Pesky panel overturns decision on Scooby-Doo fan site

A Nominet Dispute Resolution Service panel has overturned a decision that allowed a fan to keep his domain name to a site that paid tribute to cartoon character Scooby-Doo.

The appeal panel in Hanna-Barbera Productions Inc v Graeme Hay found that the following practices were not inconsistent with 'scoobydoo.co.uk' acting as a tribute site:

• selling official Scooby-Doo merchandise;
   
• offering fans the chance to set up 'scoobydoo.co.uk' email accounts; and
   
• using the complainant's trademarks as metatags for the home page.

However, the panel held that there was no reason why a tribute site needed to use the same name as the object to which it paid tribute; an acceptable alternative might have been 'ilovescoobydoo.co.uk'. The panel was concerned that visitors to the site would assume that it was an official Hanna-Barbera site, especially because official merchandise was offered for sale. Although Hay submitted that he had made little profit from the merchandise, the panel was satisfied that he had acquired a commercial advantage.

The panel expressed the view that impersonation, which it felt this amounted to, was rarely fair and that Hay's use of the name meant that Hanna-Barbera was unable to control its goodwill. The potential existed for an email user to bring the name into disrepute or to dilute its distinctiveness. In overturning the earlier decision, the appeal panel found that Hay had taken unfair advantage of Hanna-Barbera's mark, constituting an abusive registration. The fact that Hay had no dishonest intentions was irrelevant.

Julia Robinson, Covington & Burling, London