the transfer of the disputed domain name constitutes registration for purposes of the Policy. According to the evidence submitted by the Complainant, uncontested by the Respondent, there is proof that the Respondent had acquired the disputed domain name by June 2007, based on the domaintools.com record. In 2007, the widespread use and reputation of the EURONEWS mark was undeniable in the USA, where the Respondent is located, according to the relevant WHOIS database. This, in addition to the fact that according to the evidence on record, the Respondent has been involved in other Cybersquatting practices, leads the Panel to believe that the disputed domain name was registered knowingly and in bad faith.
Two specific types of conduct lead this Panel to find clear bad faith registration and use under to paragraph 4(b) of the Policy: traffic diversion and pattern of conduct.
The evidence contained in the case file shows that the disputed domain name resolves to a website with links to <news.bbc.co.uk>, <newspaper.uk>, “CNN News”, “BBC News 24”, Guardian Newspaper” and “International Tribune”, among others, which proves that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark EURONEWS as to the source, sponsorship, affiliation or endorsement of the website. This falls within paragraph 4(b)(iv) of the Policy. See e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; and Owens Corning v. NA, WIPO Case No. D2007-1143.
On the other hand, the Complainant has proven that the Respondent has engaged in a pattern of conduct. For example, the Respondent is the registrant of the following domain names, all of which incorporate well-known trademarks or their variants: <disnetchannel.com>, <amexfunds.com>, <bentleychannel.com>, <myspacechannel.com>, <nasdaq50.com>. Moreover, the Respondent has been named as respondent in another two UDRP cases, and the panel has ordered transfer the disputed domain names in both cases (see Artnews L.L.C. v. Ecorp.com and The Conference Board, Inc. v. Domain Manager and eCorp.co, supra). The Respondent’s conduct constitutes bad faith registration and use, according to paragraph 4(b)(ii) of the Policy.
Therefore, this Panel finds that the disputed domain name <euronewsradio.com> was registered and is being used in bad faith. The third requirement of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <euronewsradio.com> be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: October 13, 2011