Studio Peyo S.A. and IMPS S.A. v. Nev
Zevo
Claim Number: FA0212000137033
PARTIES
Complainant
is Studio Peyo S.A. and IMPS S.A., Geneve, SWITZERLAND (“Complainant”) represented by Raymond A. Kurz, of Hogan & Hartson LLP.
Respondent is Zev Nevo,
Merrick, NY, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <smurfs.com>,
registered with DOTSTER, INC.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 10, 2002; the Forum received a hard copy of the
Complaint on December 16, 2002.
On
December 19, 2002, DOTSTER, INC. confirmed by e-mail to the Forum that the
domain name <smurfs.com> is
registered with DOTSTER, INC. and that Respondent is the current registrant of
the name. DOTSTER, INC. has verified
that Respondent is bound by the DOTSTER, 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
December 19, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 8, 2003 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@smurfs.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
January 23, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch 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
1. The <smurfs.com>
domain name is identical to Complainant’s SMURFS mark.
2. Respondent has no rights or legitimate
interests in the <smurfs.com>
domain name.
3. Respondent registered and used the <smurfs.com> domain name in bad
faith.
B. Respondent has failed to submit a Response in this
proceeding.
FINDINGS
Complainant owns a registered trademark
with the United States Patent and Trademark Office for the SMURFS mark (Reg.
No. 1,209,160). Complainant owns
numerous worldwide trademark registrations for the SMURFS marks and related
marks, like SMURF and SMURFETTE. In
addition, Complainant has its interests in the SMURFS mark protected in
numerous languages.
The SMURFS mark and variations thereof
have been used for over twenty (20) years.
Complainant’s SMURFS mark gained worldwide notoriety for its connection
with the popular animated children’s television show entitled The Smurfs. The SMURFS mark is associated with
distinctive elements of characters found in The Smurfs television
show. Characters of the animated
feature reflect the SMURFS mark in their names (e.g., Papa Smurf, Smurfette,
Handy Smurf, among others). The
distinct features of The Smurfs characters are that they are blue in
color and wear unique white caps with white pants.
In addition to the popular animated
television show, the SMURFS mark has been continually used in connection with
ancillary markets. In particular, the
SMURFS mark is used in conjunction with, inter alia, clothing, coloring
books, playing cards, pencils, stickers, food products, video games, videos,
bikes, dolls, and children’s furniture.
Complainant operates a website at
<smurf.com> that offers facts about The Smurfs characters, games,
and other information directed to children.
The website prominently displays the stylized version of the SMURFS mark
with a blue background.
Respondent registered the <smurfs.com> domain name on
January 8, 2003. Respondent uses the <smurfs.com> domain name to
resolve to a website that offers free email.
Respondent earns revenue by attracting email customers to sign up with
Respondent’s website for an email server, because Respondent’s website is
affiliated with BigMailBox.com, Inc. In
addition, Respondent’s website contains links to various other websites,
including links to <alladvantage.com> and <epipo.com>.
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 the 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 the 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 has established its rights in
the SMURFS mark through proof of trademark registration with the United States
Patent and Trademark Office and longstanding use for over 20 years.
Respondent’s <smurfs.com> domain name reflects Complainant’s entire mark
with the mere addition of the top level domain “.com.” For purposes of the Policy ¶ 4(a)(i)
identical analysis the top-level domain has no source altering significance;
the “.com” addition to Complainant’s SMURFS mark is irrelevant. Respondent’s <smurfs.com> domain name is thus identical to Complainant’s
SMURFS mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has submitted a prima
facie Complaint, in which it alleges that Respondent has no rights or
legitimate interests in the subject domain name. Complainant has thus effectively discharged its burden under the
Policy and shifted the burden on Respondent to articulate rights or legitimate
interests in the domain name.
Respondent, however, has allowed the Complaint to go uncontested. Therefore, the Panel presumes that
Respondent has no such rights or legitimate interests in the subject domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name).
Furthermore, without a Response the Panel
accepts all of Complainant’s contentions as true and will draw all reasonable
inferences in Complainant’s favor. See
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); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Respondent uses the <smurfs.com> domain name to profit off an email service
provided at the resulting website.
Respondent’s email service offered through the <smurfs.com>
website is supported by BigMailBox.com, Inc.
The more traffic that Respondent receives from Internet users
subscribing to Respondent’s free email services the more revenue Respondent
generates from BigMailBox.com, Inc. In
addition, Respondent’s <smurfs.com> website contains links to a
variety of other third party websites, which presumably pay Respondent a fee
for increased traffic resulting from Respondent’s website. Respondent’s commercial use of the <smurfs.com> domain name does not
constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), nor does it represent a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); 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 the
Complainant’s mark by redirecting Internet traffic to its own website).
Respondent is not commonly known by the <smurfs.com> domain name and
Complainant’s longstanding use of the SMURFS mark renders it unlikely that
Respondent could be known by any variation of said mark. The WHOIS information lists Respondent as
Nev Zevo and the Panel accepts that listing as Respondent’s identity, absent
any evidence to the contrary. Therefore,
Respondent has no rights or legitimate interests in the <smurfs.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <smurfs.com>
domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s bad faith registration of
the <smurfs.com> is evidenced by the website to which the domain
name resolves, where the famous SMURFS characters are displayed. Respondent’s website reflects other
characteristics strongly associated with the SMURFS mark. Like Complainant’s <smurf.com>
website, Respondent’s website contains a blue background and the SMURFS
characters themselves are blue.
Respondent’s website prominently displays the SMURFS mark at the top of
the page in a style of letter similar to Complainant’s registered stylized
SMURFS trademark. Respondent’s behavior
evinces an apparent knowledge on the part of Respondent of Complainant’s
interests and use of the SMURFS mark.
Registering a domain name with knowledge of another entity’s rights in
the domain name constitutes bad faith registration; thus, the Panel finds
Respondent registered the <smurfs.com> domain name in bad
faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]hile an intent to confuse consumers is not
required for a finding of trademark infringement, intent to deceive is strong
evidence of a likelihood of confusion").
Respondent’s <smurfs.com>
website not only replicates certain familiar characteristics associated with
the use of the SMURFS mark, but Respondent profits from the traffic that ends
up at its website. Respondent
commercially benefits from its email services and the links provided at its <smurfs.com>
website. Because Complainant’s SMURFS
mark is so highly associated with The Smurfs animated series, the
Internet user most likely to use the <smurfs.com> domain name
would be searching for Complainant.
Such an Internet user would end up at Respondent’s website with the
likelihood of being confused as to Complainant’s affiliation, especially given
the use of SMURFS-related features at the website. Therefore, Respondent’s use of the <smurfs.com>
domain name to profit off Complainant’s established SMURFS mark constitutes bad
faith under Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Kahn, 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)).
The Panel thus finds that Policy
¶4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <smurfs.com> be TRANSFERRED from Respondent to
Complainant.
John J. Upchurch, Panelist
Dated: January 28, 2003
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