The Complainant is The British Broadcasting Corporation of London, United Kingdom of Great Britain and Northern Ireland, represented by T&G Law Firm LLC, Viet Nam.
The Respondent is Canh Sat CNC of Rosyse City, Texas, United States of America (the “United States”).
The disputed domain name <bbcvietnamese.org> is registered with Melbourne IT Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2016. On March 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2016.
The Center appointed Andrew Brown QC as the sole panelist in this matter on April 22, 2016. 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 was founded in 1922 and it is an international broadcasting organization. It provides eight national TV channels (BBC One, BBC Two, BBC Three, BBC Four, CBBC, CBeebies, BBC News and BBC Parliament), as well as radio broadcasting, BBC Online and BBC iPlayer. The Complainant also provides services such as news, TV, radio, music and online services around the world. It operates a website at “www.bbc.co.uk” and provides news services in various languages from domain names such as <bbc.com>, <bbcworld.com>, and <bbcworldservice.com>.
The Complainant owns registrations for the trademark BBC in over 53 countries, including Viet Nam. In particular, the Complainant refers to the following registered trademarks in Viet Nam:
|
Trademark |
Registration No. |
Registration Date |
Class |
|
BBC |
10147 |
25/02/1994 |
41 |
|
BBC |
32408 |
25/12/1999 |
09 |
|
BBC |
32409 |
26/10/1999 |
16 |
|
BBC |
10148 |
25/02/1994 |
38 |
The BBC World service radio has broadcast radio programmes in Vietnamese since February 6, 1952. Over the past year, the Complainant has licensed 110 hours of content to Vietnamese TV channels. The Complainant’s exclusive distributor Q Net licenses the channels BBC World News (available since early 2002), BBC Earth (formerly BBC Knowledge, available since January 2015) and BBC Lifestyle (available since February 2014) to residential subscribers in Viet Nam on various platforms.
The Panel is also aware that the registrations for the trademark BBC in 53 countries include registrations in the United States.
The disputed domain name was registered on May 23, 2014 (the “Relevant Date”).
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark because it wholly incorporates the Complainant’s mark, notwithstanding the addition of the generic word “Vietnamese” and the generic Top-Level domain (“gTLD”) “.org”.
The Complainant contends that the Respondent should be considered to have no rights or legitimate interests in the disputed domain name because there is no evidence that the Complainant authorized or otherwise permitted the Respondent to register the disputed domain name, and the Complainant’s rights predate the Respondent’s registration. The Complainant states that the Respondent is not sponsored or endorsed by, or in any other way affiliated with or connected with, the Complainant or any of its subsidiaries or affiliates. The Complainant states that the Respondent has no authority, licence or permission from it to use the BBC trademark. Further, the Complainant contends that the Respondent is not making a bona fide use of the disputed domain name; and that there is no evidence to support that the Respondent has been commonly known by the disputed domain name.
As to registration and use in bad faith, the Complainant contends that the Respondent’s knowledge of the Complainant’s rights in the mark BBC can be inferred from the facts and this supports a finding of bad faith. It contends that because the BBC mark is arbitrary, distinctive and world famous, it is extremely unlikely that an individual would include BBC as part of a domain name for any reason other than to unfairly create an impression of an association with the Complainant. Further, the Respondent is using the website displayed at the disputed domain name for services which are covered by the Complainant’s trademark registrations.
The Complainant also contends that the Respondent has attempted to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as the source of the website or services. It states that the Complainant has registered and is using the disputed domain name to misdirect Internet users to its own website as an official website of the Complainant. By using the Complainant’s trademark BBC on the website displayed at the disputed domain name, the Complainant says that the Respondent has wrongly indicated that the Complainant endorses the Respondent’s website. By publishing articles whose source is the Complainant, the Complainant contends that the Respondent misleads visitors to the site displayed at the disputed domain name into believing that the site is run by, associated with or sponsored by the Complainant. Further, the Complainant contends that the Respondent has inserted various hyperlinks into its website to direct Internet traffic to websites advertising goods and services that are irrelevant to the Complainant.
The Complainant also relies on the fact that the true identity of the registrant has also been hidden; and the Respondent did not reply to the Complainant’s cease and desist letter.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(I) That the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
(II) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(III) That the disputed domain name has been registered and is being used in bad faith.
The Panel accepts that the Complainant has rights in the trademark BBC by virtue of its trademark registrations in 53 countries including in the United States where the Respondent is domiciled and Viet Nam to which the website hosted at the disputed domain name is directed. The Panel is also satisfied that the BBC trademark is very well-known internationally as a result of extensive use throughout the world over many decades prior to the Relevant Date.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. This is because the Complainant’s trademark is entirely subsumed within the disputed domain name; and the descriptive term “Vietnamese” will lead Internet users into thinking that the disputed domain name is a Vietnamese news site put out by or associated with the Complainant. The gTLD “.org” is insufficient to prevent a finding of confusing similarity.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(I) That before notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(II) That the respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(III) That the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent’s use of its trademark and the Respondent is not sponsored, endorsed by, or in any way affiliated with the Complainant or its subsidiaries or affiliates.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has 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 to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) That the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online 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 the respondent’s website or location.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant and its rights in the trademark BBC. The evidence shows that this is a very well-known mark that has been in widespread use internationally beginning in 1922. The Respondent’s address is an address located in the United States so the Respondent will have been aware of the existence of the Complainant through extensive use of the Complainant’s trademark in the United States prior to the Relevant Date. Further, the Panel infers from the inclusion of the word “Vietnamese” in the disputed domain name that the Respondent is familiar with Viet Nam. The Complainant has broadcast news in Vietnamese since 1952, and has had trademark registrations for its BBC mark in Viet Nam since 1994.
(ii) The Respondent’s use of a stylized representation of the letters BBC (at the website hosted at the disputed domain name) in a form closely similar to the Complainant’s use of is trademark evidences that the Respondent knew of the Complainant and its trademark at the Relevant Date.
(iii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” The most cursory trademark or other search in either the United States or Viet Nam or through any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its trademark. See in this regard paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel is also satisfied that the disputed domain name has been used in bad faith. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s BBC trademark as to the source, sponsorship, affiliation, or endorsement of that website. The Respondent has created a likelihood of confusion as:
(i) The Complainant’s screenshots show that the trademark BBC was displayed on the website available at the disputed domain name. In the Complainant’s screenshots, the letters “BBC” are displayed in three red circles with one letter in each circle. The letters BBC are followed by two smaller circles containing the letters “v” and “n”. The Internet Archive shows snapshots of the website available at the disputed domain name on different dates. Some of these snapshots show that the website available at the disputed domain name was displaying the letters “BBC” in three red squares, with one letter in each square. The letters ‘VN” were not included. This is the same way that the Complainant represents its BBC trademark in the headers of its own websites. Internet users would therefore believe that the Complainant is the source of the Respondent’s website, and/or the Respondent is sponsored or affiliated with the Complainant.
(ii) The Complainant’s screenshots show that some of the articles (if not all) posted on the website displayed at the disputed domain name originally came from the Complainant’s official website “www.bbc.com”. Internet users would therefore believe that the Respondent is associated with, or affiliated with, the Complainant.
The Panel finds that the above likelihood of confusion was created for the purposes of commercial gain, as the website displayed at the disputed domain name contained hyperlinks to various advertising websites unrelated to the Complainant.
The Panel is also entitled to draw adverse inferences from the Respondent’s failure to respond to the Complaint.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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 <bbcvietnamese.org> be transferred to the Complainant.
Andrew Brown QC
Sole Panelist
Date: May 6, 2016