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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Broadcasting Corporation v. Signet Photo Publishing
Case No. D2001-0439
1. The Parties
British Broadcasting Corporation, a company incorporated by Royal Charter existing under the laws of England and Wales, with its registered office at Broadcasting House, Portland Place, London W1A 1AA, U.K., represented by Brian Cordery of Bristows, 3 Lincoln’s Inn Fields, London WC2A 3AA, U.K.
Signet Photo Publishing, of Maypole Road, Colchester, Essex CO5 0EJ, U.K.
2. The Domain Name and Registrar
The domain name at issue is <billandben.com>. The Registrar is Network Solutions Inc., of 505 Huntmar Park Drive, Herndon, VA 20170, U.S.A.
3. Procedural History
On March 27, 2001, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name <billandben.com> and paid the required filing fee for appointing a single member Panel. On March 30, 2001, the Center sent an "Acknowledgement of Receipt of Complaint" to the Complainant.
On April 2, 2001, a "Request for Verification" concerning the domain names was sent to the Registrar. On April 3, 2001, the Registrar provided a Registrar Verification Response to the Center stating, in pertinent part, that: (i) it is the registrar of the domain names <billandben.com>; (ii) "Signet Photo Publishing" is the current registrant of the domain name registrations; and (iii) the domain name registration status is "Active".
On April 10, 2001, the Center found the Complaint to be in compliance with the formal requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On April 10, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" and the Complaint to the Respondent by e-mail, facsimile and post/courier. Copies of the Notification and Complaint were also sent to ICANN, the Registrar and the Complainant. When the Notification and Complaint were sent to the e-mail address, firstname.lastname@example.org, and to the fax number listed in the registrations, error messages were received indicating non-delivery. The Center did not receive error messages or notices of non-delivery when the Notification and the Complaint were sent to the e-mail and postal addresses listed in the registrations for the Respondent.
On May 1, 2001, after the twenty day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On May 21, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, who was appointed by the Center after an invitation had been issued and an acceptance and Declaration of Independence and Impartiality had been duly returned. The Projected Decision Date by when a decision was to be forwarded to the Center was June 3, 2001. The Projected Decision Date was extended until June 25, 2001, in accordance with Paragraph 10 (c) of the Rules.
4. Factual Background
The complainant is a company incorporated by Royal Charter existing under the laws of England and Wales, and is well known as a broadcasting company.
The complainant is, together with Ben Publications LLC (who "is aware that this Complaint is being made, has approved the terms of this Complaint, and has approved the Complainant’s request in this complaint for the domain name to be transferred to the Complainant"), is the proprietor of two United Kingdom trademarks registrations, No. 709594, in respect of BILL AND BEN THE FLOWERPOT MEN, in class 28, dating from 1953, and No. 2061238, in respect of BILL and BEN, in classes 9 and 42, dating from May 22, 1998.
The complainant states that "Bill and Ben the Flowerpot Men" was a television programme aimed at children, and broadcasted between 1952 and 1971. It was re-launched, in a modernised format, in January 2001, with 52 episodes commissioned.
There are plans to merchandise the "Bill and Ben" brand in respect of a range of goods, including books, cassettes and videos. BBC Worldwide budgeted circa Ј250,000 on the brand in the financial year ending April 2001, and a further circa Ј400,000 in the next financial year.
Evidence of a selection of British national newspapers concerning the re-launch of the "Bill and Ben" series, and attesting to its previous popularity was submitted to the Panel.
The respondent did not reply to the complaint.
5. Parties’ contentions
The complainant contends that its trademark rights in and to "Bill and Ben" are substantial, and that the respondent "must have been aware that in registering the Domain Name he was misappropriating the intellectual property of the owner of the BILL AND BEN trademark".
The complainant further alleges that the respondent has no rights or legitimate interest in the domain name at issue.
The complainant’s solicitor has provided evidence of an attempt by the respondent to sell the domain name to the complainant, for the sum of $8,000. In particular, the Panel was provided with a note by the complainant’s solicitor recording a telephone conversation with a Bob Stack of the respondent on February 12, 2001, in which this matter was discussed. The complainant’s solicitor submitted a copy of an e-mail exchange between the solicitor and Mr. Stack on the following day. The solicitor wrote:
"Dear Mr Stack,
This is the email I promised to send to you yesterday.
As I understand it, your position is that you hold the domain name for a client called Michael Lingstrom who is based near Seattle. Mr. Lingstrom asked you to design the site some 4 or 5 years ago. He currently owes you $8000 (approx) in relation to your fees and you would be prepared to transfer the domain name to the BBC in return for payment of these fees.
Please would you confirm that my understanding is correct. Please would you also let me know whether you would be prepared to accept any lesser sum to transfer the domain name."
The respondent replied:
"yes you are correct …what figure do you have in mind for a lesser sum?"
The complainant submits that the domain name at issue was registered and is being used in bad faith, and requests that the domain name be transferred to the complainant.
The respondent did not reply to the complaint.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
In connection with the first test, the complainant has demonstrated that it has registered trademark rights to BILL AND BEN and to BILL AND BEN THE FLOWERPOT MEN.
The newspaper evidence presented by the complainant is sufficient, in the Panel’s view, for the finding that the popularity of the "Bill and Ben" programme was substantial, and enduring, and accrued significant common law trademark rights to the complainant.
The Panel finds that <billandben.com> is confusingly similar to the complainant’s trademark rights, and, accordingly, that the test of Paragraph 4(a)(i) has been satisfied.
In connection with the second test, the respondents did not respond to the complaint, and, consequently, advanced no argument as to their having rights or legitimate interest in the domain name. The Panel finds that the respondent could not, reasonably, have been unaware of the complainants’ trademark right when registering the domain name (see WIPO Case No. D2000-0102, for example). Accordingly, the Panel finds that the second test, of Paragraph 4(a)(ii) has been satisfied.
It follows that the Panel finds that the domain name at issue was registered in bad faith.
Paragraph 4(a)(iii) of the Uniform Domain Name Dispute Resolution Policy, however, requires not only a finding that the domain name at issue was registered in bad faith, but that it is also being used in bad faith.
In previous decisions, Panels have adopted the uniform viewpoint that use in bad faith is established by an attempt by a respondent to transfer the domain name at issue to a complainant for a sum significantly in excess of the costs involved in registering the domain name. The evidence presented as to the figure of circa $8000 for transferring the domain name in this case is, in the Panel’s opinion, more than sufficiently in excess of the costs of registering the domain name as to lead to a finding that the domain name is being used in bad faith.
Accordingly, the Panel finds that the third test, of Paragraph 4(a)(iii) has also been satisfied.
The Panel finds that the complainant has satisfied the three tests of Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, and, accordingly, requires that the domain name <billandben.com> be transferred to the complainant.
George R. F. Souter
Dated: June 25, 2001