WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hit Entertainment Limited and Prism Art & Design Limited v. PrivacyP and Laksh Internet Solutions Private Limited
Case No. D2008-0877
1. The Parties
Complainants are Hit Entertainment Limited and Prism Art & Design Limited, London, United Kingdom, represented by SafeNames Ltd., Milton Keynes, United Kingdom.
The Respondents are PrivacyP and Laksh Internet Solutions Private Limited, of Moergestel, the Netherlands and Mumbai, India, respectively.
2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2008. On June 9, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On June 23, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 4, 2008, providing the underlying registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 7, 2008. The registrar-confirmed registrant of record for the disputed domain name is Laksh Internet Solutions Private Limited. The Center verified that the Complaint together with the amendment to 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2008.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on September 3, 2008. The Panel finds that it was properly constituted. 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. Factual Background
Complainant Hit Entertainment Limited and its wholly owned subsidiary, Prism Art and Design Limited, are the owners of the trademark rights in the character and trademark FIREMAN SAM, a popular British fictional children’s character who resides in Wales and heroically saves lives. The FIREMAN SAM television program was first shown on British television in the 1990’s.
Complainant Prism Art and Design owns several trademark registrations for marks including the words FIREMAN SAM:
FIREMAN SAM CTM Registration No. 5792767, registered April 7, 2008
FIREMAN SAM CTM Registration No. 5799382, registered April 7, 2008
FIREMAN SAM UK Registration No. 2288272, registered August 23, 2002
In addition to the above trademark registrations, Complainant Prism Art and Design Limited is the owner of pending U.S. Trademark applications, Serial Nos. 77/148,157 and 77/142,133 for the mark FIREMAN SAM, filed in 2007. Complainant Hit Entertainment Limited also owns several domain registrations incorporating the FIREMAN SAM trademark, which were registered prior to Respondents’ registration of the domain name in dispute.
5. Parties’ Contentions
A. Complainant
Complainants contend that the disputed domain name is confusingly similar to Complainants’ FIREMAN SAM trademark, that Respondents have no rights or legitimate interests in respect of the disputed domain names and that Respondents have registered and used the disputed domain names in bad faith.
B. Respondent
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
In order to succeed in their claim, Complainants must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a Complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
Complainants have demonstrated that they own numerous trademarks incorporating the words FIREMAN SAM, and that this trademark is incorporated in its entirety in the domain name in dispute. The suffix “.com” should be disregarded for the purpose of comparison under this criterion of the Policy.
Accordingly, the Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Respondents are not affiliated or related to Complainants in any way, nor are Respondents licensed by Complainants or otherwise authorized to use the FIREMAN SAM trademark.
Respondents are not generally known by the domain name and have not acquired any trademark or service mark rights in the domain name, as reflected in the OHIM and USPTO trademark databases.
Respondents are not using the domain name in a bona fide manner. The domain name resolves to a click-through-revenue or “pay per click” website. The links on Respondents’ website include domain names for Complainants’ competitors, providing similar classes of products, including “Thomas the Tank Engine” and other educational toy websites.
Based on the present record, the Panel finds that Respondents have no rights or legitimate interests with regard to the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or 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 trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
Complainants have shown that the domain name is being used for commercial gain to attract Internet users to Respondents’ website based on a likelihood of confusion with Complainants’ FIREMAN SAM mark. Without any indication to the contrary, Complainants’ prior use and trademark registrations of the FIREMAN SAM mark lead to the inevitable conclusion that Respondents registered and are using the domain name with actual knowledge of Complainants’ rights.
Accordingly, the Panel finds the disputed domain name to be registered and used in bad faith.
7. Decision
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, be transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: September 16, 2008
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