Muppets Holding Company, LLC v. Neil
Brown
Claim
Number: FA0507000518373
Complainant, Muppets Holding Company, LLC (“Complainant”),
is represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Neil Brown (“Respondent”), 20 Haywood Drive, Fleet uk gu13 9sz,
United Kingdom.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <muppetchip.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 20, 2005.
On
July 19, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <muppetchip.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby 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 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 10,
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@muppetchip.com by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 16, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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.”
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 <muppetchip.com>
domain name is confusingly similar to Complainant’s MUPPET mark.
2. Respondent does not have any rights or
legitimate interests in the <muppetchip.com> domain name.
3. Respondent registered and used the <muppetchip.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Muppets Holding Company, LLC, holds numerous registrations for its famous and
fanciful MUPPET trademark with the United States Patent and Trademark Office
(“USPTO”) (E.g., Reg. No. 948,503 issued January 20, 1972; Reg. No.
949,135 issued December 19, 1972).
Also, Complainant has registered numerous domain names, including
<muppet.com> and <muppets.com>.
Respondent registered
the <muppetchip.com> domain name on January 10, 2005. The domain name resolves to a website
featuring unlicensed and infringing art reproductions of Complainant’s
copyrighted Muppet characters.
Additionally, Respondent’s website offers commercial software
development services.
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.
Complainant’s
registrations for its MUPPET mark with the USPTO are sufficient to establish
Complainant’s rights in the mark. See
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.”); see also 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.”).
Complainant
argues that Respondent’s <muppetchip.com> domain name is
confusingly similar to its MUPPET mark.
The disputed domain name wholly incorporates Complainant’s mark and adds
the generic term “chip.” The Panel
holds that the addition of the generic term is insufficient to distinguish the
disputed domain name from Complainant’s mark.
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 Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<muppetchip.com > domain name.
Complainant’s assertion establishes a prima facie case and shifts
the burden to Respondent. To meet its
burden, Respondent must provide the Panel with evidence that it does have
rights or legitimate interests in the disputed domain name. Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is not commonly known by the disputed domain names. Without a response from Respondent, the
Panel accepts as true Complainant’s allegation. See 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).
Moreover, Respondent’s WHOIS information suggests that Respondent is
known as “Neil Brown.” Therefore, the
Panel concludes that Respondent is not commonly known by the disputed domain
name and does not have rights or legitimate interests 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 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).
Moreover,
Complainant avers that Respondent’s offers unlicensed products for sale and
uses the disputed domain name to capitalize on the fame and goodwill that
Complainant and its predecessors have created in the MUPPET mark. Without a response from Respondent, the
Panel accepts Complainant’s allegations as true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb.
Forum Dec. 1, 2004) (finding that because Respondent failed to submit a
Response, “Complainant’s submission has gone unopposed and its arguments
undisputed. In the absence of a
Response, the Panel accepts as true all reasonable allegations . . . unless
clearly contradicted by the evidence.”).
Therefore, the Panel holds that Respondent’s diversionary use of the
confusingly similar domain name for commercial gain 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). 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum
Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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).”).
Therefore, the Panel concludes that
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has
provided the Panel with evidence indicating that Respondent is intentionally capitalizing
on the confusing similarity of the disputed domain name to attract Internet
users for commercial gain. The Panel
determines that Respondent is creating a likelihood of confusion with
Complainant’s mark by using the confusingly similar domain name and by
depicting the Muppet characters on its website. The Panel holds that such use is clear evidence of bad faith use
and registration for purposes of Policy ¶ 4(b)(iv). See World Wrestling
Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24,
2001) (concluding that the respondent registered and used the
<wwfauction.com> domain name in bad faith because the name resolved to a
commercial website that the complainant’s customers were likely to confuse with
the source of the complainant’s products, especially because of the
respondent’s prominent use of the complainant’s logo on the site); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
The fame and
fancifulness of Complainant’s MUPPET mark, its registration of the mark with
the USPTO, and the obvious link between Complainant’s mark and the content of
Respondent’s website all suggest that Respondent had both actual and
constructive knowledge of Complainant’s rights in the mark. See Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (“Because of the fanciful nature of the
ZYBAN mark, the Panel can infer that Respondent knew of Complainant's rights in
the mark at registration.”); see also 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 Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”). The
Panel concludes that Respondent’s actual or constructive knowledge of
Complainant’s rights in the mark prior to registration of the disputed domain
name provides further evidence of bad faith use and registration under 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <muppetchip.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
August 26, 2005
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