Australian Broadcasting Corporation v. C. Hewitt; P. Hewitt

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Australian

Broadcasting Corporation v. P & C Hewitt

Case No.

D2001-0457

1. The Parties

The Complainant in this

proceeding is the Australian Broadcasting Corporation, of 700 Harris Street,

Ultimo, New South Wales, Australia.

The Respondents in this

proceeding are P and C Hewitt of 4f Igarashi Building, 6–1–28 Shimo Meguro,

Tokyo, Japan.

2. The Domain Names

and Registrar

This dispute concerns the

two domain names:

<bananasinpyjamas.com>

<bananasinpajamas.com>

("Domain Names")

The registrar with whom

the Domain Names are registered is:

Network Solutions Inc,

Herndon, VA 20170, United States of America.

The Domain Names were registered

on April 7, 1999.

3. Procedural History

A complaint pursuant to

the Uniform Domain Name Dispute Resolution Policy ("the Policy") and

the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")

both of which are implemented by ICANN on October 24, 1999, was received by

the Center in electronic format on March 29, 2001, and in hardcopy on April 3, 2001.

An amendment to the complaint was received by e-mail on April 24, 2001,

and in hardcopy on April 27, 2001. Payment in the required amount to the Center

has been made by the Complainant.

On April 2, 2001, a request

for registrar verification was sent to the Registrar requesting confirmation

that it had received a copy of the complaint from the Complainant, that the

Domain Names were currently registered with it and that the Policy was in effect,

and requesting full details of the holder of the Domain Names and advice as

to the current status of the Domain Names.

On April 30, 2001, the

administrative proceeding began.

On May 22, 2001, a notification

of default was sent to the Respondents. No response was received.

On, June 5, 2001, notification

of appointment of an administrative Panelist and projected decision date ("the

appointment notification") was sent to the Complainant and the Respondents.

In accordance with the Complainant’s request, the appointment notification informed

the parties that the administrative Panel would comprise of one Panelist, Clive

Elliott and advised that the decision should be forwarded to WIPO by June 19,

2001.

On June 29, 2001, a decision

was made.

4. Factual Background

The Complainant is the

registered owner of the following registered trademarks in the countries and

classes set out below since the registration dates listed below (hereinafter

referred to as "the Registered Trademarks"):

AUSTRALIA

Number

Registered Mark

Classes

Registration Date

630036

BANANAS IN PYJAMAS

9

17 May 1994

630037

BANANAS IN PYJAMAS

16

17 May 1994

630038

BANANAS IN PYJAMAS

25

17 May 1994

630039

BANANAS IN PYJAMAS

28

17 May 1994

630040

BANANAS IN PYJAMAS

41

17 May 1994

633332

BANANAS IN PYJAMAS

9

27 June 1994

633333

BANANAS IN PYJAMAS

16

27 June 1994

633334

BANANAS IN PYJAMAS

25

27 June 1994

633335

BANANAS IN PYJAMAS

28

27 June 1994

633336

BANANAS IN PYJAMAS

41

27 June 1994

658379

BANANAS IN PYJAMAS

3

10 April 1995

658380

BANANAS IN PYJAMAS

3

10 April 1995

756349

BABY BANANAS IN PYJAMAS

9, 16, 25, 28

3 March 1998

757867

BANANAS IN PYJAMAS

12

20 March 1998

JAPAN

Number

Registered Mark

Classes

Registration Date

3327949

BANANAS IN PYJAMAS

logo

9

4 July 1997

4025898

BANANAS IN PYJAMAS

and logo in Katakana

9

11 July 1997

3339270

BANANAS IN PYJAMAS

logo

16

15 August 1997

4096831

BANANAS IN PYJAMAS

and logo in Katakana

16

26 December 1997

3316020

BANANAS IN PYJAMAS

logo

25

30 May 1997

4096832

BANANAS IN PYJAMAS

and logo in Katakana

25

26 December 1997

3355340

BANANAS IN PYJAMAS

logo

28

31 October 1997

4014151

BANANAS IN PYJAMAS

and logo in Katakana

28

20 June 1997

4046217

BANANAS IN PYJAMAS

logo

29

22 August 1997

UNITED STATES OF AMERICA

Number

Registered Mark

Classes

Registration Date

2084461

BANANAS IN PAJAMAS

logo

9, 16, 25, 28

29 July 1997

2084355

BANANAS IN PAJAMAS

9, 16, 25, 28

29 July 1997

2103747

BANANAS IN PYJAMAS

logo

9, 16, 25, 28

7 October 1997

2019907

BANANAS IN PAJAMAS

38

26 November 1996

2009137

BANANAS IN PAJAMAS

logo

38

15 October 1996

The Complainant is also

the registered owner of the registered trademarks BANANAS IN PYJAMAS and BANANAS

IN PAJAMAS and applications for trademark registration BANANAS IN PYJAMAS and

BANANAS IN PAJAMAS in Argentina, Australia, Bulgaria, Brazil, Benelux countries,

Canada, Chile, China, Colombia, Czechoslovakia, Denmark, Spain, European Union,

Finland, France, United Kingdom, Germany, Hungary, Ireland, Israel, Italy, Japan,

Mexico, Norway, New Zealand, Peru, Philippines, Russian Federation, South Africa,

Saudi Arabia, Sweden, Singapore, Thailand, United States of America and Uruguay.

The Domain Names resolve

to the Respondents’ web site. The said web site shows the trademark BANANAS

IN PAJAMAS and logo in a form which is identical to the Complainant’s trademark.

5. Parties’ Contentions

A. Complainant

The Complainant states

that it has made extensive use of the Registered Trademarks (and their unregistered

forebears) since 1991. This use is in connection with a popular children’s television

show and series known as "Bananas in Pyjamas" and "Bananas in

Pajamas", which features two anthropomorphized bananas known as "B1"

and "B2". It is asserted that the show is highly successful and it

has been shown in over 70 countries around the world including; Australia, United

Kingdom, United States, South America, East and Western Europe, Asia, South

Africa, Africa and the United Arab Emirates.

The Complainant says it

has also undertaken an extensive international merchandising and licensing program

to promote, using the Registered Trademarks and goods and services that are

related to the "Bananas in Pyjamas" and "Bananas in Pajamas"

television show and series. For example, the Complainant indicates it has produced

and sold, or licensed the production and sale of "Bananas in Pyjamas"

and "Bananas in Pajamas" books, videos, compact discs, DVD’s, audio

tapes, toys, clothing, footwear, food, bicycles, posters, teaching materials,

live music events, mechanical rides, sporting goods, sunscreens and shampoos.

These goods and services were produced and sold under the Registered Trademarks.

The "Bananas in Pyjamas" and "Bananas in Pajamas" goods

and services have also been widely advertised throughout the world including

on the Complainant’s web site <shop.abc.net.au> and <abc.net.au/children>

and on Complainant’s television station, ABC-TV, in the Complainant’s ABC shops

and in other ways by the Complainant’s licensees. This advertising likewise

uses most or all of the Registered Trademarks.

The Complainant says that

apart from the ".com" part of the Domain Names and the lack of spaces

between the words in the Domain Names they are identical to the Complainant’s

Registered Trademarks.

The Complainant admits

entering into brief correspondence with the Respondents to try and enter some

sort of mutual beneficial relationship. (The Complainant only supplied the response

letter from the Respondents' and the Complainant's reply as evidence)

B. Respondent

No response was received

from the Respondents.

6. Discussion and Findings

Paragraph 4(a) of the Policy

requires that the Complainant must prove each of the following:

- The domain names are

identical or confusingly similar to the trademark; and

- The Respondents have

no right or legitimate interest in respect of the domain names; and

- The domain names have

been registered and are being used in bad faith.

Paragraph 4(b) of the Policy

sets out four illustrative circumstances that, if proved, constitute evidence

of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy

sets out three illustrative circumstances that, if proved, constitute evidence

of a right or legitimate interest as described in paragraph 4(a)(ii) referred

to above.

Domain Names Identical

or Confusingly Similar

It is clear from the evidence

that the Complainant has devised and registered the trademark BANANAS IN PYJAMAS

in Australia, Japan and the United States of America and that such registrations

pre-date the registration of the Domain Names. Likewise, it is asserted, without

contest, that the Complainant had applied for the trademark or its variant BANANAS

IN PAJAMAS in a large number of countries. Finally, it is asserted, without

contest again, that the Complainant has used the Registered Trademarks in a

number of countries over a period of time.

The Registered Trademarks

are highly distinctive and represent a novel and unusual combination of the

concepts of pyjamas and bananas, something which would seem to require a level

of inventiveness and practical distinctiveness. In the absence of evidence to

the contrary the Panel finds this to be the case. In view of the above it is

found that the Registered Trademarks are trademarks in which the Complainant

has rights and that the Domain Names are confusingly similar if not identical

thereto.

No Right or Legitimate

Interest

Given what seems on the

evidence to be the highly distinctive nature of the Registered Trademarks, a

presumption arises that the Complainant alone has rights in these trademarks

and certainly in the classes of interest to it. Whether the Complainant's rights

extend to all manners of use of the Registered Trademarks is a matter which

is less certain. However, the Respondents have chosen not to assert any legitimate

claim to the Registered Trademarks and in the absence of such an assertion the

Panel has to draw whatever reasonable inferences it can from the evidence filed.

In the absence of any evidence

from the Respondents the Panel has no choice but to accept the prima facie case

put forward by the Complainant and likewise find that there is no apparent right

or interest which the Respondents might have in such a distinctive trademark.

Domain Names Registered

and Being Used in Bad Faith

Given the absence of any

explanation and the prima facie case that the Complainant has put forward, it

is found that the Domain Names were registered and are being used in bad faith.

It is asserted by the Complainant and not disputed by the Respondents that the

Domain Names resolve to a web site that uses the same logo form of the Complainant’s

trademark.

The use of the identical

trademark on a web site in this way amounts to a prima facie case of bad faith.

Once again, even though the Panelist must be careful not to over-extend the

ambit of the UDRP, the Panel is of the view that the Complainant has done sufficient

to establish its rights and lack of the Respondents' legitimate rights. From

that point what can be done is for the Panel to draw a reasonable inference

that the Respondents acted in bad faith and continue to do so.

There may well be explanations

as to how the Respondents came up with the Domain Names and these may be entirely

innocent. However, the record as it stands, suggests otherwise and the Respondents

have to accept the consequences of their failure to put necessary evidence (if

any exists) before the panel.

7. Decision

In view of the above the

Domain Names should be transferred to the Complainant.

Clive L.

Elliott

Sole Panelist

Dated: June

29, 2001

More cases by this complainant

• Australian Broadcasting Corporation v. Gregory Brown, Acheeva Business Solutions Pty Limited — DAU2021-0007 · abcstore.com.au · Transfer · 25 Mar 2021
• Australian Broadcasting Corporation v. Hussein Elburai — D2019-1181 · abc.net · Complaint denied · 11 Jul 2019