DVB Project v. EuroTel SPA

Case No. D2005-1125

1. The Parties

The Complainant is DVB Project, c/o European Broadcasting Union, Le Grand-Saconnex, of Switzerland, represented by BMP Associйs, Switzerland.

The Respondent is Massimiliano Patriarca / EuroTel SPA (“EuroTel”), Lissone, Milan, Italy, represented by Francesco Paola, Italy.

Mr. Massimiliano Patriarca is the owner of the company EuroTel SPA.

2. The Domain Names and Registrars

The disputed domain name <dvb-h.com> is registered with Brandon Gray Internet Services Inc. The disputed domain name <dvb-h.org> is registered with eNom Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2005. On October 26, 2005, the Center transmitted by email to Brandon Gray Internet Services Inc. and eNom a request for registrar verification in connection with the domain names at issue. On October 28, 2005, and on November 3, 2005, Brandon Gray Internet Services Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. On October 28, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response November 24, 2005. The Response was filed with the Center November 22, 2005.

The Center appointed Peter G. Nitter, Zoltбn Takбcs and Anna Carabelli as panelists in this matter on December 15, 2005. The Panel finds that it was properly constituted. Each member of 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.

Respondent has, in the Response, requested a suspension of the administrative proceeding to await the decision on nullity actions pending against the Complainant’s CMT’s Nos. 002795771 and 001770619. See section 6 below regarding this matter.

On December 16, 2005, the Complainant made a supplemental filing, which the Panel received in full on December 19, 2005. On December 20, 2005, the Respondent made a supplemental filing, which the Panel received in full the same date.

4. Factual Background

The domain names <dvb-h.com> and <dvb-h.org> have been registered on December 5, 2003, by an individual named Massimiliano Patriarca. In their November 23, 2005, dated email, EuroTel advised the Center that EuroTel is an entity owned by Mr. Patriarca. While the language of Paragraph 1 of the Rules makes it clear that the Respondent is the holder of the domain name, it has been common by WIPO panelists to accept as a domain name holder for the purpose of the proceeding persons claiming to be the registrants. All communications, including the response and all subsequent submissions have been filed either in the name of EuroTel or by EuroTel themselves, which indicates that the actual registrant of the disputed domain names is EuroTel.

Complainant has registered and owns a large number of DVB trademarks. The DVB mark has been registered inter alia in Switzerland (reg. No. CH 482316), in the US (US 2,818,661), as a Community trademark (CTM 001770619) and as an international trademark (IR 758590), and priority dates of these registrations well predate the time when the disputed domain names were obtained.

Most of Complainants DVB trademarks are registered for scientific and electrical apparatus and instruments and other products in class 9, such as apparatus for recording, transmitting and reproducing sound and images, magnetic recording media, sound recording disks and data processing apparatus (computers) and/or for telecommunications, particularly broadcasting of radio and television programs and other services in class 38.

5. Parties’ Contentions

A. Complainant

Complainant, DVB Project, is an association formed under the laws of Switzerland. Complainant is an industry-led consortium of over 260 broadcasters, manufacturers, network operators, software developers, regulatory bodies and others in over 35 countries committed to designing global standards for the global delivery of digital television and data services. Services using DVB standards are available on every continent with more than 110 million DVB receivers deployed.

The DVB logo can be used only on products which have been registered on the <dvb.org> website belonging to Complainant. Wherever the DVB trademark is used in relation to a product, and thus imply compliance of that product with DVB Standards, the product must be registered with the DVB Project Office by means of a declaration of conformity.

DVB-H is a new specification defined by the Complainant for bringing broadcast services to handheld receivers, which was formally adopted as an ETSI standard in November 2004.

The DVB mark and the domain names at issue, <dvb-h.com> and <dvb-h.org>, are confusingly similar. This allegation is substantiated by the fact that DVB-H is a particular standard led by the Complainant.

The Respondent has no rights or legitimate interests in respect of the domain names.

Respondent’s use of the domain names is not linked to any bona fide offering of products or services. The domain names are used by Respondent only to retransfer Internet users on Respondent’s website, thus creating the erroneous impression that DVB-H would be the identifier of a EuroTel project.

When Complainant applied for a trademark registration of the “DVB” mark, this mark was not generic and not at all known even as an acronym for Digital Video Broadcasting. Now there are a tremendous number of publications relating to DVB, and the mark “DVB” is widely used on products and services. All such publications do, however, refer to Complainant’s technique identified by Complainant’s trademark “DVB”, and the actual use of the DVB mark are made by licensees and users duly authorized by the Complainant for DVB compliant goods or services only.

References to “DVB” to identify products or techniques complying with the DVB standard cannot be taken as evidence that “DVB” have become generic. References to “DVB” always relate to a standard which has been developed and managed by the Complainant.

When Respondent registered the domain names, the Respondent had applied for registration of some of its products on the DVB website. Respondent was therefore aware that “DVB” and “DVB-H” were signs used by the Complainant, as identifying DVB compliant products, when the domain names were registered. Thus the registration of the domain names was made in bad faith.

The domain names are also used in bad faith. Complainant wrote on August 19, 2004, an email to Respondent to discuss how the domain names at issue could be handed over to Complainant. Respondent suggested that the domain names could be transferred if Respondent was granted free membership in Complainant. This was refused by Complainant.

Complainant offered 5.000 Euro for the transfer of the domain names at issue.

Respondent complained about the delay in the registration (for DVB compliance) of two products made by Respondent, and rejected the offer to transfer the domain names.

In an email dated August 22, 2005, Respondent eventually asked for payment of 50.000 Euros plus 4.000 Euros for legal fees for the transfer of the domain name <dvb-h.org>. This offer was presented as a compensation for the transfer of the domain name and for the alleged delay in the registration of Respondent’s products as being DVB compliant. These amounts are clearly in excess of the costs incurred directly related to the domain name.

The domain names are used only to retransfer Internet users to Respondent’s website. It appears therefore that the Respondent intentionally attempted to attract for commercial purposes Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Even if – what is strongly disputed by Complainant – Respondent had suffered any damage because of the alleged delay in the registration of two of its products by the Complainant, Respondent would not be entitled to pressure Complainant by requesting 54.000 Euros for the domain name.

B. Respondent

Respondent is a company with experience in the telecommunications sector at an international level. Respondent builds appliances and systems for digital broadcasting by the broadcasting system called DVB. DVB stands for “Digital Video Broadcasting” and indicates the digital television signal broadcasting system as a whole.

The “DVB” acronym is thus merely descriptive, summarizing the term “Digital Video Broadcasting”. The terms “DVB” and “Digital Video Broadcasting” are descriptive of a technology already in use by the scientific community in the advanced telecommunications sector, and the terms have not acquired a distinctive character by means of its use.

On the contrary, the terms represent generic terms of common practice for the public for whom those products in question are intended, that is to say: both for digital broadcasting equipment manufacturers and the televisions using the digital technique for broadcasting, as well as for any other operator in the digital broadcasting sector or user of the sector.

The terms are perceived in all respects, both by the specialized public and the users, for the video or television digital signal broadcasting technique. Such techniques, internationally used, are not identified by the public with the Complainant in any way.

Documentation produced, published both within and outside the European Union confirms that the relevant public considers, and considered such a term as “DVB” as a generic one at the time of the request for registration. In any case the term has now become one of common usage.

The norms prohibiting the registration as trademarks of signs made up exclusively of generic denominations of products or services or of descriptive indications related to them are to prevent the monopoly of the exploitation of a common expression used to identify a type of product regardless of who may offer it on the market.

The digital video signal transmission system dates back to the early 1990s and the first larger scale industrial applications date back to 1993. The digital video transmission system thus dates back to several years prior to the application date of the trademarks registered by Complainant.

The application of the first of Complainant’s two community trademarks is dated July 24, 2000, and its registration August 9, 2001; in Switzerland the trademark was applied for on January 26, 2000, and registered on March 2, 2001; in the USA the date of the application is July 26, 2000, and its registration March 2, 2004.

Respondent has therefore requested the nullity of the Community trademarks – denominative and figurative – “DVB” and “Digital Video Broadcasting”, registered by the Complainant (reg. no 002795771 and 001770619).

The administrative proceeding can, therefore, be suspended awaiting a decision regarding the application for nullity. Should it not be appropriate to give a suspension the motivations explained in the application for nullity would nevertheless be relevant.

DVB-H represents an evolution of the broadcasting of digital video, following the standards approved by the Official Control Authority, ETSI in November 2004.

The Chamber of Commerce certification and the web pages related to the DVB-H products of Respondent provide evidence of a legitimate interest toward the registration of the contested domain names.

It is not correct that the “DVB-H” industrial application is an invention of the Complainant and that the Complainant may have collaborated with ETSI towards the definition of the standards.

In Respondent’s opinion the cooperative relations between the official bodies, e.g. ETSI, aiming to establish the digital video broadcasting “DVB” international parameters, and the individuals or groups such as the DVB Project that according to their own statutes aim to promote the harmonization of the standards or the diffusion of the digital video broadcasting technique, are to be kept separate.

The existence of collaboration between the Complainant and ETSI does not allow the above-mentioned groups or associations, such as Complainant, to take possession of the terms “DVB” and “Digital Video Broadcasting”.

Respondent has rights and legitimate interests in respect of the domain names.

Respondent refers to the fact that Respondent is a company which produces DVB system broadcasting equipment and therefore had the full right to register the domain names at issue. The domain names are legitimately linked with web pages advertising DVB-H products, besides providing general information on the DVB-H broadcasting system.

Respondent also refers to the fact that many other companies have legitimately registered domain names using the “DVB” suffix.

Respondent has not registered or used the domain names in bad faith.

Respondent has legitimately registered the domain names which were free and purchasable. The fact that the domain names are linked to a web page on which DVB-H products are advertised, proves Respondent’s legitimate interest and good faith.

Respondent has contractual relations with Complainant. The Complainant has failed to comply with the contractual obligations, and has not sent the certifications of compliance of the industrial equipment produced by Respondent. The Complainant furnished some certifications, only after several requests had been made from Respondent, with over eight months delay. Moreover the Complainant has, to date, yet to send the original copy of the certifications. Finally, the Complainant failed to send the certifications for other equipment produced by Respondent and ready to be brought onto the market. This has caused damage to Respondent.

The request of 50.000 Euros in addition to 4.000 Euros as a contribution toward legal expenses was quite conservative, taking into account the damage suffered by Respondent due to the delayed certificates.

The Complainant has failed to submit a significant part of the correspondence between the parties, including correspondence regarding the contractual obligations.

6. Discussion and Findings

6.1 Procedural - suspension

The Respondent has, prior to the commencement of this administrative proceeding, requested the nullity of two community trademarks – denominative and figurative – “DVB” and “Digital Video Broadcasting” registered by Complainant (reg. no. 002795771 and 001770619).

The Respondent has therefore, in the Response, requested a suspension of the administrative proceeding to await the decision of these issues. The Respondent has not indicated when the proceedings regarding nullity would be finalized.

It has been a consensus view in the WIPO UDRP Panel Decisions regarding the first UDRP element that: “If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.”

Further it is the Panels opinion that it is not possible to predict when the nullity action will be finally decided. Under all circumstances these actions may continue for a long time. Even if the Respondent would be successful with these actions, it would not mean that Complainant cannot show rights in the DVB trademark, since he also holds other registrations – valid in a great number of various jurisdictions – not subject to nullity actions.

The Panel has, based on the above, considered the registered trademarks of the Complainant as they exist at present, and has thus not accepted Respondent’s request for suspension of the administrative proceeding, conform the Rules Paragraph18a).

On the other hand, the Panel notes that its decision shall not be construed in anyway to unduly influence a subsequent court case.

6.2 Procedural - further submissions

The first question to be dealt with is whether or not the further submissions filed after the initial Complaint and Response can be allowed. The submissions are not made on the request of the Center or the Panel. The Rules do not provide for the possibility of filing further submissions with the exception of article 12 where it is said that the Panel may, in its sole discretion, request further statements or documents from the Parties. In the present case, the request for a suspension does in the Panels opinion justify further submissions. Thus, the further submissions in this case will be taken into account.

A. Identical or Confusingly Similar

The domain names at issue are <dvb-h.org> and <dvb-h.com>.

Complainant is the owner of a large number of registered “DVB” trademarks in many different countries.

The two domain names at issue are identical if one disregards the suffixes “org” and “com”, and the assessment will therefore be the same for both domain names.

The only difference between the relevant part of the domain name and the trademark is the addition of the element “-h” after the “DVB” element. Even if both domain names include the element “-h”, there is no doubt that the 3-letter combination DVB, which is placed in front, is the dominant part of the domain names.

Based on this, the Panel finds that the domain names <dvb-h.org> and <dvb-h.com> are confusingly similar to Complainant’s DVB mark.

B. Rights or Legitimate Interests

The Complainant has not licensed or authorized the Respondent to use the DVB mark, and the disputed domain names are confusingly similar to the mentioned mark. In those circumstances, the evidential onus shifts to the Respondent to demonstrate that it has some right or legitimate interest in accordance with Paragraph 4 c) of the Policy. Reference is made to Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091. The Respondent has filed a Response, and the question for the Panel is whether the Response demonstrates some rights or legitimate interests in the disputed domain names.

Among others, rights and legitimate interests in the domain names can be proved if Respondent’s use of the domain names is in connection with a bona fide offering of goods or services.

Respondent seems to claim to have a right in the domain names because the term “DVB” is generic, and therefore devoid any protection under trademark law.

Firstly, the Panel is of the opinion that as long as the DVB mark is validly registered for Complainant in a large number of countries, Complainant does have trademark protection. Reference is made to the consensus view regarding the first UDRP element as quoted under the paragraph regarding procedural issues above.

Secondly, the Respondent may lack a legitimate interest in the domain names, even if the term “DVB” should be deemed generic.

The Panel has come to the view that the Respondent has not been using the domain names in connection with a bona fide offering of goods or services, because it uses domain names that are confusingly similar to the Complainant’s trademark applicable to goods of the Complainant’s interest. The domain names serve to attract customers to the Respondent’s site, and do not serve as a descriptor of its products.

The Respondent is not commonly known by the domain names at issue.

Rights and legitimate interest can also be demonstrated if Respondent is making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers.

The domain names are used to retransfer Internet users to Respondent’s principal web site, with no disclosure as to the relationship with the trademark owner.

The Respondent emphasizes that Respondent is a company which produces DVB system broadcasting equipment. Further the Respondent refers to the fact that the domain names are linked to web pages advertising DVB-H products, and that general information regarding the DVB-H broadcasting system is provided on the websites. Respondent seems to conclude, based on these facts, that rights and/or legitimate interest are established per se.

The Panel is of the opinion that the Respondent does not make any legitimate or fair use of the domain names. It seems that Respondent’s intention is to misleadingly divert Internet users by taking advantage of the DVB mark and the products and services marketed by Complainant. There is no reason for Respondent to use the DVB mark and the domain names at issue instead of domain names incorporating e.g. the Respondent’s own company name “EuroTel” or perhaps Respondent’s own marks. See also section C below regarding the issue of commercial gain.

Based on the above the Panel finds that the Respondent has no documented rights or legitimate interest in the domain names at issue.

C. Registered and Used in Bad Faith

The Panel finds it likely that Respondent was well aware of the existence of the Complainant and its trademarks at the time of registration of the domain names at issue. Respondent had applied for registration of some of its products on the Complainant’s website at this time.

The Respondent has tried to sell the domain names to Complainant, who is the owner of the DVB mark, for valuable consideration in excess of out-of-pocket costs directly related to the domain names.

This appears from the correspondence where one of the domain names is offered, by Respondent to Complainant, for a total amount of 54.000 Euros.

Even if the Respondent should be entitled to damages because of Complainant’s breach of contractual obligations, the Respondent’s offer serves in this case as an indication of bad faith.

In addition the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DVB mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web sites or of products and services on Respondent’s websites.

The Panel agrees with the Complainant, who claims that the fact that the domain names are used to retransfer Internet users to Respondent’s website can give the erroneous impression that DVB-H is the identifier of a EuroTel project.

In this case the Respondent has registered two domain names, both of which are confusingly similar to Complainant’s marks. This is not coincidental, and the fact that Respondent not only registered one domain name, but two similar domain names, may be a further indication of bad faith.

The four circumstances listed in Paragraph 4(b) of the Policy are not exhaustive and the Panel can find bad faith registration and use based on other evidence or circumstances as well.

On May 3, 2005, the Respondent emailed the Complainant and offered transfer of the <dvb-org.com> domain name in exchange of “a 5 year eurotel – dvb special membership or equivalent /*open*/”. The Respondent attempted to use its domain name at issue to extort from the Complainant high value privileges that the Complainant never granted to anyone, as well as to use the disputed domain name as an instrument in relation to enforcing alleged damages. In consideration of this Panel these circumstances does not fit into the concept of registering and using domain names bona fide and are indicative of bad faith registration and use.

The Panel thus finds that the domain names were registered and are being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <dvb-h.com> and <dvb-h.org> be transferred to the Complainant.

Peter G. Nitter Presiding Panelist
Zoltбn Takбcs Panelist	Anna Carabelli Panelist

Dated: December 29, 2005