Robert Kirkman, LLC v. Khalid zaki
Claim Number: FA2101001929302
Complainant is Robert Kirkman, LLC (“Complainant”), represented by Brandon Ress of King & Spalding LLP, Texas, USA. Respondent is Khalid zaki (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <the-walking-dead-comic.com>, registered with NameCheap, Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2021; the Forum received payment on January 21, 2021.
On January 22, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <the-walking-dead-comic.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@the-walking-dead-comic.com. Also on January 22, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the creator and owner of the rights to the comic book series “The Walking Dead”. Complainant has rights in the THE WALKING DEAD trademark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,443,715, registered Dec. 3, 2013). Respondent’s <the-walking-dead-comic.com> domain name is confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety and adds the word “comic”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <the-walking-dead-comic.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the THE WALKING DEAD trademark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and offers free downloads of Complainant’s comic book on the disputed domain name’s resolving website without authorization.
Respondent registered and uses the <the-walking-dead-comic.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant and offering free downloads of Complainant’s comic book on the disputed domain name’s resolving website without authorization. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the THE WALKING DEAD trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 4,443,715 THE WALKING DEAD (word), registered on December 3, 2013 for goods in Intl Class 16
- No. 5,811,038 THE WALKING DEAD (word), registered on July 23, 2019 for goods in Intl Class 9
- No. 5,252,200 THE WALKING DEAD (word), registered on July 25, 2017 for services in Intl Class 41
The disputed domain name <the-walking-dead-comic.com> was registered on February 4, 2020.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the THE WALKING DEAD trademark through its registrations with the USPTO. (e.g. Reg. 4,443,715, registered Dec. 3, 2013). Registration of a trademark with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel find that Complainant has rights in the THE WALKING DEAD trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <the-walking-dead-comic.com> domain name is confusingly similar to Complainant’s THE WALKING DEAD trademark. Under Policy ¶ 4(a)(i), a disputed domain name that incorporates a trademark in its entirety and merely spaces the trademark with hyphens, while adding generic or descriptive words and the “.com” gTLD, is generally considered confusingly similar to the mark it incorporates. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
The Panel here wants to point out that there are - for pure technical reasons – only two ways to show a multiple word trademark/sentence as a domain name: a) to write all words as one word, without spaces in between, or 2) replace the space with hyphens. The Panel notes that in the present case, the Respondent has used alternative 2, resulting in that the disputed domain name incorporates Complainant’s THE WALKING DEAD trademark in its entirety, spaces the trademark with hyphens, adds the descriptive word “comic”, and the “.com” gTLD. Therefore, the Panel find that Respondent’s disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent is not commonly known by the <the-walking-dead-comic.com> domain name, nor has Complainant authorized or licensed Respondent to use its THE WALKING DEAD trademark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information and lack of authorization may demonstrate that a respondent is not commonly known by a disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record in the present case identifies Respondent as “Khalid Zaki”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its THE WALKING DEAD trademark in the disputed domain name. Therefore, the Panel find that the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <the-walking-dead-comic.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant on the disputed domain name’s resolving website and using a complainant’s copyrighted and registered trademarks and pictures without authorization is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant’s own financial news services in the Russian language). Complainant provides screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and offers free downloads of Complainant’s comic without authorization. The Panel agrees with the Complainants conclusion, and find that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Complainant argues that Respondent registered and uses the <the-walking-dead-comic.com> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and offer Complainant’s products or services without authorization is generally considered bad faith disruption for commercial gain. See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website); Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). As noted above, the Complainant has provided screenshots of the disputed domain name’s resolving website, which features Complainant’s trademark and free downloads of Complainant’s comic available without authorization. Therefore, the Panel find that Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <the-walking-dead-comic.com> domain name with actual knowledge of Complainant’s rights in the THE WALKING DEAD trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to demonstrate bad faith, and may be demonstrated by a respondent registering a disputed domain name that incorporates a well-known and/or registered trademark in its entirety, as well as the use of the disputed domain name’s resolving website. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In the present case, the disputed domain name incorporates the Complainant’s THE WALKING DEAD trademark in its entirety, while the resolving website features the comic associated with the trademark available to download for free without Complainant’s authorization. Therefore, the Panel find that Respondent registered the disputed domain name in bad faith actual knowledge of Complainant’s rights in the trademark under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <the-walking-dead-comic.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 1, 2021
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