DECISION

Studio Peyo S.A. and IMPS S.A. v. Nev Zevo

Claim Number: FA0212000137033

PARTIES

Complainant is Studio Peyo S.A. and IMPS S.A., Geneve, SWITZERLAND (“Complainant”) represented by Raymond A. Kurz, of Hogan & Hartson LLP.  Respondent is Zev Nevo, Merrick, NY, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <smurfs.com>, registered with DOTSTER, INC.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 10, 2002; the Forum received a hard copy of the Complaint on December 16, 2002.

On December 19, 2002, DOTSTER, INC. confirmed by e-mail to the Forum that the domain name <smurfs.com> is registered with DOTSTER, INC. and that Respondent is the current registrant of the name.  DOTSTER, INC. has verified that Respondent is bound by the DOTSTER, 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 December 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 2003 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@smurfs.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 Forum transmitted to the parties a Notification of Respondent Default.

On January 23, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.”  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The <smurfs.com> domain name is identical to Complainant’s SMURFS mark.

2. Respondent has no rights or legitimate interests in the <smurfs.com> domain name.

3. Respondent registered and used the <smurfs.com> domain name in bad faith.

B. Respondent has failed to submit a Response in this proceeding. 

FINDINGS

Complainant owns a registered trademark with the United States Patent and Trademark Office for the SMURFS mark (Reg. No. 1,209,160).  Complainant owns numerous worldwide trademark registrations for the SMURFS marks and related marks, like SMURF and SMURFETTE.  In addition, Complainant has its interests in the SMURFS mark protected in numerous languages. 

The SMURFS mark and variations thereof have been used for over twenty (20) years.  Complainant’s SMURFS mark gained worldwide notoriety for its connection with the popular animated children’s television show entitled The Smurfs.  The SMURFS mark is associated with distinctive elements of characters found in The Smurfs television show.  Characters of the animated feature reflect the SMURFS mark in their names (e.g., Papa Smurf, Smurfette, Handy Smurf, among others).  The distinct features of The Smurfs characters are that they are blue in color and wear unique white caps with white pants. 

In addition to the popular animated television show, the SMURFS mark has been continually used in connection with ancillary markets.  In particular, the SMURFS mark is used in conjunction with, inter alia, clothing, coloring books, playing cards, pencils, stickers, food products, video games, videos, bikes, dolls, and children’s furniture. 

Complainant operates a website at <smurf.com> that offers facts about The Smurfs characters, games, and other information directed to children.  The website prominently displays the stylized version of the SMURFS mark with a blue background.

Respondent registered the <smurfs.com> domain name on January 8, 2003.  Respondent uses the <smurfs.com> domain name to resolve to a website that offers free email.  Respondent earns revenue by attracting email customers to sign up with Respondent’s website for an email server, because Respondent’s website is affiliated with BigMailBox.com, Inc.  In addition, Respondent’s website contains links to various other websites, including links to <alladvantage.com> and <epipo.com>. 

DISCUSSION

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 the 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.

Paragraph 4(a) of the Policy requires that the 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.

Identical and/or Confusingly Similar

Complainant has established its rights in the SMURFS mark through proof of trademark registration with the United States Patent and Trademark Office and longstanding use for over 20 years.

Respondent’s <smurfs.com> domain name reflects Complainant’s entire mark with the mere addition of the top level domain “.com.”  For purposes of the Policy ¶ 4(a)(i) identical analysis the top-level domain has no source altering significance; the “.com” addition to Complainant’s SMURFS mark is irrelevant.  Respondent’s <smurfs.com> domain name is thus identical to Complainant’s SMURFS mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has submitted a prima facie Complaint, in which it alleges that Respondent has no rights or legitimate interests in the subject domain name.  Complainant has thus effectively discharged its burden under the Policy and shifted the burden on Respondent to articulate rights or legitimate interests in the domain name.  Respondent, however, has allowed the Complaint to go uncontested.  Therefore, the Panel presumes that Respondent has no such rights or legitimate interests in the subject domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Furthermore, without a Response the Panel accepts all of Complainant’s contentions as true and will draw all reasonable inferences in Complainant’s favor.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent uses the <smurfs.com> domain name to profit off an email service provided at the resulting website.  Respondent’s email service offered through the <smurfs.com> website is supported by BigMailBox.com, Inc.  The more traffic that Respondent receives from Internet users subscribing to Respondent’s free email services the more revenue Respondent generates from BigMailBox.com, Inc.  In addition, Respondent’s <smurfs.com> website contains links to a variety of other third party websites, which presumably pay Respondent a fee for increased traffic resulting from Respondent’s website.  Respondent’s commercial use of the <smurfs.com> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Respondent is not commonly known by the <smurfs.com> domain name and Complainant’s longstanding use of the SMURFS mark renders it unlikely that Respondent could be known by any variation of said mark.  The WHOIS information lists Respondent as Nev Zevo and the Panel accepts that listing as Respondent’s identity, absent any evidence to the contrary.  Therefore, Respondent has no rights or legitimate interests in the <smurfs.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <smurfs.com> domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s bad faith registration of the <smurfs.com> is evidenced by the website to which the domain name resolves, where the famous SMURFS characters are displayed.  Respondent’s website reflects other characteristics strongly associated with the SMURFS mark.  Like Complainant’s <smurf.com> website, Respondent’s website contains a blue background and the SMURFS characters themselves are blue.  Respondent’s website prominently displays the SMURFS mark at the top of the page in a style of letter similar to Complainant’s registered stylized SMURFS trademark.  Respondent’s behavior evinces an apparent knowledge on the part of Respondent of Complainant’s interests and use of the SMURFS mark.  Registering a domain name with knowledge of another entity’s rights in the domain name constitutes bad faith registration; thus, the Panel finds Respondent registered the <smurfs.com> domain name in bad faith.  See 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); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion").

Respondent’s <smurfs.com> website not only replicates certain familiar characteristics associated with the use of the SMURFS mark, but Respondent profits from the traffic that ends up at its website.  Respondent commercially benefits from its email services and the links provided at its <smurfs.com> website.  Because Complainant’s SMURFS mark is so highly associated with The Smurfs animated series, the Internet user most likely to use the <smurfs.com> domain name would be searching for Complainant.  Such an Internet user would end up at Respondent’s website with the likelihood of being confused as to Complainant’s affiliation, especially given the use of SMURFS-related features at the website.  Therefore, Respondent’s use of the <smurfs.com> domain name to profit off Complainant’s established SMURFS mark constitutes bad faith under Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel thus finds that Policy ¶4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <smurfs.com> be TRANSFERRED from Respondent to Complainant. 

John J. Upchurch, Panelist

Dated: January 28, 2003

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