HIT Entertainment PLC -v- Loosemore [2004] DRS 1544 (14 May 2004)

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The complaint was lodged with Nominet on 4 February 2004. Nominet validated the complaint and notified the Respondent on 9 February 2004 by (1) email to the Administrative Contact email address and to postmaster@barney.co.uk; (2) letter to the Respondent's postal address; and (3) fax to the Respondent, all in accordance with the details held for the Domain Name in Nominet's database. The letter to the Respondent advised him that he had 15 working days to respond to the Complaint, that is, until 2 March 2004. A response was received from the Respondent by email on 16 February 2004. Nominet acknowledged receipt of the Response and intimated a copy to the Complainant's representatives on 17 February 2004, giving until 24 February 2004 for the Complainant to file a Reply if it so wished. On 26 February 2004 Nominet wrote to the Respondent and the Complainant's representatives to confirm that a reply had not been received to the Respondent's response. Nominet initiated mediation procedure on 3 March 2004 and subsequently indicated by letter to the Complainant and the Respondent on 2 April 2004 that mediation had been unsuccessful and that provided the Complainant paid the appropriate fees by 20 April 2004, Nominet would refer the case to an independent expert for a decision. The Complainant duly paid the fees on 19 April 2004 for a decision of an expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 28 April 2004, Andrew Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 26 April 2004.

The Response was prepared on a Nominet UK DRS Response Form consisting of two pages which, according to Nominet's dispute history, was received electronically and was not followed up by a duly signed hard copy. Consequently, the Response does not comply with paragraph 5(c) of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). The Expert takes the view that where the Respondent has not received the benefit of legal advice, it would be inequitable to apply the hard copy rule so as to disqualify the Response completely. Accordingly, the Expert will take the Response into account. However, not being in hard copy, the Response does not contain a duly signed declaration required by paragraph 5(c)(v) of the Procedure. This declaration relates to the truthfulness of the Response and its compliance with the Procedure. Paragraph 15(c) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate." The Expert considers that an inference can be drawn which would tend to reduce the weight to be given to the contents of the Response, and it will therefore be viewed accordingly.

A document has been submitted by the Complainant's representatives which bears to be a reply to the Respondent's Response. Nominet does not note the date when this was received. However, Nominet's correspondence with the parties confirms that a reply was not received within the deadline and the Expert must assume that the document prepared by the Complainant's representatives was received late at some point after 24 February 2004. Under paragraph 12(a) of the Procedure either Nominet or the Expert may in exceptional cases extend any period of time in proceedings under the Dispute Resolution Service. Nominet did not extend the time for the Complainant's reply. The Expert is unaware of any exceptional circumstances justifying any extension. Accordingly, the Expert will treat the reply as a further statement in accordance with paragraph 13 of the Procedure. Paragraph 13 states that the Expert is not obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or Procedure. In the present case, the Expert considers that the Complainant had a reasonable opportunity within the framework of the Policy and Procedure to submit a timeous reply to the Response. Accordingly, the Expert will disregard the further statement received from the Complainant's representatives.

As will be detailed in the Discussion and Findings Section below, although the Complainant claims rights in UK registered trade marks which are identical or similar to the Domain Name and indeed cites these by number, the evidence produced does not show the Complainant as the proprietor of the marks. Furthermore, there is no indication as to how the Complainant might derive any rights from the listed proprietor. It is possible that the Complainant might have obtained such rights via Assignment or licence. In Chivas Brothers Limited v David William Plenderleith (DRS 00292) the expert was presented with a similar problem - the dilemma was whether the complaint should be dismissed out of hand on the basis that on its face the complainant could not possess the rights claimed for it in the complaint, or whether the expert should conduct an online check at the Trade Marks Registry to verify whether or not there had been an Assignment. The expert in that case was not prepared to adopt an option which would have wasted further time by going back to the complainant, inviting the complainant to improve its position, by virtue of paragraph 13 of the Procedure. The expert was conscious that in all probability the complainant possessed the rights claimed for it in the complaint and decided to verify the existence of the Assignment, noting that the principal determining factor for him was that the complaint was in all other respects a full and properly prepared document.

The Expert in the present case shares the view of the expert in Chivas that it is not appropriate to invite the Complainant to improve its position by way of paragraph 13 of the Procedure; the Complainant is expected to prove its case on balance of probabilities and must therefore put forward the very best case that it can in the complaint. In other respects, however, this case is different from Chivas. The complaint here is not a properly prepared document. Some of the trade marks cited appear to have no relevance whatsoever to the name under dispute, others are cited but no copy certificates are produced, the nature of the Complainant's activities is not specified (other than that it seems to have some involvement with 'the barney TV program, [sic] merchandising, fan club and other barney children activities'), the complaint rambles in places and furthermore contains unclear submissions such as 'Due to the owner, registrant not contactable and the domain name pointing to a sailing website properly the domain creating extra web traffic…'. In these circumstances the Expert will not conduct any further search to assess or verify the rights of the Complainant in the name.

1. The Domain Name was registered by the Respondent on 6 February 1998.
2. The Domain Name pointed to a web site for Waldringfield Sailing Club when the complaint was presented.

1. The Domain Name is identical or similar to a name or mark in which the Complainant has Rights.

3. The name barney is a UK trade mark registered to HIT Entertainment PLC Group of Companies, registered since 1994 in classes 9 16 25 28 41 under trade mark numbers: 1512789, 1512790, 1512791, 1512792, 1512793, 1512794, 1512795, 1512796 and 1512797.

4. barney is a well known household name. Any person who typed the url [sic] barney.co.uk would expect to be presented with information regarding barney TV program, [sic] merchandising, fan club and other barney children activities which surrounds [sic] the name. As this is not the case HIT Entertainment PLC feel this factor could cause confusion to internet users.

5. The domain barney.co.uk was registered in 1998 before HIT Entertainment PLC had a department specialising in domain registrations. Because of this HIT Entertainment PLC feel at the time when the registration or acquisition took place a [sic] unfair advantage to HIT Entertainment PLC Rights for the domain.

6. The domain barney.co.uk points to a Waldringfield Sailing Club web site. The name barney seems to have no relationship with the name Waldringfield Sailing Club which makes HIT Entertainment PLC feel the owner has no rights or legitimate interests in respect of the domain name.

7. HIT Entertainment PLC have tried to contact the owner of the domain barney.co.uk on numerous occasions and have tried to contact the Registrant's Agent: Mr James Cronin but have had no response.

8. Due to the owner, registrant not being contactable and the domain name pointing to a sailing web site properly the domain creating extra web traffic, HIT Entertainment PLC feels these action [sic] seems to be a clear indication of the registrant blocking HIT Entertainment PLC from registering the domain.

1. The Respondent registered barney.co.uk in 1998 following the birth of his son, Barney Loosemore. The Respondent registered the domain as Barney’s legal guardian and has always intended for the domain to be transferred to Barney for his personal use once he has reached a suitable age. In the meantime, the Respondent has been using the site to display the odd photograph of Barney (now aged 6), or has left the website blank.
2. Barney Loosemore is commonly known as Barney, and has rights over his own name. The Respondent rebuts the Complainant's assertions by reference to Section 4 (i) B of Nominet’s DRS policy.
3. Shortly before Christmas 2003 the Respondent made a mistake with a webserver configuration setting up the hosting for a website for his (non-commercial, not-for-profit) sailing club, Waldringfield Sailing Club (www.waldringfieldsc.com), for which the Respondent is the volunteer Webmaster. The Respondent was not aware that this innocent configuration mistake had resulted in www.barney.co.uk being wrongly redirected to www.waldringfieldsc.com until alerted to the fact last week, whereupon he immediately corrected the error. www.barney.co.uk is once again displaying a picture of the Respondent's son, as has always been, and remains, the Respondent's intention.
4. The Respondent states that he is perplexed that the complainant was unable to contact him, since he receives all email sent to any address @barney.co.uk, including the email sent by Nominet informing him of the complaint. In addition, Mr James Cronin, the Respondent's domain registrar, has checked his inbox and confirms that he has not received emails from anyone at HiT Entertainment., Safenames or Mr Simon McManus [the latter being the Complainant's representatives].

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.

Does the Complainant have Rights in respect of a name or mark which is identical or similar to the Domain Name? The Complainant claims in its submissions that barney [sic] is a UK trade mark registered to HIT Entertainment PLC Group of Companies, registered since 1994 in classes 9 16 25 28 41 under trade mark numbers: 1512789, 1512790, 1512791, 1512792, 1512793, 1512794, 1512795, 1512796 and 1512797. In support of this submission, the Complainant has produced a spreadsheet. This provides a listing of the trade marks but nothing further to confirm the matter. The Complainant provides copy Registration and Renewal Certificates for trade mark numbers 1512789 and 1512790 which indicate that these are for the word/device 'BABY BOP'. It is not clear why these marks are listed as they bear no relation to the name BARNEY or to the Complainant's general submission. The Complainant also provides a copy Registration and a Renewal Certificate for trade mark number 1512793 indicating that this is for the word/device 'BARNEY'. However, all of these trade marks, the only ones for which the Complainant provided copy certificates, show a proprietor named 'Lyons Partnership LP Incorporated in United States of America, Texas'. If this party is the proprietor of the listed trade marks, then the submission that the Complainant is the proprietor is plainly wrong. It may be that the Complainant is the proprietor of some of the other trade marks but no evidence of this has been produced.

For the reasons noted in the Outstanding Formal/Procedural Issues section noted above, the Expert does not believe it is appropriate to assist the Complainant in making its complaint by seeking out the manner in which the Complainant might have Rights in a name where this is not part of the Complainant's submissions. There is no evidence before the Expert that the Complainant is the proprietor of the cited trade marks as it contends to be. Furthermore, there is nothing else in the complaint which would assist the Expert in a determination of whether the Complainant might have Rights (other than rights in some of the listed registered trade marks) within the meaning of the Policy (for example, exactly what television programme and 'children activities which surrounds [sic] the name' the Complainant is concerned with, how it is concerned with such a programme and where precisely the name 'BARNEY' comes into this). While it has been said that the establishment of Rights is not a particularly high threshold test, the Expert is left with no material whatsoever to go on. Consequently, the Expert finds that the Complainant has failed to prove on balance of probabilities that it has Rights in respect of a name or mark which is similar to the Domain Name.

While the present complaint ends with the finding that the Complainant has failed to show Rights in a name identical or similar to the Domain Name, this decision will consider, for the sake of completeness, whether the Domain Name, in the hands of the Respondent, is an Abusive Registration. Paragraph 1 of the Policy defines “Abusive Registration” as:-

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 Policy provides a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration in paragraph 3(a) of the Policy. These are:-

"i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily 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. primarily 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. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to us."

The Complainant's submission focuses on confusion, blocking and general unfair advantage.

The Complainant suggests that the fact that the registrant was not contactable, that the Domain Name pointed to a sailing web site and that it 'creates extra web traffic' (if this is what the submission means) is 'a clear indication' of blocking. Albeit absent the declaration of truth, the Respondent asserts that the Domain Name was pointing to the web site as the result of a configuration error which has since been corrected. The Respondent also states that he has in effect been contactable.

With regard to the attempts to contact the Respondent, the Complainant fails to produce evidence of any such correspondence or its delivery to the Respondent; again the Expert has nothing to go on. With regard to the sailing website, the Complainant does not indicate, even approximately, the period of time during which the Domain Name was pointing to the site and the Respondent's explanation is perfectly credible.

In any event, there is no evidence that the Domain Name was registered as a blocking registration. Although the Domain Name in effect blocks the registration of an identical domain name by the Complainant this will always be the case in any dispute under the Policy. To make out a case of blocking there must be evidence of some deliberate intent to block the Complainant at the time of registration. This is not forthcoming in the Complainant's submissions.

The Complainant submits that barney is a well known household name and that any person who typed the url [sic] barney.co.uk would expect to be presented with information regarding 'barney TV program, [sic] merchandising, fan club and other barney children activities which surrounds [sic] the name'. As such, states the Complainant, the domain could cause confusion to internet users. The Respondent states that he registered the Domain Name for his son, who he says is named Barney.

The Complainant does not show that the website has confused people or businesses into believing that the Domain Name is registered to, operated or otherwise connected with the Complainant in accordance with paragraph 3(a)(ii) of the Policy. It may be that more information regarding the activities of the Complainant would have assisted it here - what is the programme, the extent of the merchandising, the size of the fan club and nature of its members, and the other barney children activities? Such information might have given the Expert some substantiation of the potential for confusion. Without it, the Expert must reject the Complainant's submission on this point.

Unfortunately the Expert cannot fully decipher the Complainant's submission here. The Complainant states that it did not have a department specialising in domain registrations when the registration took place and consequently that unfair advantage was taken by the registration. This is quite simply a non-sequitur. It may be that the Complainant means that during this period the Respondent stepped in and registered the Domain Name to target the Complainant. The complaint however does not say this and it is purely speculation on the Expert's part.

The Complainant goes on to cast doubt on the legitimacy of the Respondent's registration in light of the website in use at the time of the complaint. This matter has already been dealt with in the section concerned with blocking. Consequently, on the evidence put forward by the Complainant the Expert does not believe that the Domain Name took unfair advantage of the Complainant's Rights (if any).

Although this would deal sufficiently with the question of Abusive Registration, given that there is a Response in this case it may be useful to consider paragraph 4 of the Policy which provides a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. These are:

“i Before being informed of the Complainant's dispute the Respondent has:
A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name; or
ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it.

Paragraph 4(a)(i)(A) does not apply as the Respondent has not used the Domain Name in connection with either goods or services. Paragraph 4(a)(i)(B) is more relevant as the Respondent claims to have registered the Domain Name for his son and on his behalf as legal guardian. While this guardianship or trust arrangement might potentially have been shown in some way on the WHOIS record, the fact that the Domain Name was registered only in the Respondent's name is not determinative of the matter. If the Respondent's submission were true (and it is important to note that there is not a signed declaration of truth here) it is feasible that the Respondent is in effect holding the registration in trust for his son and the fact that his son is said to bear the name Barney is in the Expert's view indicative of the Domain Name not being an Abusive Registration even if the circumstances do not fit exactly the wording for paragraph 4(a)(i)(B).

Paragraph 4(a)(i)(C) seems more relevant for the Respondent. It is clear, on the Respondent's submission, that the Domain Name has a legitimate non-commercial and fair use, being employed for a website for the Respondent's son. Again, if this is the truth, it is strongly indicative of a non-Abusive Registration.

It is difficult to reach a concluded view on whether the Respondent is telling the truth. He, too, could have produced more detailed evidence of his use of the site and of his son's name. He could have signed the declaration of truth. A copy birth certificate alone would have been helpful evidence and it is strange that the Respondent did not produce one. Had the Respondent been legally represented this fact would almost certainly have been pointed out to him. On balance, though, the Expert is inclined to believe the Respondent as his submissions are at least consistent and logical throughout.

The Complainant has failed to prove that the Domain Name is an Abusive Registration to the Expert on balance of probabilities and the Respondent has demonstrated in his Response some factors which are indicative of the Domain Name not being an Abusive Registration. The Expert finds that the Domain Name, in the hands of the Respondent, is not an Abusive Registration.

In light of the foregoing findings the Expert directs that the Complaint in respect of the Domain Name be refused.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> HIT Entertainment PLC -v- Loosemore [2004] DRS 1544 (14 May 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1544.html Cite as: [2004] DRS 1544