Warner Bros. Entertainment Inc. v. Dan Elsasser
Claim Number: FA0805001189689
Complainant is Warner Bros. Entertainment, Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <downloadsmallville.com>, registered with Godaddy.com, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
20, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 9, 2008
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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <downloadsmallville.com> domain name is confusingly similar to Complainant’s SMALLVILLE mark.
2. Respondent does not have any rights or legitimate interests in the <downloadsmallville.com> domain name.
3. Respondent registered and used the <downloadsmallville.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a multimedia corporation that produces
television shows broadcast throughout
Respondent registered the <downloadsmallville.com> domain name on September 23, 2006. The disputed domain name resolves to a website that offers downloadable copies of episodes of the “Smallville” television series.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has established rights in
the SMALLVILLE mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Complainant contends that
Respondent’s <downloadsmallville.com> domain name is confusingly similar to its SMALLVILLE
mark. The <downloadsmallville.com> domain name differs from Complainant’s mark in two ways: (1)
the term “download” has been added to the beginning of the mark; and (2) the
generic top-level domain (“gTLD”) “.com” has been added. The addition of a generic term does not
sufficiently distinguish a domain name from an incorporated mark for the
purposes of Policy ¶ 4(a)(i). See
Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding that the domain name <bodyshopdigital.com> is confusingly
similar to the complainant’s THE BODY SHOP trademark);
see also Yahoo! Inc. v.
Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use
of multiple domain names together with generic words such as ‘chat’ and
‘financial’ to be confusingly similar to the complainant’s marks). Furthermore, the
addition of a gTLD also does not reduce the likelihood of confusion between the
domain name and the mark, because every domain name must contain a gTLD. See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat.
Therefore, the Panel finds that the likelihood of confusion between the disputed domain name and Complainant’s mark is not minimized or eliminated, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). Thus, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <downloadsmallville.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <downloadsmallville.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (failure to respond can be construed as an admission that a respondent has no legitimate interest in the domain names). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <downloadsmallville.com> domain name, nor has it ever been the owner or licensee of the SMALLVILLE mark. Respondent has been identified as “Dan Elsasser,” and nothing in the WHOIS record for the disputed domain name lists Respondent as any variant on SMALLVILLE. Because of this evidence, combined with Respondent’s failure to show any evidence contrary to Complainant’s contentions, the Panel finds that Respondent is not commonly known as <downloadsmallville.com> pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent maintains a website at the <downloadsmallville.com> domain name that offers dowloadable copies of the “Smallville” television series without license or authorization from Complainant. The Panel finds that this use of the <downloadsmallville.com> domain name 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); 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 the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website that resolves from the disputed domain name through the
confusion caused by the similarity between the SMALLVILLE mark and the <downloadsmallville.com> domain
name. Complainant also contends that
Respondent intended to disrupt Complainant’s business by diverting confused
customers to Respondent’s resolving website, where Respondent is selling
Complainant’s products. The Panel finds
that Respondent’s use of the disputed domain name disrupts Complainant’s
business, and is evidence of registration and use in bad faith pursuant to
Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining commercially because of this diversion, through the unauthorized sale of Complainant’s product, the “Smallville” television series. The Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in bad faith. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
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 <downloadsmallville.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 30, 2008
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