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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Mattel Inc v Chao Investments Ltd [2007] DRS 4297 (5 February 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4297.html Cite as: [2007] DRS 4297 |
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Complainant:
Mattel, Inc
USA
Respondent:
Chao Investments Limited
New Zealand
A Complaint in respect of
On 12 January 2007 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). The Complaint was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 12 January 2007. I was appointed as Independent Expert as of 22 January 2007 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
There are no outstanding formal or procedural issues.
The Complainant has manufactured and sold die-cast toy cars and associated toy products in the United States, the United Kingdom and elsewhere since 1968. It is the registered proprietor of several UK and Community trade marks in respect of HOT WHEELS registered from 1970 and operates a website at www.hotwheels.com and other websites.
According to the Nominet WhoIs database, the Domain Name was registered on 11 May 2005. At the date of the Complaint the Domain Name resolved to a domain parking web site with links to other websites under various headings including "Toy Cars", "Cars" and "Hot Wheels Games".
Complainant
A summary of the contentions made in the Complaint is as follows:
The Complainant has made substantial use of the name HOT WHEELS in the United Kingdom and elsewhere for over 30 years. Through significant advertising and marketing and sales of toy cars, track sets and playsets for children, as well as expensive model cars collected by adults, the HOT WHEELS brand is very well known and recognised by adults and children alike. The brand is strengthened by the provision of information, online games and shopping facilities aimed at toy lovers throughout the world on websites accessed through domain names such as
The Complainant is the registered proprietor of various UK and Community trade marks in respect of HOT WHEELS in a number of classes dating from 1970 of which details are provided with the Complaint.
The Domain Name is identical to the name HOT WHEELS in which the Complainant has both registered and unregistered rights.
The domain parking website to which the Domain Name resolves includes a number of click-through advertising links to third party websites several of which operate in a broadly similar area to the Complainant and some of which include competing services. These include toys and games. A particular concern of the Complainant is that one of the "Games" sites links to an online gambling website. Since the HOT WHEELS brand is primarily directed at children, an association with a gambling website is especially damaging to the brand.
In view of the nature of the links on the website, the use of the Domain Name appears to be designed to confuse people into believing that the Domain Name was registered to or otherwise associated with the Complainant. Since some of the links relate to the sale of HOT WHEELS products, accessed through a series of sponsored links, the Respondent is using the Domain Name to benefit financially from the association between the Domain Name and the Complainant. Such use amounts to an abusive registration.
In addition, the Respondent is the owner of many thousand domain names and several hundred of them incorporate, or are closely related to, third party registered trade marks as to which the Respondent has no rights. These include
Respondent
The Respondent has not filed any response to the Complaint.
General
Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non-compliance with the Procedure as I consider appropriate. The Complainant is still required, however, under clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law".
The Complainant has adduced uncontroverted evidence of a number of registrations of UK and Community trade marks in respect of HOT WHEELS dating back to 1970 as well as claiming substantial use of the name in respect of the sale of toy cars in the United Kingdom over very many years.
Ignoring the suffix ".co.uk" the Domain Name is identical to the Complainant's mark. Accordingly, I am satisfied that the Complainant does have Rights in respect of a name or mark which is identical to the Domain Name.
Abusive Registration
Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3 of the Policy. These include:
3ai Circumstances indicating that the Registrant has registered or otherwise acquired the Domain Name primarily:
C. for the purpose of unfairly disrupting the business of the Complainant; and
3aii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant; and
3aiii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under.uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.
The Respondent has not answered the Complaint and there is, therefore, no explanation as to the circumstances in which the Domain Name was registered or as to how it has been used. "Hot Wheels" is a colloquial, descriptive phrase for fast cars and it is therefore possible to imagine a legitimate use for the Domain Name and for a website using the Domain Name. The Domain Name, however, resolves to a domain parking web page that uses the Google AdSense service to draw up a list of links to websites that are associated both with the descriptive phrase and with the Complainant's well known trade mark.
It seems to me to be self evident that the Respondent has set up the website with a view to commercial gain from per-click payments resulting from visitors visiting the website. Although some users may access the website by typing what they regard as a descriptive phrase, I consider that the overwhelming majority of visitors will do so because they are familiar with the Complainant's brand name and assume that the Complainant will have a website at www.hotwheels.co.uk dedicated to its toy car products.
Although many visitors who are directed to the Respondent's website will simply realise their mistake, there will inevitably be a number who do click through, particularly on those links that refer again to "Hot Wheels". The very essence, however, of setting up the website must be that it does result in commercial gain as a result of visitors accessing other websites through the portal. In view of the notoriety of the HOT WHEELS brand, I consider it most likely that the Respondent had the Complainant's mark in mind and I infer from the failure to serve a Response that the Respondent accepts this.
I am satisfied on balance that the Domain Name was registered and is being used in order to take unfair advantage of the attractive force of the Complainant's registered trade marks for financial gain, by confusing people into believing that the Domain Name is registered by or is in some way connected with the Complainant. Such activity is also likely unfairly to disrupt the business of the Complainant, particularly if visitors to the Respondent's website are led to websites offering the products of the Complainant's competitors.
Finally, the Complainant has adduced specific evidence of a sample number of what it claims to be several hundred domain names registered by the Respondent that include or correspond to well-known names in which the Respondent has no apparent rights. On the face of it, the registration of the Domain Name is part of a pattern of such registrations. Paragraph 3aiii of the Policy specifies that this may be further evidence that the Domain Name is an Abusive Registration.
In the circumstances, I consider that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights in the name HOT WHEELS and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. I therefore determine that the Domain Name be transferred to the Complainant Mattel, Inc.
Ian Lowe
5 February 2007
