DC Comics, Turner Entertainment Co. and
Warner Bros. Entertainment Inc. v. IQ Management Corporation
Claim
Number: FA0507000514423
Complainants are
DC Comics, Turner Entertainment Co. and Warner Bros. Entertainment Inc. (collectively, “Complainant”), represented
by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite
600, Glendale, CA, 91203-2349.
Respondent is IQ Management
Corporation (“Respondent”), Marage Plaza,
Marage Road P.O. Box 1879, Belize City, na 1, BZ.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <batman-costume.com>, <gilligansisland.com>,
<harrypotterzone.com>, and <justice-league.com>,
registered with Tucows Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically July 11,
2005; the National Arbitration Forum received a hard copy of the Complaint July
13, 2005.
On
July 12, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <batman-costume.com>, <gilligansisland.com>,
<harrypotterzone.com>, and <justice-league.com> are
registered with Tucows Inc. and that Respondent is the current registrant of
the names. Tucows Inc. verified that
Respondent is bound by the Tucows Inc. registration agreement and thereby has
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 3, 2005, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@batman-costume.com, postmaster@gilligansisland.com,
postmaster@harrypotterzone.com, postmaster@justice-league.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 9, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent
registered, <batman-costume.com>, <gilligansisland.com>,
<harrypotterzone.com>, and <justice-league.com>, are
identical to or confusingly similar to Complainant’s BATMAN, GILLIGAN’S ISLAND,
HARRY POTTER, and JUSTICE LEAGUE marks.
2. Respondent has no rights to or legitimate
interests in the <batman-costume.com>, <gilligansisland.com>,
<harrypotterzone.com>, and <justice-league.com>
domain names.
3. Respondent registered and used the <batman-costume.com>,
<gilligansisland.com>, <harrypotterzone.com>, and <justice-league.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
DC Comics,
Turner Entertainment Co., and Warner Bros. Entertainment Inc. each are wholly
owned subsidiaries and affiliates of Time Warner, Inc., bringing this action
collectively as Complainant.
Complainant manages many trademarks under which various entertainment
services and products are provided.
Complainant’s services and products include television programs, movies,
books, comic books, clothing lines, and other related paraphernalia bearing
Complainant’s family of trademarks.
In
association with these products, Complainant registered the BATMAN mark (Reg.
No. 828,412 issued May 9, 1967, renewed May 9, 1987), the GILLIGAN’S ISLAND
mark (Reg. No. 2,536,926 issued February 5, 2002), the HARRY POTTER mark (Reg.
No. 2,450,787 issued May 15, 2001), and the JUSTICE LEAGUE mark (Reg. No.
1,503,856 issued September 13, 1988) with the United States Patent and
Trademark Office (“USPTO”).
Respondent
registered the <batman-costume.com>, <gilligansisland.com>,
<harrypotterzone.com>, and <justice-league.com>
domain names October 11, 2003, July 19, 2002, March 14, 2004, and August 4,
2004, respectively. The disputed domain
names <batman-costume.com> and <gilligansisland.com>
resolve to websites that feature links to various commercial websites in which
Complainant’s products may be purchased.
Neither the <harrypotterzone.com> domain name nor the <justice-league.com>
domain name resolve to active websites.
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
will draw such inferences as the Panel 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 Complainant to 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.
Complainant
asserts rights in the BATMAN, GILLIGAN’S ISLAND, HARRY POTTER, and JUSTICE
LEAGUE marks through registration with the USPTO. Federal trademark registration through the USPTO is evidence of
established rights pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant
argues that the disputed domain names that Respondent registered <batman-costume.com>,
<gilligansisland.com>, <harrypotterzone.com>, and <justice-league.com>
are identical or confusingly similar to Complainant’s BATMAN, GILLIGAN’S
ISLAND, HARRY POTTER, and JUSTICE LEAGUE marks, respectively. The <gilligansisland.com>
domain name features the entire GILLIGAN’S ISLAND trademark with the exception
of an apostrophe. Because an apostrophe
is unable to be expressed as a character in a domain name, the Panel finds that
Respondent’s disputed domain name is identical to the GILLIGAN’S ISLAND mark
pursuant to Policy ¶ 4(a)(i). See Chi-Chi’s,
Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the
domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S
mark, despite the omission of the apostrophe and hyphen from the mark); see
also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups,
FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an
apostrophe did not significantly distinguish the domain name from the mark).
Respondent’s
<harrypotterzone.com> domain name features Complainant’s entire
HARRY POTTER mark while adding the generic term “zone.” Merely adding a generic term fails to
sufficiently distinguish a domain name from an established trademark under the
Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO
Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is
confusingly similar to the Complainant's trade mark ‘AXA’” because “common
geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights”).
Respondent’s <justice-league.com>
domain name features Complainant’s JUSTICE LEAGUE mark and adds a hyphen in
between the terms of Complainant’s mark.
Panels have long held that the addition of a hyphen to a domain name
featuring another’s mark does not sufficiently differentiate the disputed domain
name. As a result the Panel finds that
Respondent’s <justice-league.com> domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5,
FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to
Complainant's mark does not create a distinct characteristic capable of
overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also
Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000)
(finding it obvious that the domain name <easy-jet.net> was
virtually identical to the complainant's EASYJET mark and therefore that they
are confusingly similar).
Finally, the <batman-costume.com>
domain name adds a hyphen along with the generic term “costume” to Complainant’s
BATMAN mark. “Costume” is a term
closely related to Complainant’s mark and fails to adequately distinguish the
domain name pursuant to Policy ¶
4(a)(i). See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity
where the respondent’s domain name combines the complainant’s mark with a
generic term that has an obvious relationship to the complainant’s business); see
also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3,
2000) (finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interests in the <batman-costume.com>,
<gilligansisland.com>, <harrypotterzone.com>, and <justice-league.com>
domain names. Complainant’s submission
creates a prima facie case that Respondent has the burden of refuting. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist). As a
result of Respondent’s failure to set forth evidence suggesting otherwise, the
Panel finds that no rights or legitimate interests exist pursuant to Policy ¶
4(a)(ii). See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive
answer in a timely fashion, the Panel accepts as true all of the allegations of
the complaint.”); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that the complainant’s allegations are
true unless clearly contradicted by the evidence).
Respondent’s <batman-costume.com>
and <gilligansisland.com> domain names resolve to websites that
feature links to various commercial websites, through which Respondent
presumably receives referral fees. Such
unauthorized use of a trademark is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Respondent’s <harrypotterzone.com>
and <justice-league.com> domain names have not been used actively
since registration. Numerous panels
have held that mere passive holding of domain names that include the mark of
another is evidence that Respondent lacks rights and legitimate interests under
Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see
also Bloomberg L.P. v. Sandhu,
FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate
interests can be found when the respondent fails to use disputed domain names
in any way).
Finally, nothing
in the record indicates that Respondent is commonly known by any of the
disputed domain names or authorized to register domain names bearing any of
Complainant’s trademarks. As a result,
the Panel finds that Respondent lacks rights and legitimate interests pursuant
to Policy ¶ (c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith.
The disputed domain names, <batman-costume.com> and <gilligansisland.com>,
resolve to websites that feature links to various competing and non-competing
commercial websites. The Panel finds
such diversionary practice for commercial gain to be evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”).
The
Panel finds that Respondent’s passive holding of the <harrypotterzone.com> and <justice-league.com>
domain names is further evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy).
Finally,
Respondent registered the <batman-costume.com>, <gilligansisland.com>,
<harrypotterzone.com>, and <justice-league.com>
domain names with constructive knowledge of Complainant’s rights in the BATMAN,
GILLIGAN’S ISLAND, HARRY POTTER, and JUSTICE LEAGUE marks. Federal trademark registration with the
USPTO confers constructive knowledge of a complainant’s rights onto a
respondent. See Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal
Register registration [of a trademark or service mark] is constructive notice
of a claim of ownership so as to eliminate any defense of good faith adoption”
pursuant to 15 U.S.C. § 1072).
Moreover, due to the similarity of the content on Respondent’s website
with Complainant’s business, the Panel infers that Respondent had actual
knowledge of Complainant’s rights.
Registration of a confusingly similar domain name featuring another’s
mark despite constructive or actual knowledge of the mark holder’s rights is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
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 <batman-costume.com>, <gilligansisland.com>,
<harrypotterzone.com>, < justice-league.com> domain
names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 22, 2005
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