DECISION

DC Comics and Warner Bros. Entertainment, Inc. v. Mike Beatty

Claim Number: FA0402000241919

PARTIES

Complainants are DC Comics and Warner Bros. Entertainment, Inc. (hereinafter “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 Mike Beatty (“Respondent”), 609 Bayshore Drive, #32, Ocean City, MD 21842.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <djbatman.com>, registered with Network Solutions, Inc.

PANEL

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.

David A. Einhorn is appointed as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 24, 2004; the Forum received a hard copy of the Complaint on February 25, 2004.

On March 1, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <djbatman.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 22, 2004 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@djbatman.com by e-mail.

A timely Response was received on March 15, 2004.  However, the Response did not contain the certification statement required by UDRP Rule 5(b)(viii), and is thus not in compliance with the Rules.  Thus, the Panel does not rely on the veracity of any of Respondent’s factual assertions in rendering this decision.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding that no weight should be accorded to the facts alleged in a Response lacking a Certification Statement).

Complainant’s timely Additional Submission was received and determined to be complete on March 17, 2004.

On March 25, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

[a.] DC Comics, Inc. owns numerous trademark registrations for BATMAN.  Some of these registrations cover comic magazines, television and animated cartoon programs.  One of these marks, registration number 1587507, is for BATMAN for phonographic records and audio tapes and cassettes (the ‘507 Mark).  The ‘507 Mark was registered on March 20, 1990 with a first use date of 1943.

[b.] Respondent’s <djbatman.com> domain is confusingly similar to DC Comics’ BATMAN trademark.

[c.] Respondent has no legitimate interests in the mark because Respondent is not authorized by Complainant to use the domain name in this or any other manner.  Respondent uses the domain name to infringe on Complainant’s mark and to usurp internet traffic rightly intended for Complainant.

[d.] Respondent’s bad faith is shown by its knowledge of Complainant’s mark and its failure to conduct a search.  Further, Respondent’s knowledge of Complainant’s mark is evidenced by the use of Complainant’s Batman Shield logo on Respondent’s Web site.  Respondent also evidences bad faith in its failure to cease using the mark after Complainant’s repeated cease and desist demands.

B. Respondent

Respondent’s contentions are not considered due to Respondent’s failure to include with the Response, the Certification Statement required by UDRP Rule 5(b)(viii).

C. Additional Submissions

Complainant points out that the Response does not contain the Certification requirement of UDRP Rule 5(b)(viii), nor does the Response contain the information required by UDRP Rules 5(b)(ii), 5(b)(iii), 5(b)(vi) and 5(b)(vii).

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 owns registrations for BATMAN for, inter alia, phonographic records and audio tapes and cassettes.  Respondent’s domain name <djbatman.com> is confusingly similar to Complainant’s BATMAN mark as it merely adds the generic abbreviation for the word “disc jockey” to Complainant’s mark.  It is noted that Complainant’s phonograph and audio tape and cassette products appear to be related to Respondent’s disc jockey services.

Therefore, Complainant has satisfied § 4(a)(i) of the Policy.

Rights or Legitimate Interests

Complainant’s trademark rights well predate Respondent’s domain name registration.  While Respondent’s disc jockey services appear to be related to Complainant’s phonographic and audio tape and cassette products, Respondent is not a licensee of Complainant.  Nor is there competent evidence in the record of this case that Respondent is commonly known by the domain name in question.  For the foregoing reasons, it is found that Respondent does not have rights or legitimate interests with respect to the domain name <djbatman.com>.  See Charles Jourdan Holding AG v. AAIM, D 2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where: 1) Respondent was not a licensee of Complainant; 2) Complainant’s rights predated Respondent’s domain registration; and 3) Respondent was not commonly known by the domain in question).

Thus, Complainant has satisfied § 4(a)(ii) of the Policy.

Registration and Use in Bad Faith

Complainant has not even alleged, much less established, that Respondent was aware of its trademark registration number 1587507 for BATMAN for phonographic records and audio tapes and cassettes.  Complainant’s other trademark registrations covering comic books and related items do not appear to cover goods related to Respondent’s disc jockey services.  See Warner Bros. – Seven Arts, Inc. v. Haralson, 165 U.S.P.Q. 618 (TTAB 1970) (finding defendant’s mark ROAD RUNNER for phonographic records unrelated to and not likely to cause confusion with Warner Bros.’ registration [also a Complainant in this case] for ROADRUNNER for comic books).

Complainant argues that Respondent’s knowledge of its mark is evidenced by Respondent’s use of its Batman Shield logo on its Web site.  However, the Batman Shield is not an element of the pertinent trademark registration number 1587507.

Complainant also argues that Respondent evidences bad faith in its failure to cease using the Web site despite repeated demands that Respondent cease and desist.  This allegation, while of possible significance, is disregarded for Complainant’s failure to attach any cease and desist correspondence to its Complaint or to describe the contents of any such correspondence.  In particular, it is not known from the record provided by Complainant whereby Respondent was specifically put on notice of Complainant’s registration number 1582507 for phonographic records and audiotapes and cassettes.

Thus, Complainant has NOT satisfied § 4(a)(iii) of the Policy.

DECISION

Having failed to establish the requirements of the ICANN Policy § 4(a)(iii), Complainant’s request for relief is hereby DENIED.

David A. Einhorn, Panelist
Dated: April 8, 2004

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