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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Multiplay (UK) Ltd. v. Mike Pooler

Case No. D2006-0925

 

1. The Parties

The Complainant is Multiplay (UK) Ltd., Hampshire, United Kingdom of Great Britain and Northern Ireland, represented by Smith Bates Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mike Pooler, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <multiplay.net> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2006. On July 21, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On July 24, 2006, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2006.

The Center appointed the Honourable Sir Ian Barker, QC as the sole panelist in this matter on August 25, 2006. 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

The Complainant was incorporated in England on May 14, 1997. Since then, the Complainant has conducted all its business activities under the name “Multiplay”.

The Complainant is in the business of organising, hosting and administering LAN parties and on-line multi-player computer games environments and creating, developing and providing software and hardware solutions and services to facilitate this. The Complainant’s core business activities are conducted on-line and its internet presence is critical to its business.

LAN parties are events at which computer gamers compete against each other, either head-to-head or in teams, known as “clans”. The success of computer gaming and the increasing numbers of people involved in and attending LAN parties has resulted in the creation of sub-culture surrounding its participants. The clans have developed their own names, use of language, rules and other self-identifying features.

The Complainant is the organiser of a series of LAN parties, known collectively as the “i-series”, which has become the pre-eminent series of LAN parties taking place within the United Kingdom. The Complainant holds important position within the European on-line gaming community and has to some extent been responsible for the establishment and growth of this niche industry in the United Kingdom. The “i-series” events name attracted wide media coverage and corporate sponsorship.

The Complainant regularly has in excess of 11,000 gamers on its servers. It is thus Europe’s largest independent on-line gaming provider.

The disputed domain name was registered on July 22, 1997. Since then, although registration has been renewed, there is not now, nor has there ever been, any website developed other than in 1999 when there was a website page offering links to various forms of gaming.

The Complainant’s solicitors wrote three letters in August to November 2005 to the post box number in Sunnyvale, California, provided in the Respondent’s contact details. No reply was received and the last letter was returned undelivered. The contact telephone and fax numbers provided by the Respondent do not appear to be valid. The street address given is believed by the Complainant to be an address of convenience. The Complainant tried to communicate with the Respondent at his various named contacts in 2003 and 2004, but without success.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has rights under English Common law to the use of the word “Multiplay” as a trade and or service mark. Such rights have been acquired by use and exist even though the word Multiplay is not a registered trademark of the Complainant.

Further and or in the alternative, the Complainant submits that the mark MULTIPLAY has acquired a secondary meaning by having been used for such period of time and so exclusively by the Complainant with reference to the business of organising, hosting and administering LAN parties and on-line multi-player computer games environments. To the particular branch of the purchasing public, the word has come to indicate that the product or service was a product or service of the Complainant.

The Complainant owns and actively uses several top level domain names for the word “multiplay” from <multiplay.co.uk> registered in 1998 to <multiplay.info>, registered in 2005. It also owns <multiplay.us> registered on May 17, 2005.

Its principal website is “www.multiplay.co.uk”. The site includes customer registration and booking for attendance at its LAN parties, customer news and entertainment services, a highly-trafficked collection of PC game related forums, and its games servers which permit gamers to compete against each other online.

The Complainant contends that the Respondent has no right or legitimate interest in the disputed domain because the domain has not been in use for at least 6 years. This absence of use is evidence that the Respondent is not using (nor could be said to be making demonstrable preparations to use) the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services: Revlon Consumer Products Corporation. v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468.

The Respondent’s absence of use of the disputed domain name over at least the last 6 years is evidence of that the Respondent is not engaged in noncommercial or fair use of the name.

There is no obvious connection between the Respondent and the disputed domain name, so as to establish or imply that the Respondent is commonly known by the domain name or any portion thereof or otherwise has acquired any legitimate right or interest of the Respondent in the name Multiplay.

There is no information to suggest that the Respondent is the owner, assignee or beneficiary of a registered US trademark right in the name Multiplay or a device incorporating the word “Multiplay”. A registered US trademark incorporating the word “Multiplay” does exist, but is registered to Optical Storage Technology Association of Santa Barbara, California. It applies to consumer audio and video playback devices, e.g. CD players and DVD players and specifically incorporates the disclaimer “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “MULTIPLAY” APART FROM THE MARK AS SHOWN”. This mark was registered on May 6, 2003.

The Complainant has never assigned, sold, or transferred any of its rights in the Multiplay mark to the Respondent nor granted permission to Respondent to use or register the Multiplay mark as a domain name.

The limited use of the disputed domain name in 1999 by the Respondent demonstrates an intentional attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website.

Bad faith registration and use is established by and or may be inferred from the following circumstances.

The Complainant’s trademark Multiplay has a strong reputation and is widely known in its realm of commerce, as evidenced by its substantial use in England and in other countries.

(i) Prior to the issuing of the Complaint, the Complainant made substantial efforts to identify and contact the Respondent, using the details then current on the register. During the course of these attempts, some of the contact details of the Respondent changed. The Complainant then renewed its efforts to contact the Respondent, using the changed contact details.

(ii) The Respondent has provided false, incomplete or inaccurate contact information for the purposes of its domain name registration, in breach of the Respondent’s warranty under paragraph 2(a) of the Uniform Policy in an attempt to conceal or obscure his identity.

(iii) The length of time that the domain has failed to resolve to any valid web page or other on-line presence is now so great, that on a balance of probabilities it is likely that the domain name was not registered in good faith, as it is now impossible to conceive of a legitimate reason which would augur such a delay.

(iv) Any future use of the domain name by the Respondent would, because of the proximity of the disputed domain to the Complainant’s established on-line presence falsely misrepresent an association with the Complainant and its goodwill, resulting in passing off and trademark infringements by the Respondent. Therefore there is no plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate.

B. Respondent

The Respondent filed no submissions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Because the Respondent has filed no submissions, the Panel accepts the factual statements made in the Complaint. The Panel considers that the Complainant has established sufficient evidence of a common law mark – certainly in the United Kingdom and possibly in Europe. There appeared little evidence of the Complainant’s operations, if any, in the United States. However, the nature of internet business means that users of the Complainant’s website can come from anywhere.

Unlike a registered trademark, which normally once accepted for registration, applies from the date of application, a common law mark can only be acquired over a period of time, usually years, during which time the brand and services are exposed to and become widely known to a large section of consumers. Thus, it could not be said that, at the date of registration of the disputed domain name in June 1997, the Complainant, which had only been incorporated two months previously, could have acquired a common law mark in so short a period.

Nevertheless, despite the lack of a common law mark as at the date of registration and despite any available inference that the Respondent in the United States as at that date, would have known of the newly-formed Complainant, the first element of the Policy requires only that a Complainant has rights in a mark which is identical or confusingly similar to the disputed domain name. The Complainant’s common law mark MULTIPLAY and the disputed domain name are identical.

Hence, the Panel finds that the first limb of Paragraph 4(a) of the Policy is proved.

B. Rights or Legitimate Interests

The Complainant has granted the Respondent no rights in respect of the use of its MULTIPLAY mark in the disputed domain name. That fact is conclusive in terms of the second limb of Paragraph 4 (a) of the Policy in the absence of any evidence from the Respondent that he came within any part of Paragraph 4(c) of the Policy.

Accordingly, the Panel finds that the second limb of Paragraph 4(a) of the Policy is proved.

C. Registered and Used in Bad Faith

It is well-established that this third limb of Paragraph 4(a) of the Policy requires the Complainant to prove separately both bad faith registration and bad faith use. Sometimes, bad faith registration can be inferred from subsequent bad faith use. Likewise, bad faith registration can sometimes be inferred from the lack of use of a website by a domain name registrant or from offers to sell the disputed domain name by a registrant to a potential complainant.

However, in the present case, the disputed domain name was registered only two months after the Complainant had commenced business and long before it could possibly have acquired the reputation for its services that it enjoys today. It is not possible, therefore, to infer bad faith registration in these circumstances.

Nor has there been any conduct by the Respondent other than the sole 1999 website which could give rise to a necessary inferences of bad faith registration. There is no evidence suggesting that a common law trademark was achieved as early in the Complainant’s history as January 1999, when the website appeared at the disputed domain name.

As was stated by the panel in John Ode dba ODE and DDE – Optimum Digital Enterprises v Internship Limited,WIPO Case No. D2001-0074:

“There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy since it is impossible for the domain name to have been registered in bad faith”.

That Panel then cited numerous WIPO precedents in support of this proposition.

The present situation is identical because, at the time when the disputed domain name was registered, there could not possibly have been any common law mark held by the Complainant.

There is no evidence before the Panel that the Respondent has attempted to sell the name. Such an attempt, had it been made could be a pointer towards bad faith. Although there are questions about the Respondent’s bona fides raised by the lack and/or inaccuracy of his contact details, one cannot be sure that these details were lacking or were inaccurate back in July 1997.

No explanation was offered by the Complainant for its delay in bringing these proceedings. Whilst the equitable doctrine of laches does not feature in the Policy and therefore cannot operate to exclude a complaint, complainants who delay bringing proceedings under the Policy face difficulties, particularly, as here, in proving bad faith registration.

In the present case, there could well be grounds for alleging continuing bad faith use arising out of the Respondent’s ongoing deficiencies in respect of his contact details, and his continuing failure to furnish a website. But those facts cannot operate to infer bad faith registration in the present circumstances, in which the Complainant did not possess any trademark rights in the MULTIPLAY mark at the time of registration. Nor is there any evidence before the Panel that the Respondent knew at the time of registration of the disputed domain name that the Complainant’s intended to use the word “Multiplay” in connection with its operations, or that the Respondent has since acquired actual knowledge of the Complainant’s use of it’s common law mark.

Regimes which do not follow the ICANN Policy such as the British Nominet Scheme (for .uk names) and the Internet New Zealand Scheme (for .nz names) allow a panel to consider a Respondent’s conduct “in the round” and do not require separate proof of both registration and use of a domain name in bad faith. But under the Policy, bad faith registration has to be proved separately, often by inference, or by a confluence of circumstances such as those discussed in a number of previous Panel decisions (cf for e.g, Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. It cannot be so proved here. Therefore, the Complaint must fail.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Sir Ian Barker
Sole Panelist

Date: September 8, 2006