DECISION

DC Comics, Hanna-Barbera Productions, Inc. and Warner Bros. Entertainment Inc. v. Sensible Internet Retail, Inc. and Kathleen Maloney

Claim Number: FA0404000260577

PARTIES

Complainant is DC Comics, Hanna-Barbera Productions, Inc. and Warner Bros. Entertainment Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Coporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349.  Respondent is Sensible Internet Retail, Inc. and Kathleen Maloney  (“Respondent”), 113 W. 860 N., American Fork, UT 84003.

REGISTRARS AND DISPUTED DOMAIN NAMES 

The domain names at issue are <batman-pictures-movies-magazines-comics-games.com>, <flintstones-fred-pictures-cartoons-pebbles.com>, and <scooby-doo-pictures-games-movies-cartoons.com>, registered with Tucows, Inc. and <harry-potter-games-books-movies.com> registered with Onlinenic, 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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 22, 2004; the Forum received a hard copy of the Complaint on April 22, 2004.

On April 23, 2004, Tucows Inc., confirmed by e-mail to the Forum that the domain names <batman-pictures-movies-magazines-comics-games.com>, <flintstones-fred-pictures-cartoons-pebbles.com> and <scooby-doo-pictures-games-movies-cartoons.com> are registered with Tucows Inc., and that the Respondent is the current registrant of the names.  Tucows Inc., has verified that Respondent is bound by the Tucows 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 April 24, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <harry-potter-games-books-movies.com> is registered with Onlinenic, Inc. and that the Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On April 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 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@batman-pictures-movies-magazines-comics-games.com, postmaster@flintstones-fred-pictures-cartoons-pebbles.com, postmaster@harry-potter-games-books-movies.com, and postmaster@scooby-doo-pictures-games-movies-cartoons.com by e-mail.

A late Response was received on May 21, 2004, by physical mail only.

On May 27, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainants are all wholly owned subsidiaries of Time Warner, Inc. and each is an affiliate of the other. 

Panels have held that the joinder of respondents is appropriate where overlapping contact information reveals that the variation in respondent identities is a device to avoid responsibility.  See, for example, Morrison & Hecker LLP, FA 94386 (Nat. Arb. Forum, May 11, 2000) (“the use of the names of the several Respondents are each porous facades in a futile effort to protect [the Respondent].”).

Complainant has registered trademarks for the strings BATMAN, FLINTSTONES, HARRY POTTER, and SCOOBY-DOO.  Each of these marks is well known worldwide.  The disputed Domain Names are confusingly similar to Complainant’s marks, as they incorporate the trademarks in their entirety. 

Several distinct grounds support the conclusion that Respondent has no legitimate interest in any of the Domain Names.  First, Respondent is not authorized by Complainants, or any of them, to use the Domain Names, or any of them.  "[I]n the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” See Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000).

Second, Respondent registered and uses the Domain Names to infringe Complainant’s rights in its marks, to trade off of Complainant’s goodwill.  Thus, Respondent’s use of the Domain Names does not and cannot constitute a bona fide offering of goods or services.  See Ciccione v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Mar. 6, 2001) (“bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”).  Complainant has not authorized Respondent to use its trademarks or to seek the registration of any domain name incorporating the marks.  Respondent must have known when it selected the disputed Domain Names that the public would incorrectly associate it with Complainant and Complainant’s marks.  In fact, given the distinctiveness and fame of the marks, there is no plausible explanation for Respondent’s registration of the Domain Names other than to trade upon the goodwill Complainant has developed in its marks.  Respondent had no legitimate interest in doing so. 
See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000).

Respondent is not and has not been commonly known by the disputed Domain Names.  Respondent does not use the trademarks to identify itself on its website or for any other legitimate purpose.  Even if Respondent has used the trade name, such an unauthorized use does not establish legitimate interests in the Domain Names.  See Compaq Info. Techs. Group, LP v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002).

Respondent’s registration and use of the Domain Names meet the bad faith elements set forth in Paragraph 4(b)(i) of the UDRP because Respondent registered multiple names.  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern in registration of two domain names).

Respondent’s registration and use of the Domain Names meets the bad faith elements set forth in Paragraph 4(b)(iv) of the UDRP because Respondent is intentionally using the Domain Names to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website, or of a product or service offered through the website.  By using the disputed Domain Names to direct Internet traffic to websites other than those owned by Complainant, Respondent is trading on the value of the marks established by Complainant.  Although Respondent has changed the content appearing at <harry-potter-games-books-movies.com>, it is also clear that the content appearing at that site tracked – both in terms of content and overall appearance – the content appearing at the websites located at the other disputed Domain Names.

Due to the similarity of the Domain Names with the trademarks, along with its long-established and widespread use and registration, Respondent clearly knew of Complainant’s marks prior to registering the Domain Names.  By registering the Domain Names with actual knowledge of Complainant’s marks, Respondent acted in bad faith by breaching its registration contract with the registrars because it falsely represented that its registration of the Domain Names did not infringe the legal rights of any third party.  Thus, the registration constituted bad faith under the UDRP.  See Google Inc. v. wwwgoogle.com, D2000-1240 (WIPO Nov. 9, 2000). 

B. Respondent

The Response does not address the substantive issues.  It merely states, in pertinent part:

“As of April 22, 2004, the date the complaint was filed, Respondents do not own the disputed domain names.”

“Respondents communicated to the Complainants, prior to the Complainants filing this law suit, that Respondents do not own the domain names in dispute.”

The Response does not contain any evidence to support these statements.

FINDINGS

Complainants are all wholly owned subsidiaries of Time Warner, Inc. and each is an affiliate of the other. 

The disputed domain names are registered by Respondents, either severally or jointly.

Complainant has registered trademarks for the strings BATMAN, FLINTSTONES, HARRY POTTER, and SCOOBY-DOO.  Each of these marks is well known worldwide. 

The disputed domain names have at times pointed to websites offering a selection of video cassettes, DVDs, books, software, and other items related to the characters whose names are trademarks owned by Complainant.  There is nothing to indicate that the items offered are pirate copies or bootleg or otherwise illegal items.

The disputed domain names have at other times either been unused, or pointed to websites which are not at all related to Complainant’s trademarks.  For example, they have pointed to a site for the Aids Service Foundation for Orange County, which describes itself as:

“AIDS Services Foundation, Orange County (ASF) is committed to providing quality care, education and advocacy to the men, women, children, and families in Orange County affected by HIV disease.”

From the evidence provided, it appears that ASF provides a number of services to its clients, such as counseling, computer tutoring, emergency financial assistance, exercise program, hair cuts, food pantry, health care, home care, housing services, and massage.  Not all services are provided free of charge.

DISCUSSION

The first issue to be decided by this Panel is a procedural issue, namely whether or not to admit the Response, which was late and sent only by physical mail.  But the delay was only two days.  Therefore, in accordance with Rules 10(b) and 10(c), the Panel admits the Response.  A precedent can be found in Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (<arbertau.com>).

A second procedural issue is raised by the fact that Respondent has not replied with respect to the substance of the case.  Since Respondent has defaulted with respect to the substance, this Panel must first determine what the procedural implications are of a default.  Should Complainant automatically prevail, or should the Panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?

While the ICANN Policy, Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance.  Notably, Paragraph 4(a) of the ICANN Policy states: “In the administrative proceeding, the complainant must prove that each of these three elements are present.” [emphasis added].

This Panel therefore holds that it cannot grant Complainant’s request automatically, but that it must instead examine the evidence presented to determine whether or not Complainant has proven its case as required by the ICANN Policy.

A third procedural issue is related to the fact that there are apparently more than one Complainant and more than one Respondent.  The Complaint names several Complainants which is permissible as long as it is demonstrated that there is a relationship between Complainants.  See Int’l Olympic Committee v. Boyden, FA  201977 (Nat. Arb. Forum Dec. 19, 2003) (“It is permissible for two Complainants to submit a single Complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the Complaint as one entity.”).  Furthermore, the Complaint may name more than one Respondent as long as the Complaint sufficiently proves that the entities are one in the same.  See Adobe Systems Inc. v. Domain OZ, D2000-0057 (WIPO Mar. 22, 2000) (decision rendered against multiple respondents where respondents shared the same post office box number and email address in their registration information); see also See Yahoo! Inc. v. Finance Ya Hoo, D2002-0694 (WIPO Sept. 20, 2002) (decision rendered against multiple respondents when Complainant proved the entities were one and the same). 

This Panel holds that Complainant has satisfied its burden of proof with respect to these issues, so the Complaint is accepted, as directed against Respondent or Respondents.

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

The disputed domain names incorporate Complainant’s trademarks and are therefore confusingly similar to Complainant’s trademarks.  Indeed, the addition of generic terms is insufficient to distinguish the domain names from Complainant’s marks.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Rights or Legitimate Interests

Complainant argues that Respondent cannot have rights or legitimates interests in the contested domain names because (1) they include Complainant’s trademarks, (2) Respondent is not authorized to use the trademarks, (3) unauthorized use cannot constitute a bona fide offering of goods or services, and (4) Respondent is not known by the disputed domain names.

This Panel cannot accept this argument to the extent that Respondent is using the contested domain names to point to websites that offer for sale legitimate copies of videos, DVDs, etc. associated with Complainant’s trademarks.  Indeed, the present case is similar in this respect to Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002), in which the panel stated:

Complainant asserts that Respondent has not met the requirements of paragraphs 4(c)(i) and (iii) of the Policy because Respondent uses Complainant’s BMW mark, without a license or authorization, to route Internet users to its web site <www.bavarianag.com> for commercial benefit.  The Respondent offers used BMW automobiles for sale at that site.

Complainant argues that Respondent is not using the domain names "in connection with a bona fide offering of goods or services" because the Respondent is not a licensed BMW dealer.  Therefore, according to the Respondent, the Complaint's use of the trademark BMW cannot be legitimate.

While it may be the case that the Respondent's use of the disputed trademark might violate US (or other) trademark law, the Complainant has not presented either evidence or arguments to this effect.  It arguments are limited to the statement made above.

It is not obvious to this Panel that the use of the trademark BMW combined with a geographical term to route Internet users to a web site that very clearly indicates that

· it offers used BMW automobiles for sale and

· it is not an official BMW dealership,

is in any way illegitimate.

Furthermore, on the basis of the evidence presented, it is not obvious to this Panel that the Respondent violates paragraph 4(c)(iii) of the Policy, because Complainant has not presented any evidence to the effect that the Respondent has an intent to "misleadingly divert customers" or to "tarnish the trademark".  Presumably the trademark is not tarnished by the mere offer to sell used automobiles.

The Complainant has argued that customers are mislead or confused when they are routed to the Respondent's site, because the Respondent is not an authorized BMW dealer.  But the Respondent has not presented any evidence to the effect that Internet users automatically associate a domain name that combines the mark BMW with a geographic term with an authorized BMW dealer.  Furthermore, the Respondent's site is very clear with respect to the nature of its business, so, prima facie, it would appear to this Panel that confusion is unlikely.

This Panel notes that under Paragraph 4(a) of the Policy, the burden of proof rests with Complainant.  Complainant has not proven that using the disputed domain names to point to websites at which items related to the trademarks are offered for sale does not constitute a legitimate use.

Complainant cites Guerlain S.A. v. Peikang, D2000-0055 (WIPO Mar. 21, 2000), but that case must be distinguished from the present case, because in that case there was conclusive evidence that Respondent’s real business was to register third parties’ trademarks as domain names thereby preventing the bona fide trademark owners from doing business on the Internet under their trademark names, and to register domain names in order to sell them for profit.  Similarly, Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000), also cited by Complainant, must be distinguished, because in that case it was “plain from the fact that Respondent has registered over 14,000 domain names that Respondent is engaging in a pattern of conduct involving the speculative registration of domain names.”

However, Complainant has provided evidence showing that Respondent is using the contested domain names also for purposes other than those discussed above, for example to direct users to a site offering products and services to people affected by AIDS.  While this may be a worthy cause, it clearly has no relation whatsoever to Complainant’s trademarks.  Such use of the contested domain names is not legitimate, because it can lead to customer confusion and dilution of Complainant’s trademarks.  As the panel stated in Motorola, Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO Apr. 14, 2000):

While (as the respondent correctly points out) many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a “bona fide” offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark.  Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent.  And actions that create, or tend to create, violations of the law can hardly be considered to be “bona fide”.

Additional support can be found in cases cited by Complainant, namely Ciccione v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) and Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Mar. 6, 2001).

This Panel thus holds that Complainant has satisfied its burden of proving that Respondent has no rights or legitimate interests in the contested domain names.

Registration and Use in Bad Faith

This Panel agrees with Complainant’s contention that Respondent’s registration and use of the contested domain names meets the bad faith elements set forth in Paragraph 4(b)(iv) of the UDRP because, to the extent that Respondent is using the contested domain names to point to websites that have no relation with Complainant’s trademarks, Respondent is intentionally using the contested domain names to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, or of a product or service offered through the website. 

Furthermore, Respondent has stated that it (and she) do not own the contested domain names, whereas the evidence provided by Complainant clearly shows the contrary.

Making a false statement to the Panel is an example of bad faith behavior.  Indeed the circumstances of Paragraph 4(b) of the Policy are given “in particular and without limitation.”  That is, the Panel is free to hold that other factors may be evidence of registration and use in bad faith.  And this Panel holds that making false statements to the Panel is such a factor.

This Panel thus holds that Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether Respondent has registered and used the contested domain names in bad faith.

DECISION

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

Accordingly, it is Ordered that the <batman-pictures-movies-magazines-comics-games.com>, <flintstones-fred-pictures-cartoons-pebbles.com>, <harry-potter-games-books-movies.com>, and <scooby-doo-pictures-games-movies-cartoons.com> domain names be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist
Dated: June 5, 2004

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