Nominet UK Dispute Resolution Service

DRS 2839

Muppets Holding Company, LLC 

-v- 

Geoff Trading As: c/o Netscalibur UK Ltd - FDD

Decision of Independent Expert

Parties:

Complainant’s Details

Complainant:		Muppets Holding Company, LLC

Country:		USA

Respondent’s Details

Respondent:		Geoff trading as: c/o Netscalibur UK Ltd - FDD

Country:		UK

Domain Name:

muppets.co.uk ("the Domain Name")

1.	Procedural Background:

The complaint was lodged with Nominet on 2 August 2005; hardcopies were received on the same date.  Nominet validated the complaint and notified the Respondent by letter dated 2 August 2005.  An electronic copy of the letter was attached to an email and sent by Nominet to the administrative contact email address and to postmaster@[the Domain Name] on the same date.  The letter to the Respondent advised it that it had 15 working days to respond to the Complaint, that is, until 23 August 2005.  On 24 August 2005 Nominet noted that it had not received a Response and duly invited the Complainant to pay the appropriate fees by 8 September 2005 if it wished Nominet to refer the case to an independent expert for a decision.  The Complainant duly paid the fees on 5 September 2005 for a decision of an expert pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy").  

On 5 September 2005, Andrew Lothian, the undersigned, ("the Expert") informed Nominet that although he was fully independent of both of the parties he had made the acquaintance of the Complainant's representative and had corresponded with him occasionally regarding cases of mutual interest but that otherwise he knew of no reason why he could not properly accept the invitation to act as expert in this case or any other circumstance which might call into question his independence in the eyes of either of the parties.  On 6 September 2005, Nominet drew this circumstance to the attention of the parties, giving them until noon on 7 September 2005 to make any representations if so advised.  In the absence of such representations by the deadline Nominet duly appointed the Expert with effect from 12 September 2005.

2.	Outstanding Formal/Procedural Issues:

The Respondent has failed to submit a response to Nominet in time in accordance with paragraph 5(a) of the Procedure.

Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15(c) of the Procedure provides that " If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration.  This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.  

3.	The Facts:

1.	The Complainant is a Delaware USA limited liability company. 
2.	Since 1969 the Complainant and its predecessors in interest have used the mark MUPPETS in its business of creating and producing programming featuring a number of puppet characters collectively known as "The Muppets" for television, home video, and theatrical release; and associated publications and merchandise.
3.	The Complainant is the owner of the registered trade mark MUPPETS which was registered in the UK Trade Marks Registry in classes 16 and 28 on 10 March 1972 with numbers 988649 and 988650 respectively, and as a Community Trade Mark in classes 3, 9, 14, 16, 18, 21, 25, 28, 29, 30, 32, 38, 41 and 42 on 10 July 2003 with number E2472363.
4.	The Complainant has acquired substantial trading goodwill in the MUPPETS mark by virtue of its well known commercial exploitation and its association with the eponymous characters which have formed the subject of numerous television programmes, films, home entertainment recordings and other merchandise.  The first such television programme broadcast in the UK aired in approximately 1976.  The MUPPETS mark has been supported extensively by advertising and promotional activities.
5.	The Complainant has licensed the MUPPETS mark worldwide for use in connection with a variety of products.
6.	The Respondent registered the Domain Name on 23 August 1998.  As at the date of this decision the Domain Name was not configured for web services.

4.	The Parties’ Contentions:

Complainant (in summary):

1.	The MUPPETS mark has come to be recognised by the general public in the United Kingdom and elsewhere as indicating an association with the Complainant. 

2.	The Domain Name is self-evidently identical and/or confusingly similar to the MUPPETS mark. 

3.	The Respondent does not own any trade mark in respect of the MUPPETS mark, nor is he the owner or licensee of the goodwill in the mark. 

4.	The Respondent's WHOIS address appears to be the former address of Netscalibur UK Limited. This is evidence of abusive registration pursuant to paragraph 3(a)(iv) of the Policy.  The Complainant has been informed by Claranet Limited that FDD was a domain name registration service which was acquired by Netscalibur which in turn was subsequently acquired by Claranet. 

5.	Although the Domain Name is being passively held, this is insufficient for the Respondent to avoid a finding of abusive registration. The MUPPETS mark has a strong reputation and is widely known.  There is no evidence whatsoever of any actual or contemplated good faith use by the Respondent of the Domain Name; had he wished to use the Domain Name for a fan site he could just as well have registered muppetsfans.co.uk or similar.  The Respondent has taken active steps to conceal his true identity by providing and failing to correct false contact details in breach of his registration agreement with Nominet.  It is virtually inconceivable that the Respondent did not know at the time of registration that by registering the Domain Name he would be blocking the Complainant from using it.  Given the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be an infringement of the Complainant's Rights.

6.	The Complainant wished and still wishes to use the Domain Name for its own website for various commercial uses. 

7.	In support of its position, the Complainant refers to Unilever plc v David Parker (DRS 2335), a similar case of passive holding, where the name or mark relied upon was the PEARS trade mark.  The Complainant submits that the MUPPETS name is probably even more widely known than the PEARS name.

8.	The Complainant's affiliate wrote to Claranet on 10 February 2005 requesting transfer of the Domain Name but no response was received.  On 18 March 2005 the Complainant's solicitors telephoned Claranet.  Mr McGeorge of Claranet indicated that Claranet had already written to the person whom they believed might be the owner of the Domain Name and that if no response was received from him by 31 March 2005 then Claranet would transfer the Domain Name to the Complainant.  The Complainant heard nothing further from Claranet after the deadline had expired.  In a further telephone call between the Complainant's solicitors and Claranet on 7 April 2005 Claranet stated that there were a few complications to iron out before the Domain Name could be transferred.

9.	In a telephone conversation of 8 April 2005 between Claranet and the Complainant's solicitors Mr McGeorge of Claranet stated that he suspected that the registrant of the Domain Name was one of the former directors of Netscalibur for whom Claranet had a postal address in Portsmouth.  No reply had been received by Claranet to the letter which they had written to that address.  Claranet conceded during this conversation that as successors in title to Netscalibur they were technically the owners of the Domain Name and that they agreed to the transfer.  

10.	The Complainant believes that following communications between Claranet and Nominet, Claranet was informed by Nominet that the Domain Name could only be transferred pursuant to a complaint under the DRS.  Nominet's Matthew Brown subsequently confirmed this to the Complainant's solicitors.

11.	The Domain Name has been registered and/or used in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant's Rights.

Respondent:

The Respondent has not responded.

5.	Discussion and Findings:

General

In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

Paragraph 1 of the Policy provides that Rights "includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".  Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or term is identical or similar to the Domain Name.

Complainant's rights in the mark 'MUPPETS'

The requirement to demonstrate Rights under the Policy is not a particularly high threshold test.  Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.  The Complainant asserts that it is the proprietor of two registered trade marks in the UK and one Community trade mark for the word 'MUPPETS', the earliest being registered in 1972, and has submitted evidence of this in the form of print outs from the UK Patent Office website.  In these circumstances, the Expert finds that the Complainant has Rights in the name or mark 'MUPPETS'.

Are the Complainant's rights in the mark 'MUPPETS' wholly descriptive of the Complainant's business?

The Complainant is in the entertainment business.  The Expert finds that the mark MUPPETS is not descriptive in whole or in part of such a business.

Is the mark in which the Complainant asserts Rights identical or similar to the Domain Name?

The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic.  This leaves a comparison between the mark 'MUPPETS' and the third level part of the Domain Name 'muppets'.  On this comparison, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name.

Abusive Registration

Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-

	"a Domain Name which either:

i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights."

The Complainant's submissions cover a number of grounds:- (i) Independent verification that the Respondent has given false contact details to Nominet; (ii) No evidence of actual or contemplated good faith use of the Domain Name; (iii) The Respondent has taken active steps to conceal his true identity by providing and failing to correct false contact details in breach of his registration agreement with Nominet; (iv) It is virtually inconceivable that the Respondent did not know at the time of registration that by registering the Domain Name he would be blocking the Complainant from using it; and (v) It is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be an infringement of the Complainant's Rights.

The Complainant's first and third submissions are directed to paragraph 3(a)(iv) of the Policy.  Paragraph 3(a)(iv) provides one of the non-exhaustive factors which may be evidence that the Domain Name is an Abusive Registration, namely where "It is independently verified that the Respondent has given false contact details to us [Nominet]". The Expert does not accept that Nominet or the Expert has received independent verification that the Respondent provided false contact details.  On the contrary, the information from Claranet as set out by the Complainant indicates that the true Respondent is likely to be one of the former directors of Netscalibur UK Limited.  On the Complainant's submission, the WHOIS address appears to be the former address of that company.  It seems reasonable to infer from this that the Respondent gave accurate contact details at the time of registration (or perhaps updated these at the time when FDD was acquired by Netscalibur) but failed to change them thereafter to keep pace with the various corporate transactions which followed.  

The Expert is not satisfied that the Respondent has taken active steps to conceal his true identity.  It seems more likely that the Respondent was rather casual about how he completed the registrant field when registering the Domain Name and that he simply did not amend or update the contact details thereafter.  While, as the Complainant rightly points out, this puts the registrant in breach of his registration agreement with Nominet, that is a matter for Nominet and in itself is insufficient to demonstrate Abusive Registration.

The remainder of the Complainant's submissions, with the possible absence of a reference to blocking, do not fall within the non-exhaustive list of factors provided by the Policy which may constitute Abusive Registration.  The reference to blocking relates to the Complainant's assertion that it is virtually inconceivable that the Respondent did not know at the time of registration that by registering the Domain Name he would be blocking the Complainant from using it.  Paragraph 3(a)(i)(B) of the Policy calls for circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights.  It is clear that this paragraph requires a degree of intent on the part of the Respondent to be shown - the blocking which has taken place must have been the Respondent's primary purpose in making the registration.  It is clear that the Complainant cannot make out a case under this particular paragraph since nothing is known of the Respondent's intent and the Expert does not believe that a primary intention to block the Complainant can be inferred from the mere fact that the registration was effected.

The above paragraphs considered by the Expert are, of course, non-exhaustive factors.  Are the circumstances put forward by the Complainant otherwise sufficient to demonstrate Abusive Registration?  In order to do so, they would have to reveal that the Domain Name was registered in a manner which took unfair advantage or was detrimental to the Complainant's Rights, given that there has been no use of the Domain Name since registration.  In support of such a contention, the Complainant asserts that the MUPPETS mark has a strong reputation and is widely known, that there is no evidence whatsoever of any actual or contemplated good faith use by the Respondent of the Domain Name, that it is virtually inconceivable that the Respondent did not know at the time of registration that by registering the Domain Name he would be blocking the Complainant from using it and that accordingly, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be an infringement of the Complainant's Rights.

The Complainant points to the PEARS case, Unilever plc v David Parker (DRS 2335) as a guide in respect of the Complainant's reasoning.  The Expert in that case was himself guided by the decision of the Appeal Panel in the case of Thomas Cook UK Limited v. WhitleyBayUncovered (DRS00583).  In both of these cases, the expert/Appeal Panel took the view that given the extent and renown of the complainants' trade marks, it would have stretched credulity beyond breaking point to suggest that the respondents did not know of the trade marks in question when they registered the respective domain names.  The Expert believes that a similar stretching of credulity would be required in the present case.

There was no evidence of actual use in the cases noted above, as there has been no use in the present case.  Nevertheless, the expert/Appeal Panel considered that it was difficult to conceive of any use which could be made by the respondents of their respective domain names which would not be unfair to the complainants.  A finding of Abusive Registration was made in each case.  The present case is very similar - it is reasonable to infer that the Respondent either intended to target the Complainant and its trade marks in some way or perhaps that the Respondent proposed to set up a tribute site. The Complainant makes specific reference to the latter possibility and seeks to dispose of this by indicating that such a fan site could have used an alternative name, such as muppetsfans.co.uk or similar. 

It seems to the Expert that it is worth contemplating the position had a fan or tribute site been the purpose of the registration. Would such a tribute site constitute an Abusive Registration?  In the case of Hanna-Barbera Productions, Inc -v- Graeme Hay (DRS 00389) the Appeal Panel was called upon to consider whether the domain name scoobydoo.co.uk, then used by a fan of the eponymous cartoon character and associated television programmes, was being used fairly as a tribute site in terms of the DRS Policy Version 1 (which applied to disputes filed between September 2001 and 24 October 2004).  The Panel stated:

The Panel is unanimous in taking the view that…such a use as the Respondent has made of the Domain Name cannot be fair. Impersonation can rarely be fair…The risk is a present risk and arises both from what the Respondent has done and will, to a greater or lesser extent, continue to do, if permitted to retain the Domain Name. 

On balance of probabilities, the Expert considers that even if the Respondent's purpose in registering the Domain Name was to set up a similar tribute site, an expert would have taken the view that the Respondent's use of the Complainant's mark without adornment or qualification constituted just such impersonation and consequently would have found that the Domain Name was an Abusive Registration.  

In these circumstances there is no reasonable explanation of which the Expert can conceive for the Respondent's registration of the Domain Name and the Respondent has chosen not to submit a response which might have contained such an explanation.  Given the strong reputation of the Complainant's MUPPETS mark, and the lack of reasonable explanation for the registration of the Domain Name, the Expert concludes that the Domain Name does constitute an Abusive Registration even if it is not presently being used by the Respondent.  In reaching this conclusion, the Expert has been mindful of the provisions of paragraph 3(b) of the Policy which states that failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.  In this case it is not the failure to use which demonstrates Abusive Registration but the fact that the Expert has concluded that any use would be likely to infringe the Complainant's Rights and consequently that the Domain Name was registered in a manner which took unfair advantage of and was unfairly detrimental to those Rights.

6.	Decision:

The Expert finds that, on the balance of probabilities, the Complainant has Rights in a name or mark which is identical to the Domain Name and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert therefore directs that the Domain Name be transferred to the Complainant.

13 September, 2005
Andrew D S Lothian