Metro-Goldwyn-Mayer Studios Inc. v. fslc wf-b
Claim Number: FA0612000857714
Complainant is Metro-Goldwyn-Mayer Studios Inc. (“Complainant”), represented by Nathan
J Hole, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thepinkpanther.com>, registered with Enom, Inc.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2006 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@thepinkpanther.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <thepinkpanther.com> domain name is identical to Complainant’s THE PINK PANTHER mark.
2. Respondent does not have any rights or legitimate interests in the <thepinkpanther.com> domain name.
3. Respondent registered and used the <thepinkpanther.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metro-Goldwyn-Mayer Studios Inc., is one of the
largest entertainment production companies in the world and owns the largest
modern film library in the world. One of
Complainant’s most popular film franchises is THE PINK PANTHER. Complainant released the first film under the
THE PINK PANTHER mark in 1964.
Subsequent films under the mark were released in 1975, 1976, 1978, 1982,
1983, 1993, and 2006, with plans for the release of a new film under the mark
in 2008. Collectively, the films under
the THE PINK PANTHER mark have grossed over $175 million in box office receipts
worldwide and over $80 million in the
Complainant has registered the THE PINK PANTHER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,122,758 issued July 24, 1979; Reg. No. 1,974,692 issued May 21, 1996).
Respondent registered the <thepinkpanther.com>
domain name on
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.
Because Complainant has registered the <thepinkpanther.com>
domain name with the United States Patent and Trademark Office, the Panel finds
that Complainant has established rights in the mark for purposes of satisfying
Policy ¶ 4(a)(i).
Respondent’s <thepinkpanther.com> domain name
is identical to Complainant’s THE PINK PANTHER mark but for the elimination of
spaces between terms and the addition of the generic top-level domain
“.com.” As these alterations are purely
functional and largely irrelevant to a Policy ¶ 4(a)(i) analysis, the Panel
finds the disputed domain name to be identical to the mark according to Policy
¶ 4(a)(i). See W. Union Holdings,
Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name WUIB is part of the Internet address and does not add
source-identifying significance); see also Hannover Ruckversicherungs-AG v.
Ryu, FA 102724 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests in the <thepinkpanther.com> domain name. Complainant has the initial burden of proof
in establishing that Respondent lacks rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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); see also Document Tech., Inc. v. Int’l
Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <thepinkpanther.com> domain name. See Am. Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb.
Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.”); see also BIC
Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent is also not commonly
known by the <thepinkpanther.com> domain
name. The WHOIS information lists the
registrant as “fslc wf-b,” and there is no other evidence in the record
suggesting that Respondent is commonly known by the <thepinkpanther.com> domain name.
Consequently, Respondent has not established rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
Respondent’s website at the <thepinkpanther.com>
domain name contains various links to both Complainant’s products and the
products of its competitors. In TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31,
2002), the panel concluded that the respondent’s registration and use of
confusingly similar domain names to divert Internet users to its own website
did not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶
4(c)(iii), and that hosting links to the complainant’s direct competitors only
reinforced that conclusion. The panel in
Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
By redirecting Internet users interested in information on Complainant’s products under the THE PINK PANTHER mark to its own website for commercial gain, presumably in the form of click-through fees, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s THE PINK PANTHER mark. Such registration and use is indicative of bad faith according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Respondent’s website at the <thepinkpanther.com>
domain name contains content related to Complainant’s THE PINK PANTHER mark as
well as competing products and services.
In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24,
2006), the panel found that the respondent engaged in bad faith registration
and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to
operate a commercial search engine with links to the products of the
complainant and to complainant’s competitors.
As Respondent is also redirecting Internet users interested in
information on Complainant’s products under the THE PINK PANTHER mark to
competing websites, the Panel finds that Respondent is potentially disrupting
Complainant’s business under the registered mark and thus Respondent has engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859
(Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and
used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by
using the disputed domain names to operate websites that compete with
Complainant’s business).
The Panel concludes 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 <thepinkpanther.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 17, 2007
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