WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Eveready Battery Company Inc v. Michael Behrens

Case No. D2000-1261

 

1. The Parties

The Complainant is Eveready Battery Company Inc. of 800 Chouteau, St Louis, Missouri 63102, United States of America.

The Respondent is Michael Behrens of 526 Frontenac Street, Kingston, Ontario K7L 4M2, Canada.

 

2. The Domain Name and Registrar

The disputed Domain Name is <energizerbunny.com> and the Registrar is Network Solutions Inc., of Herndon, Virginia, United States of America.

 

3. Procedural History

The Complaint was filed on September 25, 2000 (hardcopy), and October 6, 2000 (electronic copy). Electronic copies of amended Complaint to deal with slight procedural issues were filed on October 6 and 11, 2000 with hard copies following October 9 and 17, 2000 respectively. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No Response was filed by the Respondent. The Respondent is in default.

The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís decision was December 10, 2000.

 

4. Factual Background

The Complainant is the owner of registered trade marks for ENERGIZER BUNNY in the USA and the Energizer Bunny device in the USA and Canada.

 

5. Partiesí Contentions

A. Complainant

The Complainant states:

Eveready Battery Company ("EBC") is the owner of a valid United States federal trademark registration for the Energizer Bunny trademark ("Mark"): United States Registration No. 1,769,243 (registered on May 4, 1993) and valid United States federal trademark and Canadian registrations for the Energizer Bunny ICON trademark ("Icon"): United States Registration No. 2,028,373 (registered on January 7, 1997); Canadian Certificate of Registration No. 399312 (registered June 19, 1992); and Canadian Certificate of Registration No. 447391 (registered September 8, 1995).

Since at least as early as 1991, EBC has used the Mark to promote Energizer brand flashlights. Additionally, since at least 1993, EBC has used the Icon to promote alkaline battery products in North America through a series of enormously popular award-winning television commercials, extensive print advertisements, and other promotional methods, the result of which has been that the Icon has become one of the most recognized in television commercial history.

EBC has spent a substantial sum of money advertising and promoting its products under both the Mark and Icon, which has resulted in substantial goodwill and popularity with the Mark and Icon. As such, EBC has continually sought to vigorously protect its trademark rights in the Mark and Icon through formal legal actions and countless non-litigious alternatives.

The Icon is also used in connection with the sale of various merchandise items, including but not limited to apparel, hats, mugs, stuffed animals, screen-savers and other items displaying the Iconís image.

As a result of EBCís use of the Mark and Icon, its advertising and promotional efforts and expenditures in connection with the Mark and Icon, and the wide recognition achieved for the Mark and Icon, the public has come to associate the Energizer Bunny Mark and Icon with the products and services originating with, emanating from, sponsored by or otherwise associated with or approved by EBC. In addition, both the Mark and the Icon have become extremely valuable symbols of EBC with substantial commercial magnetism, and have become famous.

1) The domain name <energizerbunny.com> is identical or confusingly similar to the Energizer Bunny Mark and Energizer Bunny Icon in which the Complainant has rights.

On August 25, 1999, Respondent registered the domain name <energizerbunny.com>, which is identical to, or confusingly similar to the Mark. Further, the Mark is automatically associated with the image of the Icon. Because the Mark and Icon are virtually synonymous to consumers, the domain name is also identical to, or confusingly similar to the Icon.

The domain name is identical to Mark except that (1) the domain name eliminates the space between the words "Energizer" and "Bunny;" and (2) the generic top-level domain ("gTLD") name ".com" is included.

First, the elimination of a space between the words "Energizer" and "Bunny" is dictated by technical factors and is common practice among name registrants. In fact, it is not possible to register a domain name that includes any spaces between characters. Second, the addition of the gTLD ".com" is a requirement of name registrants and does not serve to identify a specific service provider. A domain name must include some form of gTLD in order for the corresponding website to be located on the Internet. Therefore, the differences between the domain name and the Mark are without legal significance. See, e.g., Sportyís Farm v. Sportsmanís Market, 202 F.3d 489, 498 (2d Cir. 2000) (citing Brookfield Comm. Inc. v. West Coast Entertainment Group, 174 F.3d 1036 (9th Cir. 1999)).

2) The Respondent has no rights or legitimate interests in respect to the domain name <energizerbunny.com>

The Complainant EBC has not assigned, transferred, granted, licensed, sold, consented or otherwise permitted Respondent to use its Mark, any reference to its Icon, or to apply for any domain name incorporating its Mark.

EBCís prior rights to the Mark and in the Icon substantially precede the Respondentís registration of the domain name <energizerbunny.com>. The enormous popularity of the Mark and Icon throughout North America precludes possibility that the Respondent was unaware of the EBCís rights prior to registration of the domain name.

In addition, the Respondent has not been commonly known by the name "Energizer Bunny." Nor is the Respondent making legitimate non-commercial or fair use of the domain name at issue.

3) The domain name <energizerbunny.com> was registered and is being used in bad faith.

Commercial Gain

Respondent registered and uses the <energizerbunny.com> domain name in bad faith by intentionally attempting to attract Internet users to the website for commercial gain by creating a likelihood of confusion to the source, sponsorship, affiliation or endorsement of the Energizer Bunny website.

The words "Energizer Bunny," standing alone, are likely to make an impression on consumers and Internet users that will lead them to associate the domain name <energizerbunny.com> with products originating with EBC (see CBS Broadcasting Inc. V. Worldwide Webs, Inc. Case No, D2000-0834). The Respondent has attempted to profit from this association through the sale of computer hardware offered on the website.

EBC customers and Internet users searching for EBC products or images of the Icon can be easily diverted to Respondentís website. Respondentís sale of computer hardware resulting from the diversion EBC customers to the website constitutes an attempt to seek commercial gain in bad faith by virtue of trading on EBCís goodwill established by the longstanding use of the Mark and Icon.

The website bears the title "www.Ice-Nine.org," and makes absolutely no mention or use of "Energizer Bunny" (other than use within the domain name), a fact that further demonstrates the domain name was registered and used solely to divert Internet users to the site by associating itself with EBCís Mark and Icon.

Finally, the sale of computer hardware also serves as evidence against any argument that the domain name was registered and is used merely for personal or fair use.

Opportunistic Bad Faith

The registration and use of the domain name by the Respondent Ė someone with no connection whatsoever with EBC Ė is a clear example of opportunistic bad faith (see Pivotal Corporation v. Discovery Street Trading Co. Ltd., Case No. D2000-0648; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226; and Veuve Cliquot Ponsardin, Maison Fondé en 1772 v. The Polygenix Group Co., Case No. D2000-0163) The domain name <energizerbunny.com> is distinctly in reference to EBC. It possesses an obvious connection with EBCís products and its famous Mark and Icon. Unlike such instances in which a domain name is a generic or common term, such as in Cello Holdings, LLC v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D. N.Y. 2000), "Energizer Bunny" is in no way a generic or common term, especially when considering that both words Ė "Energizer" and "Bunny" Ė are combined to create a unique phrase. The Respondentís registration of this particular combination of words is unquestionably calculated rather than accidental, and therefore in bad faith.

Trademark Dilution

United States federal courts have routinely enjoined the use of domain names misappropriated by third parties, where, as here, the domain name is identical, or confusingly similar to a federally registered U.S. trademark. Despite attempts by EBC to notify Respondent that use of the domain name infringes (specifically under the United States Federal Trademark Dilution Act, 15 U.S.C. ß1125, 1127 (1996)) and dilutes (specifically under the Lanham Act, 15 U.S.C. ß1051-1127 (1988)) EBCís U.S. trademark registrations, Respondent failed to suggest any reasonable explanation to EBC for registering the domain name at issue, or to respond in any way other than to shut down the website.

Although it is unclear whether the Respondent registered the domain name for the purpose of eventually selling it for a profit, the Respondentís use of the domain name shows, at a minimum, that the domain name was registered to take advantage of the goodwill EBC enjoys in the Mark and Icon through the substantial traffic such a famous mark is likely to generate, and therefore was registered and used in bad faith.

As of the date of this Complaint, the <energizerbunny.com> website is not accessible.

B. Respondent

The Respondent has not filed a Response and is in default.

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or confusing similarity

It is prima facie obvious that the Domain Name is virtually identical to the Complainantís ENERGIZER BUNNY word mark and, therefore, that they are confusingly similar. I am not convinced that the domain name is confusingly similar to the Energizer Bunny device mark. However, in any event, it is not necessary for this question to be decided.

B. Rights or Legitimate Interest of the Respondent

The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.

C. Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainantís mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location.

The Complainantís ENERGIZER BUNNY mark is highly distinctive. In the absence of a Response from the Respondent, there appears to be no explanation other than that the Respondent registered the Domain Name in bad faith with an intent to attract, for commercial gain, customers to its site, creating a likelihood of confusion with the Complainantís mark as to the source, affiliation or endorsement of the web site and to attract business intended for the Complainant.

 

7. Decision

In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainantís trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.

Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name <energizerbunny.com> BE TRANSFERRED to the Complainant.

 


 

Dawn Osborne
Sole Panelist

Dated: December 8, 2000