The Complainant is Moomin Characters Oy Ltd of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Contact Privacy Inc. Customer 1242338952 of Toronto, Ontario, Canada / Jitesh Vassa of Surbiton, United Kingdom, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing 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 the Complainant on January 21, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 22, 2019.
The Center received various email communications from the Respondent between January 21, 2019 and February 18, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2019. On February 11, 2019, the Respondent requested an extension of time for filing the Response. In accordance with the Rules, paragraph 5(b), the Respondent was granted an automatic four calendar day extension for the Response, and the due date for the Response was updated to February 18, 2019. The Response was filed with the Center on February 18, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 27, 2019. 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
Between 1945 and 1993, Ms Tove Jansson wrote a series of books and a comic strip featuring the fictional characters called Moomins who lived in Moomin Valley. Beginning in 1990, an animated television series called “Tales from Moomin Valley” was produced. It consisted of 104 episodes. The series was dubbed into English and aired in the United Kingdom in 1990 and 1991. According to the Complaint, the series was shown in over 60 countries around the world. The series was subsequently followed by a full-length movie, “Comet in Moominland”.
The Complainant is the successor in title to the rights arising from Ms Jansson’s works.
Sales of “Moomin” products generate a yearly retail value of USD 700 million. In 2017, License Global ranked “Moomin” as the 61st most valuable brand in the world. In addition to sales from online presences such as , and , the Complainant has a few physical retail outlets in Finland, the United Kingdom, Japan, Republic of Korea, Thailand and Hawaii in the United States of America. According to information supplied by the Respondent, the two stores in the United Kingdom opened in 2011 and 2017.
Amongst other things, the Complainant has registered as trademarks for MOOMIN:
- Korean Registered Trademark No. 4005035270000, which was filed on January 31, 2000 and registered on October 12, 2001 in respect of goods in International Classes 3, 10, 14, 20 and 25; and
- Korean Registered Trademark No. 4005636480000, which was filed on February 16, 2002 and registered on October 27, 2003 in respect of goods in International Classes 16, 24 and 30.
From materials submitted by the Respondent, it appears that the Complainant was one of three joint owners of trademark registrations for MOOMIN in the United Kingdom between 1992 and 1997.
The Complainant also has registered trademarks for MOOMINVALLEY in International Class 9 including:
- European Union Trade Mark No. 017165945 (the EUTM), which was filed on September 4, 2017 and registered on December 27, 2017;
- International Registration No. 1382133, designating a number of countries including Australia, China, Japan, Republic of Korea, Mexico, Norway, Russian Federation, Singapore, Switzerland and the United States of America. It has proceeded to grant in a number of those countries. The International Registration was registered on September 4, 2017;
- Finnish Registered Trademark No. 271284, which was registered on January 8, 2018.
The Respondent registered the disputed domain name on April 1, 2002.
The disputed domain name does not appear to have resolved to an active website. As discussed below, however, the Respondent (or at least the Respondent’s wife) has used it for a personal email account between at least 2009 and 2019. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the Korean registered trademarks for MOOMIN and the EUTM and Finnish Trademarks for MOOMINVALLEY referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
Disregarding the “.com” gTLD, the disputed domain name is identical to the Complainant’s registrations for MOOMINVALLEY. The fact that the Complainant’s registrations were registered after the Respondent registered the disputed domain name is not relevant at this stage of the inquiry, but may be relevant under the other elements of the Policy: WIPO Overview 3.0, section 1.1.3.
Disregarding the gTLD, the disputed domain name is also confusingly similar to the Complainant’s registered trademark for MOOMIN. The alphanumeric string MOOMIN is contained in full in the disputed domain name and plainly visible: WIPO Overview 3.0, section 1.7. The jurisdiction in and goods and services for which the trademark is registered are not relevant at this stage of the inquiry but, as with the question of timing, may be relevant under the other elements of the Policy: WIPO Overview 3.0, section 1.1.2.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. The Respondent also does not claim any trademark rights from which the disputed domain name has been derived. The Complainant further points out that the disputed domain name does not resolve to an active website and contends there can be no question of use of the disputed domain name in connection with a bona fide offering of goods or services.
These matters are typically sufficient to raise a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
The main argument advanced by the Respondent in rebuttal is that he registered and uses the disputed domain name to provide a personal email account for his wife. The Respondent has provided evidence of some emails sent between 2009 and 2019 showing her use of emails for her personal affairs and some other corroborating matters. On the evidence before it, the Panel accepts that the use has not been of a commercial or trading character.
Further, while the MOOMIN trademark was registered in the Republic of Korea before the Respondent registered the disputed domain name, the registration was in the Republic of Korea.
Moreover, the Complainant’s registrations for MOOMINVALLEY date only from 2017, many years after the Respondent registered the disputed domain name. It is clear, however, that the name had been in longstanding use as the name of the fictional home of the “Moomins” when the Respondent registered the disputed domain name. Indeed, it was precisely because of the Respondent’s familiarity with the Moomin stories that he decided to register the disputed domain name.
Given the scale and length of the Complainant’s use (and that of its predecessor, Ms Jansson) including in the United Kingdom and the Respondent’s admitted familiarity with the fictional characters from his early childhood in the 1990s, the Panel considers the fact the Respondent uses the disputed domain name only in the United Kingdom does not give the Respondent rights or legitimate interests. Nor does the recent registrations of the MOOMINVALLEY trademark long after the Respondent registered the disputed domain name since, as already noted, the Complainant’s use (including that of its predecessor) long pre-dates registration of the disputed domain name.
Most cases under the Policy where a domain name has been used to provide an email account or email server tend to have fallen into one or another of two camps. In one group, the disputed domain name has been registered and used as a tool to misrepresent an association with the trademark owner. Such cases do not involve the good faith required to support a claim to rights or legitimate interests under the Policy. An example is Hill & Knowlton, Inc. v. Dexter Smith,WIPO Case No. D2007-1478. On the other side have been cases where the registrant was already known by the name in question, often even before the complainant acquired its trademark rights. An example is Wilserv Corporation v. Willi Kusche,WIPO Case No. D2007-0004 in which Mr. Kusche was able to demonstrate he had been operating a business under the name Wilserv Industries before the complainant began using its trademark.
In C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith,WIPO Case No. D2008-0821, the learned panelist said:
“… no prior panel decisions that support the proposition that a respondent may establish rights or legitimate interests in a domain name that appropriates another’s distinctive and widely known trademark by registering the domain name for prospective use as a personal email address, or by the actual use of the domain name for this purpose. This Panel to the contrary has held that no rights or legitimate interests are established under paragraph 4(c) of the Policy by a respondent’s deliberate registration of a domain name appropriating the complainant’s mark for use as an email address.”
The facts of that case were different to the present situation as the respondent there had registered numerous domain names of famous fictional characters or places (such as Narnia) and they resolved to parked pages with pay-per-click links. The commercial nature of the respondent’s actions could be readily inferred.
In the present case, the Complainant does claim that at times the disputed domain name has resolved to parking pages with pay-per-click links. Evidence submitted by the Respondent, however, indicates this was just the default landing page for the Apache web hosting server and did not include pay-per-click advertisements.
While the Panel accepts that the Respondent has used the disputed domain name only in a noncommercial sense, nonetheless the Respondent has knowingly appropriated the indicia of the Complainant for the Respondent’s own purposes without permission. As the panelist in the C.S. Lewis (PTE.) Ltd case, above, considered, that kind of deliberate adoption of another’s trademark for one’s own unrelated purposes does not qualify as a legitimate form of activity under the Policy even if, as here, it appears to have been done as an act of homage. The use being made of the disputed domain name is not in any way connected with Moomins or the fictional land from which they come. It cannot be considered descriptive or some form of legitimate commentary.
The Respondent does appear to suggest that his wife’s pet name for him is “Moomin” in view of his fascination with all things “Moomin”. There is nothing to corroborate this private use. Moreover, it cannot support a claim to rights in “Moominvalley”, a fictional place and not the pet name in question.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As already noted, the Respondent adopted the disputed domain name in full knowledge and awareness of the Complainant’s characters and fictional location. His registration and use of the disputed domain name does not appear to have been undertaken with the more typical intention of passing himself off as the Complainant or in some way associated with the Complainant and its fictional characters and place. Nonetheless, the Respondent has appropriated the Complainant’s fictional name for his own purposes without consent. That kind of unilateral conduct, wholly disassociated from the fictional realm associated with the Moomin stories, does not qualify as registration or use in good faith under the Policy.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy. 6. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: March 13, 2019
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