national arbitration forum

 

DECISION

 

 

 

Krea Icerik Hizmetleri Ve Produksiyon Anonim Sirketi v. Sherene Blackett / Abstract Holdings International Ltd

Claim Number: FA1303001489266

 

PARTIES

Complainant is Krea Icerik Hizmetleri Ve Produksiyon Anonim Sirketi (“Complainant”), represented by Mert Kaan Gulpinar, Turkey.  Respondent is Sherene Blackett of Abstract Holdings International Ltd, Canada (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ligtv.com>, registered with MONIKER.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Carol Stoner, Esq., as Panelist.

 

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PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2013; and the National Arbitration Forum received payment on March 12, 2013.

 

On March 14, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <ligtv.com> domain name is registered with MONIKER and that Domain Administrator / Original Web Ventures Inc. was the current registrant of the name. MONIKER has verified that Domain Administrator / Original Web Ventures Inc. is bound by the MONIKER registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ligtv.com.  Also on March 19, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Also on March 19, 2013, after the case was commenced, the Registrar notified the National Arbitration Forum that the Registrar had disclosed the wrong Whois information; the correct Whois information listed Sherene Blackett of Abstract Holdings International Ltd, as the registrant. 

 

On April 4, 2013, an email from Sherene Blackett of Abstract Holdings International Ltd informed the Forum that she was the registrant and representative of the domain name. 

 

A timely Response was received and determined to be complete on April 8, 2013.

 

On April 15, 2013, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.

 

           Having reviewed the communications records, the Administrative Panel (the

           "Panel") finds that the National Arbitration Forum has discharged its                               

           responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name

           Dispute Resolution Policy (the "Rules") "to employ reasonably available means                   

           calculated to achieve actual notice to Respondent" through submission of

           Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain name <ligtv.com> be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

  1. Complainant makes the following allegations:

 

Complainant operates a business registered in Turkey which broadcasts television programs including sports events, documentaries, motion pictures, and television series throughout the world. Complainant broadcasts content via satellite, Internet, IP TV, and mobile devices.

 

Complainant broadcasts matches with the Turkish Premier League Football through the LIG TV channel. Complainant is the only provider to broadcast the Turkish Premier League Football matches, also known as “SPOR TOTO SUPER LIG” in the world since 2001. Complainant has broadcasting rights of the Turkish Premier League for the four-year span of 2010 to 2014, a right for which it has paid $321 million.

 

Complainant’s business is based on a member subscription system in which subscribers are granted the ability to watch the broadcast. The system offers broadcasting services of more than 250 channels to over 2 million subscribers.

 

Complainant owns the domain name at <ligtv.com.tr>, and states that the generic top-level domain (“gTLD”) “.com.tr” is available only to trademark owners of the mark, upon which the domain name is based. Complainant owns the LIG TV mark, and registered the trademark with the Turkish Patent Office (“TPO”) (Reg. No. 2001 12344 registered June 25, 2011). See Complainant’s Annex 1. Complainant’s website is the 62nd most visited website in Turkey and has over 10 million visitors a year.

 

Respondent registered the <ligtv.com>  domain name, which is identical to Complainant’s LIG TV trademark. Respondent’s aim in registering the <ligtv.com> domain name was to make a commercial gain. Respondent knew of the fame associated with Complainant’s LIG TV mark and aimed to register the domain name to abuse Complainant’s reputation.

 

Respondent is not commonly known by the disputed domain name, which is used in such a way that fails to demonstrate that Respondent has rights or legitimate interests in the domain name.

 

Respondent operates a website resolving from the disputed domain name that has no content at all, and displays the statement, “THIS DOMAIN MAY BE FOR SALE.” Respondent registered and used the <ligtv.com> domain name in bad faith as it offered to sell the disputed domain name to Complainant for $120,000.

 

 

  1.  Respondent makes the following allegations:

 

Respondent claims that it tried to cooperate and to transfer the domain name to Complainant, but that Complainant refused to accept the transfer. Respondent argued that it had inadvertently registered the domain name <ligtv.com> without knowledge of Complainant’s trademark rights in Turkey. Respondent stated that it irrevocably consented to a transfer of the domain name to Complainant.

 

FINDINGS

 

A. Preliminary Issue: Consent to Transfer

 

The Panel has reviewed documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.”  In this document, Respondent purported to consent to the transfer of the <ligtv.com> domain name.    

MONIKER placed a hold on Respondent’s account after the initiation of this proceeding, and therefore, Respondent could not unilaterally transfer the disputed domain name during the pendency of this proceeding.

 

In a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agreed to transfer the domain name in question to Complainant, the Panel is empowered to forego the traditional UDRP analysis and to order an immediate transfer of the <ligtv.com> domain name.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer).

 

However, here, there is no common request for the domain name to be transferred to the Complainant . Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name, without a decision on the merits by the Panel. 

The “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them.  In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:

 

Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.  However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be [analyzed] along with the findings in accordance with the Policy.

 

Therefore, Panel will not forego the traditional UDRP analysis and order the transfer of the domain names but instead, elects to make findings of fact regarding compliance   with the Policy.

 

B.  Findings of Fact

 

(1)  The domain name <ligtv.com>  registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

 

 

DISCUSSION

 

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant credibly asserted rights in its LIG TV mark through its trademark registration with the TPO (Reg. No. 2001 12344 registered June 25, 2011). See Complainant’s Exhibit 1 of LIG TV’s Trademark Registration Certificate. The panel in Akbank Turk A.S. v. Uctuk, FA1211477 (Nat. Arb. Forum Aug. 14, 2008), stated that the complainant’s trademark registration with the Turkish Patent Office established its rights in the mark, and the complainant did not need to register its mark in the country where the respondent resided and operated.

 

This Panel likewise concludes that, Complainant’s rights in its LIG TV mark are secured through the TPO (Turkish Patent Office), and further, that Complainant is not required to register its mark in Respondent’s country of residence for the purposes of Policy ¶ 4(a)(i).

 

The Panel observes that the <ligtv.com> domain name includes the entire LIG TV mark, aside from the space in the mark and the addition of the gTLD “.com,” and therefore finds that the disputed domain name is identical to Complainant’s mark pursuant to

Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not commonly known by the <ligtv.com> domain name and contends that Respondent has no relationship with Complainant. The Panel observes that the WHOIS information identifies “Domain Administrator / Original Web Ventures Inc.” as the registrant, and concludes that the WHOIS information, combined with Complainant’s contention that Respondent has no relationship with

Complainant, supports a finding that Respondent is not commonly known by the <ligtv.com> domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Complainant’s screenshot of Respondent’s website (See Exhibit 6) contains the statement “THIS DOMAIN MAY BE FOR SALE,” which Complainant argues does not demonstrate Respondent’s rights or legitimate interests in the domain name.

 

The Panel concludes that Respondent does not use the <ligtv.com> domain name in a manner embodying a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

Complainant has met its burden of making a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent has offered no evidence sufficient to shoulder its consequent burden to prove that it does have rights or legitimate interests in the domain name <ligtv.com>. Thus, Policy ¶ 4(a)(ii)has been satisfied.

 

Registration and Use in Bad Faith:  Policy ¶ 4(a)(iii)

 

Respondent’s webpage (See Exhibit 6) resolving from the domain name <ligtv.com> contains nothing more than a message offering the domain name for sale.  This lack of use of the domain name, with no Respondent  explanation, such as for a specific intended use in futuro,  is credible evidence that Respondent registered and used the domain name in bad faith. The panel in Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), held that holding an infringing domain name without making an active use of the resolving website can constitute use in bad faith.

 

This Panel determines that the conjunctive acts of both failing to make any active commercial use of the website and using the website solely as a billboard offering the domain name for sale, constitute conclusive evidence that Respondent  both registered and used the disputed domain name in bad faith, in contravention of Policy ¶ 4(a)(iii).

 

The Panel has also reviewed Complainant’s Exhibit 7, constituting an e-mail sent by Respondent, offering to sell the disputed domain name to Complainant for $120,000.  Panel notes that this offer not only exceeds out-of-pocket costs, but is also an amount somewhat reflective of market value. The panel in Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) stated that the respondent demonstrated bad faith when he requested compensation for the domain name beyond the out-of-pocket costs associated with registering the disputed domain name. This Panel concludes that Respondent also engaged in bad faith registration and use by offering the <ligtv.com> domain name to Complainant  for a price far in excess of  the registration costs associated with the domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ligtv.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Carol Stoner, Esq., Panelist

Dated:  April 29, 2013

 

 

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