Nominet UK Dispute Resolution Service

DRS Number 04293

Parties: Mattel, Inc. v Domain Administration Limited

Decision of Independent Expert

1.	Parties

Complainant:	Mattel, Inc.
Country:           USA

Respondent:     Domain Administration Limited
Country:            New Zealand

2.	Domain Name

fisherpice.co.uk

This domain name is referred to below as the "Domain Name".

3.	Procedural Background

The Complaint was lodged with Nominet on 14 December 2006. Nominet validated the Complaint on that date and notified the Respondent. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 12 January 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (“the Policy”).

Sallie Spilsbury, the undersigned (“the Expert”) has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.

4.	Outstanding Formal/Procedural Issues 

Under Paragraph 5a of the Dispute Resolution Service Procedure (“the Procedure”) the Respondent was required to submit a Response to the Complaint to Nominet by 10 January 2007. The Respondent failed to do so.
Paragraph 15b of the Procedure provides as follows: 

If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
It is the view of the Expert that there are no exceptional circumstances relevant to this matter. The Expert’s decision will be based on the Complaint and the Policy and Procedure.

5.	The Facts

The Complainant

The following information about the Complainant is available from the Complaint and its annexes (and is not disputed by the Respondent).

The FISHER-PRICE brand is a well known young children's toy and early learning brand which began in 1930 in the USA. The Complainant acquired the FISHER-PRICE brand and business via a merger in 1993. Since around 1997, the Complainant decided to brand all of its infant and pre-school products under the FISHER-PRICE name. The Complainant has made significant use of the FISHER-PRICE name in the UK, including what is described in the Complaint as “significant advertising, marketing and public relations expenditure” (further details are not supplied). The Complainant is the registered owner of over 20 "fisher price" domain names, for example: fisherprice.com; fisherprice.net; fisher-price.com; fisher-price.net. These domain names are used by the Complainant to provide information about its products, child development and online games for children.

The Complainant has a number of registered trade marks for FISHER-PRICE with effect in the UK. These include, 

• Community Trade Mark number 169,748 (filed 1 April 1996) registered for a wide variety of goods and services
• UK trade mark number 1,467,697 (filed 31 October 1994 and renewed 3 September 2004) registered for items of eyewear in class 9.

Printouts from the OHIM and UK trade marks databases showing these registrations are exhibited at Annex 2 to the Complaint. They confirm that the Complainant is the registered proprietor of the trade marks.

The Respondent

A Nominet WHOIS search shows that the Domain Name was registered by the Respondent on 30 July 2005.

The Respondent’s status is given as a non-UK corporation.

The Complaint states that the Domain Name is being used as part of a “click-through” commission arrangement. This enables owners of "unused" domains to gain revenue from click-through commission whilst domains are "parked" with a third party. The website displayed at the Domain Name rotates through a number of different formats. These, or at least a section of these (3 in total), are included as screen captures in Annex 3 of the Complaint. Each of the screen captures makes reference to Fisher Price toys in addition to other goods and services from third parties. If the link to Fisher Price toys is clicked the user is then taken to a further list of links, some of which are similar to the Complainant’s business. This is discussed further in section 6 of this decision.

The Complainant is also pursuing a separate Nominet complaint against the same Respondent in respect of the domain names hotwheel.co.uk and hotweels.co.uk (together called “the Hotwheel Complaint” in this decision for ease of reference). The Complaint document in this matter states that the rights relied on in the Hotwheel Complaint are different from those at issue in this current matter and the Hotwheel Complaint is being decided by a different Expert. At the time of finalising this decision the Expert in this matter has no information about the outcome of the Hotwheel Complaint and will reach her decision independently of it.

6.	The Parties’ Contentions

Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, 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

Rights

The Complainant relies on the following as evidence that it has rights in the FISHER-PRICE brand for the purposes of the Policy:

(i)	The registered trade marks for the FISHER-PRICE brand, examples of which are annexed to the Complaint, and
(ii)	The unregistered rights generated through the length of and extent of trade in the UK under the FISHER-PRICE brand.

The Complainant submits that the Domain Name is similar to the FISHER-PRICE brand for the purposes of the Policy. It supports its position by pointing out that the Domain Name varies from the Complainant's Rights only by virtue of the omission of a hyphen and the deletion of the letter "R" from the "PRICE" element of the Domain Name. The Complainant believes that the omission of the hyphen is irrelevant, and that the deletion of the letter "R" makes the Domain Name a clear misspelling of FISHER-PRICE.

Abusive Registration

The Complainant asserts that the Domain Name is an Abusive Registration in the hands of the Respondent for the following reasons. 

The Complainant contends that the Respondent's use of the Domain Name unfairly disrupts the business of the Complainant. The website hosted at the Domain Name contains a large number of click-through links to third party websites. Some of the click-through links are operating in broadly the same field as that of the Complainant, and are offering competing goods. Screen captures showing the webpages reached through some of the click-through links as at 2 November 2006, are included at Annex 5 to the Complaint. They include general toy outlets apparently selling a wide range of toys and games, including, but not limited to, those produced by the Complainant.

There are other links on the website at the Domain Name which are more "adult" in nature. Examples of some of these are included at Annex 6 to the Complaint. The Complainant states that it finds links to "Videochat", "Meet hot single Men & Women free" and "HornyMatches.com" particularly concerning given the area of business in which the Complainant operates, and to which its goods are directed. Furthermore, the Complainant notes that subsequent click-through links (i.e. webpages accessible by clicking on a link contained on one of the initial click-through pages) contain links to websites such as hornynakedfemales.com, forcedfantasies.com and escortthreesome.co.uk. A screen capture showing the webpage with links to these links is included at Annex 7 to the Complaint. 

As a market leader in the infant to pre-school toy market, the Complainant states that it enjoys an enviable reputation built up over many years of trading. The Complainant's target market is primarily young children, and the parents of young children, and the detriment which the Complainant could suffer by the association of its FISHER-PRICE brand with the adult content of the websites, products and services that are referred to in Annexes 6 and 7 of the Complaint could cause it to suffer loss and damage to its reputation, and also to the trust parents feel able to place in the Complainant and its FISHER-PRICE brand. 

The Complainant also contends that circumstances indicate that the Respondent’s use of the Domain Name was designed to confuse people into believing that the Domain Name was registered to, or otherwise associated with, the Complainant. The Complainant believes this to be the case because a number of the click-through links contained on the website at the Domain Name are to pages containing competing products, or at least products within a related business area to that of the Complainant. The screen captures contained at Annex 3 to the Complaint demonstrate that the primary links on the website are to "Fisher Price Toys", "Ride on Training", "Fisher Price Toy", "Toy Store", "Tea", "BirthdayGift", "Toy Game", "Barbie Doll", and "Toy Doll". 

The Complaint goes on to submit that not only does the reference to the Complainant's brand reinforce any association between the Respondent and the Complainant's business in the mind of the consumer, but if a consumer were to click on to one of the "FISHER-PRICE" related links, they would find that the majority of the sponsored links they are presented with have nothing to do with the Complainant's business. To the extent that some of the links are related to the sale of FISHER-PRICE products, the consumer is taken to the site via a series of sponsored links. This means that the Respondent is using the Domain Name so as to benefit, or attempt to benefit, from the Domain Names' close association with, i.e. a misspelling of, the Complainant's Rights. The Complaint contends that such use amounts to an Abusive Registration under the Policy. 

The Complainant also submits that the Respondent is engaged in a pattern of domain names registrations in which the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights. It submits that the Domain Name is part of that pattern. A list of the co.uk domain names owned by the Respondent is included at Annex 9 to the Complaint. The Expert counts 168 domains in the list. Not all of the 168 domains listed are similar to well known marks but a significant number of them are.

The Complaint takes up examples of domain names owned by the Respondent which the Complainant feels incorporate or are very closely related to third party registered trade marks or names. The illustrative domain names are: 

essexpolice.org.uk 
continentalairline.co.uk 
debnahms.co.uk 
souther-electric.co.uk
egginsurence.co.uk 
capitalonemortages.co.uk 

WHOIS searches for each of these illustrative example domains are included at Annex 10 to the Complaint confirming that the Respondent has registered each of these domain names. Also exhibited are screen captures of the websites currently operating at each of the domains. These are all identical in overall form to the website operated at the Domain Name that is the subject of this complaint.

The Complainant's lawyers have conducted a search of the UK and Community trade mark registries and confirm that the Respondent has no registered rights to these names. 

The list at annex 9 to the Complaint includes other examples (not apparently the subject of checks by the Complainant). These include:

Cragghoppers.co.uk
Abbeey.co.uk
Clairesaccsesories.co.uk
Fenick.co.uk
Britishlibary.co.ukaaarouteplanner.co.uk

Respondent

The Respondent has made no submissions.

7.	Discussion and Findings:

General

Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, 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.

The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy). In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent’s non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure). There are no exceptional circumstances to justify the Respondent’s failure to submit a Response and the Expert is accordingly able to draw such inferences as may be appropriate.

Complainant’s Rights

Rights are defined in clause 1 of the Policy as including but not limited to “rights enforceable under English law. 

The Complainant’s Rights

The Complainant is the proprietor of at least 2 trade marks covering the FISHER-PRICE mark. The Complainant clearly therefore owns Rights in the FISHER-PRICE mark for the purpose of the Policy. Even if it did not own registered trade marks the Expert finds that the brand is sufficiently well known in connection with the sale of toys and games to have generated unregistered rights in the goodwill associated with the brand in the UK. The unregistered rights would also be sufficient to establish Rights under the Policy.

The next question is whether the FISHER-PRICE brand in which the Complainant has Rights is sufficiently similar to the Domain Name (fisherpice) to invoke the Policy. In the view of the Expert it is. The similarity is striking both visually and aurally. The dominant components of the Complainant’s mark are the words “fisher” and “price” in combination. The Respondent’s omission of the hyphen in the Domain Name is therefore unlikely to displace the association of the mark with the Complainant. Equally “Pice” both looks and sounds the same as “Price” and when used following the word “Fisher” is inevitably going to be associated with the Complainant’s mark 

It follows that the Complaint has met the first requirement of the Policy, namely it has shown that it has Rights in a name which is similar to the Domain Name.

Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
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.

A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is given in clause 3a of the Policy. They include the following:

i.	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A.	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B.	as a blocking registration against a name or mark in which the Complainant has Rights; or
C.	for the purpose of unfairly disrupting the business of the Complainant;
ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
Clause 3c of the Policy provides:
There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).
In relation to 3c the Expert is not aware of any earlier finding of Abusive Registration against the Respondent and as such no presumption of Abusive Registration arises under this provision.
Registration

There is no direct evidence before the Expert about the Respondent’s motivation for registering the Domain Name. There is nothing to suggest that the act of registration of the Domain Name considered in isolation from the Respondent’s other registrations was primarily motivated by a desire to sell the Domain Name for a profit, to block a registration by the Complainant or to unfairly disrupt the Complainant’s business. The Respondent was undoubtedly motivated by a desire to profit from the use of the Domain Name in some way but in the Expert’s view that does not automatically equate to a finding that it was primarily influenced by a desire to unfairly disrupt the Complainant’s business.

However it must be kept in mind that the Domain Name is not an isolated registration. The Respondent has registered a number of other .co.uk domain names featuring recognisable versions of well known brands with which it has no apparent connection (see section 6 above). The Expert finds that this combination of registrations is an example of a Respondent engaged in a pattern of registrations which correspond to well known names or trade marks in which the Respondent has no apparent rights. Clause 3a (iii) of the Policy lists this as one of the factors which may be evidence that the Domain Name is an Abusive Registration. It makes no difference that not all of the Respondent’s registrations  reproduce the exact spelling of the well known marks. The important issue is that the registrations are recognisable as marks connected to well known businesses to which the Respondent has no apparent connection. Although the Expert has not carried out checks against all of the domain names to which the Complainant has drawn her attention, she is satisfied from the “spot-checks” carried out by the Complainant (and unchallenged by the Respondent) that the Respondent is using each of these domain name registrations in a similar manner as part of a deliberate pattern of activity. The Domain Name that is the subject of this Complaint form part of that pattern.

It follows that the registration of the Domain Name in this matter amounts to an Abusive Registration by virtue of its place within an overall pattern of activity by the Respondent.

Use

The Expert also finds that the manner in which the Domain Name has been used amounts to an Abusive Registration. The general concept behind Abusive Registration as defined in clause 1 is that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

The Expert agrees with the Complainant’s submissions that the way in which the Respondent has used the Domain Name has caused unfair disruption to the Complainant’s business. She also agrees that the Domain Name has been used in a way that confuses people into believing that the Domain Name was registered to, or otherwise associated with, the Complainant. Customers who intend to visit the Complainant’s website but who misspell the Complainant’s FISHER-PRICE mark may instead be drawn to a competitor’s site through the web host pages connected to the Domain Names. They may then choose to purchase toys from a competitor. There is obviously nothing wrong with competition in the marketplace but this is an example of unfair competition arising from the Respondent’s misleading use of the Complainant’s mark and the associated trading reputation. This situation alone is sufficient to give rise to an Abusive Registration.

The Expert also finds that the use of the Domain Name by the Respondent to generate click-through commission for itself is taking advantage of the Complainant’s Rights and goodwill. The Respondent is deriving revenue by piggybacking on the strength of the Complainant’s brand. This advantage is unfair for the purposes of the Policy because it devalues both the Complainant’s brand and the goodwill associated with it. The Complainant can no longer guarantee that the FISHER-PRICE mark is exclusively associated with the Complainant and its products.

 The Expert also acknowledges that a potential customer of the Complainant who visits the website to which the Domain Name directs them might possibly think the worst of the Complainant for permitting the association of its mark with websites and products aimed at the adult market. Were this to occur the tarnishing of the Complainant’s brand would be detrimental to the Complainant’s Rights and would therefore amount to Abusive Registration under the Policy. However the Expert finds that the Complainant has NOT discharged its burden of establishing its case on the balance of probabilities on this particular point. Having reviewed the printouts from the screen captures at Annexes 6 and 7 to the Complaint the Expert is not persuaded on  that evidence that it is more likely than not that an average customer would perceive an association between the FISHER-PRICE brand and adult products and services simply through the existence of click-through links. This is not however to say that no connection would be made. But the Expert is not prepared to make a finding to this effect without more compelling evidence that confusion is occurring on this point (e.g. complaints from customers of the Complainant). 

On the overall issue of use of the Domain Name the Expert finds that the Respondent is using the Domain Name to take unfair advantage of the goodwill and trading reputation generated by the Complainant’s well known brand with a potential consequence of lost revenue for the Complainant. This conduct is clearly abusive on its own terms. When it is seen as part of a pattern of use alongside the Respondent’s other registrations the finding of abuse is reinforced.

8.	Decision

The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.

Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.

Sallie Spilsbury
2 February 2007