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Lyons Partnership, L.P. and HIT Entertainment PLC v. NetSphere, Inc. [2004] GENDND 545 (27 May 2004)

1. The Parties

The Complainants are Lyons Partnership, L.P., Allen, Texas, United States of America; and its parent company HIT Entertainment PLC, London, United Kingdom of Great Britain and Northern Ireland (collectively called ‘the Complainant’), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is NetSphere, Inc., Irvine, California and Chicago, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <barneyonline.com> is registered with Ascio Technologies Inc., Denmark.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2004. On February 17, 2004, the Center transmitted by email to Ascio Technologies Inc. (DK) a request for registrar verification in connection with the domain name at issue. On February 18, 2004, Ascio Technologies Inc. (DK) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 23, 2004. The Center verified that the Complaint together with the amendment to 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 March 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2004. The Response was filed with the Center on March 23, 2004.

The Center appointed Alan L. Limbury, Anthony R. Connerty and David E. Sorkin as panelists in this matter on May 18, 2004. The Panel finds that it was properly constituted. Each member of 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.

The language of the proceeding is English, being the language of the registration agreement.

The Panel has considered the Response despite the late filing.

4. Factual Background

Since January 11, 1994, Lyons Partnership L.P., a subsidiary of HIT Entertainment PLC, has been the registered proprietor of United States trademark No. 1,815,882 BARNEY for books in Class 16. Since July 20, 1993, it has been the registered proprietor of figurative United States trademark No. 1,782,534 BARNEY AND DESIGN for prerecorded videocassette tapes featuring material for educating and entertaining children in Class 9.

The Complainant is registrant of the domain name <barney.com> and maintains a website at “www.barney.com” offering information regarding films, TV programmes, interactive games, DVDs and other products and services.

The disputed domain name <barneyonline.com> was initially registered by the Complainant in 1999 but the registration was not renewed by the Complainant’s ISP. This allowed an entity called Compana LLC to become registrant in October 2003. Compana LLC is believed by the Complainant to be set up to scan for expiring domain names which have a good search engine position and have many daily hits. If the domain name becomes available Compana LLC will register it and sell it to the highest bidder. In about November 2003 the Respondent acquired the registration from Compana LLC.

5. Parties’ Contentions

A. Complainant

Lyons Partnership L.P. is also the registered proprietor of United States trademark No. 1,697,415 BARNEY, registered on June 30, 1992, to “DLM, Inc.” in Classes 9 and 28.

The trademark BARNEY is world famous and is universally held to represent the products and services uniquely provided by the Complainant.

The disputed domain name is confusingly similar to trademarks registered to HIT Entertainment throughout the world. The Respondent has no rights or legitimate interests in the disputed domain name. It has no registered trademark or company and is not known as barney or barneyonline.

The disputed domain name was registered and is being used in bad faith. It was purchased from Compana LLC to generate additional web traffic to the Respondent’s DNA testing website, by taking advantage of the disputed domain name’s links to over 8000 websites, of which the Respondent was aware. Any person entering the domain name into an Internet browser would expect to find information concerning the Complainant’s products and services. Instead the domain name is redirected to a website owned by the Respondent offering DNA testing (http://www.familytreedna.com/genbygen.html). This is a clear indication of bad faith.

B. Respondent

Barney is a common surname and first name. Less than 3% of United States surnames are more popular. The Complainant’s narrowly limited rights in its registered trademark do not provide exclusivity. The disputed domain name is not identical to the Complainant’s trademark. The Complainant has submitted no evidence to establish either fame or secondary meaning in its mark such that consumers are likely to associate the disputed domain name only with the Complainant’s products; no evidence that the Respondent’s use is not legitimate and no evidence of bad faith.

Since 1996, the Respondent has developed, over two phases, a suite of themed information search websites under generic domain names, including <autos.cc>, <clothes.cc> and <sportbettingtips.com>. The disputed domain name was selected for the third phase to represent the theme of a novice web surfer, ‘barney’ being a derogatory term in surfing vernacular to describe someone who is less than skilled at surfing. Before the Complainant filed its complaint and before the Complainant contacted the Respondent, the Respondent had begun to develop its beginner web search site. The Respondent has not completed its development of this phase in the short time available since it registered the disputed domain name.

The Complainant’s premise in alleging bad faith is that the Respondent intentionally registered the disputed domain name to generate additional traffic to the Respondent’s website. The Respondent denies knowledge of the Complainant’s previous website or of its links.

Around the same time as the Respondent was purchasing the disputed domain name, the Complainant fraudulently induced SafeNames, Ltd., to transfer it from the previous registrant to the Complainant, without the consent of the previous registrant, who was able to recover it after numerous demands upon SafeNames, Ltd. Now that the Respondent owns the disputed domain name, the Complainant has engaged in similar [action] to appropriate the domain name, using the Policy and making baseless allegations and threats of legal action.

The Respondent does not own the website “www.familytreedna.com.”

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the 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.

Under paragraph 4(a) of the Policy, a Complainant bears the burden of showing:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used by the Respondent in bad faith.

A. Rights in a trademark

The Complainant Lyons Partnership L.P. clearly has rights in the United States registered trademark No. 1,815,882 BARNEY. Complainant failed to offer evidence that it has rights in the mark No. 1,697,415 BARNEY registered in the name “DLM, Inc.,” although based upon the Panel’s independent investigation Lyons Partnership seems to have acquired that mark by assignment in August 1992.

B. Identical or Confusingly Similar

The disputed domain name is not identical to the mark BARNEY.

Under the Policy, the similarity evaluation is made purely on a comparison between the trademark and the alphanumeric string which makes up the domain name: KeyCorp v. BruceBolton.com, WIPO Case No. D2004-0234, applying earlier cases.

The word ‘online’ is commonly used descriptively for anything connected to the Internet and is common as a part of trademarks for products and services available through the Internet: Deutsche Telekom AG v. foxQ, WIPO Case No. D2004-0102. The domain name <barneyonline.com> is confusingly similar to the trademark BARNEY. The addition of the descriptive word ‘online’ does nothing to prevent the confusing similarity of the domain name with the Complainant’s trademark: Barclays Bank PLC v Mr. Mohammed Hassan, WIPO Case No. D2001-0253. The gTLD ‘com.’ is inconsequential.

The Complainant has established this element.

C. Rights or Legitimate Interests

Although the Respondent’s account of its selection of the disputed domain name is far fetched and the material provided by the Respondent to establish preparations to launch a surfer-oriented search engine website (Exhibit E) does not bear a date prior to the filing of the Complaint, the onus of proof on this, as on all issues, is on the Complainant.

Although the BARNEY marks may well be distinctive or even “world famous,” as asserted by Complainant, there is no evidence before the Panel to support such a finding. Nor has Complainant put forward sufficient material to enable the Panel to infer actual knowledge on the part of the Respondent of the Complainant’s mark.

“Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner”: Shirmax Retail Ltd. v. CES Marketing, Inc., eResolution Case No. AF-0104. Here, the addition to the trademark of the descriptive word ‘online’ does not render this remark inapposite.

The Respondent was entitled to register “barneyonline” as a domain name and has a legitimate interest in it because of its descriptive character: Rusconi Editore S.p.A. v. FreeView Publishing Inc., WIPO Case No. D2001-0875; Energy Source Inc. v. Your Energy Source, NAF Case No. 96364; Ultrafem, Inc. v. Warren R. Royal, NAF Case No. 97682.

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

D. Registered and Used in Bad Faith

The Complainant has not provided any evidence that the disputed domain name was acquired primarily for the purpose of selling, renting or transferring it to the Complainant; to prevent the Complainant from reflecting its trademark in a domain name, together with a pattern of such conduct; or to disrupt the Complainant’s business or attract customer’s seeking to purchase its products or services.

At best, the material before the Panel indicates that the disputed domain name, having once been registered by the Complainant and not renewed, was snapped up by a third party, who sold it to the Respondent, who saw value in it because it attracted many hits. The evidence does not enable the Panel to conclude that the Respondent knew that one reason why the domain name attracted many hits (let alone the only reason) was because it embodied the Complainant’s trademark. Even if the evidence did go so far, mere prior knowledge of a descriptive mark does not establish bad faith: Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In any event, the Respondent was entitled to assume that the Complainant, having allowed the registration to expire, had no further interest in the domain name.

The Panel accepts the evidence provided by the Respondent that it does not own the website “www.familytreedna.com.”

The Complainant has failed to establish this element.

Were the Respondent’s allegation of fraud on the part of the Complainant relevant to the central issues which the Panel is required to determine, the Panel would have afforded the Complainant an opportunity to respond. The allegation concerns alleged conduct towards the previous registrant prior to the Respondent’s registration of the disputed domain name. It is therefore irrelevant to the central issues and accordingly the Panel has had no regard to the allegation.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alan L. Limbury
Presiding Panelist

Anthony R. Connerty
Panelist

Panelist
David E. Sorkin

Date: May 27, 2004