DECISION

 

Disney Enterprises, Inc., Lucasfilm Entertainment Company Ltd. LLC, and Lucasfilm Ltd. LLC v. Ben Clark / Band Report Card

Claim Number: FA1812001819272

 

PARTIES

Complainant is Disney Enterprises, Inc., Lucasfilm Entertainment Company Ltd. LLC, and Lucasfilm Ltd. LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia. USA.  Respondent is Ben Clark / Band Report Card (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <starwarsgalaxysedge.com> and <starwarslands.com>, registered with GoDaddy.com, LLC.

 

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.

 

Charles A. Kuechenmeister

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 3, 2018.

 

On December 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <starwarsgalaxysedge.com> and <starwarslands.com> domain names (the “Domain Names”) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 26, 2018 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@starwarsgalaxysedge.com, and postmaster@starwarslands.com.  Also on December 5, 2018, 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 December 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUES

Multiple Complainants

Three parties, Disney Enterprises, Inc., Lucasfilm Entertainment Company Ltd. LLC, and Lucasfilm Ltd. LLC, filed this administrative proceeding as Complainants.  The relevant rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e).  Rule 3(a) states “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.”  The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”  Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In this case, the three named Complainants allege that they are all affiliated companies and/or subsidiaries of The Walt Disney Company, and the Complaint is framed so as to regard all three of them as a single entity for the purposes of this proceeding.  No documentary evidence or even a further explanation of this purported relationship or any evidence of the corporate or organizational structure of these entities was submitted.  Nevertheless, there is evidence from the copies of media reports submitted by Complainant that Robert Iger, Chairman and CEO of the Walt Disney Company, and Bob Chapek, Chairman of Walt Disney Parks and Resorts, announced the company’s intent to develop the Star Wars Galaxy’s Edge theme areas at the company’s Disney World and Disneyland parks in Florida and California.  See, Complaint Exhibits 7-12.  Complainant’s allegations regarding the organizational relationship among the three named Complainants are not disputed, and the Panel takes notice of the generally-accepted fact that the Disney organization and the Lucas group collaborated to produce the famous Star Wars films. 

 

From this the Panel is satisfied that there is a sufficient nexus between the named Complainants to enable each of them to claim rights in the Domain Names.  It is both procedurally efficient and equitable to all parties for a single Complaint to be permitted by all three Complainants, and the Panel will treat them as a single entity for the purposes of this proceeding.  All references to “Complainant” in this Decision, even though in the singular, are to all three named Complainants.

 

Multiple Domain Names

Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.”  The available evidence indicates that both of the Domain Names are registered by the same person or entity.  The WHOIS reports submitted as Complaint Exhibit 1 list “Ben Clark” as the registrant and “Band Report Card” as the registrant organization for both Domain Names.  On this evidence the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a leading international entertainment and media enterprise.  Complainant has rights in the STAR WARS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,598,203, registered July 23, 2002), as well as others.  Respondent’s Domain Names are confusingly similar to Complainant’s STAR WARS mark because they include the entire STAR WARS mark, and add the descriptive/generic terms “galaxys edge” and “lands,” respectively, and the generic top-level domain (“gTLD”) “.com.”

 

Respondent lacks rights and legitimate interests in the Domain Names.  He is not commonly known by either of them, and Complainant has not authorized or permitted him to use Complainant’s marks in any fashion.  Additionally, Respondent fails to use the Domain Names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use in that he uses them to divert users to his own commercial website.

 

Respondent registered and uses the Domain Names in bad faith.  He is using them to attract, for commercial gain, users to his own commercial website.  Also, he registered the Domain Names opportunistically in response to publicity regarding Complainant’s planned development of new areas within its theme parks.  Further, he registered the Domain Names in order to prevent Complainant from reflecting its mark in corresponding domain names.  Respondent registered the Domain Names to disrupt Complainant’s business by competing with it for Internet traffic and interfering with its ability to control the use of its mark.  Finally, Respondent had actual knowledge of Complainant’s rights in the STAR WARS mark prior to registering the Domain Names.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:

 

(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 (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 Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

Complainant Lucasfilm Ltd. LLC registered the STAR WARS mark with the USPTO (Registration No. 2,598,203) on July 23, 2002.  See, Complaint Exhibit 13.  Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).  Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).

 

Respondent’s Domain Names are confusingly similar to Complainant’s STAR WARS mark.  They incorporate the entire STAR WARS mark verbatim and add the descriptive or generic terms “land” in one case and “galaxys edge” in the other, plus the gTLD “.com.”  These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i).  Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).

 

For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the STAR WARS mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it.  Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).  If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests.  If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety.  At all times, the burden of proof remains on the complainant.  WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)            before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)          respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii)         respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) he is not commonly known by the Domain Names, (ii) Complainant has not authorized or licensed him to use its STAR WARS mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or as a legitimate noncommercial or other fair use because he is using them to divert Internet traffic to his own commercial web site.  These allegations are supported by competent evidence. 

 

The WHOIS report submitted as Complaint Exhibit 1 shows the registrant of both Domain Names is “Ben Clark” and that the registrant organization for both is “Band Report Card.”  Neither of these names bears any resemblance to either Domain Name.  UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.  Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).  The Panel is satisfied that Respondent has not been commonly known by the Domain Names within the meaning of Policy ¶ 4(c)(ii).

 

Complainant states that it has never licensed or authorized Respondent to use its mark in any way.  Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.  In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name.  IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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 at-issue domain name.”).

 

Complaint Exhibit 14 consists of a declaration of one of Complainant’s counsel stating that a search for the web sites resolving from the Domain Names redirects the user to Respondent’s web site at <aweirdmovie.com>.  It also contains screenshots of that web site, where Respondent advertises his services, including meme management, licensing, branding, digital strategy, marketing, video production, public relations and the internet.  It also features a banner reading “Looking to monetize your UTube channel and get the same marketing tools the big video creators use?”  Respondent is clearly using this web site to promote his services for remuneration.  Using a confusingly similar domain name to divert users to a respondent’s own website for commercial gain does not qualify as a bona fide offering of goods and services for the purposes of Policy ¶ 4(c)(i), or a legitimate noncommercial fair use for the purposes of Policy ¶ 4(c) (iii).  Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).

 

Complainant has made its prima facie case.  On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name.  They are as follows:

 

(i)            respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;

(ii)          respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;

(iii)         respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)       by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.

 

The evidence of Respondent’s use of the Domain Names discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years.  First, Respondent registered and is using the Domain Names to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv).  Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).

 

Second, Respondent registered the <starwarslands.com> Domain Name on August 15, 2015 (See, Complaint Exhibit 1), the same day that Complainant made its well-publicized announcement of plans to build Star Wars-related lands at its Disneyland and Disney World parks (See, Complaint Exhibits 7-9).  Likewise, Respondent registered the <starwarsgalaxysedge.com> Domain Name on July 15, 2017 (See, Complaint Exhibit 1), the same day that Complainant made its well-publicized announcement of plans to develop Star Wars Galaxy’s Edge theme areas at its Disneyland and Disney World parks (See, Complaint Exhibits 10-12).  The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties.  Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005).  The non-exclusive nature of Policy 4(b) allows for consideration of additional factors in an analysis for bad faith, and opportunistic registration based on temporal proximity with a complainant’s new business or product has often been held by UDRP panels to be evidence of bad faith for the purposes of Policy ¶ 4(a)(iii).  Taco Bell Corp. v. Jessica Terry, FA 1746740 (Forum Sep. 26, 2017) (finding the respondent’s opportunistic registration of the <tacobellweddings.com> weeks after the complainant’s announcement and promotion of its wedding service sufficient for a finding of bad faith per Policy ¶ 4(a)(iii)), Twentieth Century Fox Film Corporation v. Above.com Privacy Service, FA 1304001495595 (Forum May 24, 2013) (holding respondent registered the domain name <percyjacksonmovie.com> “after Complainant’s rights in the PERCY JACKSON movie 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 capitalized on the wave of publicity surrounding complainant’s trademark.”).

 

Finally, it is evident from the world-wide fame and notoriety of Complainant’s STAR WARS mark, and from the fact that that mark was incorporated verbatim into the Domain Names, that Respondent had actual knowledge of Complainant’s mark in August 2015 and July 2017, when he registered the Domain Names.  See, Complaint Exhibit 1 for registration date.  In light of the open-ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (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), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <starwarslands.com> and <starwarsgalaxysedge.com> Domain Names be TRANSFERRED from Respondent to Complainant.

 

 

Charles A. Kuechenmeister, Panelist

December 31, 2018

 

 

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