Fashion Television International Limited has lost it’s attempt to grab the domain name Fashiontv.com in a UDRP basically letting a pending court case in Munich decide the fate of the domain fashion.tv
We wrote about this UDRP when it was filed a couple of months ago
There was a report that Fashion.tv was purchased in 2014 for $125,000 but that does not seem to be correct, according to the facts of this complicated case which has been an ongoing battle between the parties for at least 10 years and the one member UDRP panel of Tobias Zuberbühler was not about to settle it.
Both companies have trademark in different jurisdictions and the panel properly recogizned that this is not a case for a UDRP but for a court
The decision was published in German and I used Google Translate to get the english translation
Here are the highlights:
“Bell Media Inc.”, the proprietor of the mark claimed by the complainant, is a Canadian media company, which operates the program division “Fashion Television” and is part of the Bell Canada Group.
The transmitter “Fashion Television” was first broadcast of a legal predecessor of the complainant on 7 September 2001 in Canada and from 2004 also in Europe.
The respondent is part of a European media company and operates the specialty channel “Fashion TV”.
The program was first broadcast on 30 April 1997 via satellite in France.
The complainant claims to be sublicensee regarding the rights to the Community trade mark FT FASHION TELEVISION.
The respondent is proprietor of the French brand FASHION TELEVISION with priority of 3 April 1997, which was transmitted to the Respondent in 2007 by the founder of the Respondent, Adam Lisowski.
An appeal of the former proprietor of the mark to the complainant, Chum Ltd., against Adam Lisowski for use of the label “Fashion TV” (violation of trademark rights and unfair competition) has been approved by the US District Court, Southern District of New York, in its judgment of 18th April 2002 dismissed.
On 15 May 2014, the Respondent presented at the Office an application for cancellation of the trademark of the complainant for lack of use
On 5 December 2014, the appellant filed before the Regional Court of Munich I filed a lawsuit against the Respondent an injunction of the use of the sign “Fashion TV” and the process is still pending.
The group markets its services to the complainant among others with the domain name (and corresponding web site), which was registered on 25 May 1998.
The disputed domain name was registered on 15 March 1996.
The respondent denied that the complainant has ever licensee of the trademark owner (“Bell Media Inc.”), and thus can claim rights to the trademark complaint FT FASHION TELEVISION claimed (ref. 6 of the complaint response). The complainant did not submit relevant documents, but offered that such documents could be submitted at any time.
In a process such as this, a licensee would be stopped in the complaint his evidence from the license relationship with the proprietor flowing entitlement to assert the appropriate rights
Against this background, the Board has therefore would be rejected because the applicant’s rights in the trade mark claimed is not proven
B. rights or legitimate interest in the disputed domain name
It corresponds to many years of practical and uniform opinion of the appeal panel in UDRP procedures that a complainant must take no full evidence for the non-existence of rights or legitimate interests of Respondent
However, it is up to the complainant, at least prima facie conclusive carried forward and, if appropriate, to demonstrate that appropriate rights or legitimate interests of the Respondent does not appear to exist. After that it is up to the Respondent to provide a corresponding rebuttal of the actual existence of rights or legitimate interests in the disputed domain name (cf.. WIPO Overview 2.0, para. 2.1).
In this case, the Respondent has its own right and an interest in the disputed domain name
The respondent has on their ownership of the French brand FASHION TELEVISION (FR 97,671,868) pointed with priority of 3 April 1997, the four months before the priority date of the alleged licensed to the complainant Community trade mark (11 August 1997) was registered.
It seems anyway plausible that the Respondent the disputed domain name neither registered nor has used in bad faith.
According to the complaint panel present very extensive documentation is here a complex dispute, there are several other issues relating to the facts in the dispute. The Panel notes in this regard suggests that the disputed facts had already been the subject of other legal proceedings (and is still in front of the Munich District Court is pending).
Accordingly, the Panel will assess no further arguments, because this would go beyond the scope of a UDRP procedure.
7. Decision
For the foregoing reasons, the appeal is dismissed.
