The Complainants are Hit Entertainment Limited and Gullane (Thomas) Limited, both of London, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Robert Steinegger, of Manchester, United Kingdom.
The disputed domain names, <bobthebuilder.asia> and <thomasthetankengine.asia> (the “Domain Names”), are both registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2008. On November 13, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 14, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 November 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 6, 2009. 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.
On January 11, 2009 the Respondent sent an email to the Center responding to the Complaint out of time and on January 12, 2009 the Complainant lodged with the Center a further submission in reply.
The Panel has read the Respondent's out-of-time Response, but in light of his decision has not felt it necessary to read the further submission from the Complainant.
The Complainants are associated companies, who between them hold certain rights to the children's characters, Bob The Builder and Thomas The Tank Engine, both of which are household names in the United Kingdom, the home country for all parties in this administrative proceeding. The Panel treats the Complainants as one.
The Complainants are the registered proprietors of a variety of trade mark registrations of or comprising the names of Bob The Builder and Thomas The Tank Engine. These registrations include the following United Kingdom registrations, namely:
No. 1549161 dated September 30, 1993 THOMAS THE TANK ENGINE & FRIENDS (device) for various goods in class 16.
No. 2028618A & B dated July 28, 1995 (depictions of Thomas the Tank Engine) for various goods in classes 9, 16, 25 and 28.
No. 2177979 dated September 24, 1998 BOB THE BUILDER (words) for various goods and services in classes 9, 16, 21, 25 and 41.
The Complainants are the registrants of a large number of domain names pre-dating registration of the Domain Names and featuring the names of Thomas The Tank Engine and Bob The Builder including, <thomasthetankengine.com> (1996), <thomasthetankengine.mobi> (2006), <thomasthetankengine.tv> (2007) and <bobthebuilder.com> (1999), <bobthebuilder.com.cn> (2007), <bobthebuilder.co.uk> (1999) and <bobthebuilder.tv> (2007).
The Domain Names were both registered on March 27, 2008.
On April 29, 2008 the Domain Names were both listed on a site at “www.fullyglobal.com” as being domain names for sale and inviting offers to be addressed to the Respondent.
The Domain Names were connected to Sedo parking sites featuring links to a wide variety of other sites ranging from property repair sites to weight loss sites. Some of the links were to sites advertising merchandise relating to the characters, Thomas The Tank Engine and Bob The Builder.
On May 9, 2008 the Complainants' representative wrote to the Respondent drawing the Respondent's attention to the Complainants' rights and seeking transfer of the Domain Names to the Complainants.
On receipt of that letter the Respondent disconnected the Domain Names from the Sedo parking sites. Instead they resolved to a page advertising the Sedo parking programme. The correspondence continued off and on through to December, 2008. The Respondent was prepared to sell the Domain Names to the Complainants, but not for $100, which was the most that the Complainants were prepared to pay.
The Complainants contend that the Domain Names are identical or confusingly similar to trade marks in which they have rights.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Finally, the Complainants contend that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy. They point to the fact that the Domain Names were being advertised for sale shortly after they were registered and that at the outset they were connected to Sedo pay-per-click parking pages.
The Respondent did not reply formally to the Complainants' contentions within the time permitted by the Rules. However, the Respondent's contentions are evident from the pre-Complaint correspondence exhibited by the Complainants as amplified and/or clarified by the Respondent's out-of-time submission to the Center dated January 11, 2009.
From the latter document it appears that while the Respondent disputes that the Complainants have relevant trade mark rights in respect of BOB THE BUILDER, he acknowledges that they may have relevant trade mark rights in respect of THOMAS THE TANK ENGINE. The distinction, which the Respondent draws, appears to the Panel to be that THOMAS THE TANK ENGINE is a distinctive name whereas BOB THE BUILDER is, to use the Respondent's expression “a generic name type”. He equates Bob The Builder with names such as Fred The Farmer, John The Joiner and Carl The Car Mechanic.
The Respondent also observes that none of the evidence as to rights submitted by the Complainants extends to Asian countries, yet the Domain Names are in the ‘.asia' domain.
In the course of his email correspondence with the Complainants' representative, the Respondent states that he registered the Domain Names for websites for his two-year-old son. He states that Bob The Builder and Thomas The Tank Engine are his son's favourite characters. He asserts that this is a legitimate reason for having registered the Domain Names.
The Respondent denies that he registered the Domain Names with a view to selling them and he denies that he ever intended to exploit the Complainants' trade marks commercially. He points out that he removed the Domain Names from the Sedo parking pages as soon as he received the email from the Complainants' representative and he denies that he ever received any pay-per-click revenue from Sedo.
He states that if the Complainants had wanted to register the Domain Names, they had ample opportunity to do so during the ‘.asia' Sunrise period. He asserts that the Complainants' failure to do so was “tantamount to commercial brand negligence”.
The Respondent claims that his failure to register in the ‘.asia' domain other character names belonging to the Complainants (Fireman Sam, Fraggle Rock, Barney and Friends, Angelina The Ballerina) is confirmation of the absence of any bad faith on his part.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainants must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
The registered trade marks upon which the Complainants rely, examples of which are detailed at section 4 above, include a device mark, the most prominent feature of which are the words “Thomas The Tank Engine & Friends”, and the word mark, BOB THE BUILDER. The Panel is satisfied from the evidence supplied that these registrations are valid and subsisting.
The fact that the registrations in question are not registrations in an Asian country is of no significance. For the purposes of the Policy it is enough that the Complainants have demonstrated the existence of relevant trade mark rights somewhere. The Panel notes that the Respondent's stated reason for having registered the Domain Names has no obvious Asian association.
The Domain Names comprise respectively the names, Thomas The Tank Engine and Bob The Builder, and the generic ‘.asia' domain suffix. In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic ‘.asia' domain suffix.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainants have rights.
It is not in dispute between the parties that when the Respondent registered the Domain Names he was aware that the characters, Thomas The Tank Engine and Bob The Builder, were characters in respect of which the Complainants have rights.
The Complainants contend inter alia that the Respondent registered the Domain Names with the intention of selling them to the Complainants at a profit. The Complainants exhibit a webpage at the “www.fullyglobal.com” website on which the Domain Names (among a number of others) were listed for sale in April 2008 and on which it was stated that offers should be addressed to the Respondent.
The Respondent does not claim any right in respect of the Domain Names. He asserts that when he registered the Domain Names his intention was to use them for websites, which he was going to create for his two-year-old son, whose favourite characters are Thomas The Tank Engine and Bob The Builder. He asserts that this constitutes a sufficient legitimate reason for having registered the Domain Names.
The Panel notes that the Respondent has given no explanation why, if that was his reason for registering the Domain Names, he had them listed for sale on the ‘fullyglobal.com' website. Nor has the Respondent produced any evidentiary support for his stated purpose for having registered the Domain Names.
The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Complainants contend first that the Respondent registered the Domain Names with the intention of selling them at a profit to the Complainants (paragraph 4(b)(i) of the Policy) and secondly that the Respondent registered them with a view to exploiting them commercially in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel does not find it necessary to consider the second of those contentions.
The Respondent states that he registered the Domain Names with the intention of using them for websites for his son. Whether or not such a use would be sufficient to defeat a complaint under the Policy is a matter for debate. However, for that debate to get off the ground, the reason put forward by the Respondent has to be believable.
The Panel can quite understand that it might take time for the websites to be developed and can quite understand that pending the development of the sites; it might be thought convenient to park the Domain Names somewhere. However, the Panel does not believe that a father wishing to use the names of his young son's favourite characters for websites for his young son would immediately put them up for sale, as the Respondent did on the ‘fullyglobal.com' website. The Respondent has offered no explanation for the appearance of the Domain Names on that website along with a number of others of his domain names.
In the absence of a credible explanation for having registered the Domain Names, the Panel is satisfied on the evidence put forward by the Complainants that the overwhelming probability is that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
In light of the Respondent's observation that he is currently making no active use of the Domain Names, the Panel draws the Respondent's attention to the fact that paragraph 4(b)(i) of the Policy does not call for any active use of the Domain Names.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <thomasthetankengine.asia> and <bobthebuilder.asia>, be transferred to the first Complainant, HIT Entertainment Limited, as requested by the Complainants.
Dated: January 20, 2009