DECISION

Twentieth Century Fox Film Corporation v. Alienvspredator Music Tracker

Claim Number:  FA0407000296332

PARTIES

Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by J. Del Barrio of Fox Group Legal, Intellectual Property Dept., 2121 Avenue of the Stars, Suite 700, Los Angeles, CA 90067.  Respondent is Alienvspredator Music Tracker (“Respondent”), 39 Franko Street, Odessa 65020, Ukraine.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alienvspredator.com>, registered with Bulkregister, Llc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 13, 2004; the Forum received a hard copy of the Complaint on July 14, 2004.

On July 14, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain name <alienvspredator.com> is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 July 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 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@alienvspredator.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 August 16,2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <alienvspredator.com> domain name is confusingly similar to Complainant’s ALIEN, ALIENS VERSUS PREDATOR and PREDATOR marks.

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

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

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

FINDINGS

Complainant, Twentieth Century Fox Film Corporation, is one of the world’s leading entertainment and media companies.  Complainant produces and distributes some of the most internationally well-known film and television properties.  In the 2003 fiscal year, Complainant’s filmed entertainment business enjoyed over $662 million in operating income, which was a 36% increase over the previous year.

Complainant owns two very popular series of motion pictures, “Alien” and “Predator.”  Further, Complainant produced and distributed a series of computer games related to these two groups of films called “Alien vs. Predator.”  In addition, a highly anticipated “Alien vs. Predator” motion picture will be released in August.

Complainant holds numerous registrations with the United States Patent and Trademark Office for the ALIEN mark (Reg. No. 1,813,452 issued December 28, 1993, Reg. No. 1,807,443 issued November 30, 1993, Reg. No. 1,873,273 issued January 10, 1995, Reg. No. 1,807,635 issued November 30, 1993, Reg. No. 2,077,767 issued July 8, 1997, Reg. No. 1,853,218 issued September 6, 1994, Reg. No. 1,776,826 issued June 15, 1993), the ALIENS VERSUS PREDATOR mark (Reg. No. 2,371,262 issued July 25, 2000, and Reg. No. 2,825,241 issued March 23, 2004) and the PREDATOR mark (Reg. No.1,870,549 issued December 27, 1994, Reg. No. 2,074,564 issued June 24, 1997, Reg. No. 1,872,002 issued January 3, 1995, Reg. No. 1,867,723 issued December 13, 1994 and Reg. No. 1,767,716 issued April 27, 1993).  Complainant holds over fifty-five trademark applications and registrations for these marks worldwide.

Complainant’s “Aliens vs. Predator” series of video games have sold over 350,000 units worldwide and have generated approximately $7 million in gross revenue internationally. 

Respondent registered the <alienvspredator.com> domain name on January 18, 2001.  Respondent currently uses the disputed domain name to redirect Internet users to a website that features a search engine and links to movie-related content, including sites which allow the illegal downloading of movies.  

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 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.

Identical and/or Confusingly Similar

Complainant’s registrations for its ALIEN, ALIENS VERSUS PREDATOR and PREDATOR marks with the United States Patent and Trademark Office and other worldwide registrations establish Complainant’s rights in the marks.  See 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); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

The <alienvspredator.com> domain name is confusingly similar to Complainant’s marks because the only differences are the use of the singular form of “alien” and the highly recognized abbreviation of “versus” which is “vs.”  Using a combination of a third party’s marks and using a well-known abbreviation does not significantly differentiate the disputed domain name from Complainant’s mark.  See Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sept. 10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain names are virtually identical, and thus confusingly similar to Elder’s trademarks. Any superficial differences between the domain names and the Elder trademarks are de minimis and of no legal consequence.”); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).

Thus, Complainant has established that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In this proceeding, Respondent has not offered a Response.  The failure of Respondent to respond to the Complaint may function as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name.  In addition, the Panel may accept all reasonable allegations set forth in the Complaint as true.  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 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 Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

The only evidence in the record that relates to the Panel’s determination of whether Respondent is commonly known by the disputed domain name is the WHOIS registration information for the respective domain name.  Even though the WHOIS information for the domain name lists the domain name registrant as Alienvspredator Music Tracker, there is no evidence that Respondent was commonly known by this name prior to the registration of the domain name.  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by” the <edollarshop.com> domain name, despite naming itself “eDollarShop,” because Respondent’s website was almost identical to Complainant’s “first in use” website and infringed on Complainant’s marks); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information).

Furthermore, the <alienvspredator.com> domain name is confusingly similar to Complainant’s marks and is used to redirect Internet users to a website that offers links to other websites, including those that compete directly with Complainant.  Such use has consistently and frequently been found neither to be 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 Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name to host a search engine and predominantly features links to movie and game-related goods and services.  Complainant’s business is as an entertainment and media company.  The Panel finds that, by creating confusion around Complainant’s ALIEN, ALIENS VERSUS PREDATOR and PREDATOR marks, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s marks within its domain name to sell goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); 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); see also 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).

Moreover, Respondent presumably commercially benefits from using a domain name confusingly similar to Complainant’s marks, which is evidence that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See 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 Policy ¶ 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <alienvspredator.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  August 26, 2004

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