The Complainant is Sky International AG, British Sky Broadcasting Group plc of United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Quinn Emanuel Urquhart & Sullivan, LLP, United States of America.
The Respondent is Rafael Rodrigo do Nascimento of Sao Paulo, Brazil / Privacy Protection Service Inc d/b/a PrivacyProtect.org of Queensland, Australia.
The disputed domain name <skyeletronicos.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2014. On November 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2014, 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 November 27, 2014 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 December 3, 2014.
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 December 5, 2014. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 25, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 29, 2014.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 14, 2015. 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 owns the following trademark registrations, among others:
|
Registration No. |
Trademark |
Country/ Region |
Class |
Registration Date |
|
819337161 |
SKY (stylized) |
Brazil |
09; 35; 45 |
December 29, 1998 |
|
820443590 |
SKY (stylized) |
Brazil |
09; 35; 45 |
December 23, 1997 |
|
829045287 |
SKY (stylized) |
Brazil |
09 |
November 16, 2010 |
|
EU000126425 |
SKY |
European Union |
09; 16; 38; 41; 42 |
September 24, 1998 |
|
EU000128181 |
SKY NEWS |
European Union |
09; 16; 38; 41; 42 |
June 15, 1998 |
The Complainant owns the following domain names:
|
Domain Name |
Registration Date |
|
<sky.com> |
March, 2000 |
|
<sky.com.br> |
January 2007 |
The disputed domain name <skyeletronicos.com> was registered on September 24, 2014.
The Complainant argued the following:
-That it operates a pay television service that broadcasts a wide range of TV channels.
-That it develops products and innovates technology in the TV, computer and telecommunications industries.
-That it has used SKY as part of a company name, as a trademark and as a house mark for decades.
-That it has spent a large amount of financial resources on advertising its SKY trademark.
-That it offers for sale branded electronic accessories.
-That it has used its SKY brand to cover television entertainment services, and related electronic products in places such as Brazil (with Sky Brasil), Mexico (with Sky Mexico), Germany (with Sky Deutschland) and Italy (with Sky Italia), among others.
-That since 1996, the Complainant’s Brazilian licensee (hereinafter “Sky Brasil”) has been using the trademark SKY in Brazil, and that Sky Brasil has currently over five million customers, being the second largest television service in Brazil.
-That the SKY trademark is well known in Brazil and that the Complainant owns over 2,500 applications and registrations for SKY and SKY formative marks around the world.
-That the disputed domain name is confusingly similar to the Complainant’s SKY trademark, as it incorporates said trademark in its entirety.
-That the addition of the words “eletronicos”, which means “electronics” in Portuguese, adds no distinctiveness to the disputed domain name.
-That where the disputed domain name contains the identical mark combined with a generic word or term, the addition of the generic word or term neither renders the disputed domain name dissimilar from the Complainant’s mark nor removes or dilutes the likely confusion that arises from the disputed domain name.
-That the Respondent does not hold any intellectual property rights over any trademark containing the term “Sky”.
-That the Complainant has not authorized any third party to identify itself as “Sky” or to use the SKY trademarks.
-That the Respondent, or any business that he could be affiliated with, is not commonly known by the disputed domain name.
-That the registration of a disputed domain name that is confusingly similar to the trademarks of an unrelated third party constitutes sufficient evidence of bad faith registration and use.
-That as of October 14, 2014, the disputed domain name resolved to a web site offering various electronic products for sale.
-That the Respondent’s web site was showing Sky Brazil’s physical address, phone number and taxpayer registration ID without authorization in a deliberate attempt to create confusion regarding the source of the products offered and to profit from the goodwill associated with the SKY trademark, and that this attempt to confuse customers is evidence of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name 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.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all (or some) of the Complainant’s reasonable allegations (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
The Complainant owns several trademark registrations in different countries of the world, including the UK, where the Complainant is domiciled, and Brazil, where the Respondent lives (according to the evidence on the record, which has not been commented on, or contested by the Respondent).
Since 1996, SKY Brasil has been using the trademark SKY in Brazil. According to the Complainant, Sky Brasil has over 5 million customers, and is the second largest television service in Brazil. This assertion has not been contested by the Respondent.
The Complainant claims that as a result of Sky Brasil’s marketing, advertising and promotional activities, the SKY trademark is well-known in Brazil, and has been recognized as such by the Instituto Nacional da Propriedade Industrial (INPI) in a litigious matter. These assertions have not been rebutted by the Respondent.
The disputed domain name <skyeletronicos.com> is confusingly similar to the Complainant’s trademark SKY, because it entirely incorporates said trademark.
The addition of a generic term such as “eletronicos” (which means “electronics” in Portuguese) has little or no effect on the confusing similarity between the disputed domain name and the Complainant’s trademarks, due to the fact that the mere addition of generic or descriptive terms does not prevent the likelihood of confusion among them (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Lilly ICOS LLC, v. Abadia Distribution, WIPO Case No. D2005-0449; and The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664).
The addition of the generic Top-Level Domain (gTLD) “.com” is immaterial for purposes of assessing confusing similarity. To carry into effect the confusing similarity analysis, the gTLD “.com” should not be taken into consideration, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini WIPO Case No. D2000-0541).
The first element of the Policy has been met.
Paragraph 4(c) of the Policy sets forth the following examples as circumstances in which the Respondent may have rights to, or legitimate interests in the disputed domain name:
(i) Before any notice to the Respondent of the dispute, the use by the Respondent 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) The Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) The Respondent is 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.
According to the evidence filed by the Complainant, on October 14, 2014, the disputed domain name resolved to a website offering various electronic products for sale.
Considering that the brand SKY is made of a word that exists in the English language, and which is relatively commonly used in said language, under normal circumstances the Respondent could have argued that he was engaged in a bona fide use, consisting on the sale of electronic products.
However, the fact that the trademark SKY has been widely used and advertised in different countries, including Brazil, that it is the second largest supplier of television services in said jurisdiction, and that it has been found to be a well-known trademark by the local intellectual property authorities (facts which have not been rebutted by the Respondent), proves that the SKY brand has an actual distinctive character, and constitutes a trademark recognized by the Brazilian public.
These facts also make it clear that the Respondent, being a Brazilian resident according to the Respondent’s own declaration of his address when registering the disputed domain name, knew or should have known of the existence of the trademark SKY.
The evidence that clearly shows that the Respondent had actual knowledge of SKY Brazil (and the trademark it uses), is the information displayed on the web page to which the disputed domain name resolves. According to the evidence filed by the Complainant, and not contested by the Respondent, said site comprised the physical address, phone number and taxpayer registration ID of SKY Brazil. This evidence also proves that the Respondent does not have any rights to, or legitimate interests in the disputed domain name, because he has not been engaged in a bona fide offering of goods or services and is not 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 at issue.
The inclusion of this data in the Respondent’s web site suggests that the Respondent intended to mislead Internet users, trying to create the impression that his site was the Complainant’s site, or that he and/or his site were authorized by, associated to, or sponsored by the Complainant (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
Nothing in the record suggests that the Respondent has been commonly known as <skyeletronicos.com>.
Therefore, the second element of the Policy has been met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.
The evidence filed by the Complainant, showing that the Respondent displayed on his web site the physical address, phone number and taxpayer registration ID of SKY Brasil, proves that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the Respondent’s web site. This conduct constitutes bad faith registration and use according to paragraph 4(b)(iv) of the Policy (see Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127).
The fact that the trademark SKY has been declared well-known by the Brazilian authorities reinforces the argument that the Respondent’s incorporation of a well-known trademark pertaining to a third party with whom the Respondent has no relationship constitutes opportunistic bad faith (see, mutatis mutandis, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The third element of the Policy has been met.
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, <skyeletronicos.com> be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: January 28, 2015