WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sky International AG v. WhoisGuard Protected, WhoisGuard, Inc. / Premium Network, LTD / Domain Admin, Whois Privacy Corp.

Case No. D2017-0968

1. The Parties

Complainant is Sky International AG of Zurich, Switzerland, represented by NCTM Studio Legale Associato of Milan, Italy.

Respondents are WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Premium Network, LTD of Victoria, Seychelles / Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.

2. The Domain Names and Registrars

The disputed domain names <skystreaming.cc>, <sky-streaming.mobi>, <skystreaming.mobi> and <skystreaming.org> are registered with eNom, Inc.

The disputed domain names <skystreaming.co>, <sky-streaming.info>, <sky-streaming.link> and <skystreaming.xyz> are registered with NameCheap, Inc.

The disputed domain name <skystreaming.net> is registered with TLD Registrar Solutions Ltd.

The above are referred to collectively as the “Disputed Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2017. On May 16, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On May 16 and 17, 2017, the Registrars transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 28, 2017.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 12, 2017. 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.

On June 7, 2017, in response to a consolidation request in the Complaint, the Center notified the Parties that “there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.” The Center further stated: “The Center will accordingly proceed to commencement and formal Complaint notification on that basis. A copy of the Complaint will be forwarded to the contact information of all identified registrants. The Center will accept a response from any identified registrant who wishes to submit a reply to the Complaint, which will be forwarded to the Panel for consideration when appointed.”

4. Factual Background

Complainant states that it is the owner of the SKY Trademark (defined below), which has been “used since the early Eighties to distinguish one of the earliest services of satellite broadcasting of television and radio content” and is “the most viewed satellite television platform in Europe,” with 25 million subscribers. Complainant states that its “satellite television broadcasting services” are delivered “via a satellite dish and decoder installed at the users’ home.”

Complainant further states that it is the owner of “over 2,900 trademarks focused on the word ‘Sky’ in Italy, in the UK and in many other jurisdictions.” In support thereof, Complainant refers to, and provides evidence to support, that it is the owner of European Union trade mark Reg. No. 010032282 for SKY (filed on June 9, 2011; registered June 15, 2012) for use in connection with, inter alia, “[a]pparatus for recording, transmission, reproduction or processing of sound or images”; and European Union EU Reg. No. 011632213 for SKY STREAM (filed on March 6, 2013; registered November 14, 2015) for use in connection with, inter alia, “set-top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber line (DSL), Internet or other electronic broadcasts.” These trademarks are referred to herein as the “SKY Trademark.”

The Disputed Domain Names were created on June 1, 2015 (<skystreaming.co>, <skystreaming.org> and <skystreaming.net>) and August 24, 2015 (<skystreaming.cc>, <sky-streaming.info>, <sky-streaming.link>, <sky-streaming.mobi>, <skystreaming.mobi> and <skystreaming.xyz>). The Disputed Domain Names <skystreaming.cc>, <skystreaming.co>, <skystreaming.net> and <skystreaming.org> are all used in connection with a website that “appears to allow consumers to stream Sky TV channels at the price of EUR 4.99 per month,” which is “outside any authorization from Sky.” The remaining Disputed Domain Names are used in connection with parking pages that contain “Sponsored Listings.”

5. Parties’ Contentions

A. Complainant

Complaint contends, in relevant part, as follows:

- Each of the Disputed Domain Names is confusingly similar to the SKY Trademark because, inter alia, “[i]t is evident that all the Domain Names incorporate the earlier trademark ‘SKY’ of the Complainant together with the term ‘streaming’, and are almost identical to the trademark ‘SKY STREAM’, one of the trademarks of the SKY family”; the SKY Trademark is “recognizable as such within the disputed domain names”; and “[t]he fact that the Domain Names at issue incorporate the popular SKY trademark coupled with the generic term ‘streaming’ does in no way prevent the risk of confusion.”

- Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because, inter alia, “Respondent has no relationship of partnership or affiliation with the Complainant, was granted no express or tacit authorization or license, and was not otherwise authorized to use the Complainant’s trademarks”; “Respondent is not either the owner of any registered trademarks containing the word SKY”; “Sky has never authorized nor licensed the Respondent to share the TV-content taken from its TV-channels”; and “the word Sky has no descriptive or generic value with regard to TV broadcasting services.”

- Each of the Disputed Domain Names was registered and is being used in bad faith because, inter alia, when Respondent registered the Disputed Domain Names in 2015, Respondent was “certainly aware of the existence of the SKY trademarks which, at that time, were already the subject-matter of numerous registrations and extensively used in Italy (since 2003) and in other European countries (since 1982)”; Respondent is “generating and exploiting confusion with the Complainant’s trademarks”; “Respondents’ choice to adopt for their domain names a composed sign (such as ‘SKY STREAM’) that is part of the Sky family trademarks is clearly the result (and it is no coincidence) of a choice made by someone who was familiar with the Complainant’s trademarks”; and “Respondents has sought to hide their identity through changing the contact information relating to the Domain Names.”

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondents have 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. Policy, paragraph 4(a).

A. Consolidation

Complainant has requested that this proceeding be conducted “on a consolidated basis, on the ground that all of [the Disputed Domain Names], albeit registered in the name of the three different Registrants – two of which are privacy or proxy registration services – are subject to common control.” In support thereof, Complainant notes commonalities among certain websites associated with the Disputed Domain Names, information from historical WhoIs records for the Disputed Domain Names, common contact information in the wWhoIs records for certain Disputed Domain Names, common privacy services for certain Disputed Domain Names, two common registration dates for all of the Disputed Domain Names, common parking pages for certain of the Disputed Domain Names, and common name servers associated with certain Disputed Domain Names.

Section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

Here, the Panel accepts the unrebutted arguments set forth by Complainant and agrees that consolidation would be appropriate because the Disputed Domain Names and/or corresponding websites appear to be subject to common control, and consolidation would be fair and equitable to all parties.

B. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the SKY Trademark.

As to whether the Disputed Domain Names are identical or confusingly similar to the SKY Trademark, the relevant comparison to be made is with the second-level portions of the Disputed Domain Names only (i.e., “skystreaming” and “sky-streaming”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview 3.0, section 1.11.1.

Here, each of the Disputed Domain Names contains the SKY Trademark in its entirety, plus the word “streaming” and, in some cases, a hyphen. The word “streaming” is merely a variation of the word “stream,” which is included in at least one of the SKY Trademark registrations owned by Complainant (European Union trade mark Reg. No. 011632213) and therefore does not distinguish the Disputed Domain Names from the SKY Trademark. Further, the word “streaming” describes the products or services with which the trademark is ordinarily used and, therefore, may lead to user confusion.

As for the hyphen: Numerous previous UDRP panels have stated that “punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity”. Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

C. Rights or Legitimate Interests

Complainant has argued that Respondents have no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has no relationship of partnership or affiliation with the Complainant, was granted no express or tacit authorization or license, and was not otherwise authorized to use the Complainant’s trademarks”; “Respondent is not either the owner of any registered trademarks containing the word SKY”; “Sky has never authorized nor licensed the Respondent to share the TV-content taken from its TV-channels”; and “the word Sky has no descriptive or generic value with regard to TV broadcasting services.”

WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondents to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

D. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the 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. Policy, paragraph 4(b).

Complainant specifically alleges that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy, that is, that “by using the 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 agrees.

With respect to those of the Disputed Domain Names that are used in connection with a website that “appears to allow consumers to stream Sky TV channels at the price of € 4,99 per month” (<skystreaming.cc>, <skystreaming.co>, <skystreaming.net> and <skystreaming.org>), the Panel finds that, under the facts of this case, offering services at websites using the Disputed Domain Names that compete with Complainant – especially services that Respondents appear unauthorized to offer – constitutes bad faith under paragraph 4(b)(iv) of the Policy. As the UDRP panel wrote in RapidShare AG, Christian Schmid v. ivano yura / PrivacyProtect.org, WIPO Case No. D2010-0569: “The use of a complainant’s mark to generate increased Internet traffic to a website (with which that complainant has no connection) which is used to facilitate unlawful activity is, in the Panel’s view, sufficient to constitute bad faith registration and use, even if the circumstances might not fall exactly within any of the examples of bad faith registration and use which are provided at paragraph 4(b) of the Policy.”

With respect to the remaining of the Disputed Domain Names, which are used in connection with parking pages that contain “Sponsored Listings,” numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain name is associated with monetized parking pages that contain links for goods or services related to the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

7. Decision

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 names <skystreaming.cc>, <skystreaming.co>, <sky-streaming.info>, <sky-streaming.link>, <sky-streaming.mobi>, <skystreaming.mobi>, <skystreaming.net> <skystreaming.org> and <skystreaming.xyz> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: July 24, 2017