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and Mediation Center
HMV Group plc and HMV (IP) Limited v. Timothy Martyn Sherratt
Case No. D2005-0182
1. The Parties
The Complainants are HMV Group plc and HMV (IP) Limited of Maidenhead, Berkshire, United Kingdom of Great Britain and Northern Ireland represented by Nabarro Nathanson, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Timothy Martyn Sherratt of Newcastle, Staffordshire, United
Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <topdogvideo.com> and <topdogvideo.net>
(the “Domain Names”) are registered with Tucows (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2005. The Center transmitted its request for registrar verification to the Registrar on February 17, 2005. The Registrar replied the same day confirming that it was the Registrar and the Respondent was the registrant of the Domain Names, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registrations, that the Domain Names would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of the Registrar’s principal office, and providing the contact details on its WHOIS database in respect of the registrations.
The Center advised the Complainants on March 2, 2005, that the jurisdiction submission in the Complaint as filed did not comply with the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and invited them to correct the deficiency within five days. The Complainants submitted an amendment to the Complaint on March 4, 2005. The Center verified on March 7, 2005, that the Complaint, as amended, satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2005. The Center also copied the Complaint to the Registrar. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2005. The Respondent filed an online Response with the Center on March 23, 2005.
The Center appointed Jonathan Turner as the sole panelist in this matter on April 11, 2005. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel is satisfied that
the Complaint as amended complied with formal requirements, was duly notified
to the Respondent and has been submitted to a properly constituted Panel in
accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The First Complainant is a specialist retailer of music, DVDs, videos, computer and video games and related products. It has carried on business through retail stores in the United Kingdom since 1921. In April 2004, it had 200 stores, 4,900 staff and a turnover in excess of Ј930 million in the United Kingdom and Eire, and worldwide sales of some Ј1,265 million.
The First Complainant has used the strapline “top dog for music dvd games” since August 1996. The slogan is a play on the First Complainant’s historic trademark depicting a dog listening to a gramophone apparently in the expectation of hearing his master’s voice.
The Second Complainant is an intellectual property holding company connected with the First Complainant. The Second Complainant has registered TOP DOG as a word trademark in Class 9 in the United Kingdom.
The Respondent registered the Domain Names <topdogvideo.com> on October 22, 2003, and <topdogvideo.net> on September 11, 2004. He also registered <topdogvideo.co.uk> on August 3, 2004. At the date of the Complaint, the Respondent was using the Domain Name <topdogvideo.com> for a website selling videos. The Domain Name <topdogvideo.net> was directed to a standard holding page.
The Complainants wrote to the Respondent on September 9, 2004, asserting rights in the name TOP DOG and demanding that the Respondent change the name of his business and transfer or cancel <topdogvideo.com> and <topdogvideo.co.uk>. The Respondent replied on September 17, 2004, stating that <topdogvideo.co.uk> was an established Internet business with an excellent reputation, substantial turnover and significant profits; that <topdogvideo.com> was a new website business to be launched in November 2004; that <topdogvideo.net> was a newly acquired name to be used for an interactive website business; that the Respondent was currently in negotiations with a large American corporation in respect of their acquisition of all three Internet businesses, and particularly the website names; and that he trusted that the Complainants “will consider all of the above before submitting an offer”.
The Complainants wrote back to the Respondent on September 27, 2004, declining to make any offer to purchase the Domain Names and threatening court proceedings and/or complaints under the UDRP and Nominet dispute resolution procedures. The Respondent replied on October 5, 2004, maintaining that he was the owner of the Domain Names.
As well as making this Complaint, the Complainants
made a complaint under the Nominet dispute resolution policy in respect of the
<topdogvideo.co.uk> registration, and that domain name was transferred
to the Complainant on March 14, 2005.
5. Parties’ Contentions
The Complainants contend that the Domain Names are identical or confusingly similar to the trademark TOP DOG in which they have rights; that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that they were registered and are being used in bad faith. The Complainants allege that the Domain Names were registered for the purpose of sale to themselves or to a competitor at a profit, and/or blocking the Complainants from registering domain names reflecting their branding, and/or disrupting the Complainants’ business by creating a likelihood of confusion.
The Respondent contends that “topdog”
is a common English expression; that the website name was purchased in good
faith and named after a family pet; and that no connection with the Complainants
was envisaged or implied. The Respondent further contends that the business
conducted through the “www.topdogvideo.com” site does not compete
with the Complainants, since it retails second-hand videos for export to the
United States, where the Complainants do not have rights. The Respondent reiterated
that the Domain Names were the subject of bidding interest from several United
States corporations, and that HMV Group had submitted two offers to acquire
the Domain Names, neither of which was acceptable.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainants must prove (a) that the Domain Names are identical or confusingly similar to a mark in which they have rights, and (b) that the Respondent has no rights or legitimate interests in respect of the Domain Names, and (c) that the Domain Names were registered and are being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar to a Mark in which Complainants have Rights
The Panel is satisfied that one or both Complainants
have rights in the mark TOP DOG. The Panel is aware that questions have been
raised regarding the registrability and trademark significance of parts of advertising
straplines in Case C-353/03 Sociйtй des produits Nestlй SA v. Mars UK Ltd,
currently pending before the European Court of Justice. However, firstly, the
Panel considers that TOP DOG in relation to videos is inherently more distinctive
than “Have a break” in relation to chocolate. Secondly, the Panel
has no reason to suppose that the European Court will not follow the Opinion
of the Advocate-General that parts of slogans can acquire the distinctiveness
required for registration as trademarks even if they are not inherently distinctive.
Thirdly, in accordance with the Rules, paragraph 15(a), it is appropriate to
apply the presumption of United Kingdom trademark law that a registered trademark
is valid unless shown otherwise: see Meat and Livestock Commission v. David
Pearce aka OTC / The Recipe for, WIPO
Case No. D2003-0645, (<britishmeat.com>). Fourthly, the First Complainant
would have common law rights in TOP DOG if it has in fact become distinctive
of its business, even if the registration were invalid.
The Panel further considers that the Domain Names are confusingly similar to the Complainants’ TOP DOG mark. Apart from the generic top level domain, they comprise the Complainants’ mark and the word “video”, which is descriptive of some of the main products sold and promoted by the First Complainant under the mark. Many members of the public in the United Kingdom would assume that the Domain Names indicate a website of the Complainant selling its main products.
B. Rights or Legitimate Interests
The Panel is also satisfied that the Respondent has
no rights or legitimate interests in respect of the Domain Names. The Domain
Names and the corresponding <topdogvideo.co.uk> were registered in 2003
and 2004, after the First Complainant had been using the “Top Dog”
slogan for several years. Such use as the Respondent has made of these Domain
Names has been liable to mislead and to divert United Kingdom consumers seeking
a website of the First Complainant to the Respondent’s competing business
selling videos, as discussed further below. This does not qualify as a bona
fide offering giving rise to any right or legitimate interest for the purpose
of paragraph 4(a)(ii) of the Policy: see Mentor ADI Recruitment Ltd. (trading
as Mentor Group) v. Teaching Driving Ltd, WIPO
Case No. D2003-0654, (<letsdrive.com>).
C. Registered and Used in Bad Faith
As noted above, the Domain Names were registered after the First Complainant had been using its “Top Dog” slogan for several years. The First Complainant operates on a large scale and is very well-known as a retailer of videos in the United Kingdom where the Respondent resides. The Panel infers that the Respondent was aware of the First Complainant’s use of its “Top Dog” slogan when he registered the Domain Names. This inference is reinforced by the fact that the Domain Names comprise the elements “topdog” and “video”, which would be unlikely to be combined except with reference to the First Complainant. The Respondent’s contention, that the Domain Names were simply named after a family pet, is implausible.
There is also no reason to doubt that the Domain Names were registered for a website advertising videos for which the Domain Name <topdogvideo.com> has apparently been used. In these circumstances the Panel concludes that the Domain Names were registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ TOP DOG mark.
The Panel rejects the Respondent’s submission that his business did not compete with the First Complainant’s because he was selling pre-owned videos for export to the United States. There is no indication on the web page in evidence that sales were limited or even directed to United States customers. Nor is it clear from the web page that the Respondent’s videos were pre-owned, and in any case pre-owned videos compete with new ones.
At the time of the Complaint, the Respondent was also offering both Domain Names for sale to the Complainant and threatening to sell them to a competitor of the Complainant unless he received a high offer from the Complainant. Indeed, it is possible that this was his primary purpose in registering the Domain Names.
It does not matter whether the Respondent’s primary purpose has been
to sell the Domain Names at a profit or to use them to divert Internet users
to his website by confusion with the Complainant’s mark. Either way, the
Respondent registered and, at the time of the Complaint, was using the Domain
Names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <topdogvideo.com> and <topdogvideo.net> be transferred to the Complainant.
Dated: April 15, 2005