Muppets Holdings Company, LLC v. Nexus6
Dot Org
Claim Number: FA0509000562460
Complainant is Muppets Holding Company, LLC (“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 Nexus6 Dot Org (“Respondent”), 3002 38th Ave. SW,
Seattle, WA 98126-2218.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <muppets.net>
and <muppets.org>, registered
with Gandi.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 15, 2005.
On
September 16, 2005, Gandi confirmed by e-mail to the National Arbitration Forum
that the <muppets.net> and <muppets.org> domain names are
registered with Gandi and that Respondent is the current registrant of the
names. Gandi has verified that
Respondent is bound by the Gandi 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
September 20, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 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@muppets.net and postmaster@muppets.org
by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 14, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <muppets.net> and <muppets.org>
domain names are identical to Complainant’s MUPPETS mark.
2. Respondent does not have any rights or
legitimate interests in the <muppets.net>
and <muppets.org> domain
names.
3. Respondent registered and used the <muppets.net> and <muppets.org> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Muppets Holdings Company, LLC, provides entertainment services that feature puppets
and large animated animals and creatures.
In connection with these services, Complainant has registered numerous
marks with the United States Patent and Trademark Office (“USPTO”), including
the MUPPETS mark (Reg. No. 949,135 issued December 19, 1972).
Respondent
registered the <muppets.net>
and <muppets.org> domain names
on November 15, 1999 and November 11, 1999, respectively. Neither of Respondent’s domain names
currently resolves to an active website.
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 has
established rights in the MUPPETS mark due to its registration of the mark with
the USPTO. 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 Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently distinctive [or] have acquired
secondary meaning”).
Complainant
contends that Respondent’s <muppets.net>
and <muppets.org> domain names
are identical to Complainant’s MUPPETS mark.
Respondent’s disputed domain names both include Complainant’s entire
registered mark while adding the generic top-level domain (“gTLD”) “.net” or
“.org.” Panels have held that the
addition of a gTLD is irrelevant when determining whether a domain name is identical
or confusingly similar to an established mark.
As a result, the Panel finds that Respondent’s <muppets.net> and <muppets.org>
domain names are identical to Complainant’s MUPPETS mark pursuant to Policy
¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see
also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <muppets.net> and <muppets.org> domain names. Once Complainant makes a prima facie case in support of its allegations,
the burden shifts to Respondent to prove that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
Due to Respondent’s failure to respond to the Complaint, the Panel
infers that Respondent does not have rights or legitimate interests in the
disputed domain names. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has
asserted that respondent does not have rights or legitimate interests with
respect to the domain name, it is incumbent on respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); 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 does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Complainant
contends that Respondent has failed to put either of the disputed domain names
to use within the past six years. In
absence of evidence to suggest otherwise, the Panel finds that registration alone
is insufficient to confer rights and legitimate interests pursuant to Policy ¶
4(a)(ii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244
(WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy.”); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's
passive holding of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”).
Furthermore,
no affirmative evidence has been set forth showing that Respondent is commonly
known by the <muppets.net> and <muppets.org>
domain names. As a result,
Respondent has failed to show evidence of rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
domain names do not resolve to active websites. In cases of passive holding, panels have found that where the
registrant fails to make use of the disputed domain name, bad faith
registration and use can be inferred pursuant to Policy ¶ 4(a)(iii). See
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); see also 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).
Furthermore,
Respondent registered the <muppets.net>
and <muppets.org> domain names
with actual or constructive knowledge of Complainant’s rights in the MUPPETS
mark. Complainant’s registration of the
MUPPETS mark with the USPTO confers upon Respondent constructive knowledge of
Complainant’s rights in the mark. 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). Respondent’s registration of an identical domain name with actual
or constructive knowledge of Complainant’s rights constitutes 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) (“[T]here 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 <muppets.net>
and <muppets.org> domain names
be TRANSFERRED from Respondent to
Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
October 25, 2005
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