DC Comics v. sysadmin c/o admin c/o balata.com ltd
Claim Number: FA0809001225816
Complainant is DC Comics (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is sysadmin c/o admin c/o balata.com ltd (“Respondent”), Central.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dccomincs.com>, registered with Black Ice Domains, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2008.
On September 24, 2008, Black Ice Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <dccomincs.com> domain name is registered with Black Ice Domains, Inc and that Respondent is the current registrant of the name. Black Ice Domains, Inc has verified that Respondent is bound by the Black Ice Domains, 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 September 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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.
On October 23, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Complainant DC Comics has been for many years the owner of hundreds of registrations for the DC® trademark and other DC-formative marks in countries all over the world, including DC COMICS® (the “Trademark”). Since 1923, Complainant, or its predecessors in interest, has continuously used and applied the Trademark for a variety of goods and services.
Complainant DC Comics is a leading publisher of comics and related media and DC Universe is a fictional universe where many of the stories published by DC Comics take place. Complainant, through its affiliated company Warner Bros. Entertainment Inc., also holds numerous domain name registrations incorporating the DC mark including <Dccomics.com>, <dckids.com>, and <dcdirectonline.com>.
Complainant’s registration of the Trademark infringed before Respondent’s registration of the Domain Name is sufficient to prove that Complainant has rights in the Trademark. See Aetna Inc. v. Jacoby Partners FA125816 (NAF Nov. 22, 2002).
FACTUAL AND LEGAL GROUNDS
a. Respondent’s Domain Name Fully Incorporates Complainant’s Famous, Long-Standing and Widely Registered Trademark.
Complainant owns several trademark registrations for the Trademark.
The Trademark is so widely accepted in the mind of the general public that the Trademark has become unquestionably famous and distinctive and has acquired secondary meaning and distinctiveness throughout the United States and around the world.
The test of confusing similarity under the UDRP is confined to a consideration of the disputed domain name and the trademark, without reference to other issues. Microsoft Corporation v. WDW Inc., et. al., D2002-0412 (WIPO July 1, 2002). The Domain Name is confusingly similar to the Trademark as it simply misspells the Trademark, adding an “n” to COMICS. See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO June 19, 2001) (finding “disneychanel.com”, “disneywallpaper.com”, “disneywold.com”, “disneywolrd.com”, disneyworl.com” and “walddisney.com” confusingly similar to the trademark DISNEY as they simply misspelled the famous trademarks). Moreover, even were Complainant without trademark rights in the full phrase DC COMICS®, the addition of words (“comincs”, for example) to a famous trademark is sufficient to evidence confusing similarity with the Trademark. Microsoft, supra (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainants combined with a generic word or term); Yahoo! Inc. v. Seocho, FA0204000109050 (NAF May 13, 2002) (same). See also Sony Kubushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that neither 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). Thus, it is clear that the Domain Name is confusingly similar to Complainant’s Trademark.
b. Respondent Has No Legitimate Interest in the Domain Name.
Several distinct grounds support the conclusion that the Respondent has no legitimate interest in the Domain Name. First, Respondent is not authorized by Complainant to use the Domain Name. "[I]n the absence of any license or permission from the Complainants to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” Guerlain S.A. v. Peikang, D2000-0055 (WIPO March 21, 2000).
Second, Respondent registered and uses the Domain Name to infringe Complainant’s rights in its Trademark, to trade off Complainants’ goodwill. In particular, Respondent uses the Domain Name to link to a commercial site which links to websites selling Complainant’s products (evidencing Respondent’s knowledge of Complainant’s trademark rights) and competitive product (thereby infringing Complainant’s trademark rights at the same time). Respondent’s unauthorized use of the trademark DC COMICS® does not establish legitimate interest in the Domain Name. Respondent does not make legitimate, noncommercial or fair use of the domain name without intending to mislead or divert consumers or to tarnish Complainant’s mark for commercial gain.
Respondent’s use of the domain name does not constitute a bona fide offering of goods or services. See Madonna Ciccione a/k/a Madonna v. Dan Parisi, et. al., D2000-0847 (WIPO October 12, 2000) (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO March 6, 2001) (“bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”). Complainant has not authorized Respondent to use its Trademark or to seek the registration of any domain name incorporating the Trademark. Respondent must have known when it selected the Domain Name that the public would incorrectly associate it with Complainant’s mark. In fact, given the distinctiveness and fame of the Trademark, combined with Respondent’s use of the Trademark on its webpage, there is no plausible explanation for the Respondent’s registration of the Domain Name other than to trade upon the goodwill the Complainant has developed in its mark. Respondent had no legitimate interest in doing so. Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO September 5, 2000).
Respondent is not and has not been commonly known by the Domain Name. Respondent does not use the Trademark to identify itself on its website or for any other legitimate purpose. Even if Respondent has used the trade name, such an unauthorized use does not establish legitimate interest in the Domain Name. Compaq Information Technologies Group, LP v. Waterlooplein Ltd., FA0204000109718 (NAF May 29, 2002).
c. Respondent Registered and Uses the Domain Name in Bad Faith.
Respondent’s registration and use of the Domain Name meets the bad faith elements set forth in Section 4(b) (i) of the UDRP. First, the fame of the Trademark, combined with widespread marketing of Complainant's goods and services, and the registration of the Trademark imputes to Respondent knowledge of Complainant’s Trademark. The mark is so internationally distinctive and famous Respondent must have had actual knowledge of the mark prior to registration because of its fame. Moreover, use of the Trademark on the website to which the Domain Name directs Internet users demonstrates clearly such actual knowledge on the part of Respondent.
Respondent’s registration and use of the Domain Name also meets the bad faith elements set forth in Section 4(b)(iv) of the UDRP because Respondent is intentionally using the Domain Name to attract, for commercial gain, Internet users to a website which provides for links to other websites involved in sale of comic books published by Complainant and its competitors. Warner Bros. Entertainment Inc. v. Rana, Case No. FA304696 (NAF Sept. 21, 2004) (respondent’s reliance on confusion for commercial gain constitutes bad faith). By using the disputed Domain Name to direct Internet traffic to websites other than those owned or otherwise approved by Complainants, Respondent is trading on the value of the mark established by Complainants.
Since Complainant owns the Trademark and has done so for decades, Respondent’s registration and use is in bad faith. See Young Genius Software AB v. MWD, D2000-0591 (WIPO Aug.7, 2000) (finding that a failure to check whether a name was registered was evidence of bad faith) and Sun Chronicle v. Web Solutions Inc., FA 94895 (NAF July 18, 2000) (holding that registering a well-known mark or failing to check whether the registration would infringe on rights held by another constitutes bad faith registration).
The Respondent’s election to register the Domain Name using demonstrably false contact information – “sysadmin, admin, balata.com ltd, 12 Harcourt Rd, Central 3705” – also evidences the Respondent’s bad faith. Pfizer, Inc. v. Registrant D2006-1646 (WIPO Feb. 8, 2007) (among the factors persuasive of Respondent’s bad faith was “the deliberate actions of the Respondent ‘Registrant’ to conceal its true identity”).
Finally, bad faith should be found due to the fact that Respondent has registered an incredibly large volume of domain names, which infringe upon Complainant and other’s famous trademarks. See Technology Properties, Inc. v. Syed Hussein, et al., FA 095411 (NAF September 14, 2000) (finding bad faith where pattern of conduct evidenced by registering numerous domain names that infringe on famous marks).
Complainant’s rights in the Trademark and the Domain Name’s confusing similarity to the Trademark, Respondent’s lack of legitimate interest in the Domain Name and Respondent’s bad faith together warrant transfer of the Domain Name to Complainant under the Policy.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DC Comics, has used the DC COMICS mark since 1923 to promote its comic books and related media. Complainant has registered the DC COMICS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,051,606 issued April 8, 1997).
Respondent registered the <dccomincs.com> domain name on January 4, 2007, and uses it to display a list of hyperlinks advertising Complainant’s products.
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.
In order to have standing to initiate a UDRP action, a complainant must first evidence that it has rights in a mark. Under an analysis of the Policy, this can be accomplished by evidencing a registered trademark with a national governmental authority, or by proving secondary meaning associated with the mark to substantiate a finding of common law rights. In this case, Complainant has evidenced its trademark registration for the DC COMICS mark with the USPTO, which is the United States’ governmental trademark authority. Therefore, Complainant has sufficiently demonstrated its rights in the DC COMICS mark to satisfy this initial requirement under Policy ¶4(a)(i). See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel also concludes that Complainant’s trademark registration of its mark provides ample basis to conclude that it has rights in the mark.”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶4(a)(i).”).
In addressing whether the disputed domain name is identical or confusingly similar to the mark, the Panel notes Respondent’s <dccomincs.com> domain name adds an “n” and removes the space in Complainant’s DC COMICS mark, then adds the generic top-level domain (“gTLD”) “.com.” By looking at the <dccomincs.com> domain name, it is evident that Complainant’s DC COMICS mark remains the dominant portion and overall impression of the disputed domain name despite adding the “n.” The removal of the space and addition of “.com” are purely procedural based on the inherent limitations and requirements of all domain names, so these changes are insignificant in this analysis. Therefore, the Panel concludes that Respondent’s <dccomincs.com> domain name is confusingly similar to Complainant’s DC COMICS mark pursuant to Policy ¶4(a)(i). See Microsoft Corp. v. Domain Registration Philipines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has alleged Respondent lacks rights and legitimate interests in the <dccomincs.com> domain name. Based upon the allegations made in the Complaint, the Panel finds Complainant has established a prima facie case pursuant to Policy ¶4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”).
Complainant provided a printout of Respondent’s website resolving from the <dccomincs.com> domain name as an Exhibit to the Complaint. This printout shows that Respondent is using the <dccomincs.com> domain name to display a list of hyperlinks advertising Complainant’s comic books and other products. According to Complainant, Respondent does not have any license or authorization to do this. Respondent presumably earns click-through fees for each redirected Internet user, and is therefore commercially benefiting from its improper use of Complainant’s DC COMICS mark. The Panel therefore finds Respondent’s use of the <dccomincs.com> domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i). At the same time, Respondent’s use also does not constitute a legitimate noncommercial or fair use under Policy ¶4(c)(iii) since Respondent likely earns the click-through fees. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <dccomincs.com> domain name pursuant to Policy ¶¶4(c)(i) and (iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
Respondent also cannot demonstrate it is commonly known by the <dccomincs.com> domain name. There is nothing in the WHOIS information or anywhere else in the record that would support a finding for Respondent on this basis, and Complainant has further stated Respondent is not authorized to use the <dccomincs.com> domain name or the DC COMICS mark. Consequently, the Panel concludes Respondent is not commonly known by the <dccomincs.com> domain name pursuant to Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Since Respondent is promoting Complainant’s products—albeit without Complainant’s authorization—on the website resolving from the <dccomincs.com> domain name, consumers are likely to mistakenly believe that Complainant is the source, sponsor, or endorser of the website, or at least is affiliated with it. This, however, is not the case, and it is apparent to the Panel that Respondent is attempting to profit from this likelihood of confusion based on its use of the DC COMICS mark in the disputed domain name and on the resolving website and its accrual of click-through fees. These facts establish Respondent’s bad faith registration and use of the <dccomincs.com> domain name pursuant to Policy ¶4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds Policy ¶4(a)(iii) 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 <dccomincs.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: November 6, 2008
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