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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd
Case No. D2000-0124
1. The Parties
1.1 The Complainant is The Wiggles Touring Pty Ltd, an Australian corporation, of 54 Edgecliffe Road, Bondi Junction, New South Wales, 2022, Australia.
1.2 The Respondent is Thompson Media Pty Ltd, an Australian corporation, of 73 Queen Street, Berry, New South Wales, 2535, Australia.
2. The Domain Name and Registrar
2.1 The domain names upon which this complaint are based are thewiggles.com, and henrytheoctopus.com. The registrar of both domain names as at the date of the Complaint is Network Solutions Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Centre") by email on March 3, 2000, and in hard copy by courier on March 6, 2000. The hard copy of the Complaint was accompanied by the fees prescribed under the Supplemental Rules. The cover letter to the Complaint stated that copies of the Complaint were sent by email and overnight courier to the Respondent, and that a copy had been sent to "Network Solutions, the registrar".
3.3 Upon receipt of the email copy of the Complaint, the Centre sent a Request for Registrar Verification to NSI on March 3, 2000, by email. NSI responded to the Centre’s request by email on March 6, verifying (1) that NSI was the Registrar for the domain names in dispute, (2) that the Respondent was the current registrant of the domain names in dispute, (3) that thewiggles.com had an ‘active’ status, and (4) that henrytheoctopus.com had a ‘hold’ status. The Panel notes that the response from NSI also stated that NSI had not received a copy of the Complaint as of March 6, 2000. The Supplemental Rules in paragraph 4(b) require that the Complainant should provide a copy of the Complaint to the concerned Registrar at the same time as it submits its Complaint to the Centre. According to the cover letter to the Complaint submitted to the Centre on March 3, 2000, by email, and March 6, 2000, in hardcopy, a copy of the Complaint was sent to NSI at the time it was submitted to the Centre. However, paragraph 6 of the Complaint (which is the paragraph of the Complaint by which the Complainant purported to comply with paragraph 3(b)(vii) of the Rules), nominates InterNic as the concerned Registrar.
3.4 In the absence of any other relevant evidence, the Panel is of the view that a copy of the Complaint probably was not sent to NSI by the Complainant in accordance with paragraph 4(b) of the Supplemental Rules, although the Panel notes that the Centre emailed details of the Complaint to both NSI and to ICANN on March 11. For the purposes of Paragraph 10 of the Rules the Panel is satisfied that no unfairness to the Respondent resulted from any such failure. In the Panel’s view, identification and notification of the correct Registrar is important having regard to Paragraph 8 of the Policy.
3.5 The Centre sent the Complainant an Acknowledgment of Receipt of the Complaint by email and facsimile on March 6, 2000.
3.6 The Centre by email on March 9, 2000, sent a request to the Complainant for an amendment to the Complaint. The Complainant submitted the requested amendment to the Centre on March 9, 2000, by email and facsimile. Although the amendment altered paragraph 23 of the Complaint, no change was made to paragraph 6 of the Complaint and, indeed, section B of the amending document confirmed that it remained the same. The Panel assumes that this was an oversight, but finds that no unfairness to the Respondent resulted from the Complainant’s technical failure to comply with paragraph 3(b)(vii) of the Rules.
3.7 The Centre sent a Notification of Complaint and Commencement of Administrative Proceeding on March 11, 2000, to the email address of the Respondent’s Administrative Contact (Peter Thompson) as advised by NSI in its Verification Response (firstname.lastname@example.org) as well as to email@example.com and firstname.lastname@example.org. Hard copy documents were also despatched to the Respondent in Berry, Australia and to Mr Thompson in Bathurst, Australia on the same day by EMS Worldwide courier. The Centre also attempted three times on March 11 to notify the Respondent by facsimile transmission. However, it is clear from the ‘RAPPORT D’ERREUR TX’ documents furnished to the Panel that none of these facsimile transmissions was successfully transmitted. The email to email@example.com was returned with a 550 error (host unknown).
3.8 There is no evidence before the Panel of any communication to the Technical Contact, Zone Contact, given by NSI for either of the domain names, namely, "Registrar, InterNic" at a New York, USA address for henrytheoctopus.com and "DNS Administrator – Hypermart Go2Net, Inc" at a Seattle, USA address for thewiggles.com. Accordingly, the Centre cannot obtain the ‘deemed notice’ benefit that would have flowed from full compliance with subparagraphs 2(a)(i) to (iii) of the Rules.
3.9 The Panel is of the view that the second sentence of paragraph 2(a) of the Rules does not prescribe the only means for satisfying the requirements of the first sentence of that paragraph. In a case in which notices have not been given in strict compliance with the second sentence of Paragraph 2(a), it is necessary to examine carefully the steps that have been taken to enable the Panel to determine whether the first sentence of paragraph 2(a) of the Rules is satisfied. This is obviously of great importance where, as here, there has been no communication from the Respondent.
3.10 Paragraph 2(f) of the Rules provides for the Panel to decide any factual question of communications, and subparagraphs 2(f)(i) to (iii) apply only to the extent that the Rules or the Panel do not otherwise provide or decide the question. The Panel has not been furnished with receipts evidencing delivery of any of the notices that were sent to the Respondent, although copies of partially completed documentation showing the despatch of one parcel of correctly addressed material by EMS Worldwide to each of the Respondent and to Mr Thompson, and a Centre mail system status of ‘pending’ for the emails, have been made available. The Panel has not been informed of any non-delivery advice having been received from EMS, as one would expect if EMS had been unable to effect delivery. Nor is there any evidence that the March 11 emails to firstname.lastname@example.org and email@example.com were not successfully delivered. As noted above, the email to firstname.lastname@example.org was returned with a ‘host unknown’ error (as also occurred with the Notice of Default email sent to email@example.com on March 31). As at April 13, 2000, during the preparation of this Decision, the Panel observes that Network Solutions ‘whois’ database still shows as current the street addresses to which the Centre despatched hard copy packages of material to the Respondent and Mr Thompson on March 12, and the email addresses to which emails were sent to the Administrative Contact for the domain names.
3.11 With slight misgivings, the Panel decides for the purposes of paragraphs 2(f) and (g) of the Rules that the Respondent and its Administrative Contact received actual notice of the Complaint and of the commencement of this proceeding by email on or about March 12, 2000 (Australian time), and that hard copies of the Notification and accompanying papers were successfully delivered by EMS courier by no later than March 17, 2000 in Australia. The latter date has been determined having regard to the time it took (3 business days plus a 9 hour time difference) for the material sent by the Centre to reach the Panel also using EMS Worldwide courier.
3.12 Although the Notification made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a response to the Complaint, no response has been received from the Respondent at any time. As a result of this default, the Centre sent a Notification of Respondent Default on March 31, 2000, to the Respondent and the Complainant via the contact details referred to in paragraph 3.7 of this decision. The material provided to the Panel shows that shortly after 10 am on March 31, 2000 (Geneva time), a three page facsimile transmission containing the Notification of Respondent Default was successfully sent to the Respondent’s Administrative Contact’s facsimile number. Although, having regard to the Panel’s decision in paragraph 3.11, the Centre’s calculation of time periods and their expiry may not have been accurate, it remains the case that no Response, nor indeed communication of any kind, has been made to the Centre by or on behalf of the Respondent prior to the Panel commencing its deliberations (which, for the record, was April 3, 1999).
3.13 The Panel has been very concerned to ensure that the requirement of paragraph 10 of the Rules, that each Party be given a fair opportunity to present its case, is met in substance. The communications failures identified above, whilst a cause for concern, have not in the Panel’s view been such as to be likely to have deprived the Respondent of an opportunity to communicate with the Centre if it so wished prior to the Panel commencing its deliberations.
3.14 The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on April 3, 2000, via the contact details as described in paragraph 3.7 of this decision. A copy was also sent to the Panel on the same date by email.
3.15 The Centre sent a Transmission of Case File to the Panel, to the Respondent and to the Complainant on April 3, 2000 (Geneva time). The hard copy Case File was not received by the Panel until the afternoon of April 7, 2000, in Sydney, Australia, and the emailed version of the Case File did not include the delivery documentation to which the Panel has paid close attention.
3.16 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted as fact in the Complaint and remains uncontested.
The Complainant is the corporate embodiment of a well known and greatly acclaimed Australian children’s entertainment group known as "The Wiggles". The Wiggles have conducted extensive live performances in Australia as well as in the United Kingdom, the Republic of Ireland and the United States of America. In addition to live performances, the Wiggles have been involved and featured in many forms of media, including motion pictures, television, video and audio recordings. The Wiggles have, as a result of the aforementioned activities, attained significant success and acclaim, and in recent years have been amongst the most successful entertainers in Australia (the Complaint includes extensive reference to quotations from a number of respected publications and sources that substantiate this proposition).
The Wiggles’ performances, both live and otherwise, involve a number of invented costumed characters developed by the Wiggles, one of which is Henry the Octopus. Other such characters include Dorothy the Dinosaur and Wags the Dog.
4.2 The Complainant’s Trade Marks
The Complainant has trade mark registrations for THE WIGGLES and HENRY THE OCTOPUS in both Australia and the United States, details of which are contained in Exhibit D to the Complaint. These marks (the "Marks") have been used on a wide range of goods, a list of which is provided in paragraph 10 of the Complaint. Typical use of the Marks can be viewed at the Complainant’s web site at http://www.thewiggles.com.au. Also from that site merchandise can be acquired featuring the Marks and characters corresponding to the Marks and other marks owned by the Complainant. The evidence shows that the Marks were first registered in Australia on August 4, 1993 and remain current. The US registration accords the Marks their Australian priority date of August 4, 1993.
5. The Complainant’s Contentions
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element described in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain names in dispute are, on their face, identical to the Marks or in any event confusingly similar to the Marks.
5.3 The Complaint asserts that consumers, and in particular consumers of children’s entertainment, upon seeing the domain names, will believe they are related to the Complainant. It is also submitted that if a consumer searches the Internet for the Complainant they will be directed to the Respondent, which will increase the likelihood of confusion.
5.4 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no rights or legitimate interests in the domain names. It submits that there is no relationship between the Complainant and the Respondent that would give rise to any licence, permission or other right by which the Respondent could own or use the domain names. In addition, the Complaint alleges that by demanding payment upon being put on notice of the Complainant’s rights, the Respondent "further demonstrated that it had no legitimate claim to the domain names".
5.5 In reference to the bad faith requirement of paragraph 4(a)(iii) of the Policy, the Complainant asserts that the domain names have been registered either to sell, rent or otherwise transfer to the Complainant (as referred to in paragraph 4(b)(i) of the Policy) or, alternatively, to prevent the Complainant from reflecting their Marks in a corresponding domain name (as referred to in paragraph 4(b)(ii) of the Policy). Curiously, the Complaint does not allege, in terms, that the domain names have been registered and are being used in bad faith, although such an allegation can be inferred from the other terms of the Complaint.
5.6 NSI’s verification message records that the whois database entry for thewiggles.com,was created on July 1, 1998 and the record for henrytheoctopus.com was created on January 28, 1999. The assertion that each domain name was registered for the purpose of selling, renting or otherwise transferring to the Complainant is supported by sworn evidence of the Australian counsel for the Complainant, Ms Catherine Chant (Exhibit L to the Complaint). This affidavit, sworn on February 28, 2000, attests to a number of discussions between Ms Chant and the principal representative of the Respondent, Mr. Peter Thompson, in March 1999, in which it was made clear that the Respondent would only "return" the domain names to the Complainant for "something of value". In addition, Mr. Thompson allegedly stated during that conversation that he was also in negotiation to sell the domain name to a party in the United States. The Complaint also makes reference to a March 31, 1999 telephone call made by Mr. Thompson to Ms Deborah Fackrell, the individual in charge of designing the Complainant’s web site, in response to a letter of demand in relation to the domain names sent to the Respondent by the Complainant’s attorneys. In that conversation it is alleged that Mr. Thompson requested payment for the domain names of "1/4 of the value of a small Australian car" and that "it would cost [the Complainant] more than he was asking for" if the matter went to court. A summary of this conversation was sent by email from Ms Fackrell to Ms Chant on 31 March 1999 (Exhibit K to the Complaint). The Complaint also notes (Exhibit M) that the page now at http://thewiggles.com comprises an express statement that the domain name thewiggles.com is for sale, and provides an email address to enable interested parties to contact the Respondent. The Panel notes in passing that the email address given (firstname.lastname@example.org) is identical to one of the email addresses to which the Complaint and subsequent communications from the Centre were sent.
5.7 The Complainant also submits that the Respondent is in the business of "trafficking and/or speculating in domain names". A whois database search on February 9, 2000, (Exhibit M to the Complaint) indicates that the Respondent owns at least 37 domain names, a number of which are allegedly easily recognisable as third party owned trade marks, or names of well known Australian individuals, corporations or groups. This evidence is supplemented by an alleged comment made by Mr Thompson during the telephone conversation with Ms Deborah Fackrell, referred to in paragraph 5.6 above, that he "makes a living" from registering and selling domain names "back" to their bona fide owners.
5.8 In addition to the submissions, and evidence in support, that relate to the intention of the Respondent to sell the domain names to the Complainant, the Complaint refers to the fact that the Respondent has used one of its domain names, in the form of the name of a well known Australian tennis player, to divert Internet traffic to a web site selling tennis related goods (the screendump of the web site to which the traffic is diverted from the domain name is attached to the Complaint at Exhibit O). The Complaint identifies this practice as an alternative purpose for which the Respondent has registered the vast number of domain names referred to in paragraph 5.7.
5.9 The Complaint dismisses the possibility that there could be some reason apart from those described above for the registration by the Respondent of the domain names in dispute. Reference is made to numerous other domain names originally registered by the Respondent that were identical to either trade marks of the Complainant or to other invented characters that appear in the Complainant’s entertainment programmes. These domain names, including dorothythedinosaur.com and wagsthedog.com, were ultimately transferred to the Complainant due to the Respondent’s failure to pay the registration fees in a timely manner, and apparent pressure from the Complainant. It is submitted in the Complaint that it is clear from the Respondent’s pattern of behaviour that the registration of the domain names in dispute was in no way ignorant of the Complainant’s goodwill in the names involved.
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. As noted in section 3 of this Decision, no response to the Complaint, nor any other communication, has been received from the Respondent since the filing of the Complaint. As a result, all assertions in the Complaint are uncontested. Under paragraph 5(e) of the Rules the Panel therefore is required to decide the dispute based on the Complaint. Nevertheless, the Panel is of the view, particularly where the Respondent has not provided a Response, that it needs to be independently satisfied that the three elements set out in paragraph 4(a) of the Policy have been made out on the evidence available to the Panel. This also follows from the concluding words to paragraph 4(a).
6.2 Domain Names identical or confusingly similar to Complainant’s Marks
The domain names in dispute are thewiggles.com and henrytheoctopus.com. The Marks are THE WIGGLES and HENRY THE OCTOPUS. To the extent to which there are differences between the Marks and the domain names in dispute, such as the spaces between words in the Marks, and the gTLD suffix forming part of the domain names, the Panel finds confusing similarity proven, and also finds that the differences are sufficiently immaterial that identicality is also proven. It is clear that the domain names in dispute solely comprise words which are identical to the Marks with no relevant distinguishing matter.
6.3 The Respondent has no rights or legitimate interests in the Domain Names
The Respondent has asserted no rights or legitimate interests in the domain names in dispute, and the Panel cannot presently conceive of any legally sound basis on which any such assertion might be made. Certainly there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent. The Panel accepts that the terms "the Wiggles" and "Henry the Octopus" were invented by the Complainant or its principals for the Complainant’s business, and bear no resemblance to the Respondent’s business name, or to the names of any known representatives of the Respondent. The Complainant denies, and there is no evidence to the contrary, that there is any relationship between the Complainant and the Respondent that would give rise to any licence, permission or other right by which the Respondent could own or use the domain names. The Panel finds that the Respondent has no rights or legitimate interests in respect of either of the domain names.
6.4 The Domain Names have been registered and are being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith AND use in bad faith. As noted above, the Complaint makes no express allegation in these terms. Paragraph 4(b) of the Policy provides:
" . . .the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith: . ." (emphasis added).
Although in the Panel’s view it would normally be advisable to separately allege and prove the two requirements, Paragraph 4(b) of the Policy has been interpreted in previous decisions under the Rules so as to make this unnecessary if its provisions are satisfied. For the purposes of this decision, and in the interests of consistency of interpretation of the Policy, the Panel proposes to accept the interpretation adopted in earlier decisions.
Paragraph 4(b)(i) provides:
"circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
6.5 In this case the question for the Panel is, therefore, "did the Respondent register either of the domain names for the purpose of selling, renting or otherwise transferring it to the Complainant or one of its competitors?" It is certainly clear from the undisputed evidence in the Complaint that such an intention existed after the date of registration (see paragraph 5.6 above), but this does not, without more, lead to the conclusion that this intention existed at the time of registration. However, in this case there is additional evidence that the Respondent’s principal, Mr Thompson, stated in a telephone conversation to the Complainant’s counsel (see Exhibit K to the Complaint) that he "makes a living" from "registering and selling" domain names to the owners of the corresponding trademarks. The number of domain names owned (and formerly owned) by the Respondent appears to support the allegation that such is the nature of the Respondent’s business. The Respondent was also in no doubt as to the origin of the names registered, as these were not the only domain names that used terms associated with the Complainant’s business that the Respondent has registered. The Panel finds that the Respondent’s primary purpose in registering the domain names in dispute was to sell them to the Complainant.
6.6 Paragraph 4(b)(i) of the Policy also requires that the consideration demanded by the Respondent for the domain names be in excess of the Respondent’s documented out of pocket costs directly related to the domain names. The Respondent has not denied the allegation in the Complaint that payment equal to "1/4 the value of a small Australian car" was asked for the domain names, and that it would cost the Complainant more ("3 small cars"!) if it litigated the dispute. The consideration demanded by the Respondent was obviously more than any out-of-pocket costs that the Respondent might have incurred directly related to the domain names. Accordingly, the Panel finds that the circumstances in paragraph 4(b)(i) of the Policy have been proven by the Complainant.
6.7 It is also apparent to the Panel that the circumstances in paragraph 4(b)(ii) are made out, having regard to the pattern of the Respondent’s conduct proven by the Complainant.
6.8 As a result, the Panel concludes that both of the domain names in dispute were registered and are being used in bad faith by the Respondent.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel requires that the domain names thewiggles.com and henrytheoctopus.com be transferred by NSI to the Complainant.
Philip N. Argy
April 15, 2000