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Australian Broadcasting Corporation v. P & C Hewitt [2001] GENDND 1256 (29 June 2001)

WIPO Arbitration and Mediation Center

The Complainant in this proceeding is the Australian Broadcasting Corporation, of 700 Harris Street, Ultimo, New South Wales, Australia.

The Respondents in this proceeding are P and C Hewitt of 4f Igarashi Building, 6–1–28 Shimo Meguro, Tokyo, Japan.

This dispute concerns the two domain names:

<bananasinpyjamas.com>
<bananasinpajamas.com> ("Domain Names")

The registrar with whom the Domain Names are registered is:

Network Solutions Inc, Herndon, VA 20170, United States of America.

The Domain Names were registered on April 7, 1999.

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on March 29, 2001, and in hardcopy on April 3, 2001. An amendment to the complaint was received by e-mail on April 24, 2001, and in hardcopy on April 27, 2001. Payment in the required amount to the Center has been made by the Complainant.

On April 2, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Names were currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Names and advice as to the current status of the Domain Names.

On April 30, 2001, the administrative proceeding began.

On May 22, 2001, a notification of default was sent to the Respondents. No response was received.

On, June 5, 2001, notification of appointment of an administrative Panelist and projected decision date ("the appointment notification") was sent to the Complainant and the Respondents. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist, Clive Elliott and advised that the decision should be forwarded to WIPO by June 19, 2001.

On June 29, 2001, a decision was made.

The Complainant is the registered owner of the following registered trademarks in the countries and classes set out below since the registration dates listed below (hereinafter referred to as "the Registered Trademarks"):

Number	Registered Mark	Classes	Registration Date
630036	BANANAS IN PYJAMAS	9	17 May 1994
630037	BANANAS IN PYJAMAS	16	17 May 1994
630038	BANANAS IN PYJAMAS	25	17 May 1994
630039	BANANAS IN PYJAMAS	28	17 May 1994
630040	BANANAS IN PYJAMAS	41	17 May 1994
633332	BANANAS IN PYJAMAS	9	27 June 1994
633333	BANANAS IN PYJAMAS	16	27 June 1994
633334	BANANAS IN PYJAMAS	25	27 June 1994
633335	BANANAS IN PYJAMAS	28	27 June 1994
633336	BANANAS IN PYJAMAS	41	27 June 1994
658379	BANANAS IN PYJAMAS	3	10 April 1995
658380	BANANAS IN PYJAMAS	3	10 April 1995
756349	BABY BANANAS IN PYJAMAS	9, 16, 25, 28	3 March 1998
757867	BANANAS IN PYJAMAS	12	20 March 1998

Number	Registered Mark	Classes	Registration Date
3327949	BANANAS IN PYJAMAS logo	9	4 July 1997
4025898	BANANAS IN PYJAMAS and logo in Katakana	9	11 July 1997
3339270	BANANAS IN PYJAMAS logo	16	15 August 1997
4096831	BANANAS IN PYJAMAS and logo in Katakana	16	26 December 1997
3316020	BANANAS IN PYJAMAS logo	25	30 May 1997
4096832	BANANAS IN PYJAMAS and logo in Katakana	25	26 December 1997
3355340	BANANAS IN PYJAMAS logo	28	31 October 1997
4014151	BANANAS IN PYJAMAS and logo in Katakana	28	20 June 1997
4046217	BANANAS IN PYJAMAS logo	29	22 August 1997

Number	Registered Mark	Classes	Registration Date
2084461	BANANAS IN PAJAMAS logo	9, 16, 25, 28	29 July 1997
2084355	BANANAS IN PAJAMAS	9, 16, 25, 28	29 July 1997
2103747	BANANAS IN PYJAMAS logo	9, 16, 25, 28	7 October 1997
2019907	BANANAS IN PAJAMAS	38	26 November 1996
2009137	BANANAS IN PAJAMAS logo	38	15 October 1996

The Complainant is also the registered owner of the registered trademarks BANANAS IN PYJAMAS and BANANAS IN PAJAMAS and applications for trademark registration BANANAS IN PYJAMAS and BANANAS IN PAJAMAS in Argentina, Australia, Bulgaria, Brazil, Benelux countries, Canada, Chile, China, Colombia, Czechoslovakia, Denmark, Spain, European Union, Finland, France, United Kingdom, Germany, Hungary, Ireland, Israel, Italy, Japan, Mexico, Norway, New Zealand, Peru, Philippines, Russian Federation, South Africa, Saudi Arabia, Sweden, Singapore, Thailand, United States of America and Uruguay.

The Domain Names resolve to the Respondents’ web site. The said web site shows the trademark BANANAS IN PAJAMAS and logo in a form which is identical to the Complainant’s trademark.

The Complainant states that it has made extensive use of the Registered Trademarks (and their unregistered forebears) since 1991. This use is in connection with a popular children’s television show and series known as "Bananas in Pyjamas" and "Bananas in Pajamas", which features two anthropomorphized bananas known as "B1" and "B2". It is asserted that the show is highly successful and it has been shown in over 70 countries around the world including; Australia, United Kingdom, United States, South America, East and Western Europe, Asia, South Africa, Africa and the United Arab Emirates.

The Complainant says it has also undertaken an extensive international merchandising and licensing program to promote, using the Registered Trademarks and goods and services that are related to the "Bananas in Pyjamas" and "Bananas in Pajamas" television show and series. For example, the Complainant indicates it has produced and sold, or licensed the production and sale of "Bananas in Pyjamas" and "Bananas in Pajamas" books, videos, compact discs, DVD’s, audio tapes, toys, clothing, footwear, food, bicycles, posters, teaching materials, live music events, mechanical rides, sporting goods, sunscreens and shampoos. These goods and services were produced and sold under the Registered Trademarks. The "Bananas in Pyjamas" and "Bananas in Pajamas" goods and services have also been widely advertised throughout the world including on the Complainant’s web site <shop.abc.net.au> and <abc.net.au/children> and on Complainant’s television station, ABC-TV, in the Complainant’s ABC shops and in other ways by the Complainant’s licensees. This advertising likewise uses most or all of the Registered Trademarks.

The Complainant says that apart from the ".com" part of the Domain Names and the lack of spaces between the words in the Domain Names they are identical to the Complainant’s Registered Trademarks.

The Complainant admits entering into brief correspondence with the Respondents to try and enter some sort of mutual beneficial relationship. (The Complainant only supplied the response letter from the Respondents' and the Complainant's reply as evidence)

No response was received from the Respondents.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The domain names are identical or confusingly similar to the trademark; and

- The Respondents have no right or legitimate interest in respect of the domain names; and

- The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

It is clear from the evidence that the Complainant has devised and registered the trademark BANANAS IN PYJAMAS in Australia, Japan and the United States of America and that such registrations pre-date the registration of the Domain Names. Likewise, it is asserted, without contest, that the Complainant had applied for the trademark or its variant BANANAS IN PAJAMAS in a large number of countries. Finally, it is asserted, without contest again, that the Complainant has used the Registered Trademarks in a number of countries over a period of time.

The Registered Trademarks are highly distinctive and represent a novel and unusual combination of the concepts of pyjamas and bananas, something which would seem to require a level of inventiveness and practical distinctiveness. In the absence of evidence to the contrary the Panel finds this to be the case. In view of the above it is found that the Registered Trademarks are trademarks in which the Complainant has rights and that the Domain Names are confusingly similar if not identical thereto.

Given what seems on the evidence to be the highly distinctive nature of the Registered Trademarks, a presumption arises that the Complainant alone has rights in these trademarks and certainly in the classes of interest to it. Whether the Complainant's rights extend to all manners of use of the Registered Trademarks is a matter which is less certain. However, the Respondents have chosen not to assert any legitimate claim to the Registered Trademarks and in the absence of such an assertion the Panel has to draw whatever reasonable inferences it can from the evidence filed.

In the absence of any evidence from the Respondents the Panel has no choice but to accept the prima facie case put forward by the Complainant and likewise find that there is no apparent right or interest which the Respondents might have in such a distinctive trademark.

Given the absence of any explanation and the prima facie case that the Complainant has put forward, it is found that the Domain Names were registered and are being used in bad faith. It is asserted by the Complainant and not disputed by the Respondents that the Domain Names resolve to a web site that uses the same logo form of the Complainant’s trademark.

The use of the identical trademark on a web site in this way amounts to a prima facie case of bad faith. Once again, even though the Panelist must be careful not to over-extend the ambit of the UDRP, the Panel is of the view that the Complainant has done sufficient to establish its rights and lack of the Respondents' legitimate rights. From that point what can be done is for the Panel to draw a reasonable inference that the Respondents acted in bad faith and continue to do so.

There may well be explanations as to how the Respondents came up with the Domain Names and these may be entirely innocent. However, the record as it stands, suggests otherwise and the Respondents have to accept the consequences of their failure to put necessary evidence (if any exists) before the panel.

In view of the above the Domain Names should be transferred to the Complainant.

Clive L. Elliott
Sole Panelist

Dated: June 29, 2001