WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Walter Lantz Productions, Inc. v. Robert L. Thomsen

Case No. D2000-0334

 

1. The Parties

Complainant is Walter Lantz Productions, Inc. ("Lantz"), a corporation organized and existing under the laws of the State of California, with its principal place of business at 100 Universal City Plaza, Universal City, California 91608 USA.

Respondent is Robert L. Thomsen ("Thomsen"), an individual who resides at 125 S. Congress Street, Suite 1818, Jackson, Mississippi 39201 USA with a mailing address is P.O. Box 1847, Jackson, Mississippi 39215 U.S.A.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <woodywoodpecker.net>. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on April 26, 2000. The Complainant paid the required fee.

On May 1, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Also on May 1, 2000, the Center sent to the Registrar a request for verification of registration data. On May 3, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <woodywoodpecker.net> is registered in the Respondent's name.

On May 3, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On May 3, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On May 24, 2000, the Center received Respondentís Response. On May 25, 2000, the Center received communication from Complainantís representative and acknowledged receipt of the Response.

On May 26, 2000, the Center advised the Complainant that the acceptance of any Reply would be within the discretion of the Panel to be appointed.

On May 31, 2000, the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"). On June 2, 2000, the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.

Upon review of the Complaint and the Response, the Presiding Panelist has determined not to consider the Reply.

 

4. Factual Background

In 1940, Walter Lantz, Complainant Lantzís predecessor-in-interest, created one of the most enduring cartoon characters of the 20th century, Woody Woodpecker. The character immediately became popular, and original cartoon episodes featuring the character were produced from 1940 through 1972. In addition, the character became one of the worldís most popular licensed properties, with the WOODY WOODPECKER mark appearing on everything from cereal boxes to comic books. Since 1972, "The Woody Woodpecker Show" has appeared on network and cable television. Most recently, a new version of the show was introduced in 1999, and continues to air in 38 countries around the world.

Lantz is the owner of registered trademarks and service marks in the United States for the mark WOODY WOODPECKER. The registered trademarks and service marks are valid and subsisting, including Registration Nos. 752,010, 752,141, 752,142, 755,106, 1,297,351, 1,307,196, 1,308,094, 1,324,210, 1,324,766, 1,325,698, 1,327,004 and 1,334,212 have become incontestable.

In addition, Complainant owns registrations for and applications to register the WOODY WOODPECKER mark in 33 countries, including Argentina, Australia, the Benelux, the Peopleís Republic of China, France, Germany, Italy, Japan, Mexico, Spain, and the United Kingdom.

The goods and services in connection with which Lantz has used the WOODY WOODPECKER mark are voluminous and are identified in Exhibit 3 to the Complaint. In addition, a portion of the amusement park at Universal Studios Florida is designated "Woody Woodpeckerís KidZoneK." Through the long, continuous and extensive use of the WOODY WOODPECKER mark on and in connection with Complainantís and its predecessorís products and services, the mark has become well known by the consuming public in the United States and throughout the world, and has become famous.

On or about August 10, 1998, Respondent registered the domain name<woodywood pecker.net>. Complainant has neither licensed nor otherwise permitted the Respondent to use the WOODY WOODPECKER mark or to apply for or use any domain name incorporating the WOODY WOODPECKER mark. The domain name currently does not resolve to an active website.

On February 23, 2000, the authorized representative for Complainant attempted to send an e-mail to the Respondent at the contact information listed on the <woodywoodpecker.net> domain name registration: "Robert L. Thomsen" at the email address <vbvx38a@prodigy.com>. The email was rejected as having permanent fatal errors because the user was unknown.

On February 23, 2000, the authorized representative for Complainant telephoned the Respondent at the contact information listed on the <woodywoodpecker.net> domain name registration: "Robert L. Thomsen" at (601) 948-5838. Complainantís authorized representative offered to purchase the <woodywoodpecker.net> domain name for $500. Complainant alleges that Respondent indicated that, while he was willing to sell the domain name to Complainant, he would not sell it for the $500 figure that was offered. Instead, Respondent asked that he be given a "piece" of the profits made by the Complainant through the use of the domain name. Respondent denies that he asked for any such profits.

On March 6, 2000, Complainantís authorized representative again telephoned Respondent, and identified Complainant as the originator of the "Woody Woodpecker" character and the owner of trademark and service mark registrations for the WOODY WOODPECKER mark throughout the world. Complainantís authorized representative informed Respondent that, pursuant to the Policy, and under United States law, Complainant was entitled to own the domain name registration. Respondent again refused Complainantís $500 offer to purchase the domain name, and stated that if Complainant were to provide evidence that it owned the WOODY WOODPECKER mark, Respondent would revisit the matter. Respondent also stated that another party claimed ownership of the WOODY WOODPECKER mark and that he was discussing the sale of the domain name to that party as well.

On March 7, 2000, Complainantís authorized representative forwarded to Respondent a copy of the registration certificates.

 

5. Partiesí Contentions

Complainant contends that the domain name <woodywoodpecker.net> is identical with and confusingly similar to the WOODY WOODPECKER trademarks and service marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the domain name <woodywoodpecker.net> pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the domain name <woodywoodpecker.net> in bad faith in violation of the Policy paragraph 4(a)(iii).

Respondent presented no evidence contesting that the domain name <woodywoodpecker.net> is identical with or confusingly similar to the WOODY WOODPECKER trademarks and service marks.

Respondent contends that he has rights or legitimate interest in the <woodywood pecker.net> domain name.

Respondent denies that he has registered or used the <woodywoodpecker.net> domain name in bad faith.

 

6. Discussion and Findings

Identity or Confusing Similarity.

Complainant is the sole and exclusive owner of the WOODY WOODPECKER trademarks and service marks. The domain name <woodywoodpecker.net> contains the identical phrase "Woody Woodpecker." Respondent does not contest that the phrase is identical. Therefore, the Presiding Panelist finds that the domain name <woodywoodpecker.net> is identical with and confusingly similar to the trademarks and service marks WOODY WOODPECKER pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

The evidence demonstrates that Respondent has no permission from the owner of the WOODY WOODPECKER marks to use the marks. The evidence further demonstrates that since registering the domain name on August 10, 1998 Respondent has not used <woodywoodpecker.net > to link to a website or to any other online presence. Respondent has not shown any demonstrable evidence of an intent to use the domain name <woodywoodpecker.net > for its own purposes prior to the dispute arising with Complainant. Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the domain name <woodywoodpecker.net > pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Respondent argues that his lack of use of the domain name <woodywoodpecker.net> prevents a finding that he has acted in bad faith. In addition, Respondent argues that unplanned, potential future uses which may be permissible are sufficient to prevent a finding that he has acted in bad faith. Neither of these arguments is compelling. Bad faith can be implied from the circumstances of a case without use of the contested domain name. Unplanned, potential future use is too speculative without a showing of demonstrable preparations for the use of the domain name.

Respondent admits in paragraph 12 of his Response that he has registered numerous domain names:

Respondent is an investor who has acquired various domain name registrations, including registrations relating to his investment business in the oil and gas industry, as well as registrations for various song titles, including Woody Woodpecker, Jingle Bells and White Christmas. Respondent has used domain names in connection with his oil and gas business, but has otherwise never attempted to sell, ransom, or make improper use of any of the other domain names. Respondent considers these domain names to be long term investments which he is holding for future development as business opportunities arise, similar to his investments in the oil and gas industry. (Emphasis added.)

In the case, J. Crew International, Inc. v. crew.com, WIPO D2000-0054, a definition was developed to identify when speculation in domain names is in bad faith. Registration of domain names for speculative purposes constitutes a bad faith registration and use when (1) the respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name; (2) the respondent had constructive or actual notice of another's rights in a trademark corresponding to the domain name prior to registration or acquisition of the domain name; (3) the respondent engages in a pattern of conduct involving speculative registration of domain names; and (4) the domain name registration prevents the trademark holder from having a domain name that corresponds to its registered mark.

The Presiding Panelist finds that each of the elements of this definition is present. As previously discussed, the Respondent has not offered demonstrable plans for use of the domain name. Respondent had constructive notice of the Complainantís rights because of the numerous registrations in the United States. The Respondent admits to the registration of a number of domain names for long term investment or speculation. The Complainant is prevented by the Respondentís registration from using <woodywoodpecker.net> which corresponds to Complainantís registered trademarks and service marks.

The evidence concerning the offers to purchase the domain name for $500 show that these offers were initiated by Complainant. Therefore, they are not supportive of bad faith by Respondent. Furthermore, the purported counteroffer to give Respondent a "piece" of the profits from the use of the domain name <woodywoodpecker.net> is contested by Respondent and is not sufficiently documented to provide a basis for a finding of bad faith.

 

7. Decision

The Presiding Panelist concludes (a) that the domain name <woodywoodpecker.net > is identical with and confusingly similar to the trademarks and service marks WOODY WOODPECKER, (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <woodywoodpecker.net > be transferred to Complainant Walter Lantz Productions, Inc.

 


 

Richard W. Page
Presiding Panelist

Dated: June 16, 2000