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Generic Top Level Domain Name (gTLD) Decisions |
Warner Bros. Entertainment Inc. and DC
Comics v. Jesse Lafferty
Claim
Number: FA0410000347725
Complainant is Warner Bros. Entertainment Inc. and DC Comics (“Complainant”), represented by J. Andrew Coombs, 450
North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Jesse Lafferty (“Respondent”), 707 Monterey Street, McKeesport, PA
15132.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <batman-the-movie.com>, registered with Namesdirect.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
19, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 20, 2004.
On
October 20, 2004, Namesdirect confirmed by e-mail to the National Arbitration
Forum that the domain name <batman-the-movie.com> is registered
with Namesdirect and that Respondent is the current registrant of the name. Namesdirect
has verified that Respondent
is bound by the Namesdirect 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
October 20, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
November 9, 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@batman-the-movie.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
November 19, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <batman-the-movie.com>
domain name is confusingly similar to Complainant’s BATMAN mark.
2. Respondent does not have any rights or
legitimate interests in the <batman-the-movie.com> domain name.
3. Respondent registered and used the <batman-the-movie.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainants, Warner
Bros. Entertainment Inc. and DC Comics, (“Complainant”) are both wholly owned
subsidiaries of Time Warner, Inc.
and are each affiliates of each other. Domain names registered by any of these
companies are managed by Complainant, Warner Bros., or its affiliate.
Complainant
holds numerous trademark registrations in several countries and with the United
States Patent and Trademark Office for
its BATMAN mark (including Reg. No.
804,709 issued March 1, 1966; Reg. No. 828,412 issued May 9, 1967; and Reg. No.
836,046 issued
September 26, 1967).
Complainant first published the BATMAN character in Detective Comics
in 1939, and Detective Comics has been published continuously since that
time.
The BATMAN
character has appeared in books, television and a variety of merchandise all
over the world since the early 1940s.
The BATMAN motion picture, released in 1989, grossed more than
$250,000,000 at the United States domestic box office and more than
$400,000,000 worldwide. Due to the
success of the BATMAN film, the sequel Batman Returns was released in
1992, Batman Forever in 1995 and Batman and Robin in 1997.
Respondent
registered the <batman-the-movie.com> domain name on February 6,
2004. The disputed domain name links
Internet users to a website that solicits donations for a “fan-film” and
displays numerous banner advertisements
and links for online dating websites,
an online casino, and a poster website.
The message “Now for sale! Contact: J-Lee@J-LeeEnterprises.com to
make an offer,” offering the domain name registration for sale, is displayed in
two places on the website.
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 in this proceeding that it has rights in the BATMAN mark through
registration with the United States Patent
and Trademark Office and by continuous
use of its mark in commerce for the last sixty-five years. 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).
The <batman-the-movie.com>
domain name registered by Respondent is confusingly similar to Complainant’s
BATMAN mark because the domain name incorporates Complainant’s
mark in its
entirety and adds hyphens, and the generic or descriptive terms “the
movie.” The mere addition of generic or
descriptive terms, and hyphens to Complainant’s registered mark does not negate
the confusing similarity
of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Mrs. World Pageants, Inc. v. Crown
Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that
punctuation is not significant in determining the similarity of a domain
name
and mark); see also 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 Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with
a generic term that has an obvious relationship to
Complainant’s business).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges in the Complaint that Respondent has no rights or legitimate interests
in the <batman-the-movie.com> domain name, which contains
Complainant’s BATMAN mark in its entirety.
Since Respondent failed to respond to the Complaint, the Panel assumes
that Respondent lacks rights and legitimate interests in the
<batman-the-movie.com>
domain name. Furthermore, once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it does have rights to or legitimate
interests in
the domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion
because this information is “uniquely within
the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has
no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate
interest does exist).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact
in the allegations of the Complaint to be deemed
true); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the
very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent is
using the <batman-the-movie.com> domain name to divert Internet
users interested in Complainant’s products and services to a website that seeks
donations for the
production of a “fan-film” and features banner advertisements
for online dating websites and links to online casinos. The Panel determines that Respondent’s use
of a domain name confusingly similar to Complainant’s BATMAN mark to redirect
Internet
users seeking Complainant’s products and services to Respondent’s
commercial website is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18,
2001) (stating that the "use of complainant’s entire mark in infringing
domain names makes it difficult
to infer a legitimate use"); see also
U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum
May 6, 2003) (holding that
Respondent’s use of Complainant’s mark and the goodwill surrounding that mark
as a means of attracting Internet users
to an unrelated business was not a bona
fide offering of goods or services); see
also 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).
Furthermore,
nothing in the record suggests that Respondent is commonly known by the <batman-the-movie.com>
domain name, and Complainant did not authorize or license Respondent to use
Complainant’s BATMAN mark. Therefore,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known
by the domain name prior to registration of the domain
name to prevail"); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
The website at
the <batman-the-movie.com> domain name posts two messages stating
that the domain name registration is for sale.
The Panel finds that Respondent’s offers to sell the domain name
registration that includes Complainant’s well-known BATMAN mark in
its entirety
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded,
are evidence of bad faith”); see also Diners Club
Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat.
Arb. Forum June 23, 2003) (finding that when the domain name itself notes that
it is “available for lease or sale,”
evidence that the domain name was
registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred
from the fact that
“the sole value of the [<wwwdinersclub.com] domain name
is dictated by its relation to Complainant’s registered DINERS CLUB mark).
Respondent is
using the <batman-the-movie.com> domain name, which contains
Complainant’s BATMAN mark in its entirety, to attract Internet users interested
in Complainant’s mark
to Respondent’s commercial website. Thus, Respondent is using a domain name
confusingly similar to Complainant’s well-known mark to divert Internet users
to Respondent’s
website for Respondent’s commercial gain. Such a practice of diversion for commercial
gain through the creation of a likelihood of confusion is evidence of bad faith
registration
and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding Respondent engaged in bad faith use and registration by linking
the domain name
to a website that offers services similar to Complainant’s
services, intentionally attempting to attract, for commercial gain, Internet
users to its website by creating a likelihood of confusion with Complainant’s
marks); see also eBay, Inc v.
Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001)
(finding bad faith where Respondent is taking advantage of the recognition that
eBay has created
for its mark and therefore profiting by diverting users
seeking the eBay website to Respondent’s site).
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 <batman-the-movie.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 2, 2004
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