Marvel Characters, Inc. v. Sheng Liang / Sarawina
Claim Number: FA1509001636226
Complainant is Marvel Characters, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA. Respondent is Sheng Liang / Sarawina (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marvelstudios.com> and <marvellegends.com>, registered with EPAG Domainservices GmbH.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2015; the Forum received payment on September 2, 2015.
On September 4, 2015, EPAG Domainservices GmbH confirmed by e-mail to the Forum that the <marvelstudios.com>, <marvellegends.com> domain names are registered with EPAG Domainservices GmbH and that Respondent is the current registrant of the names. EPAG Domainservices GmbH has verified that Respondent is bound by the EPAG Domainservices GmbH 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 September 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2015 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@marvelstudios.com, postmaster@marvellegends.com. Also on September 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following representations.
1. Complainant uses the MARVEL mark in connection with its business as an international producer of comic books, movies, television programs, and merchandise.
2. Complainant’s rights in the MARVEL mark have been established through numerous trademark registrations including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 870,506, registered June 3, 1969).
3. Respondent’s disputed <marvelstudios.com> and <marvellegends.com> domain names are confusingly similar to Complainant’s MARVEL mark. The disputed domain names only add a generic term and the generic top-level domain (“gTLD”) “.com” to the MARVEL mark.
4. Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been authorized to use Complainant’s MARVEL mark, nor has Respondent been commonly known by the disputed domain names. Further, Respondent’s use of the disputed domain names, to either redirect to a commercial parked webpage or resolve to a website that phishes for personal information, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
5. Respondent has registered and is using the disputed domain names in bad faith. Respondent’s use of the disputed <marvellegends.com> domain name to resolve to a website hosting commercial links, presumably for click through fees, demonstrates bad faith under Policy ¶ 4(b)(iv). In addition, Respondent’s use of the disputed <marvelstudios.com> domain name, to phish for users’ personal information, demonstrates bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the MARVEL mark at the time of registration of the disputed domain names based on the fame and prominence of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that uses the MARVEL mark in connection with its business as an international producer of comic books, movies, television programs, and merchandise.
2. Complainant’s rights in the MARVEL mark have been established through numerous trademark registrations including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 870,506, registered June 3, 1969).
3. The disputed <marvellegends.com> domain name was registered on April 14, 2003 and the <marvelstudios.com> domain name was registered on May 8, 2003.
4. The disputed <marvellegends.com> domain name is used to resolve to a website hosting commercial links, presumably for click through fees and the disputed <marvelstudios.com> domain name is used to phish for users’ personal information.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims to have rights in the MARVEL mark based on numerous registrations with the USPTO and other trademark registration bodies (e.g., Reg. No. 870,506, registered June 3, 1969). Panels have held that registration of a mark with the USPTO demonstrates the registrant’s rights in that mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel concludes that Complainant has rights in the MARVEL mark.
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MARVEL mark. Complainant submits that Respondent’s disputed domain names <marvelstudios.com> and <marvellegends.com> are confusingly similar to the MARVEL mark. Respondent’s disputed domain names include the MARVEL mark in its entirety, add a generic term, and add the gTLD “.com.” Panels have consistently found that adding generic terms like “studios” and “legends” and gTLDs to domain names does not avoid a finding of confusing similarity which is otherwise present. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel therefore holds that Respondent’s disputed <marvelstudios.com> and <marvellegends.com> domain names are confusingly similar to the MARVEL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MARVEL mark and to use it in its domain names which are confusingly similar to the mark;
(b) Respondent registered the <marvellegends.com> domain name on April 14, 2003 and the <marvelstudios.com> on May 8, 2003;
(c) The disputed <marvellegends.com> domain name is used to resolve to a website hosting commercial links, presumably for click through fees and the disputed <marvelstudios.com> domain name is used to phish for users’ personal information;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names. To support this contention Complainant asserts that Respondent has not been authorized to use the MARVEL mark and has not been commonly known by the disputed domain names. WHOIS information indicates that Respondent registered the disputed domain names using the name, “Sheng Liang” of the organization “Sarawina.” See Compl., at Ex. H. Panels have held that a respondent is not commonly known by a disputed name based on WHOIS information and a lack of information to the contrary. See 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). The Panel therefore holds that the Respondent has not been commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent’s use of neither of the disputed domain names is a bona fide offering of goods and services or a legitimate noncommercial or fair use. Respondent appears to use the <marvelstudios.com> domain name to redirect to a website that phishes for users’ information through the use of a fraudulent tech support service. See Compl., at Ex. I. The disputed <marvelstudios.com> domain name also appears to attempt to infect computers with viruses or malware. Id. Panels have consistently found that use of a disputed domain name to host a phishing website is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Additionally, hosting viruses on a disputed domain demonstrates a lack of rights and legitimate interests. See Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). The Panel therefore finds that the <marvelstudios.com> domain name is not being used in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii);
(g) Respondent’s disputed <marvellegends.com> domain name is used to host a generic parked webpage that includes links to products of Complainant and products related to Complainant’s business such as, “Marvel Legends Action Figures,” “Spiderman Toys,” and “Action Figure Toys.” Panels have found that using a domain name, comprised primarily of a complainant’s mark, to host commercial links, is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. 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 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 Panel therefore finds that Respondent’s disputed <marvellegends.com> domain name is not being used in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent registered and is using the disputed domain names in bad faith. Complainant submits that Respondent’s use of the disputed <marvellegends.com> to resolve to a website hosting commercial links presumably to generate click through fees, demonstrates bad faith under Policy ¶ 4(b)(iv). See Compl., at Ex. I. Panels have held that a respondent’s use of a domain name, prominently featuring a complainant’s mark, to host a commercial website, constitutes a bad faith attempt to attract and confuse internet users for commercial gain. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent’s use of the <marvellegends.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s use of the disputed domain name <marvelstudios.com> to phish for users' personal information demonstrates bad faith. Respondent uses the <marvelstudios.com> domain name to resolve to a website that notifies the user that their computer has viruses and prompts the user to call a telephone number provided by the site for technical assistance. See Compl., at Ex. H. Upon calling the number, users are encouraged to disclose personal information and give control of the computer to the person on the telephone. See Compl., at p. 5. Bad faith has been found where a disputed domain name resolves to a website that phishes for personal information. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). The Panel therefore concludes that Respondent’s use of the disputed domain name to phish for personal information demonstrates bad faith registration and use.
Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant's MARVEL mark, it is inconceivable that Respondent could have registered the <marvelstudios.com> and <marvellegends.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Arguments of bad faith based on constructive notice generally do not result in a finding of bad faith. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, in the present case, in view of the fame and notoriety of the MARVEL mark, Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and accordingly the Panel finds that actual knowledge is adequate evidence of bad faith in the present case under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <marvelstudios.com> and <marvellegends.com> domain names using the MARVEL mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marvelstudios.com> and <marvellegends.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 16, 2015
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