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Atomshockwave Corp. v. Register Help Co., Victor Lashenk [2005] GENDND 1761 (25 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Atomshockwave Corp. v. Register Help Co., Victor Lashenk

Case No. D2005-0967

1. The Parties

The Complainant is Atomshockwave Corp., San Francisco, United States of America, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is Register Help Co., Victor Lashenk, Kiev, UA, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <atomfils.com> (referred to in this decision as the Domain Name) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2005. On September 12, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On September 13, 2005, eNom 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, billing, 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 September 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2005.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 14, 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.

4. Factual Background

The Complainant is a corporation organized under the laws of the State of California, having its principal place of business in San Francisco, California. It is a marketer and distributor of digital interactive entertainment including games and on-demand viewing of animations and short films in a range of genres. It was formed in 2001, by the merger of Shockwave.com and Atom Films.

The Complainant is the owner of US trademark no. 2,437,985 registered March 27, 2001, for the word mark ATOM FILMS in connection with the following goods and services:- Pre-recorded videos, films, graphics, and multimedia presentations in the fields of entertainment, art, comedy, drama, animation, and current events and historical documentaries, all in digital form and distributed on computer discs, DVD discs, CD-ROMs, videotape and downloadable from computer networks and global communication networks (in International Class 9).

The Complainant is also the owner of US trademark no. 2,445,589 registered April 24, 2001, for the word mark ATOM FILMS in connection with the following goods and services:- Electronic retailing services via computer featuring movies and videos (in International Class 35). Entertainment services, namely movies, videos, graphics, animation and multimedia presentations viewable over computer networks and global communication networks, providing information concerning movies, videos, graphics, animation and multimedia presentations over computer networks and global communications networks (in International Class 41).

In addition to the above trademarks registered to the Complainant, the Complainant also lists US trademark nos. 2,547,752 for the word mark ATOM and 2,547,753 for the word and design mark ATOM, both for similar goods and services in International Class 9 to those in respect of the ATOM FILMS trademark listed above. Furthermore, the Complainant has provided examples of similar registered trademarks in other territories including a European Community trademark and a Japanese trademark.

The WHOIS database indicates that the Respondent appears to be an entity based in the Ukraine and that the date of registration of the Domain Name was September 23, 2000. As at the date of this decision, the Domain Name was used to forward web traffic to <http://www.hustlerplatinum.com>, a web site purportedly offering pornographic videos for sale, via a website at the uniform resource locator <http://www.gotoo.com/treasure/celebs.htm>.

5. Parties’ Contentions

A. Complainant

The Complainant states that, through its predecessor in interest, it has used ATOM FILMS and the related trademarks in connection with its pre-recorded videos, films, graphics and multimedia presentations since 1999. It claims that the ATOM FILMS trademark is famous.

The Complainant also asserts that it owns the domain name <atomfilms.com>, and that it and its predecessor in interest have operated a website at that domain name since 1998 which provides information about ATOM FILMS goods and services. The Complainant claims that this web site receives over 4,000,000 visitors per month.

The Complainant argues that the Domain Name is virtually identical and confusingly similar to its ATOM FILMS mark in that it “merely deletes a single letter ‘L’ from the ATOM FILMS trademark (and adds the generic top level domain, .com), apparently in an effort to capitalize on the typographical errors of Internet users.”

The Complainant submits that it is well-accepted that a domain name that merely deletes a letter or makes similar small changes to a registered trademark is confusingly similar to the mark and that the Respondent’s use is “a clear attempt to confuse consumers and misappropriate the goodwill associated with Complainant’s famous ATOM FILMS trademark.”

The Complainant asserts that the Respondent has no legitimate rights or interests in or to the Complainant’s ATOM FILMS trademark or the Domain Name. The Complainant states that the Respondent (a) has not made use of the Domain Name in connection with a bona fide offering of goods or services, (b) is not commonly known by the Domain Name, and (c) is not making a legitimate noncommercial or fair use of the Domain Name. The Complainant states that it has not authorized or licensed the Respondent to use its trademark, and that the Respondent is not a distributor of the Complainant’s goods or a reseller of its services. It also submits that the Respondent appears to be using the Domain Name in an effort to mislead consumers and to misappropriate the goodwill connected to the Complainant’s ATOM FILMS mark. The Complainant states that such use cannot establish rights or legitimate interests in the domain name.

The Complainant submits that as the Domain Name incorporates the Complainant’s ATOM FILMS mark in its entirety (subject to a minor difference only) and redirects to the <hustlerplatinum.com> website, it is misleading consumers to believe that this website is sponsored by, affiliated with or authorized by the Complainant. The Complainant asserts that the Domain Name will attract consumers seeking to reach the Complainant at its website located at ‘www.atomfilms.com’ and submits that the Respondent’s creation of such consumer confusion for the purpose of commercial gain constitutes strong evidence of bad faith. The Complainant states that such confusion is further increased by the fact that the Domain Name points to a website offering goods and services that are related to the Complainant’s digital films.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:

(i) That the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in a variety of registered trademarks for the word mark ATOM FILMS. It would appear, however, that none of these registrations pre-date the registration of the Domain Name. Nevertheless, paragraph 4(a)(i) of the Policy does not require that such trademarks be registered prior to the domain name. See, for example, consideration of this point in Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827 and more recently in Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. As is expressed by the panelists in those cases, the fact that a disputed domain name predates the complainant’s trademark registration can be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below. For present purposes, however, the Panel will proceed on a comparison between the Complainant’s registered trademarks and the Domain Name.

The ‘white space’ in between the words ‘ATOM’ and ‘FILMS’ is of no consequence, given that the naming rules do not permit the use of such spaces in a second level domain name. Furthermore, as is customary in UDRP proceedings, the generic top level domain (gTLD) ‘.com’ can be disregarded for the purposes of comparison on the basis that it is wholly generic. This leaves a comparison between ‘atomfilms’ and ‘atomfils’. The Complainant points out that the Domain Name merely deletes a single letter (note that the Complainant refers to this as a letter ‘L’ but this is presumably a typographical error for the letter ‘m’. The single letter ‘m’ is the only difference between the Complainant’s trademark and the Domain Name. On an objective comparison, the Panel finds that they are confusingly similar and accordingly that the Complainant has proved the first element required under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As far as sub-paragraph (i) is concerned, a number of panels under the Policy has held that redirection of a domain name to a pornographic web site does not constitute a bona fide offering of goods or services. See, for example, Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing, WIPO Case No. D2001-0610 and the cases therein cited. As far as sub-paragraph (ii) is concerned, the Complainant submits that the Respondent has not been commonly known by the Domain Name. There is nothing apparent from the website to which the Domain Name points to connect the Respondent to the Domain Name and there is no other evidence from the Respondent which might contradict the Complainant’s assertion. Finally, in terms of sub-paragraph (iii), it is clear from the relative website that use is being made of the Domain Name, apparently for commercial gain, and it is highly likely in the view of the Panel that such use will misleadingly divert consumers and tarnish the trademark at issue.

In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and accordingly that the Complainant has proved the second element required under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under this heading, the Panel must first consider the question of whether the Respondent was or could reasonably have been aware of the Complainant’s trademarks when it registered the Domain Name, given the fact that the registered trademarks cited by the Complainant post-date that event. On this subject, the Panel accepts the Complainant’s submission that it (or its predecessor in interest) has used the trademark ATOM FILMS since 1999. The registered trademarks cited by the Complainant show a claim of first use in commerce dating back to February 28, 1999 which corresponds with and serves as some evidence in support of that submission. The Complainant further submits that it has operated a website associated with the domain name <atomfilms.com> since 1998. In these circumstances, the Panel is satisfied that at the time when the Domain Name was registered the Complainant or its predecessor in interest had already established unregistered trademark rights in the name.

The remaining question for the Panel is whether the Respondent was intentionally targeting the (initially) unregistered rights of the Complainant in its registration and use of the Domain Name. On this subject, the Panel is satisfied, on the submissions of the Complainant, that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to another on-line location by creating a likelihood of confusion with the Complainant’s mark. The Domain Name appears to take advantage of typographical errors which may be made by Internet users who intend to type the Complainant’s domain name <atomfilms.com> into their browsers, in order to redirect those users to a website from which the Respondent appears to derive commercial gain.

The Panel considers that this is a reasonable inference to make from the evidence which has been presented by the Complainant and therefore that the Complainant has raised a case to answer. The Respondent has chosen not to provide any alternative explanation for his registration and use of the Domain Name. The Panel finds that the Complainant has proved the third element required under paragraph 4(a) of the Policy.

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 <atomfils.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist

Dated: October 25, 2005