Broadcaster British Sky Broadcasting Group has failed to convince a three person World Intellectual Property Organization panel that it should get the domain name SkyTravel.com. The defeat is due in part to one of the arbitration panelist’s personal experiences.
Sky operates a travel channel called Sky Travel and owns trademarks related to the name. But the owner of the domain SkyTravel.com, which was originally registered by Ultimate Search and later acquired by the current owner, claimed that it is a generic term dating back to the 1920s. The respondent also has acquired trademarks related to “Sky Travel”. One of the respondent’s directors even subscribes to Sky Travel but swears he was unaware of the Sky Travel brand:
The Response exhibits a declaration by Mr. Taylor, a director of the Respondent, who says he has been a subscriber to the Complainant’s SKY broadcasting services since January, 2001, yet was unaware of SKY TRAVEL as a service or brand name of the Complainant until this Complaint was made, as were two of his colleagues; the Respondent acquired the disputed domain name in 2007 to use as a general descriptive term for travel related materials; the Respondent’s information showed that the term had a long history of use dating back to the 1920s in the United States; and that visitors to the Respondent’s website are predominantly from that country.
One of the panelists’ personal experiences were similar to Mr. Taylor’s. The panel wrote:
For the Panel to have come to a finding of bad faith registration and use of the disputed domain name, the Panel would have had to have concluded that the declaration of Mr. Taylor, to the effect that he and others within the Respondent were unaware of the Complainant’s mark when the Respondent registered the disputed domain name, was false. For one member of the Panel this would have been particularly difficult as he, like Mr. Taylor, has been a subscriber to Sky for many years and was similarly unaware of the Complainant’s Sky Travel channel/trade mark until he received the papers in this case (emphasis added).
