WIPO Domain Name Decision: D2008-0455

Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management

1.1 The Complainants are Mr. Talus Taylor and Mrs. Anette Tison, of Montrouge, and Landes, France, represented by the law firm Lindberg & Saxon, of Sweden.

1.2 The Respondent is Vicent George Warning/Fayalobi Interaction Management, of Amsterdam, The Netherlands.

2.1 The disputed domain name <barbapapa.com> (the “Domain Name”) is registered with Domaininfo AB aka domaininfo.com (the “Registrar”).

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2008. On March 26, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On March 27, 2008, the Registrar transmitted by email to the Center its verification response. Following further correspondence between the Center, the Complainants and the Registrar, the Registrar submitted an amended verification response by email on April 3, 2008.

3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response April 24, 2008. The Response was filed with the Center April 23, 2008.

3.4 The Center appointed Matthew S. Harris, Gunnar Karnell and Madeleine De Cock Buning as panelists in this matter on June 4, 2004. The Panel finds that it was properly constituted. Each member of 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.

4.1 The Complainants are two individuals with addresses in France. They are the authors of the Barbapapa children’s books, the first of which was published in 1970. Barbapapa books have been published around the world in over 30 languages and have been adapted into an animated cartoon that has been broadcast in more than 40 countries. The Barbapapa cartoons were rebroadcast in France as late as 1997. As a consequence the “Barbapapa” name has been well known internationally for many years.

4.2 The Complainants (or at least one of them) are the holders of a number of registered trade marks including:

(i) Benelux trade mark registration 0799532 dated April 13, 2006, being the word mark for BARBAPAPA in class 13.

(ii) Madrid Agreement and Protocol registration number 699880 dated September 30, 1998, in classes 16, 28, 29, 30, 41 (based on French trade mark registration no 710233 dated December 23, 1997, and designating various countries including Austria, China, Italy, Germany and Switzerland) taking the form of the following device:

(iii) US registered trademark 2,964,343, dated June 28, 2005, in class 16 taking the form of the following device:

4.3 The Respondent appears to be the creature of a Mr. Vincent George Warning. Prior to January 1, 2003, Fayalobi Interaction Management was registered as a sole proprietorship on the Commercial register kept by the Chamber of Commerce in the Netherlands.

4.4 The Domain Name was registered by the Respondent on December 14, 1999. No active website has operated directly from the Domain Name since the date of registration and none was operational as at the date of this decision.

4.5 On August 24, 2007, the Complainants’ lawyers sent a letter to the Respondent via email informing it of the Complainants’ rights and demanding that the Domain Name be transferred to their clients.

4.6 Mr. Warning responded to that email on September 10, 2007. In that email Mr. Warning claimed that the Complainants’ lawyers were:

“the third law firm who requested to hand over [the Domain Name] and first law firm who do not mention any compensation. For your information besides law firm, there were also several companies who offer me big money for selling this domain. Which I did not do.”

4.7 Mr. Warning also claimed that the Domain Name was “more than 8 years ago registered in my property, because of the name of my first IT company”.

5.1 The Complainants contend that the Domain Name “is identical and confusingly similar to” the Complainants’ trade marks as it consists “solely of the said mark with the suffix .com”.

5.2 Further the Complainants maintain that the Respondent has no rights or legitimate interests in the Domain Name for the follow reasons:

(i) The Complainants have not licensed or otherwise permitted the Respondent to use any of their marks. Since “Barbapapa” is an “imaginary” word “it is not likely that the Respondent devised it on its own or that it would choose it unless seeking to create an impression of an association with the Barbapapa mark”.

(ii) The Domain Name has not been used since registration in 1999 and this is said to show that the Respondent has no right or legitimate interest in the Domain Name. It cites the cases of State Farm Mutual Automobile Insurance Company v. Rocky E. Faz, NAF Case No. FA94971; and, Leland Stanford Junior University v. Zedlar Transcription & translation, NAF Case No. FA94970.

(iii) The Complainant claims that there is no evidence that the Respondent falls within any of the categories provided for in paragraph 4(c) of the Policy.

5.3 The Complainants contend that the Domain Name was registered and is being used in bad faith for the following reasons.

(i) The international fame of the mark and the fact that the Domain Name “is identical to the Complainant’s mark” is said to “make it evidence that the Respondent has actual knowledge of the Complainants trademark when it registered and used the [Domain Name]”.

(ii) The fact that there is no active website operating from the Domain Name. It is said not to be plausible to conceive of circumstances in which the Respondent could legitimately use the Domain Name. The Complainants cite in this respect Telstra Corp v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

(iii) The Respondent has continued to renew its registrations for the Domain Name subsequent to correspondence in August and September 2007 in which the Complainant notified the Respondent of its rights and demanded transfer of the Domain Name. This is said, on the basis of Nintendo of America Inc v. Garett N. Holland et al, WIPO Case No. D2000-1483, to constitute “signs of bad faith”.

5.4 The Complaint also finishes with some concluding remarks to the effect that since the audience for the Complainants’ books are children, this raises particular concerns.

5.5 The Response names Vincent Warning as the Respondent and confirms that the Domain Name was first registered in the name of Fayalobi Interaction Management but that “after determination of company” the Domain Name “was transferred to the Respondent” (presumably Mr. Warning).

5.6 The Respondent claims that he or it registered the Domain Name “without the Complainant in mind” and without actual or constructive notice of the Complainants’ “registration of the mark”.

5.7 The Respondent contends that although the Complainants’ trade mark and Domain Name “are nearly identical” there is no confusing similarity given the manner in which the Domain Name has been used.

5.8 The Respondent claims a legitimate interest in the Domain Name. The Respondent refers to the fact that the Complainants’ Benelux mark was registered six years after the Domain Name was registered and claims that the Domain Name has been used by the Respondent in business for approximately eight years. The Response then goes on to describe the nature of that use. The explanation given is very difficult to follow and so it is easier for the Panel simply to repeat the Respondent’s contentions here in full. In particular, the Respondent states:

Respondent launched within the years several website under the subdirectory of barbapapa.com [Annex 5]. Domain name is mainly used for education purpose for noncommercial open sourced Internet development and high-education Internet communication projects e.g. Kidoo, KidNPlay [Annex 5][Annex 9]. Further email is used since Respondent registered the domain in 1999. DNS Domain Name Server was used since 2003 [Annex 1]. …

Although barbapapa.com is not publicly known domain name it is still active and used for Respondent legitimate web related education purpose, for mainly high-educated student target group. Which successful completion of a web related internship project done on February 14 2008 [Annex 9] it shows that this domain is still actively and used in a non-commercial yet education way.

5.9 Annex 5 takes the form of what appears to be web browser screen shots for pages at the urls “http://barbapapa.com/kidoo/” and “http://barbapapa.com/kidnplay”. They seem primarily to comprise a list of links to various websites for various theme parks, children’s play grounds and amusement parks in The Netherlands. Another Annex 9 takes the form of a lengthy IT project proposal by a third party. Its opening paragraphs (translated) read as follows:

At the beginning of the school someone told me that he had an assignment for me. Because I was still looking for an [EVC] contract, I returned to school this contract and when it was approved.

The assignment was to build a website that is a collection for parents and for their children aged between 0 and 15 years. The website was aimed at everything to see for all children of that audience.

My client is V. G. Warning. Mr. Warning is employed at Canon Europe but has some time this project in his head but because he has a full time job, he still had no time to do it. The project is not from Canon but from his own management.

In this report you read about how I’ve realized the product. I have used an open source module called Pligg. Also on this module, I have a few things explained. In addition, there’s how I make use of the module and how I adjustments.

5.10 On the issue of bad faith registration and use the Respondent claims as follows:

(i) It was unaware of the Complainants’ trade marks until receipt of the Complainants “cease and desist” letter and was not required to undertake prior trade mark searches in every country in the world.

(ii) None of the factors set out in paragraph 4(b) of the Policy as evidencing bad faith apply in this case.

(iii) Trade mark rights are not co-extensive with rights to a domain name and thus trade mark holders do not have an absolute right to reflect their mark in a domain name. The Respondent cites in this respect Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2007-0711.

5.11 The Respondent also makes comments and complaints about the way in which he was notified of the Complainants’ claims. He also refutes the suggestion that the Domain Name might in future be used for content that is inappropriate or dangerous for children.

6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.

6.2 Under the Policy the Complainants must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely the Complainants must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.4 This aspect of the case is straightforward. The Complainants have since April 2006 possessed a Benelux trade mark in the word “Barbapapa” and the Domain Name is, save for the “.com” TLD, identical to that trade mark.

6.5 Further, the Complainants possess a number of design marks elsewhere which prominently incorporate the text “Barbapapa” and no other text. The Panel is satisfied that the Domain Name is confusingly similar to these marks (as the term is understood for the purposes of the Policy).

6.6 Some of these marks were registered subsequent to the registration of the Domain Name and some of these do not cover The Netherlands. Neither of these facts matter. As paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”) makes clear, all that is required for the purposes of paragraph 4(a)(1) of the Policy is that a relevant mark exists at the date of the commencement of these proceedings. Similarly all that is required is that a mark exists somewhere (see paragraph 1.1 of the WIPO Overview).

6.7 That is not to say that these facts are completely irrelevant to a decision under the Policy. In some cases they may be factors that are relevant to the assessment of bad faith or legitimate interests. However, they are essentially irrelevant so far as paragraph 4(a)(i) of the Policy is concerned.

6.8 Similarly, the Respondent’s contention that the Domain Name and the Complaints’ marks are not confusingly similar because of the way in which the Domain Name has been used, misunderstands how the Policy operates. The assessment under paragraph 4(a)(i) is not an assessment akin to that which applies in trade mark infringement proceedings. All that is required is a comparison between the relevant mark or marks and the domain name in question to establish whether a requisite degree of similarity exists. The content of any website or the manner in which the domain name is used is not relevant to that assessment (see also paragraph 1.2 of the WIPO Overview).

6.9 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(i) of the Policy,

6.10 Essentially, this aspect of the case turns upon whether the Respondent has registered and used the Domain Name with the intention of taking advantage of the Complainants’ interest in the “Barbapapa” name. If this can be shown by the Complainants, then the Respondent has no right or legitimate interest in the name. For the reasons that are described in greater detail under the heading of bad faith below, the Panel believes that the Complainants have successfully made out their case in this respect.

6.11 The Respondent contends that its use of the Domain Name provides it with such an interest. The nature of that use is explored in greater detail later on in this decision, but for present purposes it is sufficient to say that mere use of a Domain Name does not provide a right or legitimate interest. It depends upon the nature of the use in question. Here the Respondent accepts that the Domain Name “is not publicly known domain name”, and the Panel understands this to constitute acceptance of the fact that the Respondent’s business has not become commonly known by the “Barbapapa” name as that phrase is understood in paragraph 4 (c)(ii) of the Policy.

6.12 The Respondent also refers to the project recorded in Annex 9 to the Response. This is said to show that the domain is being used in a “non-commercial yet education[al] way”. The claim seems to be that there has been legitimate non-commercial or fair use of the domain name within the meaning of paragraph 4 (c)(iii) of the Policy. If so, the Panel rejects that contention. It is not sufficient to merely show that the domain name in question has on perhaps one or a number of occasions been used for a non-commercial or educational purpose. A respondent must show that the use of the domain name when considered as a whole is “legitimate non-commercial or fair use” and ordinarily it must be a “legitimate non-commercial or fair use” connected with the terms embodied in the Domain Name. For reasons that are again explained in greater detail under the heading of bad faith, the Panel does not accept that this is the case here.

6.13 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(ii) of the Policy.

6.14 The Respondent claims that it registered the Domain Name “without [the] Complainant[s]” in mind. The Panel does not accept that this is the case. First, there is the fact that the Complainants contend (and the Respondent does not appear to dispute) that the “Barbapapa” name is very well known internationally. Second, and perhaps of even greater importance, is the highly unusual nature of the name itself. It is an invented word, and a long invented word at that. It is extremely improbable that the name was independently “re-invented” by the Respondent for use in connection with its business.

6.15 Further, there is a complete lack of any explanation by the Respondent as to how and why it came about to choose this particular name. The Respondent claims that it was first registered for use by an IT company with the provision of IT services in mind, but there is nothing before the Panel to suggest that it traded under the “Barbapapa” name, nor is it a name that one would otherwise naturally associate with the provision of IT services.

6.16 This of itself would be sufficient to lead the Panel to conclude on the balance of probabilities that the Domain Name was registered with at least the name of the Complainants’ books and characters in mind. However, there is a further aspect of this case which supports the Panel’s conclusions in this respect. Even if the Panel accepts the Respondent’s explanation of how the Domain Name has been used, it is clear that this use has in most cases been in some way connected with children. As has already been described, the sub-directories operating from the Domain Name appear to display material related to play areas and amusement parks that children may find of interest. Further, the IT project, in respect of which the Respondent claims the Domain Name has been most recently used, is a “school project”. It seems unlikely that the name of a series of children’s books has been merely coincidentally used for child related projects.

6.17 The Respondent contends that the Respondent did not have knowledge of the Complainants’ registered trade marks until April 2008 and that the Respondent was not required prior to that date to “undertake prior trade mark searches in every country of the world”. So far as the Respondent’s knowledge of specific trade mark registrations is concerned, this may well be correct. The Panel also accepts that the Respondent was not under an obligation to conduct a trade mark search either in The Netherlands or elsewhere. But that does not matter. What is significant is not whether the Respondent has actual knowledge of a registered trade mark. It is whether the Respondent was aware that the Complainants (or to be more accurate that some person, who in this case happened to be the Complainants) was using the “Barbapapa” name to identify its products. The Panel believes, for the reasons already given, that it was.

6.18 However, even if the Respondent registered the Domain Name with the Complainants in mind, that still leaves the question of why it is that the Domain Name was registered. This is somewhat more difficult.

6.19 There are strong indications that at least recently the Respondent was willing to sell the Domain Name to the Complainants. In his email on September 10, 2007, Mr. Warning comments in response to the letter from the Complainants’ lawyers that their letter was the only letter he had received from lawyers which “did not mention any compensation”. The only sensible interpretation of this phrase is that the Respondent was inviting the Complainant’s to make him an offer.

6.20 The Panel is not convinced by this that it was with such a sale specifically and principally in mind that the domain name was registered over 7 years ago. More likely, given the uses to which the Domain Name has been put, is that the Respondent intended to use the Domain Name with its children’s stories associations in relation to some child-related project or projects. Exactly how the Respondent thereby sought to benefit from that association is unclear, but ultimately the Panel thinks this does not matter. The Panel believes that on balance the Respondent sought in some way or other to way to benefit from and take advantage of the reputation that the Complainants had developed in the “Barbapapa” name. That is sufficient. The significance of the September 10, 2007 email is not that it indicates that it was with sale primarily in mind that the Domain Name was registered, but that it is supporting evidence of the fact that the Respondent registered the Domain Name with some advantage to it, most likely financial, in mind.

6.21 The Complainants’ reference to the Telstra decision is also relevant here. The Domain Name is essentially identical to the name by which the Complainants’ stories are known and it is hard to conceive of any use of the Domain Name that might be a legitimate one. The Panel is not saying that all and any use of the Domain Name would necessarily involve some form of trade mark infringement. The issues of trade mark infringement and abusive registration, whilst they often overlap, are separate and one does not necessarily follow from the other (see for example, Delta Sir Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza, WIPO Case No. D2003-0372; and, 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461). It is simply that it is difficult to conceive of any substantive use of the Domain Name that would not involve use in bad faith.

6.22 The WIPO decision that the Respondent cites in support of its position also does not assist it. The case in question is Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297. The Respondent is quite right in asserting that this case states that trade mark holders do not have an absolute right under the Policy to reflect their mark in a domain name. If a domain name is registered without knowledge of or intent to take advantage of another’s interest in that name, there cannot be bad faith registration even if a complainant possesses a mark that is identical to the domain name. So, for example, when in Futureworld the panel held that the <futureworld.com> domain name had been registered without knowledge of the complainant’s interest in that name, the complainant’s case inevitably failed. However, in the opinion of the Panel, the position in this case is somewhat different.

6.23 In the circumstances, the Panel finds that the Complainants have made out the requirements of paragraph 4(a)(iii) of the Policy.

7.1 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 name <barbapapa.com> be transferred to the Complainants¹.

Matthew S. Harris
Presiding Panelist

Gunnar Karnell
Panelist

Madeleine De Cock Buning
Panelist

¹ There is more than one Complainant in this case and therefore as was the case in Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460, the Panel leaves it to the parties as to which of the Complainants it wishes the Domain Name to be transferred. If for any reason this cannot be done and it is necessary for the Panel to designate a particular Complainant to whom the Domain Name should be transferred, the Panel notes that so far as trade marks relied upon are concerned, where a mark is not held jointly that mark is held in the name of Mrs. Annette Tison. Therefore, absent any request to the contrary, the Panel considers it appropriate to order that the Domain Name be transferred into the name of Mrs. Tison.