DECISION

TMP International, Inc. (d/b/a McFarlane Toys) v. Baker Enterprises

Claim Number:  FA0310000204112

PARTIES

Complainant is TMP International, Inc. (d/b/a McFarlane Toys) (“Complainant”), represented by Michael A. Kahn, 720 Olive, Suite 2400, St. Louis 2400, MO 63101.  Respondent is Baker Enterprises (“Respondent”), 27106 Safe Haven Lane, Port Charlotte, FL 33983.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <moviemaniacs.com>, registered with Names4Ever.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 22, 2003; the Forum received a hard copy of the Complaint on October 23, 2003.

On October 24, 2003, Names4Ever confirmed by e-mail to the Forum that the domain name <moviemaniacs.com> is registered with Names4Ever and that Respondent is the current registrant of the name. Names4Ever has verified that Respondent is bound by the Names4Ever 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 October 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 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@moviemaniacs.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 November 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 makes the following assertions:

1. Respondent’s <moviemaniacs.com> domain name is identical to Complainant’s MOVIE MANIACS mark.

2. Respondent does not have any rights or legitimate interests in the <moviemaniacs.com> domain name.

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

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

FINDINGS

Since 1998, Complainant has continuously used the MOVIE MANIAC mark in connection with the various toys it manufacturers and distributes throughout the United States and the world.  Complainant is the holder of the MOVIE MANIACS mark, for which registration on the Principal Register of the United States Patent and Trademark Office (“USPTO”) was granted on August 26, 2003 (Registration No. 2,755,312).  This trademark registration is for “[t]oys, namely, toy action figures and accessories therefore.”

Respondent registered the <moviemaniacs.com> domain name on December 12, 1999.  Before filing this Complainant, there was no actual website in operation for the <moviemaniacs.com> domain name. 

After sending Respondent a letter asserting its rights in the MOVIE MANIACS mark and requesting transfer of the <moviemaniacs.com> domain name to Complainant, Complainant received a telephone call from Respondent’s representative.  Respondent’s representative told Complainant that it had twice attempted to sell the <moviemaniacs.com> domain name to Complainant for $15,000, but the proposal had not been accepted.  The following day, Complainant offered to pay Respondent $500 for the transfer of the <moviemaniacs.com> domain name, however, the offer was rejected by Respondent’s representative.

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 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 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

The Panel finds that Complainant established rights in the MOVIE MANIACS mark through continuous use in commerce since 1998, prior to Respondent’s registration of the <moviemaniacs.com> domain name.  In addition, since Respondent’s registration of the domain name, Complainant has established rights in its mark with the USPTO on August 26, 2003.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); 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 and have acquired secondary meaning”);  see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <moviemaniacs.com> domain name is identical to Complainant’s MOVIE MANIACS mark.  Respondent merely added the top-level domain “.com” to Complainant’s entire mark.  The top-level domain name “.com” is not relevant in determining whether Respondent’s domain name is identical or confusingly similar to Complainant’s mark because all domain name registrations require a top-level domain name.  Thus, the Panel finds that Respondent’s domain name is not sufficiently distinguishable from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Therefore, the Panel has not been presented with any circumstances establishing that Respondent has rights or legitimate interests in the <moviemaniacs.com> domain name.  Consequently, the Panel is unable to find that Respondent has rights or legitimate interests in the 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); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); 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”).

There is no evidence before the Panel suggesting that Respondent is commonly known by the <moviemaniacs.com> domain name.  Accordingly, the Panel concludes that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

Respondent has not used the <moviemaniacs.com> domain name in connection with a website or for any other legitimate use since registering the domain name on December 12, 1999.  In addition, Respondent has not presented the Panel with any evidence that it has used the domain name in connection with a bona fide offering of goods or services or that it is making preparations to do such.  Therefore, the Panel concludes that Respondent’s passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Not only is Respondent passively holding the <moviemaniacs.com> domain name, but Respondent has offered the domain name for sale to Complainant for $15,000 twice.  Thus, the Panel finds that Respondent’s lack of legitimate interests is further evidenced by Respondent offering the domain name for sale to Complainant.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Since registration of the domain name on December 12, 1999, Respondent has failed to use the <moviemaniacs.com> domain name for any legitimate purpose.  Twice, Respondent has offered to sell the domain name to Complainant for $15,000; however, Complainant rejected both of these offers.  When Complainant offered to purchase the domain name from Respondent for $500, Respondent refused the offer.  The fact that Respondent offered to sell the domain name for $15,000 and refused to accept Complainant’s offer of $500 evidences Respondent’s bad faith.  Based on these facts, the Panel infers that Respondent registered the domain name for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of its documented out-of-pocket expenses directly related to the domain name.  Thus, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).

The fact that Respondent has not used the <moviemaniacs.com> domain name in any manner since December 12, 1999 further evidences Respondent’s bad faith.  Passive holding of a domain name is a prima facie case of bad faith under the Policy.  Consequently, the Panel concludes that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Louis E. Condon , Panelist

Dated:December 6, 2003

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