DECISION

American Greetings Corporation & Those Characters From Cleveland, Inc. v. Richard Mackessy

Claim Number: FA0204000109374

PARTIES

The Complainants are American Greetings Corporation and Those Characters From Cleveland, Inc., Cleveland, OH (collectively referred to hereafter as “Complainant”) represented by Rinda Vas.  The Respondent is Richard Mackessy, Chicago, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <popples.com> and <popples.net>, registered with Joker.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Alan L. Limbury as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 9, 2002; the Forum received a hard copy of the Complaint on April 12, 2002.

On April 10, 2002, Joker.com confirmed by e-mail to the Forum that the domain names <popples.com> and <popples.net> were both registered with Joker.com on December 6, 1999, are still registered with it and that the Respondent is the current registrant of the names.  Joker.com has verified that Respondent is bound by the Joker.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@popples.com and postmaster@popples.net by e-mail.

A timely Response was received and determined to be complete on May 2, 2002.

Complainant submitted a timely additional submission on May 6, 2002, pursuant to Forum Supplemental Rule 7.

On May 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain names are identical to Complainant’s U.S. registered trademarks POPPLES and confusingly similar to Complainant’s POPPLES AND DESIGN trademarks.

Respondent has no legitimate interest in the disputed domain names, which he has not used. The names have sat idle and pointed to “holding” pages. The Respondent is not known by the domain names. Respondent has failed to respond to Complainant’s requests to transfer the domain names voluntarily.

The domain names should be considered to have been registered and to be used in bad faith because Complainant’s marks date from 1986 and are used in connection with very popular plush toys; Respondent has no known rights to “popples” and has registered the domain names primarily in order to disrupt Complainant’s business and in order to prevent Complainant from reflecting the marks in corresponding domain names, as evidenced by Respondent’s non-use and failure to respond to Complainant’s correspondence.

B. Respondent

When the domain names were registered, Respondent, a United Kingdom citizen, resided with his wife in London, England. The dictionary meaning of ‘to popple’ is to move in a tossing, bubbling or rippling manner, as in choppy water. Respondent’s wife found that word in the dictionary. In choosing this name at the time of registration, Respondent understood that no-one can hold exclusive rights to a generic word. Complainant has not produced evidence to suggest its use of ‘popples’ has led to that word becoming a distinctive or famous mark. At the time, neither Respondent nor his wife knew of Complainant nor of the word ‘popples’ other than its dictionary meaning.

The domain names are identical to Complainant’s trademark. The use Respondent and his wife intend for the domain names is as an information resource facility on the subject of childcare for nannies and parents in London, England. This use would not compete with Complainant’s present or intended uses. Since a domain name cannot capture the design elements of a mark, the disputed domain names will not be confusingly similar.

Respondent’s work on the business concept began in early 1999.  By January 2000, it had developed sufficiently to move forward with registering the disputed domain names. Respondent  felt ‘popples’ would appeal to parents and nannies alike. It reminded his wife of Mary Poppins.

The original launch date was to be June 2000 but Respondent accepted a job offer in the United States and arrived there with his wife in May, 2000 on H1B visas, the conditions of which make it difficult to proceed with the project for the time being.

The holding pages are provided automatically by uk2net.  Respondent has no control over what is displayed unless he requests further paid services.

There is precedent for the proposition that failure to turn over a domain name, without more, cannot constitute bad faith.

C. Additional Submissions

There is ample evidence that there is an element of fame associated with Complainant’s Popples characters. Complainant’s mark is not generic. As to confusion, see Virtual Works, Inc. v. Network Solutions, Inc., Volkswagen of America Inc, 2000 U.S.Dist. Lexis 2670 (E.D. Va. 2000). There is no evidence Respondent has attempted to register “popples” as a trademark nor engaged in business using the word popples. Complainant’s U.K. trademark rights date from 1988 and Popples licensed goods were marketed and sold throughout the U.K. from the mid-1980s to the early 1990s. There is no evidence Respondent has no control over what is displayed on the website.

As to Respondent’s claim that failure to use does not equate to bad faith and that, due to circumstances that have overtaken him, Respondent is not in a position to launch the website at this time, see Actmedia, Inc. v. Active Media Int’l, Inc., 1996 U.S. Dist. Lexis 20814 (D. Ill.) (finding defendant’s reservation of domain name violated 16 U.S.C. Section 1125 because it constituted unauthorized use and misappropriation of Plaintiff’s mark).

FINDINGS

Complainant has failed to establish all three elements necessary to entitle it to relief under the Policy, for the reasons set out below.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

Whether or not Complainant may have a valid cause of action against Respondent for trademark infringement in the U.S. courts or elsewhere is irrelevant to the issues this Panel is required to decide.

Identical and/or Confusingly Similar

It is common ground that the disputed domain names are identical to Complainant’s POPPLES trademarks. Complainant has established this element of its case.

Rights or Legitimate Interests

Although Complainant bears the onus of proof on this, as on all issues, the Policy provides for a Respondent to demonstrate its rights or legitimate interests in a disputed domain name if the Panel is satisfied, on all the material before it, that any of the (non-exhaustive) circumstances enumerated in paragraph 4(c) are present.  One such circumstance is:

“(i)              before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.

Even perfunctory preparations have been held to suffice for this purpose: See e.g. Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution Mar. 20, 2000); Lumena s-ka so.o. v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000) and Royal Bank of Canada v. Xross, AF-0133 (eResolution May 19, 2000). In Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001) the Panel said:

“Preparations for developing a business that could logically be marketed under a certain domain name can constitute legitimate preparations for use, even if the proposed business has no need to use the exact name at issue.  See, e.g., PRIMEDIA Special Interest Publications Inc. v. Treadway, Case No. D2000-0752 (WIPO August 21, 2000) (preparations to develop photography-oriented website created legitimate interest in particular domain name “shutterbug.com”).” 

Here Complainant first wrote to Respondent on August 14, 2001. Respondent says the first communication he received from Complainant was on November 9, 2001. Without resolving this issue, the Panel takes the August, 2001 date as the earliest date on which Respondent could possibly have had notice of this dispute.

Respondent has provided (in hard copy and on CD) copies of handwritten notebook entries and screen shots which clearly show preparations to design a website relating to the topic of childcare under the domain names <popples.com>, <popples.net> and <popples.co.uk> [not in issue here].

Annex 1, Exhibit 8 is a series of drawings of a clown. It is dated “4/11/99” (which the Panel takes to be the U.K. way of referring to November 4, 1999). A further depiction of the clown appears in a screen development shot (Annex 1, Exhibit 9) entitled “popples-clown-title.gif” dated “11/8/99” (which the Panel takes to be the U.S. way of referring to November 8, 1999).

Annex 1, Exhibit 5 shows a hand drawn design of a webpage entitled “popples.com”. The date of that drawing is not legible. However, beneath that drawing, on the same notebook page, is another drawing of a webpage entitled “Childcare” which is dated 24/01/00.

Annex 1, Exhibit 2  (an enlargement of part of Exhibit 1) does not refer to the word “popples” but otherwise provides corroboration of Respondent’s account. It reads:

“Questions for us

1. Who is going to come to our site initially and for what reason? Will parents who don’t have nannies be interested?

2. Why would they return to the site frequently?

3. How will they have heard about it?

4. It’s aimed at Londoners but what about the rest of England and the world? What would make them come back regularly? If at all? (forget it for now)

5. What is going to make our site stand out above the rest inclu other parent/children/nanny sites?  All embracing, see 1,2,3

4.(sic) What are our plans for the website longterm? Can we still do it in US if it is successful?

5.            ”

Annex 2, Exhibit 8 shows numerous tests carried out under the ‘popples_uk” name between December 29, 1999 and February 18, 2000. Annex 1, Exhibit 3 is a notebook page dated 29/1/00, which sets out a proposed timetable with a view to a June “launch window”.

Annex 3, Exhibit 1 is a visa entry showing admission to the U.S. at Chicago on May 9, 2000 and the notation “H1B” on Respondent’s U.S. visa. Annex 3, Exhibit 2 appears to contain information as to the terms of an H-1B visa which could be interpreted as precluding Respondent’s operation of a U.K.- based Internet business while employed in the United States under such a visa.

Complainant has not challenged the authenticity of the evidence provided by Respondent on this issue. In its further submission, Complainant relies on Respondent’s non-use of the disputed domain names. But this is insufficient to overcome the clear demonstration by Respondent of its preparations, prior to notice of this dispute, to use the disputed domain names in connection with a bona fide offering of services.

The Panel finds that Complainant has failed to establish this element of its case.

Registration and Use in Bad Faith

Respondent’s explanation for the choice of domain names is plausible and his demonstrated preparations to use those domain names are consistent with that explanation. Despite the registration in the U.K. of Complainant’s POPPLES trademark in 1988 and the sale there of its products during the mid-1980s through early 1990s, there is no reason to reject Respondent’s assertion that he and his wife were unaware of Complainant and its mark prior to Respondent’s registration of the disputed domain names. It is therefore impossible to accept Complainant’s contention, unsupported as it is by any persuasive evidence, that those names were registered in order to prevent Complainant from reflecting its mark in corresponding domain names, nor that the primary purpose of Respondent was to disrupt Complainant’s business. In this regard Complainant points to Respondent’s non-use and his failure to respond to Complainant’s correspondence. In light of Respondent’s explanation for his non-use and the uncertainty over whether Respondent ever received Complainant’s first two communications, neither of these considerations establishes bad faith registration and use.

Complainant has not established this element of its case.

DECISION

Complainant having failed to satisfy the Panel that Respondent has no rights or legitimate interests in respect of the disputed domain names and that they were registered and are being used in bad faith, the Panel states, pursuant to rule 15 (e), that the dispute is not within the scope of paragraph 4(a) of the Policy. The Complaint is therefore dismissed.

___________________________________________________

Alan L. Limbury, Panelist
Dated: May 22, 2002

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