Warner Bros. Entertainment Inc. v. Bret Silver
Claim Number: FA1107001398278
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Bret Silver (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <happyfeet2.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2011; the National Arbitration Forum received payment on July 12, 2011.
On July 13, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <happyfeet2.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 July 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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@happyfeet2.com. Also on July 14, 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 August 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Respondent has failed to submit a response to the Complaint filed in this proceeding in compliance with the requirements of the Policy of its implementing Rules. However, Respondent has communicated with the National Arbitration Forum via e-mail message. The Panel will consider the contents of that e-mail communication in determining the appropriate disposition of the Complaint.
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 a compliant response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a producer of motion pictures in the United States and abroad.
Complainant produced the HAPPY FEET film that debuted in 2006 in the United States and has become the third-highest grossing animated film in the United States with sales of $400 million worldwide.
Complainant owns trademark registrations on file with the United States Patent and Trademark Office ("USPTO") for its HAPPY FEET mark (including Reg. No. 3,350,899, registered December 11, 2007).
Complainant has used the HAPPY FEET mark in relation to the marketing of its film of the same name, as well as related toys, clothing, books and a variety of other merchandise bearing its mark.
Respondent registered the <happyfeet2.com> domain name on May 12, 2009, only seven days after Complainant publicly announced that it would be filming “Happy Feet 2,” a sequel to the original film.
Respondent uses the disputed domain name to redirect Internet users, for commercial gain, to a generic parking page which features links to the websites of others offering products or services related to and in competition with Complainant’s business.
Respondent offered to sell the disputed domain name to Complainant for not less than $2,500.
Respondent’s contested <happyfeet2.com> domain name is confusingly similar to Complainant’s HAPPY FEET mark.
Respondent is not commonly known by the disputed domain, and Complainant has not authorized Respondent to use its mark in a domain name.
Respondent does not have any rights to or legitimate interests in the domain name <happyfeet2.com>.
Respondent registered and uses the disputed <happyfeet2.com> domain name in bad faith.
B. Respondent failed to submit a compliant Response to the Complaint filed in this proceeding. However, in an e-mail communication addressed to the National Arbitration Forum, Respondent has alleged, among other things, as follows:
Respondent has no intention of associating its domain name with Complainant’s merchandise.
Rather Respondent intends to develop a dance studio.
Respondent will no longer attempt to sell the domain name to any party that does not share similar intentions.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established that it has rights in the HAPPY FEET trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Respondent’s domain name is confusingly similar to the HAPPY FEET trademark. The domain incorporates the entire mark, merely eliminating the space between the terms of the mark, and adding the numeral “2,” which references the sequel to Complainant’s well known film of the same name. The addition of the generic top-level domain (“gTLD”) “.com” to the trademark, like the just-described alterations of the mark made in forming the domain name, does not render the domain name distinct from the mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); further see Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
The Panel therefore finds that Respondent’s <happyfeet2.com> domain name is confusingly similar to Complainant’s HAPPY FEET trademark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not have rights to or legitimate interests in the <happyfeet2.com> domain name under Policy ¶ 4(a)(ii). The Policy requires Complainant to submit a prima facie case in support of this allegation. Once such a case has been presented, the burden shifts to Respondent to submit evidence establishing its rights to or legitimate interests in the domain name. 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 a complainant under this head of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name).
Complainant has submitted a sufficient prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. The burden has therefore shifted to Respondent. However, owing to Respondent’s failure to submit a Response to the Complaint filed in this proceeding, we may conclude that Complainant’s allegations are true, unless clearly contradicted by the evidence of record. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004), finding that, because a respondent failed to submit a response as required by the Policy:
Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain, and that Complainant has not authorized Respondent to use its mark in a domain name. Moreover, the WHOIS information for the <happyfeet2.com> domain name identifies the registrant only as “Bret Silver,” which does not resemble the contested domain name. On this record, we must conclude that Respondent has not been commonly known by the disputed domain name so as to have rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSON-LINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), finding that a respondent was not commonly known by a disputed domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence of record to support the proposition that that respondent had such rights or interests.
We next note that Complainant asserts, without objection from Respondent, that Respondent uses the domain name to redirect Internet users, for commercial gain, to a generic parking page which has links to the websites of others featuring products or services related to and in competition with Complainant’s business. Respondent’s use of the disputed domain name as alleged does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See 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 domain name confusingly similar to a complainant’s mark 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); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to the websites of that complainant’s competitors, was not a bona fide offering of goods or services).
In addition, we conclude that Respondent’s attempt to sell the domain name to Complainant for $2,500, a sum considerably in excess of its likely cost of acquisition, is further evidence that Respondent lacks rights to or legitimate interests in the domain. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to a complainant suggests that that respondent had no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007):
An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.
Finally under this head of the Policy, we take note of Respondent’s suggestion to the effect that it intends to employ the subject domain name to promote the development of a dance studio. Because Respondent has not submitted any evidence to support this contention, we can give it no credit.
The Panel thus finds that Complainant has amply satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent has attempted to sell the disputed domain name to Complainant for an amount not less than $2,500. This offer is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding that a respondent’s offer to sell a domain name to a complainant for $2,000 was evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(i)).
Respondent is using the disputed domain name to display links to the websites of companies that offer goods and services similar to those of Complainant. This is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii), because such use disrupts Complainant’s business by diverting Internet user to its commercial competitors. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a disputed domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used it to operate a search engine with links to the websites of a complainant’s commercial competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We also note that there is no dispute that Respondent registered the <happyfeet2.com> domain name opportunistically, in that Respondent registered the domain name only seven days after Complainant publicly announced that it would be filming “Happy Feet 2,” a sequel to the original film. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000): (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <happyfeet2.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 15, 2011
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