Barney and friends fail to regain 'barneyonline.com'

In Lyons Partnership LP v NetSphere Inc, a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'barneyonline.com' to the complainant - the owner of a BARNEY mark.

Lyons Partnership LP, a subsidiary of HIT Entertainment PLC, owns US registrations for the trademark BARNEY covering goods in Classes 9, 16 and 28 of the Nice Classification. It also owns the domain name 'barney.com' used to host a site offering information regarding films, television programmes, interactive games, DVDs and other products and services. Although it alleged that the BARNEY mark is world famous (it is the name of a purple dinosaur who is the star of children's television show Barney and Friends), it did not file evidence of use and reputation.

The disputed domain name was initially registered by Lyons Partnership but the registration was not renewed. NetSphere subsequently acquired the domain name from a third party. Lyons Partnership filed a complaint with WIPO seeking the transfer of 'barneyonline.com'.

The three-member panel held that although the disputed domain name is confusingly similar to the BARNEY mark, both the domain name and the mark are generic, and NetSphere therefore had a legitimate right to register the domain name because of its descriptive character. Lyons Partnership, said the panel, had failed to support its assertion that the BARNEY mark is distinctive or even world famous. It had not put forward sufficient evidence to enable the panel to infer that NetSphere had actual prior knowledge of the BARNEY trademark.

The panel went on to consider the issue of bad-faith registration and use, although there was no requirement to do so given that Lyons Partnership had failed to establish its rights and legitimate interests in the domain. The panel held that 'barneyonline.com' was not registered in bad faith. The evidence before the panel indicated that the domain name, having first been registered by Lyons Partnership and not renewed, was bought by a third party, who in turn sold it to NetSphere, who saw value in it because it attracted many hits. The evidence did not enable the panel to conclude that NetSphere knew the one reason why the domain name attracted many hits was because it embodied the BARNEY mark. The panel noted that even if the evidence did go so far, mere prior knowledge of a descriptive mark does not establish bad faith. In this case, the panel accepted that NetSphere was entitled to assume that Lyons Partnership, having allowed the registration to expire, had no further interest in it.

Gavan Ferguson, FR Kelly & Co, Dublin