DC Comics v. raton, Coni c/o LBR Enterprises
Claim Number: FA1106001395018
Complainant is DC Comics (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is raton, Coni c/o LBR Enterprises (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <manofsteel.com>, registered with Dotster, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2011; the National Arbitration Forum received payment on June 22, 2011.
On June 22, 2011, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <manofsteel.com> domain name 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2011 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@manofsteel.com. Also on June 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" 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 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 <manofsteel.com> domain name is identical to Complainant’s MAN OF STEEL mark.
2. Respondent does not have any rights or legitimate interests in the <manofsteel.com> domain name.
3. Respondent registered and used the <manofsteel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DC Comics, owns the MAN OF STEEL and THE MAN OF STEEL marks. Complainant has registered the MAN OF STEEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,226,436 registered February 23, 1999). Additionally, Complainant has registered the THE MAN OF STEEL mark with the USPTO (Reg. No. 1,433,864 registered March 24, 1987). Complainant uses its marks in connection with a variety of goods and services related to the fictional character Superman.
Respondent, raton, Coni c/o LBR Enterprises, may have registered the <manofsteel.com> domain name on October 21, 2001. The disputed domain name resolves to a website which displays click-through links and pop-up advertisements unrelated to Complainant.
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.
Complainant contends that it has established rights in the MAN OF STEEL and THE MAN OF STEEL marks. Registration of a trademark with a federal trademark authority is sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant has demonstrated evidence of trademark registration with the USPTO for its MAN OF STEEL mark (Reg. No. 2,226,436 registered February 23, 1999). Complainant has also demonstrated evidence of trademark registration for its THE MAN OF STEEL mark with the USPTO (Reg. No. 1,433,864 registered March 24, 1987). The Panel therefore finds that Complainant has established rights in both of its marks under Policy ¶ 4(a)(i).
A domain name may not infringe upon a trademark by being identical to the mark. The addition of a generic top-level domain (“gTLD”) does not distinguish a domain name from a mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark). Furthermore, the elimination of spaces between the words in a mark does not differentiate a domain name from a mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark). Respondent has fully incorporated Complainant’s MAN OF STEEL mark into the disputed domain name. Respondent deleted the spaces between the words in Complainant’s mark and added the gTLD “.com.” Without more to distinguish the domain name from Complainant’s mark, the Panel finds that Respondent’s <manofsteel.com> domain name is identical to Complainant’s MAN OF STEEL mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not maintain any rights or legitimate interests in the disputed domain name. Once a complainant has made a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). A respondent’s failure to submit a response to a Complaint allows the panel to make positive assumptions as to the accuracy of the complainant’s assertions. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003) (“[T]he Respondent's default cannot simply be construed as an admission of the allegations contained in the Complaint.”). The Panel finds that Complainant has made a prima facie case, and it will review the record for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name.
A panel may find rights and legitimate interests that a respondent has where the respondent is commonly known by a disputed domain name. The information on the record, including the WHOIS information for the domain name, provides panels with the necessary information to make this determination. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). The WHOIS information for the disputed domain name lists “LBR Enterprises” as the domain name registrant. Complainant has not given Respondent permission to use either of its marks. As such, the Panel finds that the information available does not suggest that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have previously found that the use of a domain name to display links and pop-up advertisements to websites unrelated to the complainant demonstrates a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The disputed domain name resolves to a website which displays links and advertisements to websites which are unrelated to Complainant and Complainant’s marks. Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither 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).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant contends that Respondent’s registration and use of the <manofsteel.com> domain name was done intentionally to attract Internet users to the domain name for commercial gain due to the Internet users’ confusion as to affiliation of the disputed domain name to Complainant and Complainant’s marks. Panels have found that the registration and use of a disputed domain for this purpose is evidence of bad faith on the part of the respondent. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)). Respondent displays unrelated links and advertisements on its <manofsteel.com> domain name. The Panel infers that Respondent receives compensation from these third-parties for displaying the links and advertisements. As such, increased Internet traffic translates into a higher payout for Respondent. The use of an identical domain name to confuse Internet users as to the association of the domain name and Complainant was very likely the intentional result of Respondent’s registration and use of the disputed domain name. Thus, the Panel finds that the registration and use of the disputed domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <manofsteel.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 19, 2011
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