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Generic Top Level Domain Name (gTLD) Decisions |
Warner Bros. Entertainment Inc.; New Line
Productions, Inc. and DC Comics v. Procount Business Services
Claim Number: FA0411000360942
Complainants are
Warner Bros. Entertainment Inc.; New Line Productions, Inc. and DC Comics (“Complainant”), represented
by J. Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Procount Business Services, P.O. Box 1035, Alief, TX 77411-1035 (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <austinpowersstore.com>,
<batmanstore.com>, <tweetybirdstore.com>, <tweetystore.com> and <wonderwomanstore.com>,
registered with Go Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
4, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 4, 2004.
On
November 4, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <austinpowersstore.com>,
<batmanstore.com>, <tweetybirdstore.com>, <tweetystore.com> and <wonderwomanstore.com> are
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has
verified that Respondent
is bound by the Go Daddy Software, 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
November 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 29, 2004 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@austinpowersstore.com,
postmaster@batmanstore.com, postmaster@tweetybirdstore.com,
postmaster@tweetystore.com
and postmaster@wonderwomanstore.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
December 9, 2004, pursuant to Complainants’ request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Judge Harold
Kalina (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <austinpowersstore.com>, <batmanstore.com>,
<tweetybirdstore.com>, < tweetystore.com> and <wonderwomanstore.com> domain
names are confusingly similar to Complainant’s AUSTIN POWERS, BATMAN, TWEETY
and WONDER WOMAN marks.
2. Respondent does not have any rights or
legitimate interests in the <austinpowersstore.com>,
<batmanstore.com>, <tweetybirdstore.com>, <tweetystore.com> and <wonderwomanstore.com> domain
names.
3. Respondent registered and used the <austinpowersstore.com>, <batmanstore.com>, <tweetybirdstore.com>, <tweetystore.com> and <wonderwomanstore.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainants are
wholly owned subsidiaries of Time Warner, Inc. and each is an affiliate of the
other. Complainants are active in the
entertainment industry, producing, distributing and marketing popular films,
television series and
comic books worldwide.
Collectively, Complainants have registered numerous trademarks with the
United States Patent and Trademark Office (“USPTO”) covering
famous
characters. These include, but are not
limited to the following marks, AUSTIN POWERS (Reg. No. 2,418,333, issued
January 2, 2001), BATMAN (Reg.
No. 0,804,709, issued March 1, 1966), TWEETY
(Reg. No. 1,306,114, issued November 20, 1984) and WONDER WOMAN (Reg. No.
1,221,717,
issued December 28, 1982).
Respondent
registered the <austinpowersstore.com>
and <batmanstore.com> on
April 24, 2003, and <tweetybirdstore.com>,
<tweetystore.com> and <wonderwomanstore.com> on April
28, 2003. Each domain name resolves to
a website selling products featuring its respective mark.
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 Complainant's
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.
Complainant has
established that it has rights in the AUSTIN POWERS, BATMAN, TWEETY and WONDER
WOMAN marks through registration with
the USPTO and through the continuous use
of the marks in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar.
5, 2002) (finding that Panel decisions have held that registration of a mark is
prima facie evidence of validity,
which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Respondent’s
disputed domain names are confusingly similar to Complainant’s marks. The
domain names entirely incorporate Complainant’s
marks with the addition of the
generic term “store.” Additionally,
Respondent’s <tweetybirdstore.com>
domain name also adds the term “bird.”
Such additions do not disguise the fact that the dominant features of
the domain names are Complainant’s marks, and each domain name
is therefore
confusingly similar to the marks pursuant to Policy ¶ 4(a)(i). 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 Sony Kabushiki Kaisha
v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the
addition of an ordinary descriptive word . . . nor the
suffix ‘.com’
detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i)
is
satisfied).
Respondent’s <austinpowersstore.com> and <wonderwomanstore.com> domain
names additionally omit the space between words that exist in Complainant’s
AUSTIN POWERS and WONDER WOMAN marks.
Such omission is not sufficient to overcome a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see
also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000)
(finding that the domain name <wembleystadium.net> is identical to the
WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See
Am. Online, Inc. v. Clowers,
FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to
challenge a complainant’s allegations allows a panel to accept
all of the
complainant’s reasonable allegations and inferences as true);
see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain names. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that Respondents’ failure to respond can be construed as an
admission that they have no
legitimate interest in the domain names); see
also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain names. Moreover, Respondent is not licensed or
authorized to register or use domain names that incorporate Complainant’s
marks. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the domain names
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).
Respondent’s
domain names resolve to websites featuring online stores operated by Respondent
selling various products featuring Complainant’s
marks. Respondent’s websites additionally link to
Complainant’s competitor websites. Such
use of the disputed domain names by Respondent is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enter., Inc.
D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
based on the fact that the domain names bear no relationship
to the business of
Respondent and that Respondent would only legitimately choose to use
Complainant’s mark in a domain name if Respondent
was seeking to create an
impression that the two businesses were affiliated); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24,
2001) (finding no rights or legitimate interests in the <pitneybowe.com>
domain name where Respondent
purports to resell original Pitney Bowes’
equipment on its website, as well as goods of other competitors of
Complainant).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the disputed domain names and incorporated Complainant’s marks with
the intent to commercially benefit from
the goodwill associated with
Complainant’s marks. Respondent offers
various products based on Complainant’s famous marks. Registration and use of a domain name that incorporates another’s
mark with the intent to deceive Internet users in regard to the
source or
affiliation of the domain name for commercial gain is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See Gen.
Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26,
2001) (finding bad faith where a competitor of Complainant registered and used
a domain name
confusingly similar to Complainant’s PENTHOUSE mark to host a
pornographic web site); see also H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to
UDRP ¶ 4(b)(iv) through
Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet
users to its fraudulent website by
using Complainant’s famous marks and likeness); 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
UDRP ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Additionally,
Complainant’s marks have not only obtained great fame in the marketplace, but
Complainant has also registered them with
the USPTO. The Panel thus infers that Respondent had either actual or
constructive knowledge of Complainant’s marks.
Therefore, Respondent’s registration of the disputed domain names,
despite knowledge of Complainant’s interest in the marks, constitutes
bad faith
registration and use under Policy ¶ 4(a)(iii).
See Entrepreneur Media, Inc. v.
Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002)
("[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse");
see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb.
Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly
known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given
the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith); 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 has registered and used the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(iii) by registering
domain names confusingly similar
to Complainant’s marks and using them to sell competing licensed products. See
EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat.
Arb. Forum July 7, 2000) (finding that
the minor degree of variation from Complainant's marks suggests that Respondent,
Complainant’s competitor, registered
the names primarily for the purpose of
disrupting Complainant's business); see
also S. Exposure v. S. Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that
competes with Complainant’s
business).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <austinpowersstore.com>,
<batmanstore.com>, <tweetybirdstore.com>, <tweetystore.com> and <wonderwomanstore.com> domain
names be TRANSFERRED from Respondent
to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 22, 2004
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