Nominet UK Dispute Resolution Service

Blockbuster Inc v Covingham Video Films Ltd [2005] DRS 2275 (15 March 2005)

Nominet UK Dispute Resolution Service
DRS 2275
Blockbuster Inc -v- Covingham Video Films Ltd
Decision of Independent Expert
1. Parties:

Complainant:	Blockbuster Inc
Country:	US
Respondent:	Covingham Video Films Ltd
Country:	GB

2. Domain Name:

blockbusterexpress.co.uk ("the Domain")

3. Procedural Background:

A brief chronology is as follows:

24 December 2004:	Complaint lodged with Nominet electronically
31 December 2004:	Hardcopy complaint received by Nominet
6 January 2005:	Nominet forwarded complaint to Respondent
28 January 2005	Electronic response received by Nominet
1 February 2005:	Hardcopy response received
1 February 2005:	Nominet forwarded response to Complainant
2 March 2005:	Fee received from Complainant

On 4 March 2005 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

4. Outstanding Formal/Procedural Issues:

None.

5. The Facts:

Blockbuster Inc (either directly or via its subsidiaries, Blockbuster Entertainment Ltd, Blockbuster Express Ltd, Blockbuster Express (Scotland) Ltd) has been operating in the UK entertainment market since 1989 and has been the UK market leader in the rental home entertainment market since 1992 with over 679 stores across the country.

Blockbuster has promoted, advertised and marketed its services extensively throughout the UK through national television, radio and printed media. The promotional spend is in the region of £10 million per annum.

The Complainant and its subsidiaries are the registered proprietors of a large number of trade mark registrations for, or including, BLOCKBUSTER. These registrations include the following UK registered trade marks in the name of the Complainant:

- word BLOCKBUSTER in class 09, number 1218471 (10 May 1983)

- word BLOCKBUSTER in class 16, number 1224821 (16 August 1984)

- word BLOCKBUSTER in class 28, number 1254838 (28 November 1985)

- word BLOCKBUSTER in class 41, number 1277126 (1 October 1986)

- words BLOCKBUSTER VIDEO EXPRESS in class 09, number 1573717 (27 May 1994)

- words BLOCKBUSTER VIDEO EXPRESS in class 38, number 1573718 (27 May 1994)

- words BLOCKBUSTER VIDEO EXPRESS in class 41, number 1573719 (27 May 1994)

The Complainant and/or its subsidiaries also own and operate in the region of 130 video and DVD automatic dispensing machines in various locations throughout the UK. These are operated under the name BLOCKBUSTER EXPRESS and the Complainant has filed a UK trade mark application 2371163 for this trade mark on 20 August 2004.

The Respondent registered the Domain on 24 September 2002. The Domain has not been used other than for a holding page stating "Blockbusterexpress.co.uk coming soon…"

6. The Parties' Contentions:

Complaint:

The Complainant has rights in the Domain.

The Complainant wrote to the Respondent with a view to reaching an amicable settlement. He has declined to enter into proper negotiations. The Complainant warned the Respondent that this action will be brought and advised him to seek legal advice.

The domain name in the hands of the Respondent is abusive because its use would be an infringement of the Complainant's trade marks under Section 10(2) of the Trade Marks Act 1994 and Article 9(1)(b) of the Community Regulation Number 40/94 since there exists a likelihood of confusion on the part of the public, which includes the likelihood of association.

Since the domain name is owned by Covingham Video Films Ltd it is apparent that there is an intention to use the domain name in connection with videos/DVDs and the like. Further, the use of www.blockbusterexpress.co.uk by the Respondent in connection with films videos and DVDs is likely to cause confusion in the minds of the public so as to amount to an actionable passing-off. Further, there is a risk that such activities will cause damage to Blockbuster's goodwill.

Response:

The Respondent has not used this name at all. It never wrote to the Complainant to try and make a quick pound nor has it ever tried to pass itself off as the Complainant.

The Respondent is being harassed by the Complainant. The Respondent has done nothing wrong and it is not the Respondent's fault that the person in charge of buying names on behalf of the Complainant many years ago forgot or missed the Domain. The Complainant suddenly decided it needed the name so it decided to find out who owned it and to take it away from that person. That is unfair.

The Respondent may be in the same business as the Complainant but it never crossed the Respondent's mind to try and do something wrong. The Respondent is aware that it is wrong to pass of as someone else.

The reason that the Respondent has never done anything with the name is that it has very bad financial problems and this caused continuing serious health problems for the controller of the Respondent. This matter should be resolved so it does not cause any more stress to that person.

The Respondent purchased the name fair and square and should be allowed to keep it as long has it is not misused the Domain. That would not be possible as Nominet is there to stop this sort of thing happening.

If the Complainant wishes to own this name for business use then it should be bought from the Respondent fairly.

Reply:

The Complainant did not file a reply.

7. Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of Nominet's DRS Policy ("the Policy) on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain and, second, that the Domain, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant clearly has rights in the terms BLOCKBUSTER and BLOCKBUSTER VIDEO EXPRESS by virtue of its registered trade marks.

There is no registered trade mark for the exact term BLOCKBUSTER EXPRESS, only a trade mark application which does not of itself create rights. And the fact of incorporation of a subsidiary of the Complainant with the name "Blockbuster Express Limited" does not of itself mean that this subsidiary has generated goodwill in the name BLOCKBUSTER EXPRESS.

The Complainant says that it and its subsidiaries operate in the region of 130 video and DVD automatic dispensing machines in the UK under the name BLOCKBUSTER EXPRESS. I have not been given any start date nor details of the extent of trade or marketing under that name. However the Respondent has not disputed the Complainant's claim of rights and the threshold for establishing rights is a low one. Taking all of the above matters together I conclude that the Complainant has rights in the name BLOCKBUSTER EXPRESS.

The Complainant has established rights in respect of names or marks both identical and similar to the Domain.

Abusive Registration

Is the Domain an abusive registration in the hands of the Respondent? Paragraph 1 of the Policy defines "abusive registration" as a domain name which either:-

" 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 took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

The key issue under the first limb of this definition is the purpose for which the Respondent registered the Domain. The Respondent clearly had the Complainant in mind when registering the Domain; indeed the Respondent acknowledges that it is in the same business as the Complainant.

It is difficult to see what genuine reason the Respondent could have had for acquiring the Domain, which is identical to its competitor's trade mark. The Respondent offers no explanation to justify the acquisition. It merely claims that it never crossed the Respondent's mind to do something wrong or to pass itself of as the Complainant. This casts no light on why the Respondent did in fact acquire the Domain. In the absence of an explanation from the Respondent, I can only conclude that the Respondent intended to profit in some way from the Complainant's trade mark at the Complainant's expense.

The Respondent says that it never used the Domain but it is clear from the definition of abusive registration above that it is enough if the Domain was acquired in a manner which, at the time of acquisition, took unfair advantage of or was detrimental to the Complaint's rights. If so, it makes no difference that for whatever reason the Respondent has not in fact used (or misused) the Domain thus far. It is also irrelevant that the Respondent has not offered to sell the Domain to the Complainant or that the Complainant failed to register the Domain first.

The Domain has, on the balance of probabilities, been 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. Abusive registration has therefore been established.

8. Decision:

The domain name blockbusterexpress.co.uk should be transferred to the Complainant.

Adam Taylor Date