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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Turner Entertainment Networks International Ltd v Colgan [2007] DRS 5100 (29 November 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/5100.html Cite as: [2007] DRS 5100 |
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Complainant: Turner Entertainment Network Int. Ltd
Country: GB
Respondent: Mr Nicholas Colgan
Croatia
vbirds.co.uk;
v-birds.co.uk;
("the Domain Names")
The complaint was first received electronically by Nominet on 25 September, 2007 with hardcopies subsequently being received in full on 27 September, 2007. Nominet validated the complaint and informed the Respondent, by letter and email on 27 September, 2007, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 19 October, 2007) to submit a Response. No Response or reply of any sort was received from the Respondent. Nominet informed the Complainant accordingly on 22 October, 2007, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to Paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly received by Nominet on 5 November, 2007.
On 7 November, 2007, Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert on 12 November, 2007.
Following an initial review of the Complaint and Exhibits, the Expert made a request for Nominet to ask for further information from the parties in accordance with Section 13a of the Dispute Resolution Service Procedure. Nominet issued the request to the parties on 15 November, 2007 asking for a reply by 16 November, 2007. A reply was received from the Complainant and transmitted to the Expert on 19 November, 2007. No reply was received from the Respondent.
In its submissions (see below) the Complainant pointed out that the Agreement referred to in the Complaint and exhibited (in redacted form) was originally considered confidential between the original parties, and stated that "the expert is asked to respect this confidentiality". In the Expert's view, such a request is inappropriate for several reasons.
i) The DRS Procedure includes no provisions for the acceptance of information by an Expert in confidence. If a Complainant wished to preserve confidentiality in relation to a Complaint then it would be necessary to have resolved the Complaint in mediation or to have withdrawn it without requesting a Decision.
ii) The DRS Decision process is open and Nominet is obliged to publish an Expert's Decision in full (DRS Procedure Paragraph 17).
iii) Since the terms of the Agreement are indeed central to the Complainant's case, it would be impossible for the Expert to write a reasoned Decision without making any reference to it.
iv) In this case, it is the Complainant itself, which has chosen to disclose the relevant terms of the Agreement for its own potential benefit in pursuit of its claims under the DRS. Clearly, it alone must take full responsibility for the consequences of such disclosure.
The Expert therefore dismisses the Complainant's stated request in this respect, and has proceeded to take this Decision making appropriate references to the existence and the relevant terms of the Agreement, just as the Complainant has done in seeking to pursue its case in the Complaint.
According to Nominet's Register entry for the Domain Names, each was first registered as follows:
vbirds.co.uk – 13 February, 2002
v-birds.co.uk – 12 February, 2002
Each was registered in the name of Nicolas Colgan as Registrant as a "UK Individual" with an address at:
11a The Warstone Centre
156 Warstone Lane
Hockley
Birmingham
B18 6NZ
GB.
This address was the location for the Respondent's business at the time the Domain Names were registered, but Nominet's mail to this address was returned indicating that the addressee was no longer using that address. The Respondent's current address provided in the Complaint and supported by the accompanying Exhibits is as shown at Section 1 above.
The Complainant, Turner Electronic Networks International Limited (TENIL), owns and operates the Cartoon Network in Europe and elsewhere.
Complainant:
The Complainant has asserted that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names (Policy Paragraph 2a(i)); and
2. The Domain Names, in the hands of the Respondent, are Abusive Registrations (Policy Paragraph 2a(ii)).
In support of these assertions, the Complaint includes the following submissions:
In July 2002, TENIL entered into an agreement with Star Company Limited, for the development and exploitation of a programme entitled "VBirds" on Cartoon Network (the "Agreement"). [A copy of the Agreement (which had been redacted to remove commercially sensitive terms) was provided as an Exhibit to the Complaint.]
The VBirds are a virtual animated all-female pop group, who came down to earth from an alien planet called V and landed in an amusement arcade juke box. The names of the VBirds are Wow (an agony aunt), Boom (the band's gossip), Bling (the band's master rapper) and D:Lin (on the decks).
The Complainant has exploited the programme under the name "VBirds" as follows:
The programme entitled "VBirds" premiered on Cartoon Network on 28 December 2002 on the Complainant's television feeds in: UK [and many other countries listed in the Complaint]. The programme was shown on television in those territories until April 2003. The V-Bird's first pop single, "Virtuality" was produced by EMI for the Complainant. It was a hit single in the UK in 2003 and reached number 21 in the UK charts. There was a promotional screening of the video in London in April 2003. The Complainant entered into promotional agreements with EMI Records and Warner Bros Studio Stores in April 2003 to promote the VBirds and the single release in 22 stores and with EMI and Woolworths in April 2003 to promote the VBirds as seen on Cartoon Network and the single release.
VBirds had a promotion as part of the UK tour of the pop group Blazin' Squad in May 2003. The Complainant ran a competition promotion VBirds on its website in April 2003. VBirds was featured on AOL UK in April 2003.
The Complainant has entered into an agreement with Glu Mobile for a VBirds interactive game created for mobile telephone, which included the Virtuality and Dance with Me tracks.
The Complainant entered into a licence agreement with Konami Europe to include the VBirds Virtuality video as part of its "Dancing Stage Fever" video game for the PlayStation.
A VBirds interactive TV game was included in the Sky Gamestar as part of the Cartoon Network games service. This ran from 14 July to 6 September 2003 and included the tracks: Virtuality, Dance with Me, Virtuality Slim, Redz Planet V remix and Wows track.
The Complainant entered into a VBirds ringtone licence with Mkodo.
The Complainant has spent considerable sums in advertising and marketing the VBirds. [Examples of press information and promotions for products involving the VBirds were exhibited to the Complaint.]
The Complainant and/or its parent, Turner Broadcasting System, Inc., have registered the following domain names: THEVBIRDS.com, THEVBIRDS.net, THEVBIRDS.tv, THEVBIRDS.co.uk, THEVBIRDS.us, VBIRDS.com, VBIRDS.net, VBIRDS.tv, VBIRDS.kids.us, V-BIRDS.com, V-BIRDS.net
Pursuant to the Agreement, Star Company Limited assigned all Rights in VBirds to the Complainant. Reference is made to the following provisions of the Agreement:
Recital B to the Agreement states that "Star Company agrees that TENIL shall have the sole right to exploit the ... VBirds (as hereinafter defined).";
Star Company assigned to TENIL with full title guarantee all copyright in and to the Compositions and Recordings (Agreement Clause 3.5);
Star Company assigned to TENIL with full title guarantee all its right, title and interest in all copyright, Intellectual Property Rights and related rights in and to the VBirds (Agreement Clause 3.8). "Intellectual Property Rights" is defined as all copyright and other intellectual property rights, howsoever arising in whatever media, whether or not registered or capable of registration, including (without limitation), database rights, patents, trade marks, service marks, trade names, registered design, domain names and any applications for the protection or registration of those rights and all renewals and extensions thereof throughout the world;
Monetary consideration was paid by TENIL on signature of the Agreement in consideration for the assignment of Intellectual Property Rights in the VBirds (Agreement Clause 5.1);
TENIL retained throughout the world, in perpetuity, the exclusive ownership of all rights, including the copyright therein and all rights of copyright and copyright renewal, in and to the VBirds, programmes, name and logo, Music Tracks and all material and Intellectual Property Rights contained therein (Agreement Clause 7);
Star Company warranted that a UK Trade Mark Application for "VBirds" was the sole application for registration of any Intellectual Property Rights in relation to the V Birds name or logo in any form or any variation or derivative thereof throughout the world (Agreement Clause 9.1.5).
Star Company accordingly has no rights in VBirds other than a right to share in the income derived from exploitation of the programme. The Complainant owns all Rights in VBirds.
The Agreement was signed on behalf of Star Company Limited by its "director" Nicholas Colgan (the Respondent) on 17 July 2002. A search at Companies House has revealed that "Star Company Limited" is not an English registered company.
It is clear that the Complainant has established substantial goodwill and reputation in the VBirds.
The Domain Names in the hands of the Respondent are abusive.
The Complainant first contacted the Respondent asking him to transfer the Domain Names in August 2004. The Complainant has persistently and consciously refused to transfer the domain names between 2004 and the present date, despite numerous requests from the Complainant to do so. In addition, during that period, the Respondent has actively maintained his abusive registration when the Domain Names have been renewed.
The Domain Names have been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights, because, to the best of the Complainant's knowledge and belief:
The Respondent was a "director" of Star Company, and he signed the Agreement on behalf of Star Company assigning ownership of the Domain Names to the Complainant. He was therefore fully aware that all Rights in respect of VBirds were to be owned by the Complainant, not Star Company, and not him in his personal capacity.
The Respondent registered the Domain Names on 13 February 2002 (see Whois details). This was a month before negotiations began, and some months before the Agreement was signed on 22 July 2002, and yet, in the Agreement, Star Company (of which the Respondent was a director) warranted to the Complainant that a UK Trade Mark application was the "sole application for registration of any Intellectual Property Rights in relation to the VBirds name or logo". It is to be inferred that, at the time of registering the Domain Names, and at the time of signing the Agreement, the Respondent had in mind the possibility of selling or otherwise transferring the Domain Names to the Complainant (paragraph 3(a)(i)(A) of the Nominet DRS Policy). The Respondent has subsequently renewed the Domain Names, most recently in August 2006, knowing that he (and his company) have no rights in the Domain Names.
The Respondent has admitted in correspondence that the Domain Names should properly be transferred to the Complainant. Despite this, he has refused to sign the Nominet Transfer Forms which would give effect to his agreement with the Complainant, in order to frustrate the Complainant in its business of exploiting goods and service under the VBirds mark. This refusal to transfer the Domain Names has been going on for such an inordinate length of time that it is not possible, in the Complainant's view, to infer that the Respondent is being forgetful, or lazy, but rather that he is deliberately and consciously holding onto the Domain Names in order to frustrate the Complainant's business.
The Domain Names are currently inactive. The Respondent would not be able to use the Domain Names without infringing the Complainant's Rights (pursuant to the Agreement).
Accordingly, it is to be inferred that the Respondent continues to hold on to the Domain Names:
in order to block the Complainant from registering the Domain Names, in which it owns Rights (Paragraph 3(a)(i)(B) of the Nominet DRS Policy); and/or
for the purposes of unfairly disrupting the business of the Complainant (Paragraph 3(a)(i)(C) of the Nominet DRS Policy).
Furthermore, he has given false contact details to Nominet (paragraph 3(a)(iv)). The Respondent holds the Domain Names as a "UK Individual". He has given his address to Nominet as 11a The Warstone Centre, 156 Warstone Lane, Hockley, Birmingham, B18 6NZ. That is not his address. The Respondent resides in Croatia. This is confirmed in his emails dated 19 February 2007 to Complainant's lawyer where he gives his telephone number as beginning "00 38" (the country code for Croatia) and also states that the post to London, England, "usually takes approx 5 days". This is not consistent with someone who resides in Birmingham. In any event, the Birmingham address is a block of business units.
The email from Star Company's accountant, Dave Parker, dated 28 July 2005 states that "when we get a full accounting of monues [sic] due to us and payment we will sort this out". This suggests that the Respondent is effectively holding the Domain Names as ransom and refusing to sign the paperwork because he considers that the accounting due under the Agreement has not been worked out correctly (which the Complainant denies).
The factors set out in Paragraph 3 of the Nominet DRS Policy are non-exhaustive factors which may point to a particular registration being Abusive. In addition to the specific examples of the ways in which the Respondent's behaviour falls within the specific examples listed in Paragraph 3 of the Nominet DRS Policy, the Respondent's behaviour, for the reasons set out in paragraph 8 and 9 of this Complaint, is also "abusive" in the natural, ordinary meaning of that word, which means "treating badly or injuriously" or "wrongly used; corrupt". In our submission, the expert should find in the Complainant's favour, given that the Respondent's behaviour, consistently over a period of three years, has been to refuse to transfer the Domain Names to which the Complainant is legitimately entitled. Such behaviour is plainly abusive.
The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence that the registrations of the Domain Names were not Abusive Registrations for the purpose of Paragraph 4 of the Policy.
The Complainant requests transfer of the Domain Names to the Complainant.
Respondent:
No response was received from the Respondent.
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to he Domain Names; and that the Domain Names, in the hands of the Respondent, are Abusive Registrations as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant in this case has asserted that the Domain Names are "identical or similar to a name or mark" in which it has Rights, principally being the designation "VBIRDS".
"Rights" under the Policy is broadly defined and is not necessarily limited to Rights in existence at the time of registration of the Domain Names at issue, nor are "Rights" limited to registered trade mark rights.
The Complainant certainly has provided evidence of considerable usage of VBIRDS, and some examples of use of V-BIRDS, which would support a claim to unregistered common law rights in these designations. The Complainant has also listed a number of domain name registrations for these designations in other Top Level Domains in its name or the name of its parent company. These domain name registrations all post-date the registrations of the Domain Names at issue. Unusually for a dispute like this, the Complainant has not cited any registered trade mark rights that it owns.
However, it is clear from the evidence submitted with the Complaint, that the Complainant was not itself the originator of the "VBIRDS" (or "V-BIRDS") name. On the face of it, the evidence shows that the name was originated prior to July 2002 by "Star Company", purportedly a "Limited" company of which the Respondent held himself out to be a Director. In July 2002, that business, represented by the Respondent, duly contracted the Agreement with the Complainant. And it is under the terms of the Agreement that the Complainant appears to have its strongest claims to relevant "Rights". In fact, as the evidence also shows, there was not any "Star Company Limited" as such, registered in the UK at the relevant time. There was a "Star Company Music Limited", of which the Respondent has been shown to have been a Director. (This information was provided by the Complainant in reply to the Expert's request for further information under Paragraph 13a of the DRS Procedure, referred to at Section 3 above.) The Complainant's representatives have expressed scepticism about whether this could have been the business which was party to the Agreement. However, from the Expert's perspective, the evidence suggests that the Complainant evidently did not undertake sufficient due diligence at the time to verify the legal status of "Star Company Limited" and its "registered address", so it would seem quite conceivable that "Star Company Limited" was merely a trading style adopted by the Respondent for the company which was actually registered as "Star Company Music Limited" and that the address in the Agreement was simply the address from which the business was being operated at the time, rather than its formal "registered address" as recorded at Companies House.
In any event, the Agreement made express reference to the assignment of a UK trade mark application 2298632 for THE VBIRDS (and other variants as a series of seven marks) in several classes, including Class 41 for entertainment services, then in the name of Star Company Limited with the address shown in the Agreement. That application subsequently registered and presently remains in the name of Star Company Limited. It is perhaps odd that the Complainant has chosen not to record the assignment made under the Agreement. However, under the Agreement it would clearly have beneficial ownership of the rights in that trade mark registration, which is also to be presumed valid in the absence of evidence to the contrary.
(It is to be noted that there is also a Community Trade Mark Registration 2898559 for THE VBIRDS, filed in October 2002 – after the date of the Agreement – claiming priority from the UK trade mark 2298632, and also still currently standing in the name of Star Company Limited at the address in the Agreement.)
The Respondent has not challenged the Complainant's assertions regarding his involvement in and the contractual obligations established under the Agreement.
Accordingly, for the purposes of the Policy, the Expert is prepared to conclude that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Names at issue.
Abusive Registration
The Complainant also has to show that the Domain Names are Abusive Registrations. 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 3a of the Policy:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. 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;
iii. 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;
iv. It is independently verified that the Respondent has given false contact details to us; or
v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
A has been using the domain name registration exclusively; and
B paid for the registration and/or renewal of the domain name registration.
Clearly, on the facts, it cannot reasonably be said that the Domain Names were "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". The Domain Names were registered before the Complainant acquired any relevant Rights. Thus the first alternative of Paragraph 1 cannot apply and the Complainant's case must rely on the second.
The Complainant has argued that the example of Paragraph 3a(iv) of the Policy is applicable. However, it is clear that the contact details as originally given to Nominet were not false, but that they have simply not been updated following subsequent changes of circumstances. The Respondent has remained contactable by the Complainant and the Expert does not consider that it would be fair or reasonable to hold the Domain Names to be Abusive Registrations in such circumstances.
However, the example of Paragraph 3a(v) of the Policy is more pertinent and demonstrates that the scope of what may be an "Abusive Registration" under the Policy is intended to include cases where there has been some breakdown in an original business relationship between Complainant and Respondent and the original intent of that relationship has been frustrated with some unfairly detrimental consequences for the Complainant.
In effect. the wording of Paragraph 1(ii) "has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights" is to be construed as encompassing situations where the "use" is to be considered as unfair to the Complainant's Rights because the Domain Names are not actually registered in the Complainant's name, when the accepted intention of both parties was clearly that they should ultimately be so registered.
The Respondent has not challenged any of the Complainant's claims in this respect.
In the present case, the Expert is satisfied that it was indeed the intention of the Complainant and the Respondent (acting by or through "Star Company Limited") that the Complainant should ultimately hold those contractual rights as Registrant of the Domain Names in accordance with the Agreement. The Respondent has failed to act in good faith in compliance with his obligations under the Agreement as a Director of, and signatory for, Star Company Limited. The Expert considers that the Respondent's failure to act in good faith to transfer the Domain Names to the Complainant in these circumstances may reasonably be characterised as "abusive" and "unfairly detrimental to the Complainant's Rights" in this context.
The Domain Names were intended to be put into the Complainant's name as Registrant, but have not been because of the Respondent's "abusive" conduct as noted above.
Accordingly, for the purposes of the Policy, the Expert concludes that the Domain Names, in the hands of the Respondent, are Abusive Registrations.
Having concluded that the Complainant has applicable Rights and that each of the Domain Names, in the hands of the Respondent, may be characterised as an Abusive Registration for the purposes of the Policy, the Expert orders that both of the Domain Names vbirds.co.uk and v-birds.co.uk be transferred to the Complainant.
November 29, 2007
Keith Gymer Date