1584
Nominet UK Dispute Resolution Service
DRS 01584
Pixar and Mmtechnology
Decision of Independent Expert
1. PARTIES:
Complainant: Pixar
Country: USA
Respondent: Mmtechnology
Country: G.B.
2. DISPUTED DOMAIN NAME:
pixar.co.uk ("the Domain Name")
3. PROCEDURAL BACKGROUND:
3.1 A hardcopy of the Complaint was received in full by Nominet on 23rd February 2004. Nominet validated the Complaint on 26th February and sent a copy to the Respondent on the same day.
3.2 An electronic copy of the Response was received on 18th March 2004 and a hard copy received on 22nd March 2004 and forwarded to the Complainant.
3.3 The Reply was lodged electronically on 30th March 2004, the due date having been amended by one day because of late importing into the database. The due date for receiving the hard copy was amended by two days due to a postal strike and was received within time on 1st April 2004.
3.4 Informal Mediation failed to produce an agreed resolution. On 29th April 2004 the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").
3.5 On 7th May 2004, Veronica Bailey, the undersigned ("the Expert"), having confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as the Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality, was appointed Expert.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES (if any):
The Response sets out the Respondent's name as Mr Mark Martin. A Nominet WHOIS query result for the Domain Name on 26 February 2004 gives the Registrant of the Domain Name as Mmtechnology. It appears that Mmtechnology is a name used by Mr Mark Martin who appears to be the administrative contact for the Registrant. The contact address for the Registrant has been updated to its address set out above, since the Complaint was lodged.
5. THE FACTS:
5.1 The Complainant is a well-known animation studio creating computer graphics for film making. It has since 1986 been involved in computer animation for films. It creations include the box office hits Toy Story (1995); A Bug's Life (1998); Toy Story 2 (1999); Monsters, Inc. (2001) and Finding Nemo (2003).
5.2 The Complainant has United Kingdom and Community Trade Mark registrations for the mark PIXAR in a number of classes, the earliest of which was registered in 1986.
5.3 The Respondent registered the Domain Name on the 5 January 2000. Shortly afterwards, on the 21 March 2000, Mr Mark Martin wrote to the Complainant stating that the Domain Name was available for sale. On 29 March 2000 the Complainant, through its counsel, replied, offering to reimburse Mr Martin's expenses in registering the Domain Name if he would transfer the name to the Complainant. There was no response until 24 November 2003 when Mr Martin again wrote to the Complainant in which he:
(i) congratulated the Complainant “on another excellent film in Finding Nemo;"
(ii) stated that he was now receiving thousands of hits daily to the address;
(iii) stated that he been approached by a company who saw an opportunity to use the address as a link to their UK retail site and that he was writing out of courtesy to clarify matters before making "any future decisions as to transferring the name to a third party".
5.4 On the 25 November 2003 the Complainant’s counsel replied by email again offering to reimburse him for any reasonable registration fees that he may have incurred if he was willing to transfer the Domain Name to the Complainant. On the 26 November 2003, Mr Martin responded offering to sell the Domain Name for $64,800 to compensate him for 6 years of owning the site at $900 per month. On the 19 January 2004, Mr Martin asked the Complainant's legal advisers by email what the Complainant considered to be a reasonable fee for the Domain Name.
5.5 The disputed Domain Name is used in connection with a website at www.pixar.co.uk. The homepage printed by the Complainant on 16 February 2004 states;
“ Welcome to PIXAR.co.uk. This site is for sale/rent”
“This site is not related in any way to pixar animation studios”
The site featured three-dimensional graphics and provided links to the Complainant’s PIXAR, and third party websites.
5.6 Since the lodging of the Complaint the content on the website has been removed and replaced with photographs of a child under the banner:
“Happy Birthday Alexander”
The links to the Complainant's and third party websites have been removed and it has a new disclaimer:
“This site is a private site and is not affiliated with any company or organisation.”
6. THE PARTIES' CONTENTIONS:
The parties' contentions may be summarised as follows:
6.1 Complainant
In summary the Complainant contends that:
(a) The Complainant has rights in respect of the names and marks that are identical or similar to the Domain Name as evidenced by trade marks incorporating the PIXAR name, the Complainant's animated films and that consumers associate the word "PIXAR" when used in a Domain Name with the Complainant's goods and services.
(b) The Domain Name is an Abusive Registration because the Domain Name was registered, and has been used, in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complaint's rights. In support of this contention the Complainant states that:
(i) The Respondent registered the Domain Name on 5 January 2000, many years after the Complainant's adoption, first use and registration of its PIXAR mark.
(ii) The Respondent has registered the Domain Name 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.
(iii) The Respondent is using the Domain Name in a way which has confused, or which is likely to confuse, people or businesses into believing that the Domain Name is registered to or operated or authorised by or otherwise connected with a Complainant.
(iv) The Respondent's offer to sell the Domain Name is at a sum in excess of any out of pocket costs directly associated with acquiring or using the Domain Name.
(v) The Domain Name has been used in connection with a website stating "Welcome to PIXAR.co.uk. This site is for sale/rent" and providing links to the Complainant's website and websites of DISNEY and DREAMWORKS.
(vi) The Respondent is also offering to sell the Domain Name on at least one other website, namely www.3hold.com, the administrative contact of which is Mr Mark Martin.
(vii) The Respondent is not licensed or authorised to use the PIXAR marks and the Domain Name without the .co.uk suffix is identical to the Complainant's mark PIXAR.
(viii) The Respondent was fully aware of the Complainant's rights in its famous and distinctive PIXAR marks and contacted the Complainant shortly after registering the Domain Name and has, on subsequent occasions, requested the Complainant make him an offer to buy the name.
(ix) The Respondent's statements concerning an interested third party is evidence of Abusive Registration because there are damaging uses to which the name can be put and is an attempt to pressurise the Complainant into making an offer to purchase the Domain Name.
(x) The Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a genuine offer of goods and services, nor is known by the name Pixar, nor made any legitimate non commercial or fair use of the Domain Name.
(xi) The Respondent is using the Domain Name in a way which has confused, or which is likely to confuse, people or businesses into believing the Domain Name is connected with the Complainant. In support the Complaint states that the Respondent is using the Complainant's mark as part of the Domain Name for its www.pixar.co.uk website that uses 3-dimensional graphics and provides a link to both the Complainant's PIXAR.com website and third parties' websites providing services similar to those of the Complainant. In addition, the non-prominent disclaimer on the pixar.co.uk website is insufficient to prevent confusion.
6.2 Respondent
In summary the Respondent contends that:
(a) He owns the Domain Name having acquired it on a first come first served basis.
(b) The name Pixar is not unique in the UK and in support states that two companies are registered in the United Kingdom with "Pixar" in their registered company name and others have similar sounding names.
(c) Pixar Animation Studios is not registered and does not intend to be a UK registered company.
(d) The Domain Name was purchased in good faith in the belief that no one had an interest in it.
(e) The name Pixar was purchased because he liked the sound of it.
(f) The Complainant had many years to register the Domain Name prior to the Respondent's registration.
(g) He has never sold a domain name or received money from such activities.
(h) He considered that the Complainant's response to his offer to sell the Domain Name showed no interest in the UK version.
(i) His offer to sell the Domain Name was "testing the market and covering options".
(j) A disclaimer has been placed on the website.
(k) There is no evidence that any visitor to the site has been confused by the site. Three dimensional computer images are now commonplace and do not cause confusion with Pixar Animation Studios.
(l) At no time did the Respondent believe that the Complainant had a natural right to the UK Domain Name.
(m) He is attached to the Domain Name and would like to keep ownership.
7. DISCUSSIONS AND FINDINGS
Burden of Proof
7.1 Paragraph 2 of the Policy requires that the Complainant prove on the balance of probabilities that:
i he has rights in a name or mark that is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Rights
7.2 Rights as defined in paragraph 1 of the Policy “includes, but is not limited, to rights enforceable under English law. However, the Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.
7.3 The Complainant is not required to show that its business name is unique in order to establish that it has Rights enforceable under English law. Neither the existence of other companies using the Pixar name as part of a registered company name, nor the fact that the Complainant has not, or does not intend to register a company with the Pixar name at Companies House will prevent the Complainant from establishing that it has rights in the name.
7.4 The Appeal Panel in DRS 00248 Seiko UK Limited v Designer Time/Wanderweb found that the requirement to demonstrate Rights is not a particularly high threshold test. It was satisfied by the assertion of Seiko UK Limited that it was the duly authorised trade mark owner to use the mark and to bring the Complaint. The Complainant has trade mark registrations and has used the mark PIXAR which is used as the Domain Name (excluding the .co.uk suffix) since 1988. Accordingly the Complainant has Rights in the name or mark for the purposes of paragraph 2 a. i. of the Policy.
Abusive Registration
7.5 A Domain Name is an Abusive Registration under paragraph 1 of the Policy if it:
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 takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights;
7.6 In determining whether the Domain Name is an Abusive Registration an assessment must be made whether the registration or subsequent use "took unfair advantage of or was unfairly detrimental to the Complainant's Rights".
7.7 The non–exhaustive list of factors which may be evidence of Abusive Registration is set out in paragraph 3 of the Policy. Those factors relevant to the Complainant’s allegations are set out below:
3a…
i Circumstances indicating that the Respondent has
registered or otherwise acquired the Domain Name:
A. primarily as for the purpose 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 out of pocket costs directly associated with acquiring or using the Domain Name;…
ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or business into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant”.
Offer to sell
7.8 The Respondent says that he registered the Domain Name "in good faith in the belief that no one had an interest in it". The Respondent states that he "make[s] art pictures as a hobby and purchased the name because [he] liked the sound of it…..". However, whatever were the Respondent's initial intentions on acquiring the Domain Name on 5th January 2000, soon afterwards on 21st March 2000, the Respondent contacted the Complainant offering to sell the Domain Name. Whilst the Respondent asserts that he "has never sold a Domain Name or received money for such activities" the Respondent has offered the Domain Name for sale/rent on the www.pixar.co.uk website and has sought offers to purchase the Domain Name on the Respondent's www.3hold.com website.
7.9 The Respondent states that in making an offer to sell the Domain Name it was simply "testing the market and covering options". However on 26th November 2003, the Respondent offered to sell the Domain Name and sought reimbursement "to compensate for six years of owning the site [which] would be $900 per month of ownership which equates to a total of $64,800."
7.10 The site was first registered on 5th January 2000. Accordingly when the Respondent offered to sell the Domain Name on 26th November 2003 for $64,800 the Respondent had held the Domain Name for less than 4 years and not the 6 years as alleged. An appropriate amount for compensation to the Respondent, even using the Respondents figure of $900 per month for compensation of ownership of the site, would amount to approximately $40,500 for the period of the Respondent's registration. This is some $24,300 less than that sought by the Respondent. Accordingly, the Respondent has sought to sell the Domain Name for valuable consideration in excess of its out of pocket costs directly associated with acquiring or using the Domain Name which in itself is evidence of Abusive Registration under paragraph 3a i.A. of the Policy.
Confusion
7.11 The Complainant has provided no evidence that visitors to the site are confused into believing that the site is operated or authorised or connected with the Complainant. However, the disclaimer on the website is evidence that the Respondent believes that there is a potential for people to be confused. Further, the Respondent's email to the Complainant dated 24th November 2003, states that he is "now receiving thousands of hits daily to the address every day". Given the limited content on the Respondent's www.pixar.co.uk site, it is likely that new visitors to it are more likely to be persons looking for a site operated by the Complainant rather than the Respondent's site. The potential for confusion also arises by Respondent providing a link to the Complainant's site. As found in DRS00068 - Nokia Corporation v Andrew Stone "The fact that the Respondent has been given no licence or other authority to use the name creates a presumption that this use takes unfair advantage of the Domain Name".
Other considerations
7.12 Nominet accepts applications for domain names which comply with the Rules on a first come first served basis but the very existence of the Nominet DRS Policy is recognition that “first come first served” is not the only consideration and that others may have rights in a disputed domain name.
7.13 A Complainant is not obliged to register every permutation of its mark as a domain name. Whilst the Complainant may not, as alleged by the Respondent, have a natural right to the Domain Name. The Policy is there to protect a Complainant against an Abusive Registration of a domain name in which the Complainant can establish was registered or is used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
Rebutal of Abusive Registration
7.14 Paragraph 4 of the Policy sets out a non-exhaustive list of factors by which the Respondent may rebut an allegation of Abusive Registration. The relevant sub-paragraphs are:
i. Before being informed of the Complainant’s dispute, the Respondent has:
A used or made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods and services;…
C made legitimate non-commercial or fair use of the Domain Name.
7.15 The Response is not helpful in identifying whether any of the above factors apply. The Respondent states that he purchased the Domain Name because "he liked the sound of it" and makes art pictures as a hobby. However, the Respondent has not shown that the Domain Name is being used in connection with a genuine offering of goods and services as required by paragraph 4.i.A. above.
7.16 The home page of the website connected to the Domain Name was replaced with family pictures only after the Respondent became aware of the Complaint and so this use falls outside paragraph 4.a.i of the Policy for the purposes of rebutting an allegation of Abusive Registration.
8. DECISION
For the reasons set out above, the Expert finds that on the balance of probabilities the Complainant has Rights in the name which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration and directs that the Domain Name be transferred to the Complainant.
Veronica Bailey
Date: 21 May 2004