Warner Bros. Entertainment Inc. v. Equity LLC / Name Admin
Claim Number: FA1107001400583
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Equity LLC / Name Admin (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thundercats.com>, registered with eNom.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2011; the National Arbitration Forum received payment on July 27, 2011.
On July 27, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <thundercats.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.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 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@thundercats.com. Also on July 28, 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 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <thundercats.com> domain name is identical to Complainant’s THUNDERCATS mark.
2. Respondent does not have any rights or legitimate interests in the <thundercats.com> domain name.
3. Respondent registered and used the <thundercats.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Warner Bros. Entertainment Inc., acquired rights to the THUNDERCATS mark through merger. The THUNDERCATS mark has been used in connection with a cartoon television show that aired new episodes from 1985-1988, and has been in syndication since that time. Complainant has further used the THUNDERCATS mark to market clothing and other products. Complainant’s predecessor in interest owned trademark rights with the United States Patent and Trademark Office ("USPTO") for the THUNDERCATS mark (e.g., Reg. No. 1,403,475 registered July 29, 1986; cancelled February 1, 1993). Complainant now owns two trademark registrations with the USPTO for the THUNDERCATS mark (e.g., Reg. No. 2,868,006 filed April 1, 2003; registered July 27, 2004).
Respondent, Equity LLC / Name Admin, registered the <thundercats.com> domain name on March 24, 2002. Respondent’s disputed domain name resolves to a website that features a search engine and various third-party links to companies offering competing action figure 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.
The base determination under Policy ¶ 4(a)(i) is whether Complainant has supplied sufficient evidence indicating its rights in the asserted mark. In the instant proceeding Complainant has presented several pieces of information meant to accomplish just this. Complainant first submits evidence that it owns two current trademark registrations with the USPTO for the THUNDERCATS mark (e.g., Reg. No. 2,868,006 filed April 1, 2003; registered July 27, 2004). Through such trademark registrations the Panel finds that Complainant has established rights in its mark under Policy ¶ 4(a)(i) that date back to April 1, 2003, which is the filing date of Complainant’s 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 Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Further, Complainant submits evidence that its predecessor in interest previously owned several trademark registrations with the USPTO for the THUNDERCATS mark (e.g., Reg. No. 1,403,475 registered July 29, 1986; cancelled February 1, 1993). Complainant argues in its submissions that since 1985 the THUNDERCATS mark has been used continuously in commerce for the production of the television show as well as consumer products in relation to the television show. Complainant argues that its, and its predecessor’s, use of the THUNDERCATS mark continuously and extensively in commerce since 1985 has resulted in the mark achieving common law rights. The Panel agrees, and finds that Complainant has submitted sufficient evidence to establish common law rights in the mark that date back to 1985 under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Now that Complainant has established rights in the mark, the analysis shifts to whether the domain name is identical to the mark at hand. Here Complainant contends that the <thundercats.com> domain name is identical to Complainant’s THUNDERCATS mark because it merely adds the generic top-level domain (“gTLD”) “.com” and nothing more. The Panel finds that Respondent’s <thundercats.com> domain name is identical to Complainant’s THUNDERCATS mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <thundercats.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See 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.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <thundercats.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel finds that the WHOIS information for the disputed domain name identifies “Equity LLC / Name Admin” as the registrant of the domain name. Without further information, the Panel concludes that Respondent is not commonly known as the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Complainant submits a screen shot of the disputed domain name which shows the resolving website as featuring a commercial search engine and various links to toys and action figures. Such links are contained under headings such as “Play Games,” “Toy Action Figure,” “Marvel Action Figures,” etc. Complainant notes that it is also engaged in the business of producing and distributing action figure toys in its line of business. The Panel therefore determines that Respondent’s use of the disputed domain name to present Internet users with clickable links to websites selling goods both in competition with and unrelated to Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
While Complainant argues that Respondent’s registration and use of the disputed domain name “meets the bad faith elements set forth in Section 4(b)(i) of the UDRP,” the Panel finds that Complainant has not presented any evidence that Respondent has attempted to sell the disputed domain name. Therefore, the Panel finds that Complainant has not satisfied Policy ¶ 4(b)(i).
Complainant, however, has presented evidence to show that Respondent’s use of the disputed domain name has a competing nature. Respondent has posted links to websites and businesses which sell action figure goods in competition with Complainant. Therefore, Complainant’s potential customers are being diverted from its line of action figures to those of its competitors. Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Further, Complainant contends that “Respondent’s registration and use of the Domain Name also meets the bad faith elements set for in Section 4(b)(iv) of the UDRP because Respondent is intentionally using the Domain Name to attract, for commercial gain, Internet users to websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the websites…” The Panel notes that the disputed domain name resolves to a website which features various third-party links to many businesses. Presumably, Respondent collects click-through or affiliate fees from the businesses advertised on its website. Therefore, the Panel finds that Respondent has also registered and used the domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <thundercats.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 6, 2011
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