WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B-Boy TV Ltd v. bboytv.com c/o Whois Privacy Service / Chief Rocka LTD, formerly named BreakStation LTD.

Case No. D2012-2006

1. The Parties

The Complainant is B-Boy TV Ltd of Benfleet, Essex, United Kingdom of Great Britain and Northern Ireland, represented by Marks & Clerk Solicitors LLP, United Kingdom.

The Respondent is bboytv.com c/o Whois Privacy Service of San Diego, California, United States of America / Chief Rocka LTD, formerly named BreakStation LTD. of Cheltenham, Gloucestershire, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bboytv.com> is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 2012.

The Center verified that the Complaint together with the amended 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 October 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2012. The Response was filed with the Center on October 29, 2012.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 9, 2012. 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, B-Boy TV Limited, is a company incorporated in England and Wales, company No. 8091741. The Complainant was incorporated on June 1, 2012. Mr. F. Hendricks is a director and shareholder of the Complainant. On February 18, 2007, Mr. Hendricks registered the domain name <bboytv.co.uk>, and since that date has used it in association with a website which provides a platform for artists and event organizers to market their projects. The said website had 201 members and a view count of 26,049 as at October 10, 2012.

Mr. Hendricks is the proprietor of three United Kingdom registered trademarks. Two relate to the same device and word mark representing the letters “BBoy TV” in a stylized graphic representation, namely No. 2582263 filed on May 23, 2011 and registered on August 26, 2011 in class 38, and No. 2594369 filed on September 9, 2011 and registered on March 9, 2012 in Class 41. The remaining trademark is a word mark for the text “B-Boy TV”, no. 2594177 filed on September 9, 2011 and registered on March 2, 2012 in class 41.

The Respondent, Chief Rocka Limited, is a company incorporated in England and Wales, company No. 4589352. The Respondent was incorporated on November 13, 2002. Until March 28, 2012, the Respondent was named Breakstation Limited and this previous company name originally featured on the WhoIs of the disputed domain name. The Respondent works as part of a team which organizes the B-Boy Championships world series of events, including the UK B-Boy Championships World Finals. The Respondent says that the B-Boy Championships is the world’s largest and longest established “B-Boy” or “Breakdance” event, first staged in 1996. The Respondent builds the said event’s official website and its sister site, a channel on the website “www.youtube.com” now named “PRODANCE TV”. The Respondent’s sole director is Mr. A. Whittle and its secretary is Mr. O. Whittle. Both Messrs. Whittle lived with Mr. Hendricks and others between 1993 and 1998 at two different addresses.

The disputed domain name was created on February 13, 2010 and originally forwarded Internet users to a channel on the website “www.youtube.com” entitled “BBOYCHAMPIONSHIPS’s Channel” and sub-titled “B-Boy TV”. The ‘about’ section of the said channel described it as the “Official YouTube channel of the B-Boy Championships World Series” and listed a “Date Joined” of April 25, 2008. The said channel had 6,649 subscribers and a video view count of 1,872,148 as at August 30, 2011.

After the Complainant became aware of the disputed domain name, Mr. Hendricks corresponded with both Messrs. Whittle also posted comments to the Respondent’s said channel at “www.youtube.com”. Following an initial exchange of messages between the Parties, and at some point after August 19, 2011, the Respondent removed the “B-BOY TV” sub-title from the said channel and renamed it “PRODANCE TV”. The Respondent continued to use the disputed domain name to forward Internet users to the said channel.

The Respondent operates a website at “www.bboychampionships.com”. The Respondent also used the term “B-BOY TV” on the said website beside an embedded video clip hosted on the Respondent’s said channel on “www.youtube.com”. The Respondent removed the “B-BOY TV” label from its said website and replaced this with a label entitled “PRODANCE TV” following correspondence from the Complainant.

Mr. Hendricks wrote a final email to Mr. A. Whittle of the Respondent on September 12, 2012. The said email indicated that the Complainant believed that the Respondent’s continued use of the disputed domain name constituted an infringement of the Complainant’s trademark and stated that unless the Respondent was prepared to transfer the disputed domain name to the Complainant, the Complainant would instruct its solicitors to file the present Complaint. On September 13, 2012, the Complainant noted that the disputed domain name had been parked with the “Sedo” parking service such that the website associated with the disputed domain name was displaying sponsored advertising links relating inter alia to hip hop dance shows and furthermore was offering the disputed domain name itself for sale for the sum of GBP 10,000.

Both Parties freely employ the term “B-Boy” as a generic noun, using several different spellings including “bboy”, apparently indicating breakdancing, a breakdancer or “hip-hop” culture generally. Such generic, non-trademark-related usage may be found in the Parties’ prior correspondence, in their pleadings and within the Complainant’s Annexes. The Parties also use this noun as a qualifier for other terms such as “a bboy television channel”, “the most current info in the bboy world” and “16 Bboys will become one Grand Master” (the Complainant) or “the B-Boy Championships”, “the world’s largest B-Boy event” and “our well established B-Boy related business” (the Respondent).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant states that it is the registered proprietor of the trademarks listed in the Factual Background section above. The Complainant submits that it has developed substantial goodwill and reputation in the said trademarks along with unregistered rights in the names BBOY TV and B-BOY TV, by virtue of its founding of B-Boy TV in 2007 which the Complainant states enables the street community and artists all over the world to communicate by sharing ideas and by providing a platform to enable artists to build their own channels and gain a world wide audience online. The Complainant notes that its website has over 200 members and 26,000 hits and that its page on the website “www.facebook.com” has 11,729 “likes” along with international posts from Internet users demonstrating global recognition. The Complainant states that as at the date of registration of the disputed domain name the BBOY TV and B-BOY TV names were exclusively associated with the Complainant in the United Kingdom and globally.

The Complainant submits that the omission of the hyphen in the disputed domain name is of no significance and that consequently the disputed domain name is identical to the Complainant’s trademarks. The Complainant asserts that the disputed domain name is alternatively similar to the Complainant’s trademarks because the disputed domain name is being used in relation to identical or similar services to those for which the said trademarks are registered.

The Complainant asserts that the actions of the Respondent in removing the B-BOY TV name from both their page on “www.youtube.com”, to which the disputed domain name previously directed users, and from their “www.bboychampionships.com” website are clear indications that the Respondent recognizes the Complainant's rights in the BBOY TV and B-BOY TV names. The Complainant submits that the speed at which the disputed domain name was listed for sale with Sedo following the email dated September 12, 2012 shows that the Respondent recognized that its actions under the BBOY TV and B-BOY TV names were causing confusion among the general public and as a result causing damage to the Complainant.

The Complainant submits that the Respondent had no rights or legitimate interests in the disputed domain name at the date of its registration, nor was the Respondent or any other company in its corporate group commonly known by the disputed domain name at that or any time. The Complainant asserts that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name and that the Respondent is using the website associated with the disputed domain name to create the impression that it is in some way connected to or associated with the Complainant and its services when this is not the case.

The Complainant states that the evidence regarding the offering for sale of the disputed domain name at Sedo demonstrates that the Respondent did not intend to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that the Respondent has not placed material on the website associated with the disputed domain name but has used it to redirect first to the site at “www.youtube.com” and subsequently to the Sedo domain name marketplace. The Complainant states that the Respondent was aware of the activities that the Complainant engaged in at its own domain name <bboytv.co.uk> which was registered three years prior to the registration of the disputed domain name. The Complainant states that the Respondent has been offered the opportunity to explain why it considers that it has rights or legitimate interests in the disputed domain name via the correspondence between the Parties and has failed to do so.

The Complainant states that the Respondent’s removal of the BBOY TV name from the its online sites, the Respondent’s failure to provide a substantive response to the Complainant’s messages and emails and the Respondent’s use of the Sedo marketplace is inconsistent with the Respondent believing that it had any rights or interests in the disputed domain name.

The Complainant notes that there must be bad faith both at the time of registration and subsequently. The Complainant states that the page on “www.youtube.com” to which the disputed domain name was pointed created the misleading impression that it was the Complainant’s site. The Complainant states that this misleadingly diverted customers away from the Complainant’s business and its own website. The Complainant asserts that the current use of the disputed domain name on the Sedo marketplace demonstrates that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, internet users to their website, by creating the likelihood of confusion with the Complainant's BBOY TV and B-BOY TV marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and/or its services.

The Complainant states that the Respondent's aim in originally registering, subsequently retaining and now attempting to sell the disputed domain name, must be primarily for the purpose of disrupting the business of the Complainant. The Complainant believes that the Respondent thought that, through its use of the disputed domain name, the Complainant's business would be disrupted to the extent that the Complainant would have to cease all operations under the BBOY TV and BBOY TV names. The Complainant adds that the Respondent knows that the Complainant is a small business and that it does not have the resources to spend a lot of time and money on legal/complaint fees.

The Complainant states that it considers that the Respondent has always and/or now intends to sell the disputed domain name to one of the Respondent's partners; a competitor of the Complainant. The Complainant believes that the Respondent, as a larger and more successful company, has influenced its partners against the Complainant and that as such the Respondent’s partners may be considered to be competitors of the Complainant. The Complainant states that it is concerned that the Respondent may be in negotiations with third parties and may sell the disputed domain name to such a party for a nominal fee. The Complainant states that it believes that if a large competing organization purchased the disputed domain name the Complainant will be put out of business.

The Complainant states that the Respondent was aware of the Complainant’s rights as at the date of registration of the disputed domain name however submits, in the alternative, that the Respondent should have been aware of the Complainant’s rights by virtue of the obligation in paragraph 2 of the Policy, which the Complainant says means that there is an obligation on the registrant of a domain name to carry out due diligence at the time of the original registration. The Complainant states that had the Respondent carried out such due diligence it would immediately have identified the Complainant’s prior rights in the term, being extensive unregistered trademark rights in connection with television channel entertainment and production services relating to forms of street arts, street dance, breakdancing and other related art forms, generated as a result of the Complainant’s activities under the name extending back to early 2007.

B. Respondent

The Respondent submits that it registered the disputed domain name for use as the official channel on “www.youtube.com” of the B-Boy Championships and other international events such as “The Notorious IBE”, the latter being based in the Netherlands. The Respondent notes that the B-Boy Championships have been the subject of three television series commissioned by United Kingdom television channel Channel 4. The Respondent asserts that it has a legitimate claim to the disputed domain name which it submits contains two generic words, “B-Boy” and “TV”, which it considers to be of great relevance to the B-Boy Championships. The Respondent also states that “B-Boy TV” seemed a natural choice for the official video channel of the world’s largest B-Boy event given that most of the content had been broadcast on television.

The Respondent states that it has been using the term “B-Boy TV” as a link on its official website at “www.bboychampionships.com” since 2007 in the main menu link to the videos selection. The Respondent submits that it was completely unaware that the Complainant’s website existed, noting that only 53 people on “www.youtube.com” and 155 members of the website “www.bboytv.co.uk” were so aware. The Respondent states that it was also unaware that the Complainant had recently registered any trademarks until the Complainant contacted the Respondent with the request that the Respondent cease using the name “B-Boy TV.” The Respondent notes that the disputed domain name was registered on February 13, 2010 and the Complainant’s trademark was filed a year later on May 23, 2011, while the Complainant itself was established on June 1, 2012, two years after the registration of the disputed domain name.

The Respondent states that the Complainant’s website, contrary to the Complainant’s contentions, is one of the smallest of its kind and should be contrasted with the Respondent’s channel on “www.youtube.com” which has 9.7 million channel views and almost 30,000 subscribers. The Respondent notes that it fails to see what the B-Boy Championships would stand to achieve or gain by either trying to pass off as, or stand in the way of something as small and insignificant as the Complainant’s startup company. The Respondent submits that the real motivation behind the Complaint is that the Complainant wishes to benefit from association with the Respondent. The Respondent asserts that it is the market leader in its field and that only the Complainant could benefit from an association with the Respondent. The Respondent states that companies such as its former title sponsor Sony Ericsson pay tens of thousands of pounds to be associated with the Respondent’s event. The Respondent states that its official channel on the website “www.youtube.com” was already highly successful and the name “B-Boy TV” had become a recognizable brand associated with the Respondent’s business.

The Respondent states that in registering the disputed domain name it was continuing a well established theme with no malicious intent. The Respondent notes that it has registered numerous other domain names featuring the word “bboy” including <bboy.co.uk>, <bboystore.com>, <bboychannel.com>, <bboyawards.com>, <bboycircle.com>, <bboysource.com>, <bboyeurope.com>, <bboychampion.com>, and <ultimatebboy.com>. The Respondent states that none of the said domain names were registered with intent to sell them or to obstruct anyone. The Respondent states that all of its domain names have been registered with the intention to develop these as part of its well-established B-Boy related business.

The Respondent notes that one of its well established businesses is <bboystore.com> which is an e-commerce platform trading online since 2001 providing the official webstore of the B-Boy Championships, to which “www.bboychampionships.com” provides a link. The Respondent states that the said platform was originally called <breakstation.co.uk> and that it became <bboystore.com> in February 2010. The Respondent points out that the domain name <bboystore.com> also contains two generic words of relevance to the Respondent, namely “B-Boy” and “Store”. The Respondent states that it has plans to develop two other ventures with the same naming structure: an online magazine to be named “B-Boy Source” and an awards ceremony to be named “B-Boy Awards”.

The Respondent states that it continued to use the disputed domain name to forward to its channel on “www.youtube.com” after changing the said channel’s name because it wished to ensure that the section of its community who signed up when the channel was named “B-Boy TV” would continue to be able to find it. The Respondent notes that it has not attempted to stand in the way of the Complainant’s requests to cease using the name “B-Boy TV” however finds it in bad taste that the helpfulness it has shown is now employed to establish a kind of guilt on the Respondent’s behalf. The Respondent notes that although it does not continue to use the disputed domain name it is still a company asset and its value to the Respondent’s competitors is considerable. The Respondent speculates that the Complaint is a cynical attempt by the Complainant to kick-start its own website which the Respondent notes has achieved very little in five years of operation. The Respondent states that it recognizes the Complainant’s right to use the name B-Boy TV in the United Kingdom but does not recognize any all-encompassing right to use the term globally, given that it is generic and relevant to many different companies and organizations worldwide.

The Respondent states that on October 15, 2010, the Complainant registered <bboychampionships.co.uk> corresponding to the Respondent’s company’s domain name <bboychampionships.com>, which the Respondent says it has been using for over 17 years. The Respondent notes that the Complainant’s said registration was made after the date that the Complainant first contacted the Respondent to request that the Respondent stop using the name B-Boy TV such that the Complainant knew of the Respondent. The Respondent states that this was an act of aggression towards the B-Boy Championships and that the Respondent can only assume that it was done in the hope that it would gain the Complainant more leverage in an attempt to sabotage the disputed domain name along with a large section of the Respondent’s user base who associate that name with the Respondent’s organisation.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements provided in paragraph 4(a) of the Policy have been satisfied, namely that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

On this topic, the Complainant first cites its rights in the registered trademarks noted in the Factual Background section above. The Complainant states that it is the registered proprietor of these trademarks however the Panel notes that this is not the case. Each of the trademarks is registered in the name of one of the Complainant’s directors, Mr. F. Hendricks and accordingly the Complainant is not the owner of the trademarks on which it seeks to rely for the purposes of this administrative proceeding. Clearly, however, Mr. Hendricks is closely related to the Complainant. This situation has been addressed within the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.8 which provides as follows:

“1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?

Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.”

The Panel respectfully adopts the consensus view. The Complainant in the present case does not provide actual evidence of any license or authorization of the principal trademark holder, nor has the trademark holder been included as a co-complainant. That said, it is clear to the Panel that the principal trademark holder is a director and shareholder of the Complainant such that it is in effective control of the Complainant and indeed took the lead part in all of the correspondence on the Complainant’s behalf with the Respondent The Respondent does not seek to challenge the Complainant on this point. Accordingly, the Panel is prepared to infer the existence of both authorization in respect of the bringing of the present Complaint and a license of each of the relative trademarks by F. Hendricks in favour of the Complainant. For convenience, the Panel will henceforth refer to Mr. Hendricks’ trademarks as “the Complainant’s trademarks”.

The Panel notes that the Respondent is critical of the fact that the registration of the Complainant’s trademarks post-dates the registration of the disputed domain name. On this topic, paragraph 1.4 of the WIPO Overview 2.0 provides as follows:

“1.4 Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP […]”

The Panel respectfully adopts the consensus view. In these circumstances the Panel may proceed to compare the disputed domain name to the Complainant’s trademarks. The Complainant’s trademarks each consist of the term B-Boy TV, whether in stylized format or as a word mark. Disregarding the generic top level domain as is customary in administrative proceedings under the Policy, the Panel is left with the absence of whitespace and of the hyphen in the disputed domain name as the only differences from the Complainant’s trademarks. The Panel does not consider these differences to be material, particularly given the fact that whitespace is not permitted in a domain name for technical reasons and the removal of the hyphen is insufficient to distinguish the disputed domain name from the Complainant’s trademarks. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

The Panel notes that the Complainant also claimed common law trademarks in the names BBOY TV and B-BOY TV. In light of its finding above, the Panel does not require to address this here, although it will revert to this question in its consideration of the second and third elements of the Policy below.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name which is not rebutted by the Respondent. Once such prima facie case is made, the respondent carries the burden of production of evidence on demonstrating such rights or legitimate interests. In the present dispute, the Complainant submits that the Respondent had no rights or legitimate interests in the disputed domain name at the date of its registration and was not then or since commonly known by the disputed domain name. The Complainant also asserts that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name and that the Respondent is using the website associated with the disputed domain name to create the impression that it is in some way connected to or associated with the Complainant and its services when this is not the case. The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon these submissions. The burden of production accordingly shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.

The Respondent’s case is that the terms “BBoy” and “TV” as used in the disputed domain name are generic and indeed there is some support for this proposition in the evidence. As noted in the Factual Background section above, each party uses the term “Bboy” or “B-boy” to refer to breakdancing, a breakdancer or “hip-hop” culture generally such that the Panel may accept that both Parties consider this term to be generic. Furthermore, a brief review of several of the popular online dictionaries, from Collins English Dictionary to Oxford Dictionaries confirms this to be so, one definition for example stating that the word “b-boy” refers to “a young man involved with hip-hop culture”. The abbreviation “TV” for “television” is equally well recognized as a generic term. Accordingly, the Panel finds that there is some force in the Respondent’s submission.

The use of generic/dictionary words or phrases in a domain name is considered in paragraph 2.2 of the WIPO Overview 2.0 as follows:

“2.2 Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?

Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).“

The Panel respectfully adopts the consensus view. In the present case, the Respondent seeks to make out a case under paragraph 4(c)(i) of the Policy that before any notice to it of the dispute, it used the disputed domain name and a name corresponding to the domain name in connection with a bona fide offering of goods or services. In particular, the Respondent states that it adopted the name “B-Boy TV” as a link on its official website at “www.bboychampionships.com” since 2007 in the main menu link to the videos selection. The Panel must be cautious of according this submission any more than limited weight for two reasons. First, the Respondent chose to supply an informal response by email which did not contain the usual certification of completeness and accuracy required by paragraph 5(b)(viii) of the Rules. Secondly, the Respondent did not provide any independent evidence to support its submission such as screenshots taken from the “Wayback Machine”, “www.screenshots.com” or similar. Nevertheless, what weight is accorded to the latter submission can be bolstered by the fact that the Respondent undoubtedly adopted the name “B-Boy TV” no later than February 2010, being a date prior to any notice to the Respondent of the dispute and indeed more than one year prior to the Complainant filing the first of its applications for a registered trademark. That said, for the Panel to be satisfied that the Respondent has any rights or legitimate interests in the disputed domain name it is necessary to consider the other elements set out in paragraph 2.2 of the WIPO Overview 2.0.

First, there is the question of the status and fame of the Complainant’s trademarks. Clearly the Complainant’s registered trademarks are of limited significance as they were neither in existence as at the date of registration of the disputed domain name nor indeed for some time thereafter and could not therefore have had any impact upon the Respondent’s consideration of whether the words “BBOY” and “TV” were generic or had any trademark value. The Panel therefore turns to the status or fame of the Complainant’s alleged unregistered trademark rights. The Complainant’s evidence supporting its claim to unregistered trademarks is extremely scant and does not extend much beyond a general assertion that the Complainant has developed substantial goodwill and reputation in the names BBOY TV and B-BOY TV over the period from 2007 to date. To this, the Complainant adds that its website has over 200 members and 26,000 hits and that its page on the website “www.facebook.com” has 11,729 “likes” along with international posts from Internet users demonstrating global recognition.

In the Panel’s view the evidence presented by the Complainant is insufficient to establish unregistered trademark rights in the names BBOY TV and B-BOY TV. The fact that both the Complainant and Respondent and indeed the various dictionaries use the term BBOY and/or B-BOY as a generic word, as outlined in the Factual Background section above, indicates that coupling such a term with the generic abbreviation “TV” would be unlikely to give rise to particularly strong trademark rights unless there were convincing evidence that the Complainant had established a secondary meaning in that term, such as by way of the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys or media recognition, all of which information is absent here. Furthermore, the Panel notes that the Complainant was only incorporated on June 1, 2012 and no evidence is provided as to how and from which person or entity the Complainant is said to have inherited the goodwill and reputation which the Complainant says dates from 2007. It occurs to the Panel that the registrant of <bboytv.co.uk>, Mr. Hendricks, may have assigned to the Complainant his rights to all and any goodwill and reputation which he may have generated in the alleged unregistered mark by his operation of the website at “www.bboytv.co.uk” between 2007 and the date of incorporation of the Complainant, however, the Complaint itself is silent on this matter.

Secondly, there is the question of whether the Respondent has registered other domain names containing dictionary words or phrases. The Respondent asserts that it has indeed registered other domain names featuring the word “bboy” including <bboy.co.uk>, <bboystore.com>, <bboychannel.com>, <bboyawards.com>, <bboycircle.com>, <bboysource.com>, <bboyeurope.com>, <bboychampion.com>, and <ultimatebboy.com>, although this was again accompanied by no supporting evidence whatsoever, such as for example WhoIs records for the domain names concerned. As the matter is very easy to verify, however, the Panel doubts that the Respondent’s averment is inaccurate in this respect and the registration of such domain names provides considerable substance to the general thrust of the Respondent’s case that, as the Respondent puts it, the disputed domain name was registered as part of a “well-established theme” rather than any selective approach based upon the Complainant’s rights in the name.

Thirdly, there is the question of the Respondent’s use of the disputed domain name. Clearly, until the Parties engaged in correspondence, the Respondent was using the disputed domain name in connection with the generic meaning of the phrase “BBOY TV” which the Panel interprets as video content relative to the hip-hop or breakdance scene. The Complainant considers that the Respondent’s use is challengeable on the basis that the Respondent has not placed material on the website associated with the disputed domain name but has merely used it to redirect visitors to the Respondent’s channel on the website “www.youtube.com”. The Panel does not accept that this constitutes any basis for challenge in the present case. Nor does it mean that the disputed domain name has not been used in connection with a purpose related to its generic meaning. To put it another way, the Respondent could have chosen to host its video content on its own video hosting platform and might have pointed the disputed domain name to such a website rather than to “www.youtube.com” however this would not in the Panel’s eyes give rise to any substantive difference in the Respondent’s entitlement to use the disputed domain name.

In all of these circumstances, the Panel finds that prior to the correspondence between the Parties, the Respondent genuinely used the disputed domain name in connection with the relied-upon meaning and not, for example, to trade off third-party rights in such word or phrase. The Respondent has since changed the current use of the disputed domain name to point to pay-per-click advertisements however these appear on the whole to be consistent with the generic or descriptive meaning of the term “BBOY TV” and as such in the Panel’s view constitute a permissible use of the disputed domain name (see paragraph 2.6 of the WIPO Overview 2.0 on the question of whether parking and landing pages or pay-per-click links may generate rights or legitimate interests in a disputed domain name).

The Panel has also considered, but has been unable to attach any weight to the Complainant’s averments concerning the significance of the fact that the Respondent complied with the Complainant’s request to remove the “B-BOY TV” name both from its website page on “www.youtube.com” and from its own website at “www.bboychampionships.com”. While the Complainant states that these actions demonstrate that the Respondent knew it had no rights or legitimate interests in the disputed domain name, the Respondent vehemently denies this. The Respondent’s contention, which in the Panel’s view is equally plausible, is that the Respondent was merely attempting to be helpful and co-operative.

Furthermore, the Panel considers that there is a third possible reason for the Respondent’s said actions. In posts to the Respondent’s page on the website “www.youtube.com”, the Complainant alleged that the Respondent was engaging in trademark infringement. At least in the first instance, the Respondent was evidently unclear as to where it stood on this matter. For example, the Respondent’s reply to the Complainant’s posting to the said website page dated August 19, 2011, states: “[...] I’m not fully clear about the infringement as we are not trading under the name BBOY TV” [...]”. It may be therefore that the Respondent thought removal of the names from both websites was the prudent course and the Panel does not believe that it would be reasonable to infer anything more than that from the Respondent’s actions.

Accordingly, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name in terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 domain name; or

(ii) you have registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.

In order for the Complainant to make out its case under this element of the Policy, it must demonstrate that the disputed domain name was registered by the Respondent with knowledge of and intent to target the Complainant’s rights in its trademarks. What, if any, rights did the Complainant have in its trademarks at the date of registration of the disputed domain name? Clearly the Complainant’s registered trademarks post-date the creation of the disputed domain name and cannot therefore be taken into consideration. While the Complainant has asserted that it also had unregistered trademark rights in the names BBOY TV and B-BOY TV, for the reasons noted in the previous section the Panel does not consider that the Complainant has established any secondary meaning in these terms.

The Panel must also take note of the Respondent’s clear denial of any knowledge of the Complainant’s rights as at the date of registration of the disputed domain name. As in the preceding section, the Panel cannot accord this anything more than limited weight in the absence of a formal response. That said, when the denial is taken along with the Respondent’s other averments concerning the restricted nature of the Complainant’s online following and with the fact that the Respondent appears to have been independently engaged in making a “theme” of domain name registrations containing the generic word BBOY along with other words, for various bona fide business purposes, the Panel may accept that the Respondent has shown that it was not its intention in registering the disputed domain name to target the Complainant’s rights in any trademark which the Complainant then possessed.

The Complainant submits, in the alternative, that the Respondent should have been aware of the Complainant’s rights by virtue of the Respondent’s obligation in terms of paragraph 2 of the Policy, which the Complainant says requires the registrant of a domain name to carry out due diligence at the time of registration. In the Panel’s view, there are two flaws in the Complainant’s submission. First, the Complainant claims that a simple Google search would have disclosed its rights although it provides no evidence that it would have featured on the search results and if so to what extent. What other kind of diligence might the Respondent have carried out? It is clear to the Panel that had the Respondent conducted a search in the United Kingdom Intellectual Property Office database this would not have disclosed the Complainant’s unregistered trademark rights, the first of which was not filed until more than a year after the registration of the disputed domain name. Secondly and perhaps more importantly, UDRP panels have found, on the whole, that the language of paragraph 2 of the Policy does not necessarily imply a duty on the part of the registrant to conduct extensive due diligence before registering a domain name. Typically, panels have required a higher standard of diligence from sophisticated domain name operators such as those registering large numbers of domains for monetization purposes however the Panel sees no reason to apply such a standard to the present Respondent which does not fall within this category of registrant.

The Complainant suggests that the Respondent would have had knowledge of the Complainant’s rights because the Respondent and the Complainant have a shared past history in that they used to live at the same address in the 1990s. In the Panel’s view, without further evidence, this does not provide proof on the balance of probabilities that the Respondent would necessarily have had any awareness whatsoever of the Complainant’s activities in 2010 or indeed any intent to target those activities. Furthermore, while the Panel accepts that the Complainant may believe that the Respondent’s recent use of the disputed domain name features more typical indicia of cybersquatting, in the Panel’s opinion such use does not on its own demonstrate both registration and use in bad faith as the Policy requires.

According to the Complainant, the present use of the disputed domain name is illustrative of the Respondent’s original motivation in registering it. The Complainant says that it demonstrates that the Respondent must either have intended to disrupt the Complainant’s business, to sell the disputed domain name to the Complainant or a competitor thereof, or indeed to cause confusion which would attract the Complainant’s Internet subscribers to the Respondent’s website. The Panel does not find any such causal link between the present use of the disputed domain name and the Respondent’s intent at the point of registration. The Complainant itself ties the circumstances surrounding the change of use of the disputed domain name to the Complainant’s final email communication with the Respondent and the Panel believes that the proximity of time between the two means it is right to do so. In the Panel’s opinion, the subsequent use of the disputed domain name has no bearing on the reasons why the Respondent originally registered it and the Panel finds the Respondent’s explanations on the latter subject to be entirely plausible for the reasons outlined above.

The Panel must also deal with the Respondent’s case that the Complainant has registered the domain name <bboychampionships.co.uk> as an act of aggression towards the Respondent’s B-Boy Championships. Again, the Respondent made this assertion without supporting evidence and in particular without producing any WhoIs output in respect of the relevant domain name. In the circumstances, the Panel is unable to take this into consideration. The Panel notes that, if the Respondent is correct in its assertion, the Respondent may seek to avail itself of a remedy via an appropriate complaint under the relevant dispute resolution policy; however, the registration of the said domain name is not a matter that has any bearing on the Respondent’s registration of the disputed domain name which is at issue in the present case.

Despite the fact that the Complainant has not proved both registration and use in bad faith on the part of the Respondent in the context of this administrative proceeding, the Respondent is certainly not to be commended for its recent activity under the disputed domain name. If, as the Respondent claims, the disputed domain name is a valuable company asset the Respondent should perhaps consider reflecting upon and revisiting the change of use which it has effected, in the spirit of co-operation and helpfulness that it claims to have shown to the Complainant at an earlier stage in this dispute.

Nevertheless, in all of the circumstances of this case, the Panel finds that the Complainant has failed to prove that the Respondent registered and used the disputed domain name in bad faith and consequently the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Date: November 23, 2012