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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Blockbuster Inc. v Thompson [2005] DRS 02602 (28 June 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02602.html Cite as: [2005] DRS 02602, [2005] DRS 2602

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Blockbuster Inc. v Thompson [2005] DRS 02602 (28 June 2005)

Nominet UK Dispute Resolution Service
Dispute no. 2602 Blockbuster Inc. -v- Jaden Thompson Decision of Independent Expert
1. Parties

Complainant: Blockbuster Inc.

Country: USA

Respondent: Jaden Thompson

Country: United Kingdom

2. Domain Name

<blockbuster.org.uk> (the "Domain Name")

3. Procedural Background
4. .1 The Complaint entered Nominet's system and was validated on 27 April 2005. The Complaint was sent to the Respondent on 28 April 2005. No response was received by the deadline for response on 23 May 2005. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 9 June 2005. On that date, I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such by Nominet on 15 June 2005.
5. Outstanding Formal/Procedural Issues
6. .1 There are no such issues in this case.
7. The Facts
8. .1 The Complainant is Blockbuster Inc., a well known provider of videos, DVDs and video games in the United Kingdom and elsewhere.
9. .2 The Respondent is an individual living in the United Kingdom.
10. .3 In December 2004 the Respondent in an unsolicited email to the Complainant made certain suggestions as to a new service that he thought the Complainant might offer to its customers. It would appear that the Respondent believes that his idea was then taken and used by the Complainant and that he was entitled to payment as a result. Beginning in January 2005, the Respondent sent a series of emails to the Complainant demanding such payment in increasingly abusive and threatening terms.
11. .4 The Domain Name was registered in the name of the Respondent (by whom it continues to be held) on 6 April 2005.
12. .5 I describe in greater detail in this decision the nature of the website that the Respondent operated from the Domain Name. By the time of my appointment the Domain Name resolved to a different web page that offered the Domain Name for sale. At the time of this decision the Domain Name resolves to yet another web site and web page headed "Statement of Mr Jaden Ian Andrew Thompson to be read out at court hearing". On this web page the Respondent makes further complaint about the Complainant's alleged wrongful behaviour.
13. The Parties' Contentions

Complainant

14. .1 The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical to a name or mark in which it has rights and the registration of the Domain Name in the name of the Respondent is an Abusive Registration.
15. .2 In this respect, the Complainant refers to the fact that it is the registrant of 40 EU Community and United Kingdom trade mark registrations and applications for "Blockbuster" or similar marks incorporating the word Blockbuster in some form or other. These registrations include the following word marks:

Territory	No.	Mark	Class
EU	E190181	BLOCKBUSTER	09, 16, 28, 38, 41, 42
EU	E2045391	BLOCKBUSTER	09, 35, 38, 41
UK	1224821	BLOCKBUSTER	16
UK	1277126	BLOCKBUSTER	41

16. .3 The Complainant then refers in detail to extensive correspondence from the Respondent to the Complainant. This can be summarised as follows:

(a) Initial correspondence between the Complainant and Respondent in March 2004 in which the Respondent set out his business idea and in which the Complainant informed him that it does not consider unsolicited proposals and ideas.

(b) Correspondence that took place between January 2005 and April 2005 in which the Respondent accused the Complainant of "stealing" his idea and demanded various sums ranging from £20,000 to £100,000 from the Complainant. This correspondence included an email dated 6 April 2005 in which the Respondent threatened physical violence towards the Complainant's employees.

(c) Correspondence in April 2005 in which the Respondent revealed he has registered the Domain Name and threatened to operate a "tasteless porn site" unless payment was made to him. In one of these emails the Respondent also threatened to burn down the Complainant's offices.

17. .4 According to the Complainant, the Respondent did indeed go on to set up a website from the Domain Name that provided links to pornographic websites and links to pictures of extreme websites including beheadings in Iraq.
18. .5 Further, the Complainant alleges that the Respondent by giving the address "GothiCastle, Swindon, Wilts SN5 5QT" in the Whois info for the Domain Name has provided false address information.
19. .6 Lastly, the Complainant refers to the registration by the Respondent of the domain name .
20. .7 In the circumstances, the Complainant asserts that the Domain Name in the hands of the Respondent is abusive because:

(a) The Domain Name was primarily registered for the purpose of selling, renting or otherwise transferring it to the Complainant at a price greater than the Respondent's documented out of pocket expenses directly associated with acquiring the Domain Name;

(b) the Domain Name was primarily registered to unfairly disrupt the Complainant's business and to seriously harm the reputation of the Complainant;

(c) the Respondent has registered an incorrect address in order to conceal his identity; and

(d) the Respondent has registered "another famous domain name".

Respondent

21. .8 No formal response was received from the Respondent. Instead, the Respondent sent a further email on 27 April 2005 to the Complainant in which he took elements of the Complaint and then added his comments. These comments for the most part comprise further abuse and invective directed against the Complainant. However, the following points of substance are apparent.

(a) The Respondent does not appear to dispute that he either sent the correspondence or set up the website to which the Complainant refers in the Complaint.

(b) His explanation for the sending of emails that threaten the Complainant's staff and property is that he wanted "to provoke a response". In particular, he appears to believe that they will either result in him being charged by the police with criminal offences or being sued by the Complainant. In this way he believes he can expose the Complainant to unfavourable publicity.

(c) He denies that he has offered false address information.

(d) He denies that he improperly registered the domain name.

(e) He appears to accept that he registered the Domain Name for the purpose of selling or renting it to the Complainant at a price greater than his out of pocket expenses. His response to that allegation is:

"Yes, you owe me money and one way or another I will get it".

(f) He appears to accept that he registered the Domain Name to unfairly disrupt the Complainant's business. His response to that allegation is:

"You haven't seen anything yet you thieves".

22. Discussion and Findings

What needs to be proved

23. .1 To succeed under the Nominet Dispute Resolution Service Policy (the "Policy") the Complainant must prove on the balance of probabilities, first, that he has rights in respect of a "name or mark" that is identical or similar to the Domain Name and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent.
24. .2 Abusive Registration is defined in paragraph 1 of the Policy in the following terms:

Abusive Registration means 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:

Complainant's Rights

25. .3 As has already been described above, the Complainant owns a number of "word" trade marks in "Blockbuster". In a case such as this, when assessing whether the Domain Name is identical to the relevant trade mark, it is possible to ignore the ".org.uk" suffix. (see, for example, Hanna-Barbera Productions, Inc -v- Graeme Hay [DRS 00389] in which this was also done). I therefore conclude that the Complainant has shown rights in a trade mark that is identical to the Domain Name.

Abusive Registration

26. .4 It appears obvious that the Respondent's behaviour in registering the Domain Name forms part of a campaign that the Respondent is waging against the Complainant against a perceived wrong which he believes he has suffered at the hands of the Complainant. From the material I have seen, it seems likely that the alleged wrong has no basis in reality. Nevertheless, this is not for me to determine. It is my job to decide whether the Respondent's registration and use of the Domain Name in this case was abusive. For the reasons I describe below, I have no hesitation in deciding that it was.
27. .5 Paragraph 3 of the Policy provides a non-exhaustive list of factors which may be evidence that a domain name is an abusive registration. It would appear from the Complaint that the Complainant alleges that the following are of application in this case:

(a) Paragraph 3(a)(i) A: circumstances indicating that the Respondent registered or acquired the Domain Name:

"[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) paragraph 3(a)(i) C: circumstances indicating that the Respondent registered or acquired the Domain Name:

"[primarily] for the purpose of unfairly disrupting the business of the Complainant;"

(c) paragraph 3(a)(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;"

(d) paragraph 3(a)(iv):

"It is independently verified that the Respondent has given false contact details to us:"

28. .6 I will deal first with the allegation under paragraph 3(a)(i) A. It is clear that the Respondent wants money from the Complainant and that he registered the Domain Name for the purpose of getting it. Examples, of emails sent by the Respondent after the date of registration of the Domain Name in which such demands are made include:

(a) An e-mail dated 9 April 2005 in which the Respondent demanded £5,000, rising to £50,000 after a specified period, for the idea of video delivery service plus the Domain Name by stating "you can pay me the sum of £5,000 and I will also throw in the blockbuster.org.uk site… You have 48 hours from Monday morning of 11th April 2005 to accept this offer and not a minute longer. After that it is open season and the sum will be £50,000 and counting accumulating £10,000 each week"; and

(b) A further email dated 13 April 2005 in which the Respondent again demands £50,000 "for compensation of my idea and the domain name www.BlockBuster.org.uk".

29. .7 Further as I have described above, in an email dated 27 April 2005 the Respondent also appears to confirm that the reason why he registered the Domain Name was to obtain money from the Complainant.
30. .8 Of course, this is not a typical and straight forward case of cyber-squatting. I am prepared to accept for the purposes of this decision that the Respondent honestly believes that he is entitled to money from the Complainant. He sees the registration and use of the Domain Name as merely a device to obtain that money. However, even if this is so, I do not think that it makes a difference. As the emails set out above show, he registered the Domain Name with a view to obtaining money from the Complainant in return for the transfer of the Domain Name. Such activity in my opinion falls within paragraph 3(a)(i) A. It is one thing to register a domain name with a view to setting up a protest site with a view to seeking compensation from the person or company to which the protests are aimed. It is quite another thing to register a domain name with a view to securing the ownership of that domain name so that it can be used as a bargaining chip in the context of some broader dispute. The Respondent's activities fall into the second category not the first.
31. .9 If I am wrong in my conclusions in relation to paragraph 3(a)(i) A of the Policy, I believe that this case falls within paragraph 3(a)(i) C in any event. On 9 April 2005, only 3 days after the Domain Name was registered, the Respondent e-mailed the Complainant stating that if a certain sum of money was not paid by the Complainant to the Respondent the Domain Name's website would "be turned into the biggest tasteless porn site your tiny ignorant little minds could ever conceive of." This was clearly a threat to unfairly disrupt the business of the Complainant. The Respondent's purpose was to threaten the Complainant with the prospect of its name being associated with material of a type that he knew might easily upset and/or offend the Complainant's customers. The consequential potential disruptive effect on the Complainant's business is obvious.
32. .10 Further the fact that disruption is the Respondent's intention is clear from his other activities. These include threats of violence against the Complainant's employees and threats of arson. Lastly, the Respondent's own words condemn him. As I have already described above, his email response to this allegation in the Complaint was "You haven't seen anything yet".
33. .11 There is a slight complication in this case in that the Respondent's website did not only contain links to pornographic and violent material but also material complaining about the Complainant's treatment of the Respondent. However, I do not think that this matters. Although paragraph 4(b) of the Policy, recognises that use and registration of a domain name may not be abusive when it is operated for the purpose of a "criticism of a person or business", the Respondent cannot succeed on this basis here. Paragraph 4(b) of the Policy states that the website must be operated "solely" for the purpose stated above. It is plain that the website is not operated solely for the criticism of the Complainant. Further, that part of the Respondent's website that might be characterised as criticism only forms a relatively small part of the website. The Respondent's overall intention here is clear. It is to extort money from the Complainant in return for the Domain Name and/or to disrupt the Complainant's business. Any suggestion that the Respondent's activities in registration and use of the Domain Name are simply the legitimate exercise of rights of free speech is fanciful.
34. .12 In the circumstances, the Complainant succeeds in its allegations. I have little difficulty in concluding that there has been both abusive registration and use of the Domain Name in this case.
35. .13 This is sufficient to decide this case in the Complainant's favour. However, out of fairness to the Respondent I will also briefly consider the Complainant's contentions under paragraphs 3(a)(iii) and 3(a)(iv) of the Policy.
36. .14 Firstly, I do not accept the Complainant's contention that the Respondent has given false contact details in an attempt to conceal his identity. It is not suggested that the name given by the Respondent is false. It is not suggested that the house name "Gothicastle" is false. The post code provided appears to be correct. The Respondent far from attempting to conceal his identity appears perversely to want his identity to be sufficiently clear as to enable his arrest by the police. The Complainant's contentions here fail.
37. .15 Secondly, I do not accept that the Complainant has sufficiently shown in this case that the Respondent is engaged in a pattern of registrations of domain names corresponding to well known names or trade marks in which the Respondent has no apparent rights. The reason why the Respondent registered is far from clear on the evidence before me. Further in the case of Savvis UK Limited -v- Alif Terranson [DRS 01810] the Expert had "the gravest of doubts as to whether only two Abusive Registrations can ever amount to a pattern, although [he] would not discount that possibility completely and this would turn on the evidence of every particular case". In the circumstances, the Complainant's contentions in this respect also fail.
38. .16 Nevertheless, I conclude that the Complainant has successfully made out a case of Abusive Registration by reason of Paragraph 3(a)(i) A and/or 3(a)(i) C of the Policy on the facts of this case.
39. Decision
40. .1 I find that the Complainant has Rights in the mark Blockbuster, which is similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
41. .2 I therefore determine that the Domain Name should be transferred to the Complainant.

…………………….

Matthew Harris

28 June 2005