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Horn Abbot International Limited v. Ian McMillan [2005] GENDND 762 (25 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Horn Abbot International Limited v. Ian McMillan

Case No. D2005-0198

1. The Parties

The Complainant is Horn Abbot International Limited, of Christ Church, Barbados, represented by Lovells of Paris, France.

The Respondent is Ian McMillan, of Brighton, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <trivialpursuits.net> (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2005. On February 21, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On February 22, 2005, the Registrar 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 contacts. The Center verified that 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”).

The Center formally notified the Respondent of the Complaint, and the Notification of Complaint and Commencement of Administrative Proceeding advised that the proceedings had commenced on February 28, 2005. The notification advised that the due date for Response was March 20, 2005. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent’s default on March 29, 2005.

On March 30, 2005, the Respondent sent an email to the Center which made it clear that he had received the Notification of Respondent Default (which had included reference to the Respondent having failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding). In this March 30 email, the Respondent stated:

“Documents containing the deadline were sent as attachments without advance notification. This opens any system to [sic] attack viral attack. I – like many – do not accept unsolicited attachments. As a result of this inappropriate policy I was not aware of a deadline.

That being the case I insist the panel read my response including all the attached documents

Ian McMillan”.

An unverified response, including numerous attachments, accompanied that email.

On March 31, 2005, the Center responded, acknowledging receipt of the late response and advising that it would be submitted to the Administrative Panel, once appointed, for its consideration. The Center advised that it would be a matter for the Panel, in its discretion, to decide whether to consider the late response.

The Center appointed Warwick Smith as the sole panelist in this matter on April 7, 2005, he having submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

In the course of reviewing the case record, the Panel, by requests and directions made on April 21, 2005, required that the Complaint be re-notified with a new commencement date, and that the re-notification document be sent by courier to the Respondent’s preferred Brighton address. The Panel directed that the Respondent be permitted to file any additional response he may wish to file, within the time provided in the in the re-notification documents. The time for the Panel to give its decision was extended to May 23, 2005.

The Complaint was re-notified on April 21, 2005, and a copy was sent by courier to the correct Brighton address. The new date for filing a Response was May 11, 2005.

On May 9, 2005, the Respondent submitted by email an additional response. No signed hard copy of this response has been received, and the Respondent has not provided the certificate required by paragraph 5(b)(viii) of the Rules.

The time for the Panel to give its decision in the matter is further extended to May 25, 2005. The Panel finds that it has been properly constituted.

4. Factual Background

The Complainant

The Complainant is a company located in Barbados. It was formed by the creators of the famous board game, Trivial Pursuit. The game was first introduced in 1982, and the Complainant says that, since 1982, more than 70 million units have been sold worldwide.

The Complainant’s Domain Names

The Complainant says it has registered numerous “trivial pursuit” domain names under a number of gTLD’s and ccTLD’s. These include <trivial pursuit.net> and <trivial-pursuit.net>, both of which point to the Complainant’s main website at “www.trivialpursuit.com” (the “Complainant’s website”). The Complainant has also produced evidence that its TRIVIAL PURSUIT marks have been used on a number of affiliated third party websites, including “www.uproar.com”, a site offering Trivial Pursuit on-line games.

The Complainant’s website is used to market a line of “trivial pursuit” games, including some newer games which appear to be centred around specialist topics (e.g. “TRIVIAL PURSUIT the Lord of The Rings Movie Trilogy Collector’s Edition”, and “TRIVIAL PURSUIT for Kids volume 6”).

The Complainant’s website has pages which describe the history of the game and provide online games, and there are pages called “Trivia News” and “Trivia Store”. The “Trivia News” page describes Trivial Pursuit as “the world’s most popular trivia game.” A page from the Complainant’s website headed “Board Games”, describes the Trivial Pursuit game as “a party in a box… people talking to people in a revolt against television… For only in a TRIVIAL PURSUIT game will you be asked questions as zany as “was Humpty Dumpty pushed?” and as difficult as “What modern day animal is related to the prehistoric merychippus?””. That description appears to adequately capture the essence of the game – it is a quiz game based around a board and question cards which contain a mix of serious questions and others which might be described as “zany” or “trivial”.

The Complainant’s Trademarks

The Complainant is the registered proprietor of numerous trademarks consisting of or including the words “Trivial Pursuit”. The Complainant says that it has over 160 registrations worldwide of trademarks consisting of those words, either alone or with some device or other element. It is not necessary to refer to all of these registered marks. It is enough for the purposes of this proceeding to note that the Complainant is the registered proprietor of the word mark “TRIVIAL PURSUIT” in the European Community and in the United Kingdom, in a number of classes.

The word mark TRIVIAL PURSUIT was registered in the United Kingdom in International Class 28 with effect from April 21, 1988. The Registered Proprietor is the Complainant. The class 28 specification is for “Board games and printed cards for use with the aforesaid goods, all included in class 28.”

The same mark was registered in the United Kingdom in class 9 of the Register, with effect from June 13, 1986. Again, the Complainant is the Registered Proprietor. The class 9 specification includes “Electronic amusement apparatus adapted for use with television receivers… sound and video recordings… computer programmes… video games recorded on electronic or on magnetic materials…”

The word mark TRIVIAL PURSUIT was also registered in the United Kingdom in international class 41, with effect from November 22, 1988. Again, the Complainant is shown as the Registered Proprietor. The class 41 specification includes: “Production of television and radio programmes, cinefilms and of sound recordings, rental of video and audio recordings… entertainment services, provision of entertainment by telephone; all included in class 41; all relating to games.”

As from May 6, 1999, the Complainant has also been the Registered Proprietor of the TRIVIAL PURSUIT word mark in the European Community, in international classes 9, 28, and 41. The specifications are somewhat different – while the class 28 specification includes board games, it also includes “electronic games, toys, playthings, novelties and dolls.” The class 41 specification in the European Community registration includes “provision of entertainment for accessing via communications and computer networks… entertainment information services.”

The Complainant also has a registration of the word mark TRIVIAL PURSUIT in class 16 of the Register, covering United Kingdom “paper, paper articles, cardboard and cardboard articles, all included in class 16; books, printed matter, stationery; instructional and teaching materials (other than apparatus); ordinary playing cards, greeting cards and calendars.” That mark (No. 1269170) was the subject of an application made on June 13, 1986, and it was registered on September 30, 1988.

The Respondent and the Domain Name

The domain name was registered on September 25, 2002.

Although the Respondent has filed substantial submissions, with numerous attachments, he has not said much about why he acquired the domain name and what he intends to do with it. However, in his second, and more substantial submission, the Respondent says:

“I purchased the name with a view to creating a website dealing with the 21^st Century’s unique trivial pursuits, specifically the fact that most aspects of life now involve a commodity as opposed to individual creativity, from sex to salvation via surgery and sweeteners.” Allow me to quote from a website dedicated to documenting the less inspiring elements of human evolution:

“Trivial pursuits & the pursuit of trivia. Said another way, this is “wasting time”. Our corporate teachers encourage us to memorize, learn, and study things which are of no value. Batting averages, field goal percentages, dresses worn to the Emmys, etc. In and of themselves, runs batted in (RBIs) and rushing yards are not evil or bad. And hobbies and interests are fine. But in our culture of excess, our time is consumed by trivia… useless information.””

A little later on the same page of his second submission, the Respondent says “My intended use of the name would have honoured my mother tongue as opposed to rendering their [presumably a reference to the Complainant] singular interpretation of it as a mere commodity.”

It appears from an attachment to the Complaint that back in August 2003, the domain name was then pointing to a website which featured the words: “London SW@Knightsbridge Online”, and appears to have been a webhosting site.

By December 2003, the domain name was no longer pointing to the Knightsbridge Online website – a screen shot taken on December 4, 2003, simply shows the expression “www.trivialpursuits.net” in bold type, with “webmaster@trivialpursuits.net” (in smaller font) immediately below that. A February 2005 screen shot is the same.

The Respondent has not disputed that the domain name resolved to the Knightsbridge Online website in August 2003, nor that that was no longer the case by December of that year. There is no evidence of why or for how long the domain name was pointing to the Knightsbridge Online website prior to August 2003, and the Respondent has not explained why that state of affairs changed between August and December of that year.

Pre-Commencement Communications Between the Parties

On September 1, 2003, the Complainant’s lawyers wrote to the Respondent. They said that their client had recently discovered that the Respondent had registered the domain name. They referred to the Complainant’s registered rights in the TRIVIAL PURSUIT marks in the United Kingdom under registration no. 1230233, and in the European Community under no. E00727123. They mentioned the Complainant’s website at “www.trivialpursuit.com”, and alleged that there could be no competing legitimate interests in the name. They alleged that the registration of the disputed domain name would be taken as a reference to the Complainant, which would result in significant damage to the Complainant. They asked the Respondent to refrain from providing any services under the domain name, and that he transfer the domain name to the Complainant. They also asked that the Respondent refrain from attempting to register any domain name in the future which included the name TRIVIAL PURSUIT or any similar expression. The solicitors’ letter sought undertakings on those points, and concluded by advising that the Complainant would have to revert to legal proceedings to protect its position in the event of the Respondent failing to provide the undertakings.

The Respondent replied by an email to the Complainant’s solicitor stating

“I find your aggressive tone unacceptable, choose not to respond to your threats, and do not agree to your conditions.

Ian McMillan”

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions:

5.1 The domain name is identical or confusingly similar to the Complainant’s TRIVIAL PURSUIT marks, for the following reasons:

5.1.1 the Complainant is the registered proprietor of the mark TRIVIAL PURSUIT in the United Kingdom and in the European Community.

5.1.2 Leaving aside the generic “www” and “.net”, the only distinguishing feature between the domain name and those registered marks is the letter “s” at the end of the domain name.

5.1.3 UDRP Panels have consistently held that domain names containing obvious misspellings or close variants of a trademark owner’s mark are identical or confusingly similar to that mark (citing Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v Telmex Management Services, WIPO Case No. D2001-1428).

5.1.4 Incorporation of a trademark in its entirety in a domain name, is sufficient to establish confusing similarity (citing Magnum Piering, Inc. v. The Mudjackers and Garwood, S Wilson, Snr., WIPO Case No. D2000-1525, referring to eAuto, LLC v. Triple S Auto Parts, WIPO Case  No. D2000-0047; and Wal-Mart Stores, Inc. v. Richard MacLeod DBA For Sale, WIPO Case  No. D2000-0662).

5.1.5 The Complainant’s mark is a famous trademark – an “s” at the end of that mark merely renders the mark in the plural form, and does not remove the confusing similarity.

5.1.6 The Panel in InfoSpace, Inc. v Registrar Administrator Lew Blanck, WIPO Case  No. D2000-0060, stated: “the addition of www before Complainant’s mark and the addition of “s” after the mark are not sufficient to avoid confusion”.

5.2 The Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons:

5.2.1 the Respondent does not have any trademark rights in the domain name.

5.2.2 the Respondent has never been authorized or otherwise permitted by the Complainant to use any of its trademarks or to apply for or use any domain name incorporating any of those trademarks.

5.2.3 the Complainant’s trademark rights pre-date the registration by the Respondent of the domain name.

5.2.4 the Respondent is unable to rely on the example of a right or legitimate interest set out in paragraph 4(c)(i) of the Policy. That is so because:

a) The domain name has not been used since its registration in September 2002, and currently points to a holding page.

b) The Respondent’s failure to use the domain name for over two and a half years is sufficient to rebut any argument that the Respondent has been engaged in preparations to use the domain name.

c) Given the Complainant’s extensive reputation and the TRIVIAL PURSUIT board game on a worldwide basis, any future use by the Respondent of the domain name would not be considered as a bona fide offer of goods or services (“the expression bona fide” meaning “without intention to deceive”).

d) In this case, the Respondent’s intention is to misappropriate the Complainant’s trademarks and brand, and any future use of the domain name for offering products or services would not be a “genuine”, “real”, or “without an intention to deceive”, use. Any such use would therefore not be a bona fide use. Further, the Complainant’s TRIVIAL PURSUIT trademark has been deliberately altered by the addition of the letter “s” to potentially direct users to a competing website.

e) The domain name is confusingly similar to the <trivialpursuit.net> and <trivial-pursuit.net> domain names which are used by the Complainant in its business.

f) The screen capture taken in February 2005, is the same as the December 2003 screen, demonstrating that, since December 4, 2003, there has been no legitimate interest in or use of the domain name.

5.2.5 The Respondent cannot rely upon paragraph 4(c)(ii) of the Policy. He is not commonly known by the domain name.

5.2.6 The Respondent cannot rely upon paragraph 4(c)(iii) of the Policy. As the domain name is not currently being used, the Respondent cannot claim that he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

5.3 The domain name has been registered and is being used in bad faith. The Complainant relies on the following in support of that contention:

5.3.1 There can be no doubt that the Respondent knew about the existence of the game Trivial Pursuit and the TRIVIAL PURSUIT trademarks when he registered the domain name in September 2002.

5.3.2 The TRIVIAL PURSUIT board game had enjoyed worldwide repute for many years prior to September 2002, and it is now one of the best selling adult games in history.

5.3.3 Although the domain name is not currently being used, non-use can still constitute passive bad faith use (citing Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000 – 0003 – registration together with “inaction” can constitute bad faith use in certain circumstances. What those circumstances may be will depend on the particular facts of the specific case).

5.3.4 The facts of this case which support a finding of passive bad faith use are:

a) the Respondent’s prior knowledge of the Complainant’s trademark rights and the fact that the TRIVIAL PURSUIT marks have a strong reputation both in the United Kingdom and across the world. A survey conducted in 2003, reported that 37% of those surveyed in the United Kingdom said that they had TRIVIAL PURSUIT games in their households. The Respondent must have been well aware of the Complainant’s trademark rights and the popularity associated with the Trivial Pursuit game, when he chose to register the domain name.

b) Such actual or constructive knowledge accompanied by passive use of the domain name constitutes bad faith for the purposes of paragraph 4(a)(iii) of the policy (citing Expedia, Inc. v. European travel Network; WIPO Case No. D2000-0137).

c) Because the TRIVIAL PURSUIT marks are so widely known, especially in the United Kingdom, any potential use by the Respondent of the domain name will be unlawful and will amount to bad faith.

d) The Respondent has been involved in prior disputes relating to domain name registrations (referring to Countryside Alliance Ltd v Ian Mac, Unfinished Business, WIPO Case No. D2001-086, where the Panel ruled against the Respondent).

e) The Respondent is involved in the registration of other domain names consisting of existing well known trademarks. For instance, the Respondent is the administrative contact of the domain name <bbc-tv.com>, which does not point to any BBC website. The registrant of the <bbc-tv.com> domain name, Unfinished Business, has the same address as the Respondent in this case. Further, the Respondent in this case is using the email address: ian@bbc-tv.com.

B. Respondent

Large parts of the two documents submitted by the Respondent consist of attacks on the good faith or integrity of the Complainant or its representative.

There are also generalized attacks on corporate bodies, corporate profits, and the legal profession, often expressed in colourful prose (e.g. the corporates are “the monied set”, and their solicitors are their “lackeys”, and “justice can never prevail while these professionals remain prepared to submit half truths or otherwise distort the whole truth on behalf of anyone prepared to pay their often substantial fees”).

The first response submitted also contains threats directed to the Panel – e.g., “so, Dear Adjudicator, if you vote for corporate profit hiding behind third rate legalise, at least be so good as to state who you are and where you can be accessed in order that those who feel otherwise may freely vent their frustration upon as appropriate. Such a decision should result in much derision and I undertake to assist in its creation any way I can.”

Submissions of this sort must be firmly laid on one side. When the Respondent registered the domain name, he acknowledged that domain name disputes were to be resolved in accordance with the Policy. The Registrar described that as an “indispensable requirement” for the registration of domain names. The registration agreement also required that the Respondent declare his agreement to the application of the Policy in the event of disputes occurring.

Those provisions underline the fact that the Panel’s task is to resolve the dispute by applying the provisions of the Policy. The Respondent’s general political views on corporates, corporate profit, and the legal profession, have no relevance to that exercise. Equally, any contempt or threats directed at the Panel must be ignored – the parties are entitled to have the dispute resolved fairly and impartially on the basis of the evidence produced; and the application of the Policy to that evidence.

The Respondent’s Contentions

5.1 That said, the Response documents do contain some constructive submissions in opposition to the Complaint. Those submissions are summarized below:

5.1.1 the domain name is confusingly similar to a phrase which was in common use in English speaking countries before the Trivial Pursuit game was conceived.

5.1.2 The Respondent has a right and legitimate interest in the continuing use of the phrase “trivial pursuits”, meaning what it has always meant, and in preventing that phrase from being demeaned and degraded by appearing to refer to nothing more than a game.

5.1.3 Any future use of the domain name by the Respondent would qualify as a bona fide use, due to the extensive use of the phrase “trivial pursuits” throughout the English speaking world.

5.1.4 There are more trivial pursuits than can be counted. There is but one game and appropriately, a singular version of the common expression has been adapted to fit it.

5.1.5 The registration and use by the Complainant of the <trivialpursuit.com> domain name is appropriate in that it is singular and therefore relates to one trivial pursuit, namely the game. To attempt to prevent the use of the more common version as used by millions on a daily basis, is without merit.

5.1.6 A trivial pursuit, in common parlance, describes an activity that is useless or frivolous.

5.1.7 Generic expressions cannot be trademarks. The fact that a string of letters contained within this particular generic term is both a trademark and a made-up term (“trivial pursuits”) does not confer on the mark holder any rights to the generic expression itself. This isn’t a case of a respondent simply pluralizing a trademark.

5.1.8 The Complainant has not sought to protect its trading name. That is clear from the numerous screen captures produced by the Respondent which show the number of domains using the expressions “trivialpursuit” or “trivialpursuits”.

5.1.9 The Expedia case does not assist the Complainant. “Expedia” is an example of a wholly created trade name not to be found in any dictionary.

5.1.10 With any unique/designer name as a starting point, any attempt to benefit or otherwise deceive through the use of look-alikes or sound-alikes must of course draw upon the original. “Trivial pursuits” is quite the reverse in that the creators of the game have singularised a phrase in everyday use through at least the English speaking world and so must remain relatively unprotected until the time they have sufficient clout to purchase exclusive use of the entire English language.

5.1.11 The Complainant’s strategy in commencing this proceeding is rather odd given the cost of legal action relative to the cost of the domain name purchase. Had the Complainant genuinely wished to protect the trade name TRIVIAL PURSUIT, it would have purchased all available domains using that and similar names.

5.1.12 The Respondent has provided evidence of a domain reseller selling the domain name <trivialpursuits.com>. The Complainant has chosen not to pursue the registrant of that domain name, notwithstanding that it is closer to the address of the Complainant’s main website than the disputed domain name.

5.1.13 A mere failure to set up a website at the domain name within some arbitrary time span is not sufficient proof of bad faith.

5.1.14 The cases cited by the Complainant do not advance its case. The Complainant’s contentions relating to the Respondent’s motives are based on nothing more than surmise.

5.1.15 Google searches run by the Respondent on the expression “trivial pursuits” show more pages devoted to the original usage of the phrase than relate to the Complainant’s game. Contrary to the Complainant’s claims, the original phrase remains (much more) firmly embedded in the public domain than the game, despite the Complainant’s extensive marketing efforts.

5.1.16 The Respondent purchased the domain name with a view to creating a website dealing with the 21st Century’s unique trivial pursuits, specifically the fact that most aspects of life now involve a commodity as opposed to individual creativity, from sex to salvation via surgery and sweeteners.

5.1.17 The Respondent’s use of the <bbc-tv.com> mail address: the Respondent purchased this domain name while part of a script writing team. The names of the team members were Bernice, Blair, and Charles (Charles being the Respondent’s first name). The team submitted material to comedy performers and also to the BBC.

5.1.18 International non-generic names are not trademarks. The phrase “trivial pursuits” is a non-generic name as evidenced by the usage demonstrated through the Google searches. The Respondent’s intended use of the name would have honoured the English language as opposed to the Complainant’s singular interpretation of it as a mere commodity.

5.1.19 The creators of the Trivial Pursuit game chose to make use of a non-generic name/phrase which had been in use for many years before their product launch. They further elected to use the rather less common singular form. They do not have a “unique” or “designer” brand name like Expedia, Microsoft, etc. – rather, they have an adaptation of a much-used and well known phrase. Their consequently weak trademark remains – at best – in permanent contention with the original phrase. The recognition factor so cherished by marketing departments is relatively useless in a real world situation, as evidenced by the Google search. The Complainant is seeking to limit, inhibit and curtail something which cannot be copyrighted, trademarked, or otherwise deemed intellectual property.

5.1.20 In summary, the Complaint must fail on the following grounds:

(i) weak trademark – generic expressions cannot be trademarks.

(ii) unproven allegation of bad faith with regard to the Respondent’s acquisition and use (non-use)

(iii) the precedents cited by the Complainant are extremely weak and do not support its case

(iv) the Complainant is making a groundless assertion that it alone has the universal right to make use of an already universal phrase.

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the 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 Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

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

(ii) [the respondent has] registered the 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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the 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.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

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

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”.

A. Identical or Confusingly Similar

The Complainant has provided sufficient proof that it is the registered proprietor of the word mark TRIVIAL PURSUIT in the United Kingdom and the European Community. Those registrations give the Complainant monopoly rights to a limited extent, namely the right to the use (in trade) of the mark in the particular jurisdictions, in respect of the board games and the various other goods or services set out in the relevant specifications. It is not the role of the Panel in an administrative proceeding such as this, to look behind the registrations and determine whether or not the marks should have been registered. Numerous WIPO UDRP Panel decisions have held that any such enquiry is beyond the scope of the dispute resolution procedure under the Policy – if a respondent is of the view that a particular trade mark should not have been registered, that respondent’s appropriate recourse is to take proceedings in the relevant jurisdiction to have the trade mark expunged from the Register, see for example, the decision of the majority in 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. 2000-1223).

There can be no doubt that domain name is confusingly similar to the Complainant’s TRIVIAL PURSUIT mark. The only differences are the generic “www” and the “.net” suffix, and neither is to be taken into account in determining the question of confusing similarity. That just leaves the addition of the letter “s”, and the Panel has no difficulty in concluding that the addition of that letter does nothing to alleviate the confusing similarity between the TRIVIAL PURSUIT mark and the domain name. The domain name and the TRIVIAL PURSUIT word mark are very nearly identical, both visually and aurally. Nor is there enough of a difference in the impressions, or ideas, which are respectively conjured up by the domain name and the registered mark, to alleviate likely confusion between the two. The Panel has no difficulty in concluding that the Complainant has established confusing similarity with its mark, and thus sufficiently proved the matters required to be proved under paragraph 4(a)(i) of the Policy. The real controversy in this case is not on the question of confusing similarity, but on the related issues of right or legitimate interest (paragraph 4(a)(ii) of the Policy) and bad faith registration and use (paragraph 4(a)(iii) of the Policy).

B. Rights or Legitimate Interests

In the view the Panel takes on the issue of whether the domain name was registered and is being used in bad faith, it is not necessary for the Panel to address this part of the Complaint.

C. Registered and Used in Bad Faith

The Complainant submits that there can be no doubt that the Respondent knew about the existence of the game Trivial Pursuit, and the TRIVIAL PURSUIT marks, when he registered the domain name in September 2002. It acknowledges that the domain name is not being used, but submits that the Panel should infer that the Respondent has been guilty of “passive” bad faith use of the kind described in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case the Panel held that registration, together with a respondent’s “inaction”, could in certain circumstances constitute bad faith registration and use under paragraph 4(a)(iii) of the Policy, notwithstanding that the respondent had not linked the at-issue domain name to a website or made any other use of it. Exactly when inactivity by a respondent might be regarded as ‘bad faith use’, was a question which could not be answered in the abstract, and could only be dealt with in respect of the facts of a specific case. In the Telstra case, the Panel took into account the strength of the complainant’s trade mark, the absence of any evidence of actual or contemplated good faith use of the domain name by the respondent, and the fact that the respondent had concealed his true identity by operating under a name that was not his own (and had provided false contact details in breach of his registration agreement). The Panel in Telstra went on to say: “…taking into account all of the above, it is not possible to conceive of any plausible active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” The Panel went on to conclude that the domain name was being used in bad faith.

The Complainant refers to Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, apparently in support of a proposition that actual or constructive knowledge of the Complainant’s rights is enough for a finding of “passive” bad faith registration and use. However that was not a case of inactivity on the respondent’s part – the at-issue domain name in that case pointed to the respondent’s own active website, which offered a competing online travel service.

The requirement that there be no plausible way in which the domain name might be used legitimately, was noted by the Panel in the later panel decision in Telstra Corporation Ltd. v. David Whittle, WIPO Case No. D2001-0434. In the Panel’s view that requirement is at the heart of the matter, and the question to be asked in this case is: “taking into account all of the circumstances in this case, is it possible to conceive of a plausible active use of the domain name by the Respondent that would be legitimate?”

The Complainant says that the Respondent must have been well aware of the Complainant’s trademark rights and the popularity of its Trivial Pursuit game when he registered the domain name, and that in those circumstances any potential use by the Respondent of the domain name will be unlawful and will amount to bad faith. Beyond that general submission, the Complainant refers to the WIPO decision in the Countrysidealliance Limited case supra, in which the present Respondent was held to have acted in bad faith. The Complainant also refers to the Respondent’s use of the <bbc-tv.com> domain name. Neither matter really advances the Complainant’s case very far. The fact that the Respondent may have acted in bad faith in other circumstances on another occasion is not in itself evidence of bad faith in this case, and the Respondent has provided some explanation for his registration of the <bbc-tv.com> domain name. While that explanation (that the Respondent was part of a script writing team whose members’ names were Bernice, Blair and Charles) was not supported by any documents, and the Panel has reservations about it because the explanation may seem a little contrived, in an administrative proceeding such as this the Panel is hardly in a position to find that the explanation is false. Also, the BBC itself appears not to have pursued the matter, and in those circumstances this Panel is reluctant to draw inferences relating to the propriety or otherwise of the Respondent’s use of the <bbc-tv.com> domain name.

Be that as it may, and returning to what the Panel perceives to be the core question, the Panel finds that it is not able to categorically say that it cannot conceive of any plausible actual or contemplated use of the domain name which would not be illegitimate. The main reason for that is that, unlike made-up names like Telstra, the expression “trivial pursuits” is a descriptive expression which appears to be in wide use in the English speaking world, in senses which are unrelated to the Complainant and its activities. As the panelist said in Asphalt Research Technology Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005, common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis” – citing Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161 and Eauto, LLC v. EAuto Parts, WIPO Case No. D2000- 0096. See also PRIMEDIA Special Interest Publications Inc. v. John L. Treadway, WIPO Case No. D2000-0752 – where the panel was considering a complaint relating to the domain <shutterbug.com>. The complainant in that case published a magazine under the SHUTTERBUG mark, intended for advanced amateur and professional photographers. The respondent argued that it had been his intention to set up a website for hobbyists and amateur photographers, and that the name “shutterbug” was a common, descriptive term used extensively in photography-related businesses. The panel in that case said: “The Mark is a word, shutterbug, that is a common, generic term, descriptive of photographic enthusiasts. Complainant’s Mark extends only to magazines related to photography; ownership of the Mark does not ipso facto give Complainant exclusive right to the descriptive word shutterbug in all contexts related to photography. Third party use of shutterbug and variations is widespread among businesses related to photography, and there is no evidence of action by Complainant to enjoin this use….”

The material which the Respondent produced from the Google searches on “trivial pursuits”, appears to demonstrate that there is quite widespread use of the expression “trivial pursuits” (at least in the plural form of the expression) in a descriptive way which is unrelated to the Complainant’s game or its trademarks. For example, the “Who’s Who 2005 item from January 2005 headed “Trivial Pursuits?”, lists the various hobbies or recreational activities enjoyed by various named individuals – these activities being dubbed “trivial pursuits”. Other documents produced by the Respondent also show the expression “trivial pursuits” used to describe casual and unimportant, or apparently pointless, activities – an example of that is the item by Keith Epstein headed “Trivial Pursuits”, which describes the propensity of early United States President Thomas Jefferson to fill up numerous notebooks with trivial details of his daily life. And the article by Foy Valentine, headed “Trivial Pursuits”, also focuses on the pleasures of indulging in small, apparently trivial pastimes or recreational activities. The author says “When you put together such little experiences, such trivial pursuits, you get a collage of memories and tap into a vast treasure trove of some of the best things in life…” There was also evidence of a play by Frank Vickery entitled “Trivial Pursuits”.

Against that background, the Respondent says that his intention was “to create a website dealing with the 21^st Century’s unique trivial pursuits, specifically the fact that most aspects of life involve a commodity as opposed to individual creativity, from sex to salvation via surgery and sweeteners”. He goes on to refer to “trivial pursuits” as “wasting time”, and provides as an example the learning, studying and memorizing of things which are of no value.

That would be a quite different concept from the Complainant’s Trivial Pursuit, which is of course a game rather than writings or musings of the kind which the Respondent says he intended for the proposed website.

The question of whether the Respondent’s statements about his intentions are to be believed is difficult. He has produced nothing in writing to show that he has made any preparations for the creation of the website, and of course his submissions in response were not certified in the manner required by the Rules. On the other hand, the Respondent appears to hold passionate views on certain matters, and he is obviously a skilled writer. The Panel does not think it can be said to be improbable, or implausible, that he would want to establish an Internet platform for the dissemination of his views.

The onus of proving bad faith remains on the Complainant, and at the end of the day the Panel is not brought to the point of being unable to conceive of any plausible use of the domain name by the Respondent which would not be illegitimate. Some people who use the Internet do appear to be interested in writing and reading about unimportant and apparently pointless recreational and other human activities or pursuits which the Panel thinks can fairly be described as “trivial”, and if it was the Respondent’s intention to eventually launch a website dealing with such “trivial pursuits” the Panel is not persuaded that any such use would necessarily involve infringement of the Complainant’s trademarks, or any other illegality. He says that was his intention, and in an administrative proceeding such as this, the Panel is not in a position to dismiss that statement as being clearly false, in particular when taking into account the descriptive character of the disputed domain name.

For the foregoing reasons, the Panel is not satisfied that the Complainant has established bad faith registration and use of the domain name, and the Complaint must be dismissed.

Finally, the Panel refers to the Respondent’s allegation that the Complainant has acted in bad faith in bringing this Complaint. That allegation is rejected. This is not a case where the Complainant should have appreciated at the outset that the Complaint could not succeed. Its trademarks are almost identical to the domain name, and the Respondent effectively ignored the cease and desist letter sent to him by the Complainant’s solicitors in 2003. The Complainant had not authorized the Respondent to use its marks or to register the domain name, and the Respondent elected not to explain his intentions for the domain name to the Complainant when he had the opportunity to do so. The Complaint has not been dismissed because of any bad faith on the part of the Complainant. It has been dismissed because, in an administrative proceeding such as this, where there is no opportunity for the parties’ positions to be fully tested, the Respondent is entitled to the benefit of the doubt, in particular when the domain name in question is of a very descriptive character.

7. Decision

For the foregoing reasons, the Complaint is dismissed.

Warwick Smith
Sole Panelist