DECISION

DC Comics and Warner Bros. Entertainment, Inc. v. Chasing Ltd.

Claim Number:  FA0306000164549

PARTIES

Complainants are DC Comics and Warner Bros. Entertainment, Inc., Burbank, CA (“Complainant”) represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation.  Respondent is Chasing Ltd., Franklin, KY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chasingsuperman.com>, registered with Bulkregister.Com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 18, 2003; the Forum received a hard copy of the Complaint on June 19, 2003.

On June 19, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain name <chasingsuperman.com> is registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the name. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 14, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@chasingsuperman.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 21, 2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainant, Warner Bros. Entertainment, Inc.

PARTIES' CONTENTIONS

A.  Complainants make the following assertions:

1. Respondent’s <chasingsuperman.com> domain name is confusingly similar to Complainant, DC Comics’ SUPERMAN mark.

2. Respondent does not have any rights or legitimate interests in the <chasingsuperman.com> domain name.

3. Respondent registered and used the <chasingsuperman.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, DC Comics, is engaged in the business of publishing comic magazines and is among the best-known publishers of comic magazines in the world.  DC Comics is the creator of the SUPERMAN character and has published the world famous SUPERMAN comic book since 1938.  DC Comics owns several registrations for the SUPERMAN mark with the U.S. Patent and Trademark Office, including Reg. Nos. 371,803 (registered October 10, 1939) and 2,204,195 (registered November 17, 1998). 

Complainant, Warner Bros. Entertainment, Inc., is one of the largest and best-known producers and distributors of motion pictures and animated entertainment content.  Warner Bros. is exclusively licensed by DC Comics to use the DC Comic Characters. 

Warner Brothers’ <superman.com> domain name was registered on September 9, 1996.  This website resolves to DC Comics’ <dccomics.com> website. 

Respondent registered the <chasingsuperman.com> domain name on January 9, 2003.  The disputed domain name is used to promote adult oriented content.  Respondent attempted to sell the disputed domain name to Complainants for over $4,000 via communication with Complainants’ attorney on May 15, 2003.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainants’ undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant, DC Comics, has established rights in the SUPERMAN mark through registration with the U.S. Patent and Trademark Office and through use in commerce.

Respondent’s <chasingsuperman.com> domain name fully incorporates the SUPERMAN mark and merely adds the generic word “chasing.”  Therefore, the disputed domain name is confusingly similar to DC Comics’ mark because Internet users may mistakenly assume that Respondent’s domain name should be associated with DC Comics’ mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also America Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent’s attempt to sell the disputed domain name to Complainants is evidence that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum April 8, 2003) (finding evidence that Respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of Complainant’s stock to Complainant); see also Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”).

Also, Respondent has used the goodwill associated with DC Comics’ SUPERMAN mark in an attempt to commercially benefit from such use.  Incorporation of the SUPERMAN mark into the <chasingsuperman.com> domain name increases the chance that Internet users might access Respondent’s commercial website.  Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Furthermore, the WHOIS information for the disputed domain name lists Respondent, Chasing Ltd., as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the <chasingsuperman.com> domain name.  In addition, Respondent is not affiliated with either of the Complainants and the evidence fails to establish that Respondent is authorized or licensed to register or use domain names or marks that incorporate the SUPERMAN mark.  Therefore, Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It can be inferred that Respondent had actual or constructive knowledge of DC Comics’ mark because the SUPERMAN mark is internationally recognized, was registered with the U.S. Patent and Trademark Office, and has been used in commerce since 1938.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., Inc., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Respondent’s attempt to sell the disputed domain name to Complainants for over $4,000 is evidence of bad faith.  Respondent registered the <chasingsuperman.com> domain name on January 9, 2003 and five months later attempted to sell the domain name to Complainants.  Considering that the disputed domain name does not describe or relate to the content of Respondent’s adult oriented website and the short period of time between the registration and the attempted sale, the Panel presumes that Respondent registered the disputed domain name with the intent to “sell, rent, or otherwise transfer” the disputed domain name for profit.  Attempts to sell a domain name that is confusingly similar to another’s mark for more than out-of-pocket costs is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs).

In addition, Respondent registered the disputed domain name with the intent to commercially benefit from the goodwill associated with DC Comics’ mark.  The Panel presumes that Respondent has attempted to commercially benefit by diverting Internet users to the <chasingsuperman.com> domain name, a commercial website.  Respondent’s attempt to commercially benefit from Internet user confusion is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

The <chasingsuperman.com> website contains adult oriented content and the domain name fully incorporates DC Comics’ SUPERMAN mark.  The use of a domain name confusingly similar to a registered mark to divert Internet traffic to a website that contains sexually explicit content is itself evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

The record has sufficiently established that Warner Bros. Entertainment, Inc. is a legitimate licensee of Complainant, DC Comics.  Accordingly, it is Ordered that the <chasingsuperman.com> domain name be TRANSFERRED from Respondent to Complainant, Warner Bros. Entertainment, Inc.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  August 7, 2003

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