Warner Bros. Entertainment Inc. v. Domain Proxy Manager / Domains By Proxy - Niche Proxy Account / Niche Domain Proxy Manager / Domains By Proxy - NA Proxy Account
Claim Number: FA1911001872765
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia. Respondent is Domain Proxy Manager / Domains By Proxy - Niche Proxy Account / Niche Domain Proxy Manager / Domains By Proxy - NA Proxy Account (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mortalkombatmovie.com> and <freemortalkombatgames.com> registered respectively with Sea Wasp, Llc and Domainsite, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2019. The Forum received payment on November 25, 2019.
On November 26, 2019 and December 2, 2019, Sea Wasp, Llc and Domainsite, Inc. confirmed by e-mail to the Forum that the <mortalkombatmovie.com> and <freemortalkombatgames.com> domain names are registered respectively with Sea Wasp, Llc and Domainsite, Inc. and that Respondent is the current registrant of the names. Sea Wasp, Llc and Domainsite, Inc. have verified that Respondent is bound by the Sea Wasp, Llc and Domainsite, Inc. registration agreements 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 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 2019 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@mortalkombatmovie.com, postmaster@freemortalkombatgames.com. Also on December 4, 2019, 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 31, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 is a major American entertainment company that operates in film, television, and video games. It has rights in the MORTAL KOMBAT mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) including Reg. No. 1,912,102, registered Aug. 15, 1995. The disputed domain names are confusingly similar to Complainant’s MORTAL KOMBAT mark as they incorporate the mark in its entirety, merely adding descriptive or generic terms (“movie,” “free” and “games”) and a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use Complainant’s marks. Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, both domain names resolve to websites that display pay-per-click hyperlinks that reference Complainant’s Mortal Kombat films and video games.
Respondent registered and uses the domain names in bad faith. Respondent has engaged in a pattern of bad faith registration and use. Respondent attempts to disrupt Complainant’s business by diverting Internet users looking for Complainant’s Mortal Kombat movies and video games and profiting from click-through links that target Complainant and direct users to suspicious websites. Additionally, Respondent had actual knowledge of Complainant’s rights in the MORTAL KOMBAT mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the MORTAL KOMBAT mark through its registration with the USPTO.
Ignoring the inconsequential gTLD “.com”, the Panel finds each of the disputed domain names to be confusingly similar to Complainant’s mark. The <mortalkombatmovie.com> domain name contains Complainant’s entire MORTAL KOMBAT mark and adds the descriptive term “movie”. The <freemortalkombatgames.com> domain name contains Complainant’s entire MORTAL KOMBAT mark and adds the generic term “free” and the descriptive term “games.” These additions fail sufficiently to distinguish the domain names from the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016).
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds on the evidence produced by Complainant that the MORTAL KOMBAT mark is distinctive and widely known. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
The <mortalkombatmovie.com> domain name was registered on December 31, 2006 and the <freemortalkombatgames.com> domain name was registered on April 19, 2007, both dates being many years after the registration of Complainant’s MORTAL KOMBAT mark in 1995.
Complainant has provided screenshots of Respondent’s resolving websites, each of which displays pay-per-click hyperlinks that reference Complainant’s movies and video games.
The Panel accepts Complainant’s contentions that in light of the fame and notoriety of Complainant’s MORTAL KOMBAT mark, it is inconceivable that Respondent could have registered the domain names without actual knowledge of Complainant’s rights in the mark and that Respondent’s use of the disputed domain names to display pay-per-click hyperlinks that reference Complainant’s Mortal Kombat video games and movies indicates Respondent had actual knowledge of Complainant’s rights in the MORTAL KOMBAT mark and has sought to benefit commercially from the confusing similarity between the domain names and Complainant’s mark. Accordingly the Panel finds Respondent registered and is using the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) and see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015).
Complainant also contends that Respondent has engaged in a pattern of bad faith registration and use by registering two different domain names incorporating Complainant’s MORTAL KOMBAT mark and by holding a multitude of domain names which may infringe other famous marks. Complainant provides screenshots showing several of the 754 domain names that Respondent purportedly owns, most of which incorporate famous marks, e.g., americanexzpress.com (AMERICAN EXPRESS), britischarways.com (BRITISH AIRWAYS), comvast.net (COMCAST), diesnychanal.com and dislneyland.com (DISNEY). Although this conduct supports the conclusion that Respondent was aware of Complainant’s mark when registering the domain names and has used them in bad faith, the Panel is not satisfied that Respondent did so in order to prevent Complainant from reflecting its mark in a corresponding domain name. Hence no finding is made of circumstances falling under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mortalkombatmovie.com> and <freemortalkombatgames.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 6, 2020
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