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Macromedia, Inc and AtomShockwave Corp v. Turnic Ltd. [2005] GENDND 1135 (1 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Macromedia, Inc and AtomShockwave Corp v. Turnic Ltd.

Case No. D2005-0301

1. The Parties

The Complainants are Macromedia, Inc and AtomShockwave Corp, San Francisco, California, United States of America represented by Morrison & Foerster, LLP, San Francisco, California, United States of America.

The Respondent is Turnic Ltd., Ankara, Turkey.

2. The Domain Name and Registrar

The disputed domain name <schockwave.com> (the “Disputed Domain Name”) is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2005. On March 24, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On March 24, 2005, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2005.

The Center appointed Erica Aoki as the sole panelist in this matter on May 18, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The language of the administrative proceeding is English, the language of the registration agreement.

4. Factual Background

The Complainant, Macromedia, is a corporation organized under the laws of the State of Delaware, having its principal place of business in San Francisco County, California. Macromedia is the owner of the trademark SHOCKWAVE used in connection with sound recordings, computer services, Internet services, online content, entertainment content, and computer programs.

In 1995, Macromedia adopted and applied for registration of the trademark SHOCKWAVE with the United States Patent and Trademark Office (USPTO) for use in connection with computer programs. The trademark was granted in 2000.

In 1998, Macromedia adopted the trademark SHOCKWAVE for use in connection with providing on-line advertising, retail, and subscription services and an application was filed with the USPTO in 2000. The trademark was granted in 2002.

In 1999, Macromedia adopted the trademark SHOCKWAVE for use in connection with entertainment content via the Internet, and an application was filed with the USPTO in 2000. The trademark was granted in 2002.

In 1999, Macromedia adopted the trademark SHOCKWAVE for use in connection with sound recordings of music, electronic sound.

In 2000, Macromedia adopted the trademark SHOCKWAVE for use in connection with a website featuring interactive on-line entertainment. The trademark was granted in 2002.

The Complainant, AtomShockwave, is a company having its principal place of business in San Francisco County, California and was formed in 2001, by the merger of Shockwave.com, Inc. with Atom Corporation. AtomShockwave is the exclusive licensee with respect to online entertainment services.

In 1998, AtomShockwave registered the domain name <shockwave.com> and has used it continuously since then to offer online goods and services under the licensed SHOCKWAVE mark.

Complainant, Macromedia, also owns national trademark registrations for the SHOCKWAVE mark in Australia, Canada, the European Union, and Japan, as well as applications filed in Brazil.

On May 6, 2004, the Respondent registered the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

1. Respondent’s <schockwave.com> is virtually identical and confusingly similar to the trademark SHOCKWAVE, a mark in which Complainant has rights. The Disputed Domain Name merely adds a single letter to Complainant’s trademark, apparently in an effort to capitalize on the typographical errors of Internet users.

2. Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

3. Respondent registered and used the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in a proceeding, the Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and used in bad faith.

Under paragraph 15(a) of the Rules, this Panel must “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 as it considers appropriate pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

Based on the facts and evidence presented by Complainant, this Panel finds that the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights under Policy, paragraph 4(a)(i). The Disputed Domain Name merely adds a single letter to the SHOCKWAVE trademark. The addition of the letter “c” to the Complainant’s trademark does not sufficiently distinguish the Domain Name from the trademark. There is no doubt that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademark.

B. Rights or Legitimate Interests

The Respondent is in default and thus has made no affirmative attempt to show legitimate rights and interests in the Disputed Domain Name.

The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.

The Respondent is in no way connected with Complainant and has no authorization to use any of Complainant’s SHOCKWAVE trademarks.

There is no evidence that Respondent is or was commonly known by the Disputed Domain Name as an individual, business or other organization.

The Policy also indicates that a registrant may have a legitimate interest in a domain name if it is making fair use of the domain name.

Apparently the sole use of the Disputed Domain Name by Respondent was to divert Internet traffic to gain revenues for the diverted traffic. Such use, profiting from the Complainant’s goodwill in its trademark, cannot be considered fair use of the Disputed Domain Name. The Panel, therefore, finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name, under Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant has alleged and Respondent has not rebutted that Respondent was aware of Complainant’s rights to the SHOCKWAVE trademark while registering the Disputed Domain Name and that such registration was made in bad faith.

Considering that Respondent is involved in selling domain names which include third parties’ protected trademarks, Respondent’s obvious intention to draw Internet traffic to the Disputed Domain Name in order to capitalize on the typographical errors of Internet users, Respondent’s use of Complainant’s trademark SHOCKWAVE on Respondent’s website and the lack of Respondent’s reply in these proceedings, are facts which demonstrate that the Disputed Domain Name was registered and is being used in bad faith.

Accordingly, the Panel finds that Respondent has registered and is using the Disputed Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <schockwave.com> be transferred to the Complainant, AtomShockwave.

Erica Aoki
Sole Panelist

Dated: June 1, 2005