national arbitration forum

 

DECISION

 

Twentieth Century Fox Film Corporation v. Above.com Domain Privacy

Claim Number: FA1304001495595

PARTIES

Complainant is Twentieth Century Fox Film Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <percyjacksonmovie.com>, registered with ABOVE.COM PTY LTD.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2013; the National Arbitration Forum received payment on April 19, 2013.

 

On April 21, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <percyjacksonmovie.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name.  ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 April 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2013 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@percyjacksonmovie.com.  Also on April 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Twentieth Century Fox Film Corporation, is one of the world’s leading and largest entertainment and media companies. Complainant operates a major film studio and television network, among other lines of business. Complainant owns common law rights in the PERCY JACKSON marks and variations thereof including PERCY JACKSON AND THE OLYMPIANS and PERCY JACKSON AND THE OLYMPIANS: THE LIGHTNING THIEF.

 

Respondent’s <percyjacksonmovie.com> domain name is confusingly similar to Complainant’s marks PERCY JACKSON, PERCY JACKSON AND THE OLYMPIANS, and PERCY JACKSON AND THE OLYMPIANS: THE LIGHTNING THIEF.

 

Respondent does not have any rights or a legitimate interest in the domain name. Respondent is not and was not commonly known by the domain name. Respondent’s registration and use of the domain name for a commercial pay-per-click website featuring sponsored-link advertisements for directly competing websites and other commercial websites does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name.

 

Respondent’s registration and use of the domain name constitutes bad faith. Respondent disrupts Complainant’s business by using the domain name for a website featuring sponsored-link advertisements for directly competing services and other commercial websites. Respondent uses the domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its PERCY JACKSON marks. Respondent registered the domain name opportunistically in bad faith after Complainant’s rights in the PERCY JACKSON marks were established and prior to the release of Complainant’s highly anticipated and well-publicized PERCY JACKSON movie. There is no question that Respondent knew of Complainant’s PERCY JACKSON marks when it registered the domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has common law trademark rights in PERCY JACKSON.

 

Respondent is not affiliated with Complainant and had not been authorized to use the PERCY JACKSON mark in any capacity.

 

Respondent registered the at-issue domain name after Complainant acquired trademark rights in PERCY JACKSON.

 

The <percyjacksonmovie.com> domain name is used by Respondent for a website featuring sponsored-link advertisements for services directly competing with Complainant and for other commercial websites.

 

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."

 

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 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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Registration of a trademark is unnecessary for the purposes of the Policy if Complainant can establish common law rights in its mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant presents sufficient evidence for the Panel to conclude that Complainant has common law trademark rights in the PERCY JACKSON mark and also that such rights manifested prior to Respondent’s registration of the at-issue domain name. Complainant’s PERCY JACKSON mark acquired secondary meaning, inter alia, via pre-sales use and publicity of the mark and via extensive promotion relating to the PERCY JACKSON movie. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning).

 

The <percyjacksonmovie.com> domain name incorporates Complainant’s PERCY JACKSON mark in its entirety, deletes the space between the terms “PERCY” and “JACKSON,” adds the descriptive word “movie” and appends the resulting string with the top level domain name “.com.” Nevertheless, the resulting differences between the at-issue domain name and Complainant’s mark do not distinguish the two for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <percyjacksonmovie.com> domain name is confusingly similar to the PERCY JACKSON mark under Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” 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)).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information identifies “Above.com Domain Privacy” as the at-issue domain name’s registrant.  Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the <percyjacksonmovie.com> domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent uses the at-issue domain name for a commercial pay-per-click website featuring sponsored-link advertisements for directly competing websites and other commercial websites. Respondent’s confusingly similar domain name provides hyperlinks titled “Watch Full Movies Online,” “Watch Free Movie,” “Percy Jackson Official Site,” and others. Respondent’s use of the at-issue domain name to list competing links is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondent is disrupting Complainant’s business by using a confusingly similar domain name to resolve to a website featuring competing links and advertisements. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

Additionally, Respondent is using the domain name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant and Complainant’s PERCY JACKSON mark as to the affiliation or source of Respondent’s <percyjacksonmovie.com> website. The confusion between the domain name and Complainant’s mark is augmented by the fact that Complainant frequently uses domain names featuring its trademark with the addition of the term “movie.” Respondent receives pay-per-click fees when Internet users visit Respondent’s <percyjacksonmovie.com> website and click on one or more of the displayed hyperlinks. As mentioned above, some of these links include: “Percy Jackson Official Site,” “Watch Free Movies,” “Watch TV Online,” and “Movie Streaming.” These circumstances demonstrate bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).

 

Furthermore, Respondent registered the <percyjacksonmovie.com> domain name after Complainant’s rights in the PERCY JACKSON marks were established and prior to the release of Complainant’s well-publicized PERCY JACKSON movie thereby suggesting that Respondent opportunistically registered the domain name in bad faith to improperly capitalize on the wave of publicity surrounding Complainant’s trademark. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the 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”).

 

Finally, Respondent knew of Complainant’s PERCY JACKSON marks before it registered the <percyjacksonmovie.com> domain name.  Respondent’s prior knowledge of Complainant’s rights in the PERCY JACKSON mark is shown in light of Respondent’s opportunistic registration of the domain name and its use of the domain name for a website featuring the search category “Percy Jackson Official Site,” a reference to Complainant’s PERCY JACKSON movie. Knowingly registering the trademark of another in a confusingly similar domain name shows Respondent’s bad faith under the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <percyjacksonmovie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  May 24, 2013

 

 

 

 

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