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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merlin Attractions Operations Limited v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Domain Manager, Domain Holdings Register

Case No. D2014-0348

1. The Parties

The Complainant is Merlin Attractions Operations Limited of Poole, Dorset, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Lane IP Limited, United Kingdom.

The Respondent is Domain Hostmaster, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Domain Manager, Domain Holdings Register of Henderson, Nevada, United States of America ("USA").

2. The Domain Name and Registrar

The disputed domain name <madametussaud.com> is registered with Fabulous.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2014. On March 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2014, the Registrar transmitted by email to the Center its verification response providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amended Complaints on March 12 and March 13, 2014.

The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 amended Complaints, and the proceedings commenced on March 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on April 8, 2014.

The Center appointed Andrew Brown Q. C. as the sole panelist in this matter on April 11, 2014. 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 disputed domain name <madametussaud.com> was first registered on April 15, 2002 (the "Relevant Date"). The disputed domain name is currently registered in the name of a privacy proxy registration service. The Registrar has confirmed that the Respondent was, as at March 7, 2014, registrant of the disputed domain name. The Registrar has not been able to confirm whether the Respondent was the original registrant of the disputed domain name, or if the Respondent was not the original registrant, when the Respondent acquired the disputed domain name. However since there is nothing in the evidential record which indicates that the Respondent was not the initial registrant of the disputed domain name on April 15, 2002, the Panel treats that as being the case at the Relevant Date.

The Complainant is a wholly owned subsidiary of Merlin Entertainments Group Limited, a global operator of amusement parks and other attractions. It is the largest such company in Europe, and the second largest globally after Walt Disney Parks & Resorts. Merlin Entertainments Group Limited operates over 100 attractions in ten European countries, including the USA, Japan, Republic of Korea, China, Hong Kong, New Zealand and Australia. The Complainant owns the following non-exhaustive list of attractions: London Eye, London Dungeons, Alton Towers, Sea Life, Chessington, Gardaland, Thorpe Park, Lego Land and Madame Tussauds. In 2012, the Complainant's properties hosted an estimated 54 million guests. On November 8, 2013 Merlin Entertainments Group Limited floated 30% of the company on the London Stock Exchange valuing the private equity-backed company at almost GBP 3.4 billion.

One of the Complainant's largest attractions is Madame Tussauds, a wax work museum which displays wax works of famous people, including actors, musicians, sports stars, and political figures.

Evidence shows that millions of people have visited Madame Tussauds since its opening over 200 years ago. It is a major tourist attraction in London and has expanded to locations in Amsterdam, Bangkok, Beijing, Berlin, Blackpool, Hollywood, Hong Kong, Las Vegas, New York, Orlando, San Francisco, Shanghai, Sydney, Tokyo, Vienna, Washington DC and Wuhan.

The Complainant states that it is the owner of trademarks comprising or including MADAME TUSSAUD, MADAME TUSSAUD'S and MADAME TUSSAUDS and has provided a schedule of these. It relies in particular on the following:

- Japanese trademark registration No. 1417876 in classes 6, 9, 14, 16, 18, 20 and 21 for MADAME TUSSAUD with a registration date of May 30, 1980.

- Japanese trademark registration No. 2632243 in classes 6, 8, 9, 15, 18, 19, 20, 21, 22, 24, 25, 27 and 28 for MADAME TUSSAUD with a registration date of March 31, 1994.

- Japanese trademark registration No. 3033162 in class 41 for MADAME TUSSAUD with a registration date of March 31, 1995.

- Australian trademark registration No. 667321 in class 41 for MADAME TUSSAUD'S with a filing date of July 21, 1995.

- USA trademark application No. 2301216 in classes 16, 18, 20, 21, 25, 28, 29 for MADAME TUSSAUD'S filed on January 20, 1997 and registered on December 21, 1999.

- Indian trademark registration No. 1619807 in classes 16, 25 and 41 for the MADAME TUSSAUDS logo with a filing date of November 8, 2007.

- Community trademark registration No. 006469068 in classes 16, 25 and 41 for the MADAME TUSSAUDS logo with a filing date of November 27, 2007.

- Community trademark registration No. 006531677 in classes 16, 25 and 41 for MADAME TUSSAUDS with a filing date of December 20, 2007.

- USA trademark registration No. 3756489 in classes 16, 25 and 41 for the MADAME TUSSAUDS logo filed on February 21, 2008 and with a registration date of March 9, 2010.

- Hong Kong trademark registration No. 199806826 in class 41 for MADAME TUSSAUD'S (filing date not provided in evidence).

The first five trademarks predate the Relevant Date. The schedule provided by the Complainant contains the following further registrations which also predate the Relevant Date:

- United Kingdom trademark registration No. 1293077 in class 41 for MADAME TUSSAUD'S with a filing date of November 27, 1986.

- Singaporean trademark registration No. T9506816H in class 41 for MADAME TUSSAUD'S with a filing date of July 26, 1995.

- Chinese trademark registration No. 971927 in class 41 for MADAME TUSSAUD'S with a filing date of August 7, 1995.

- South African trademark registration No. 96/9896 in class 41 for MADAME TUSSAUD'S with a filing date of July 22, 1996.

The Complainant asserts that its trademarks MADAME TUSSAUD, MADAME TUSSAUDS and MADAME TUSSAUD'S are extremely well known as a result of its extensive use of these marks, including such use prior to the Relevant Date. In particular, the Complainant states that it owns the domain names <madametussauds.com> and <madametussauds.co.uk>. The Complainant has provided evidence that a Google search for "Madame Tussaud" returns, as the first ten hits, websites which relate to the Complainant.

Evidence shows that, as at January 22, 2014 (shortly prior to the Complaint), the disputed domain name was redirecting to a website hosted at the domain name <buymearock.com>, which publishes reporting on celebrity engagement rings, and provides links to third party retailers' websites (including "www.amazon.com") offering jewellery for sale.

Sometime before March 18, 2014, the use of the disputed domain name changed to direct to a YouTube video entitled "Ametussaud is very mad today" showing a male giving commands (such as "sit") to a dog who he addresses as "Ametussaud".

5. Parties' Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent has not been identified beyond the contact details provided by the Registrar. Correspondence has been received from a person who did not identify themselves in emails sent to the Center, copying the Complainant's legal representative, and also copying to the email address provided by the Registrar for the Respondent. The sender of these emails purports to be the registrant. Those emails are as follows:

- An email dated March 12, 2014, stating: "mad ametussaud My dogs name is Ametussaud and he is mad. I will be making a blog about him with photos."

- An email dated March 12, 2014, stating: "Would you like me to include photos of my dog?"

- An email dated March 13, 2014, stating: "Can you please advise me what I need to do next?"

- An email dated April 8, 2014, stating: "Hello there […] Can you please explain what I failed to do? Have a great day and thanks for your time".

- An email dated April 8, 2014, stating: "Hi […] Can you tell me what a submission is? I am pretty confused by this whole process. Its just [a] domain name for my pet dog".

- An email dated April 9, 2014, stating: "Thanks for the info Miss […] I did reply with the explanation weeks ago when this first came up. I am not an attorney".

- An email sent on April 10, 2014, stating: "Great thank you kindly for all your help with this. Make a great day".

In each communication the Center acknowledged receipt of the email and advised that it would forward email communications to the Panel upon appointment, who would make any necessary determinations.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant had registered rights in the trademarks MADAME TUSSAUD and MADAME TUSSAUD'S as at the Relevant Date by way of its registered trademarks for them in numerous classes predating April 15, 2002, when the disputed domain name was created.

In particular, the Complainant's MADAME TUSSAUD registered trademark is identical to the disputed domain name. The Complainant's MADAME TUSSAUD'S registered trademark is also instantly recognizable within the disputed domain name. The absence of the possessive "'s" in the disputed domain name does not sufficiently differentiate the disputed domain name from the Complainant's trademark so that confusion will not arise.

The Panel accordingly finds that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. Rather, the disputed domain name was redirected to another domain name <buymearock.com> that concerns celebrity engagement rings and offers links to further third party websites offering jewellery for sale.

There is no evidence that the Respondent has been commonly known by the disputed domain name.

There is no evidence that the Respondent, prior to the date of the Complaint (March 6, 2014), was making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers or tarnish the Complainant's trademark. The Panel does not accept that the YouTube video purporting to show a dog named "Ametussaud" and its owner, which appears to have published on March 12, 2014, amounts to such legitimate noncommercial or fair use. The Panel also does not accept that the assertions sent by email to the Center in March and April 2014 referring, inter alia, to a dog named "Ametussaud", who is "mad", and to alleged plans by the unidentified sender to make a blog with photos about that dog, prove legitimate or noncommercial fair use of the disputed domain name.

In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent failed to rebut.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.

The Complainant has trademark registrations for MADAME TUSSAUD, and MADAME TUSSAUD'S which predate the Relevant Date. The evidence also shows that the Complaint's marks comprising or incorporating MADAME TUSSAUD were well known globally at that date. MADAME TUSSAUD'S waxworks in London had been in operation for over 200 years prior to the Relevant Date.

The Panel finds that the Respondent must have been aware of the Complainant's well-known trademark and business at the time it registered the disputed domain name. The combinations MADAME TUSSAUD, and MADAME TUSSAUD'S are well known, distinctive and unusual and not combinations that would be chosen as a domain name for descriptive or generic purposes.

The Panel is entitled to draw inferences from the Respondent's failure to provide a formal response to the Complaint. The Respondent has clearly had notice of the Complaint. In the somewhat flippant informal responses the sender that purports to be the registrant of the disputed domain name does not deny knowledge of the Complainant's trademarks or its fame. Instead the informal responses seek to make fun of the Complainant's trademark by reference to a dog alleged to be called "Mad Ametussaud". The Respondent will therefore not be surprised that the Panel draws adverse inferences from these informal contributions. The Panel is therefore satisfied that the disputed domain name was registered in bad faith.

As to the second limb, the Panel is also satisfied that the disputed domain name was as at January 22, 2014, being used in bad faith, in particular by redirecting to a website "www.buymearock.com" reporting on celebrity engagement rings and containing links to third party retailers and therefore targeted at commercial gain. Internet users are likely to be attracted to the disputed domain name (and, by redirection, to "www.buymearock.com") by way of the intentional creation of a likelihood of confusion with the Complainant's trademarks, within the meaning of paragraph 4(b)(iv) of the Policy. The fact that the redirection is to a website focusing on celebrity matters reinforces finding of bad faith, since the Complainant uses its MADAME TUSSAUD / MADAME TUSSAUDS trademarks in relation to attractions concerning wax works of celebrities.

Accordingly, in the circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <madametussaud.com> be transferred to the Complainant.

Andrew Brown Q. C.
Sole Panelist
Date: April 28, 2014

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