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Generic Top Level Domain Name (gTLD) Decisions |
World Intellectual Property Organization
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toho Co. Ltd. v. Terrence McDonald
Case No. D2004-0628
1. The Parties
The Complainant is Toho Co. Ltd., Los Angeles, California of the United States of America, represented by Seyfarth Shaw of the United States of America.
The Respondent is Terrence McDonald, Ballwin, Missouri of the United States of America.
2. The Domain Names and Registrar
The domain names at issue in this proceeding are <godzillagolf.com>, <godzillagolf.net>, <godzillagolf.org> and <golfgodzilla.com> (the “Domain Names”). The Domain Names are registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2004. On August 13, 2004, the Center transmitted by e-mail to Register.com a request for registrar verification in connection with the Domain Names at issue. On August 18, 2004, Register.com transmitted by e-mail 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. On August 19, 2004, 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 August 19, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 8, 2004. The Center attempted to contact the Respondent via email, facsimile transmission and Federal Express delivery. The Respondent did not submit any response by the September 8, 2004 deadline.
On September 10, 2004, Complaint first notified the Center of its request to suspend the administrative proceeding due to Complainant’s receipt of an offer by Respondent to transfer the Domain Names. No copy of the Respondent’s offer was provided to the Center. On September 14, 2004, a signed request for suspension was received by the Center and the Center suspended the administrative proceeding until October 13, 2004. After a status inquiry by the Center on October 14, 2004, and a series of subsequent communications between the Center and the Complainant, the Complainant informed the Center that the transfer had not been completed, due to the lack of a final written settlement agreement, and requested a 30 day extension on October 28, 2004. The Center thereupon further suspended the administrative proceeding until November 28, 2004. After further inquiry, as a result of which Complainant indicated that Respondent’s counsel had not further communicated with Complainant, the administrative proceeding was reinstated on December 8, 2004. Accordingly, the Center notified the parties of Respondent’s default on December 8, 2004.
The Center appointed Timothy D. Casey as the Sole Panelist in this matter on December 21, 2004. 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
Complainant has enjoyed the long, continuous and exclusive use of the GODZILLA marks in the United States and throughout the world.
Since at least 1954, Complainant has used GODZILLA as a trademark and service mark and over the following 50 years has extended its use of the trademark to a wide range of goods and services worldwide. Complainant has used its GODZILLA marks on or in connection with motion pictures and a wide variety of goods and services since as early as 1956, in the United States. The GODZILLA character has been the subject of 28 motion picture films and two separate comic book series.
The popularity of the “Godzilla” motion picture films has been so extensive as to support a wide range of related merchandise and a comprehensive licensing program. The GODZILLA marks are currently used by Complainant and its licensees in 70 countries around the world in connection with various goods and services including motion picture films and videos, toys, games, books, clothing, footwear, paper products, party supplies, stationery, publications, toiletries and entertainment services, including production and distribution services in connection with motion pictures for theatrical, television, and video display.
Complainant has also registered, used and licensed the use of its GODZILLA marks throughout the world. Complainant currently owns in excess of 130 trademark and service mark registrations in 39 different jurisdictions or countries for the GODZILLA mark or variations thereof (the “GODZILLA marks”). With the exception of seven of those registrations, all of the Complainant’s registrations of the GODZILLA marks were obtained long prior to Respondent’s registrations of the Domain Names at issue.
Complainant has had substantial sales of a wide range of goods and services throughout the world under the GODZILLA marks. Between 1974 and 1984, Complainant generated over $40.8 million (United States dollars) in revenue from the box office sales for the GODZILLA motion picture films released during that time, and from sales of various goods bearing the GODZILLA marks. From 1994 through June 2003, complainant generated approximately $1.05 billion (United States dollars) from similar sales throughout the world.
Considerable goodwill has also been built up in the GODZILLA marks as a result of its continuous and extensive use in commerce, and as a result of the considerable advertising and promotional expenditures devoted to promoting the goods and services associated with the mark throughout the world. From 1994 through 2002, Complainant spent more than $147.9 million (United States dollars) on advertising and promotional activities.
Respondent registered the following domain names <godzillagolf.com>, <godzillagolf.net> and <godzillagolf.org> on November 29, 2003. Respondent registered the remaining domain name <golfgodzilla.com> on November 30, 2003.
Notwithstanding the fact that Respondent has owned the Domain Names at issue for over a year, the Domain Names have not resolved to active websites. The Domain Names simply resolve to “parking” pages supplied by the Registrar.
Respondent has offered to sell the Domain Names for “a minimum of $25,000.00”.
5. Parties’ Contentions
A. Complainant
The Complainant asserts it has rights in the GODZILLA marks and has demonstrated its long, continuous, and exclusive use of the GODZILLA marks in the United States and throughout the world. Complainant asserts that the GODZILLA marks are well known and famous in at least the United States, if not throughout the world, and have been for decades. Additionally, the Complainant alleges that the Respondent acknowledges the Complainant’s rights in the GODZILLA marks.
The Complainant asserts that the Domain Names at issue incorporate the entirety of and are confusingly similar to the Complainant’s GODZILLA marks. Each of the Domain Names simply adds the generic word “golf” and a top-level domain to GODZILLA.
The Complainant argues that the Respondent has no rights or legitimate interests in the domain name in light of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks. Furthermore, Complainant alleges that prior to notice of the dispute, Respondent had made no demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent has shown bad faith registration and use of the Domain Names under Paragraph 4(b)(i) by offering to sell the Domain Names at issue to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Names.
The Complainant further alleges that the Respondent has shown bad faith registration and use of the Domain Names under Paragraph 4(b)(iv) by attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Names at issue.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforementioned three elements must be proved by a complainant to warrant relief.
In view of the lack of a response filed by the Respondent as required under Paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under Paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainants’ undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings:
A. Respondent’s Domain Name is Identical or Confusingly Similar
There are two requirements that a complainant must establish under Paragraph 4(a)(i) of the Policy: that it has rights in a trade or service mark, and that the domain name(s) are identical or confusingly similar to the complainant’s marks.
Complainant has established its rights in the GODZILLA marks and has demonstrated its long, continuous, and exclusive use of the GODZILLA marks in the United States and throughout the world. In fact, Respondent acknowledges Complainant’s rights in the GODZILLA marks in an e-mail to the Complainant on January 29, 2004, in which he states “I received your letter concerning the intellectual property rights to GODZILLA. I appreciate your rights to protect the name and any marks associated with the name GODZILLA and variations of the name…. I wish no harm to the [Complainant]…”. Clearly, both the Complainant and Respondent affirm the rights of the Complainant in the GODZILLA marks and therefore the Complainant has satisfied the first part of Paragraph 4(a)(i) of the Policy stating that the Complainant must have rights in a trade or service mark.
The Complainant has also established that the Domain Names are identical or confusingly similar to the Complainant’s marks.
The only difference between the Complainant’s marks and the disputed Domain Names are the addition of the descriptive word “golf” and the addition of the suffixes “.com”, “.net” and “.org”.
The Complainant’s U.S. trademark rights extend to golf-related goods as U.S. trademark registration number 2,360,489 for the mark GODZILLA includes, among other things, “golf bags” and “golf shirts” in its description of goods and services protected. This registration also indicates that the date of first use in commerce is as early as February of 1995, well before the Respondent registered the disputed Domain Names. Therefore, when the term “golf” is used, the Domain Names at issue become confusingly similar to the Complainant’s marks since the Complainant has already used the GODZILLA marks in relation to golf-related goods.
While it is true that the Complainant’s GODZILLA marks are primarily associated with the goods and services derived from the motion picture films, comic book series and other related paraphernalia that brought the Complainant’s marks worldwide fame, there still is a strong likelihood that consumers would be confused as to the source, sponsorship, affiliation or endorsement of any domain name that combines the Complainant’s marks and any descriptive word due to the fame and exclusive use of the Complainant’s GODZILLA marks. In the present case, the term “golf” is considered descriptive of the Respondent’s purported use for the disputed Domain Names as the Respondent states in an e-mail sent to the Complainant on January 29, 2004, that the Domain Names at issue could be used for “[a]nything too [sic] do with the sport of golf is what I vision [sic]”. Furthermore, the word “Godzilla” appears to be an invented word used exclusively to identify goods and services related to the Complainant’s business, and as such the word “Godzilla” used in combination with any descriptive word in a domain name is inextricably linked to the Complainant’s marks. Internet users are therefore likely to believe that the Domain Names are related to, associated with, or authorized by the Complainant.
Additionally, a suffix is a necessary element of any domain name and therefore the suffixes “.com”, “.net” and “.org” should be treated the same, that is, that they are not distinguishing feature and do not change the likelihood of confusion. Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053. Therefore, the Panel finds that the Complainant’s marks are confusingly similar to the Domain Names at issue.
Based on the foregoing, Complainant has shown that it has rights in a trade or service mark and that the Domain Names at issue are identical or confusingly similar to the Complainant’s marks, thereby satisfying Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden of proving that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has done just that.
Under Paragraph 4(c) of the Policy:
[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based upon its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) Before any notice to you 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 (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 are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. For example, more than a year after registration, the Respondent has failed to use the Domain Names in connection with a bona fide offering of goods or services as the Domain Names simply resolve to “parking” pages supplied by the Registrar. The only possible argument that could be made that Respondent had any legitimate interest in the Domain Names stems from Respondent’s email offer to Complaint to enter a joint venture related to a gold website. In doing so, however, Respondent did not indicate any connection between the word GODZILLA and golf, aside from being associated with the GODZILLA marks, so even the possible joint venture cannot be viewed as a bona fide offer of goods or services in the absence of Complaint’s acquiescence to the proposed use, which was not forthcoming.
Additionally, the Respondent as an individual, business, or other organization is not commonly known by the Domain Names and, in fact, the Respondent appears to manage and/or is otherwise employed by an automobile collision repair facility in Missouri under the name “The Dent Devil” at the web address “www.dentdevil.com”.
Furthermore, a legitimate business entity would attempt to defend its legitimate interest by responding to the Complaint. A lack of response is indicative of an organization without a legitimate business interest in the Domain Names especially considering the fact that Respondent had previously corresponded with the Complainant’s representatives several times over the course of many months in an attempt to enter a joint venture, sell the disputed Domain Names, and possibly enter into a settlement agreement. Throughout this period, Respondent never once communicated with the Center.
In light of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and the fact that the word “Godzilla” is an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the domain names and, therefore, the Complainant has met its burden under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant also has the burden of proving that the Respondent both registered and used the disputed Domain Names in bad faith. Again, the Complainant has duly satisfied this requirement.
Under Paragraph 4(b) of the Policy:
[f]or the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The actions of the Respondent constitute bad faith registration and use of the domain names at issue under Paragraph 4 of the Policy in general, and specifically Paragraphs 4(b)(i) and 4(b)(iv) as outlined below.
The Respondent has shown bad faith registration and use of the Domain Names under Paragraph 4(b)(i) by offering to sell the Domain Names at issue to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Names as evidenced on April 19, 2004, when the Respondent stated: “We will accept a minimum of $25,000.00 to purchase the [Domain Names]”.
Even if the Respondent was intent on using the Domain Names for the alleged golf-related business at the time the Domain Names were registered, based on the record before the Panel, this also evidences Respondent’s bad faith registration and use of the Domain Names under Paragraph 4(b)(iv) because Respondent appeared to be hoping to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Names at issue. This is evidenced through the Respondent’s e-mail message sent on January 29, 2004, to the Complainant’s representative which states that “[the Respondent] received [the Complainant’s] letter concerning the intellectual property rights to GODZILLA. [The Respondent] appreciate[s] [the Complainant’s] right[] to protect the name and any marks associated with the name GODZILLA and variations of the name”. The Respondent goes on to “propose a partnership with [the Complainant] in the venture of [selling golf-related goods and services]” and intimates that he would be looking for a substantial investment from the Complainant by stating that “the design and development of this kind of e-commerce site will require serious involvement and committed capitol [sic]”. By acknowledging the Complainant’s rights in the GODZILLA marks and variations thereof, the Respondent would be intent on creating a likelihood of confusion with the Complainant’s mark if he used the Domain Names at issue to sell golf-related goods and services.
The Panel therefore concludes that the Complainant has sustained its burden of proof with respect to Paragraph 4(a)(iii) that the Respondent has registered and used the disputed Domain Names 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 following Domain Names, <godzillagolf.com>, <godzillagolf.net>, <godzillagolf.org> and <golfgodzilla.com> be transferred to the Complainant.
Timothy D. Casey
Sole Panelist
Dated: January 3, 2005
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URL: http://www.worldlii.org/int/other/GENDND/2005/80.html