I have been doing quite good with writing my book for YOU all. You all would be proud of me. Accordingly, a case like this would have been an elaborate writing but, the legal issues and discussions are transferred to my book which you all can buy once completed. For now, suffice it to say I was expecting to see a lawsuit by IROKO TV against Afrinolly. (Jason, Michael, what happened? All that noise and nothing?) However, it looks like IROKO gets the complexity of such a lawsuit and are: 1) either doing their homework and trying to deal with the challenge of having such a lawsuit in Nigeria where Afrinolly is based; or they have decided to just forego the lawsuit altogether and go after a seemingly easy cases like the case below.
The opinion of the WIPO Arbitration & Mediation Center staff below, is relatively straightforward to me and I hope for you all, even from a lay perspective. Basically, IROKO wins this case because the other side never responded AND the arbitrator made certain deductive reasoning and assumptions (even though Jason did not have a registered trademark, it is pending) to rule for IROKO TV/Partners. I think it works with a country like Ghana. In Nigeria, where “IROKO” is a common term, someone having IROKO Foods or IROKO cars may yield different results in the courtroom there as opposed to international arbitration. Think Ford Models (Modeling Agency) and Ford the car company. Same name, two distinct product/services so under trademark law whether on the USA, international forefront or Nigeria, a defendant in that situation would arguably prevail.
By the way, folks, if you get served with a lawsuit, YOU RESPOND. If you don’t, then it is an automatic DEFAULT JUDGMENT to the Plaintiff or in this case the Petitioner. Also, in terms of arbitration, basically it is a lot more informal than being in a courtroom. You are NOT in a courtroom. You answer to the Arbitrator who is best described as a “mini-Judge.” Arbitrators are often lawyers ( I used to be one for some years for the BBB) or they are retired judges.
Finally, the opinion in the ruling is unclear whether specific to Ghana, IROKO TV had a trademark registered there. You can register your trademark in your country of origin and be protected there. But, if you step outside of your country it could be an issue if you have not taken the necessary steps to also protect your brand internationally.
There is a recent case I shared with my fashion law audience at my website www.fashionentlaw.com where MTV is sued for $30Million by some licensees for failure to register its trademark in Latin America. The licensees bought the license to use MTV trademarks and logos in Latin America; only to be stopped by others who already registered the trademark. I actually discuss how to register your brand overseas in the MTV example so you might want to check on that article, if interested.
There are many layers to this but you get the whole scoop once I am done with the comprehensive book I am writing just for you guys.
Okeedokee. I am done here.
An excerpt of the opinion follows:
ADMINISTRATIVE PANEL DECISION
Iroko Partners Limited v. Iroko TV Movies
Case No. D2012-0829
1. The Parties
The Complainant is Iroko Partners Limited of Leeds, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Sideman & Bancroft LLP, United States of America (“U.S.”).
The Respondent is Iroko TV Movies of Accra, Ghana.
2. The Domain Name and Registrar
The disputed domain nameis registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2012, the Registrar transmitted by email to the Center its verification response confirming:
(a) the disputed domain name is registered with it;
(b) the Respondent is the registrant of the disputed domain name and providing the Respondent’s contact details;
(c) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration of the disputed domain name; and
(d) English is the language of the registration agreement.
The Center verified that the Complaint satisfied the formal requirements of 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 on April 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 18, 2012. 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.
4. Factual Background
The Complainant claims to be the world’s largest distributor of Nigerian entertainment. It claims to be YouTube LLC’s largest African partner. It also claims to have the exclusive digital and Internet distribution rights for an extensive number of works. From the Complainant’s website, these “works” appear to be motion pictures and television programs, particularly about Nigeria or Ghana.
One of the Complainant’s main distribution channels is the website located at “www.irokotv.com”. That domain name was registered in September 2011 and the website itself launched in November 2011. On that website, the Complainant promotes itself as “iRokotv – Home of Nollywood and Ghanian movies”.
The Complainant provides details of a number of pending and approved trademark applications in Nigeria, the U.S. and for a CTM. None of these appear to be registered.
The Registrar has confirmed that the Respondent registered the disputed domain name on February 9, 2012.
Shortly before the Complaint was filed, the disputed domain name resolved to a website which distributed a range of motion pictures and other video content. This included, amongst other things, Nigerian films over which the Complainant claims exclusive rights.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has 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.
No response has been filed. The Complaint has been served, however, on the physical and electronic co-ordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant does not appear to have any registered trademarks. Insofar as registered rights are concerned, it claims only pending or approved applications. The Panel notes that the Trade Marks Act Chapter 436, 1990, of Nigeria contemplates applications being examined and accepted. Once accepted, they may be opposed and become registered only if no opposition is lodged during the opposition period or, if an opposition has been lodged, it is unsuccessful.
The usual rule under the Policy is that pending, even accepted, applications do not qualify as trademark rights for the purposes of the Policy: e.g., Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994. The Complainant does not provide any information to support the application of any of the exceptions to that rule which some panels have been prepared to recognise.
The Complainant also claims common law rights in the U.S. arising from use. Apart from the evidence of its website at “www.irokotv.com”, the Complainant does not provide evidence about the extent or volume of its use, its revenues under or by reference to the mark or the other usual indicia for establishing a common law reputation in an unregistered trademark: See e.g., the decisions cited in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
As the Complainant points out, however, the term “irokotv” is not descriptive of motion pictures or television programs. In addition, it appears on the record in this case that the Complainant has adopted and commenced using that term several months before the Respondent registered the disputed domain name. Further, as discussed below, it appears likely that the Respondent adopted the disputed domain name with knowledge of the Complainant’s activities under “irokotv”. These factors taken together would be sufficient to give rise to a protectable interest at common law in “irokotv”: See e.g., Cox & Kings India Limited v. Rakesh Sud, WIPO Case No. D2000-0411 and Pacific-10 Conference v. Kevin Lee, WIPO Case No. D2011‑0200.
The second part of the inquiry is that the disputed domain name must be shown to be confusingly similar to the term “irokotv”.
On this part of the inquiry what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
On this question, the addition of the gTLD “.com” to the disputed domain name can be disregarded as simply a functional requirement of the domain name system.
The other difference between the Complainant’s term and the disputed domain name is the addition to the latter of the word “movies”. As the Complainant contends, the addition of this descriptive term does not dispel any potential for confusion. Although it did not concern the use of the term “movies”, the reasoning in Wal-Mart Stores, Inc. v. Anthony Hardy, WIPO Case No. D2007-0255 is applicable here as the disputed domain name combines the Complainant’s claimed mark with the class of goods for which it is known.
Accordingly, the Complainant has established this first requirement under the Policy. . .”
Visit Techloy for the story and to download the ruling by the arbitrator.
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