WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Core Design Limited, Eidos Interactive Limited v. Parabellum Design Studio

Case No. D2002-1031

 

1. The Parties

The Complainants are Core Design Limited, of Derby DE24 8JE, United Kingdom of Great Britain and Northern Ireland and Eidos Interactive Limited, of London SW19 3RU, United Kingdom of Great Britain and Northern Ireland, represented by Gouldens Solicitors, London, EC4M 7NG, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Parabellum Design Studio, of Uganda UG2001, Uganda, represented by Vadim Glik, MI 48390, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <thumbraider.com>.

The Registrar is Dotster, Inc. of 11807 N.E. 99th St., Suite 1100, Vancouver, WA 98682, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2002. On November 7, 2002, the Center transmitted by email to Dotster.com a request for registrar verification in connection with the domain name at issue. On November 8, 2002, Dotster.com 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. In response to the notification of November 14, 2002, by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 15, 2002, (e-mail) and November 19, 2002, (hard copy). The Center verified that the Complaint, together with the amendment to 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 November 20, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2002. The Response was filed with the Center on December 10, 2002, (e-mail) and December 16, 2002, (hard copy).

The Center appointed Mladen Vukmir as the sole panelist (hereafter "the Panel") in this matter on December 17, 2002. 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.

After having received all of the submissions and the complete file material by courier mail on December 19, 2002, the Panel verified the formal requirements and found them to be satisfied. The Panel verified the language of the submissions. As the Registrarís Registration Agreement is in the English language, and all material was submitted in the English language, in accordance with the Rules, paragraph 11(a), the Panel decided that the English language is to be the language of the administrative proceeding.

 

4. Factual Background

In their Complaint the Complainants contend that Core Design is the registered holder of a number of trademarks in the UK for the TOMB RAIDER mark and other registered trademarks incorporating the TOMB RAIDER mark. They also contend to have registered, through their US entity, Eidos Interactive, Inc. <tombraider.com> domain name on September 3, 1996. The computer video games developed and sold under the "Tomb Raider" identity have attained a highly successful status on the world-wide markets, followed and enhanced by screening of the well acclaimed "Tomb Raider" movie featuring Angelina Jolie in the role of Lara Croft.

The Domain Name at issue was registered on March 29, 2000. The registrant of the Domain Name is stated to be Parabellum Design Studio of Pisdamasa-Gololed 43, AP.88, Uganda, UG2001. The Administrative and Technical Contact is stated to be Alexandr Nikolski of the same address, with an email address of alexander@nikolsky.com. When the Complainants learned about the existence of the website resolving to the Domain Name, they found out and documented unauthorized usage of the marketing properties related to their products and to the products licensed under their trademarks. The site featured adult-oriented content and served as a click-through site for various other-adult oriented sites.

Complainantsí authorized representative wrote to the operator of the "www.thumbraider.com" website on July 23, 2002, using the email address found on the website, namely "webmaster@thumbraider.com", but received no response. They subsequently wrote to Parabellum Design Studio using the email address alexander@nikolsky.com and webmaster@parabellum.net. They received a response to both their letters on July 23, 2002, and August 21, 2002, purportedly from the <thumbraider.com> team and from the alexander@nikolsky.com email address on August 26, 2002.

The Complainants requested the Respondent to transfer the Domain Name to them. In the correspondence, which was exchanged in the period from July 23, 2002, to September 5, 2002, the Parties did not come to a joint position. After having failed to successfully complete the settlement on the transfer of the Domain Name, the Complainants decided to seek legal remedy within the UDRP administrative proceeding.

 

5. Partiesí Contentions

A. Complainants

The Complainants have submitted evidence showing that the following trademarks registered and owned by Core Design predate the date of registration of the Domain Name:

(a) TOMB RAIDER registered in the UK with effect from March 1, 1996, in Class 9 (registration number 2058605);

(b) TOMB RAIDER, registered in the UK with effect from April 1, 1997, in Classes 3, 9, 16, 21, 24, 25, 27, 28, 30, 32, 41 (registration number 2128255);

(c) TOMB RAIDER registered as a community trademark with effect from May 28, 1997, in Classes 3, 9, 16, 21, 24, 25, 27, 28, 30, 32, 41 (registration number 000549139);

(d) TOMB RAIDER THE LAST REVELATION registered in the UK with effect from August 7, 1999, in Classes 9 and 41, (registration number 2205320A);

(e) TOMB RAIDER THE LAST REVELATION registered as a community trademark with effect from January 24, 2000, in Classes 9 and 41 (registration number 001476738).

Copies of extracts from the trademarks register for the above registrations are submitted as the evidence to the Complaint.

The Complainants have submitted evidence showing that the Complainant's US entity, Eidos Interactive, Inc. registered the <tombraider.com> domain name on September 3, 1996. This domain name therefore predates the registration of the <thumbraider.com> Domain Name.

The Complainants contend that TOMB RAIDER trademarks have considerable and extensive goodwill and reputation. Apart from having shown that they invested significant costs into advertising and promoting the TOMB RAIDER trademarks throughout the world the Complainantís satisfied the Panel in making plausible that such considerable and effective goodwill and reputation followed investment of significant costs into advertising and promotion. The TOMB RAIDER series of computer games is one of the best-known series of computer games in the world. As is apparent from the classes in which the trademarks are registered, the trademarks are used in relation to a wide range of goods and services, including computer software, computer programs, computer games provided through a computer global network and computer game services provided on a global computer network.

The strength of the TOMB RAIDER trademarks and the breadth of their use mean that they are not restricted to being used in connection with computer games software. The Complainants affirm that the recent spin-off film entitled "Tomb Raider" has significantly enhanced the goodwill and reputation in the TOMB RAIDER trademarks. This film, produced by Paramount Pictures was a "Hollywood blockbuster". The film was released world-wide and it lead to greater recognition and goodwill in the TOMB RAIDER marks, and furthered its use in visual media.

In the way of substantiating their allegations The Complainants point to the sales figures for the TOMB RAIDER series of computer games worldwide and cite them in sterling as follows:

1997: £100,255,887 1998: £145,094,531
1999: £104,101,188 2000: £51,579,066
2001: £10,947,976
Total: £411,978,648

Eidos' worldwide marketing and promotional expenditure since 1998 in sterling is as follows:

1998: £23,697,000 1999: £37,096,000
2000: £46,380,000 2001: £38,497,000

The Complainants assert that while not all of this expenditure relates to the TOMB RAIDER series of games, they are the Complainants' most popular products and Eidos' worldwide promotion expenditure on the TOMB RAIDER series of games is at least £30 million since 1996/7.

The Complainants emphasize that it is important to note that the sales and promotion figures do not include the significant marketing expenditure by Paramount on the "Tomb Raider" film nor the cinema viewing, DVD and video sales figures for the film. These figures would have a further significant impact on the reputation in the TOMB RAIDER trademarks.

B. Respondent

The Panel notes that the Respondent does not challenge any above-mentioned allegation made by the Complainants in respect of the worldwide reputation and the strong goodwill held into the trademarks, as alleged by the Complainants. Therefore, the Panel infers that the Respondent has known the trademarks containing "TOMB RAIDER" word element at the time he registered the disputed Domain Name.

At the same time, however, the Respondent disputes other contentions made by the Complainants in respect of the breach of the terms set by the Policy and the Rules.

a. In his response regarding the allegations that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights (Policy, Paragraph 4(a)(i)) the Respondent contends that <thumbraider.com> and TOMB RAIDER and other trademarks listed by the Complainants are not confusingly similar. The Respondent argues that "Thumb" part of the <thumbraider.com> domain name is not the word "Tomb" with a few letters rearranged as the Complainants claim. The Respondent contends that the term "Thumb" in <thumbraider.com> is a reference to a widely used term "thumbnail". Thumbnail is defined by the Respondent as a reduced image of a graphic or document page, used in order to view multiple images on a screen simultaneously or to download such images more rapidly. The Respondent contends that numerous advertising partners provide their site with links to sample galleries of such thumbnails, where a visitor can sample their adult image content for free. The Respondent insists that within the content of providing images as well as generic computer lingo, word "Thumb", is associated with the term "thumbnails" and not the word "TOMB" as in the Complainantsí trademarks. Following his argument the Respondent concludes that such use can hardly be considered confusingly similar. The Respondent also contends that the word "Raider" in this case simply complements the content of being able to obtain a large number of adult-oriented thumbnails for free Ė i.e. raid them.

The Respondentís conclusions are that <thumbraider.com> and the Complainantsí trademarks TOMB RAIDER are spelled differently, that they consist of different words save the "raider" portion of the Domain Name, with different meaning and different phonetic pronunciations.

Within the argument of similarity, the Respondent introduces an attempt to distinguish his activity in respect of the trademark activity protected under the International Classification of Goods and Services (Nice Classification) for the Complainantsí registered trademarks. In this sense the Respondent contends that <thumbraider.com> provides links to websites of others featuring adult-oriented images. Respondent considers this to be an entirely different category then "provision of goods and services through a global computer network and other visual media, including films" that the Complainants have trademarked.

Regarding the initial similarity of the design elements of its site under the disputed Domain Name, the Respondent alleges that the visual design of <thumbraider.com> that the Complainants perceived as similar to some of the Complainantsí productions was replaced with a generic version upon establishing communications with the Complainants. The Respondent feels that the Complainants interpreted such gesture of "good will" as an act of self-incrimination on the Respondentís part, what prompted the Respondent to cease any further direct contact with the Complainants.

b. In respect of its alleged rights or legitimate interests with regard to the Domain Name (Policy, Paragraph 4(a)(ii)), the Respondent asserts that <thumbraider.com> has been a thriving, profitable business for over two years. The Respondent defines its mission and the role of the site operating under the disputed Domain Name as to provide advertising space for adult-oriented websites to promote their individual content in the form of links all brought together in one place. While accepting that they hold no trademark, the Respondent asserts that with the number of visitors approaching 100,000 <thumbraider.com> is to be considered a well-established and well-known entity in the online adult-entertainment community. A search on a popular "Yahoo" Internet search engine allegedly brings up over three hundred sites that mention <thumbraider.com>. The Panel notes that none of these claims have been corroborated by any evidence whatsoever.

In respect of the Complainantsí assertions that his site is attempting to divert the Complainantsí consumers to <thumbraider.com> because of the alleged similarity, the Respondent retorts that not only there is no similarity with the Complainantsí trademarks, but that their respective businesses operate in different fields.

c. Regarding the issue whether the Domain Name have been registered and is being used in bad faith (Policy, Paragraph 4(a)(iii)), the Respondent states that they have been operating <thumbraider.com> as a sustainable business for over two years. He further states that during this time he has not entertained offers to sell, rent or otherwise cyber squat the domain. In respect of its behavior after being contacted by the Complainants, the Respondent offers that after seeing that the Complainants were adamant that they surrender the use of <thumbraider.com>, and realizing the difference between their respective legal budgets in the Complainantsí favor, the Respondent did consider relocating from and surrendering <thumbraider.com> to the Complainants, provided that they compensate the Respondent for the expense involved in such migration. In his view, the Complainants chose to interpret this as an offer of sale, which the Respondent asserts it most definitely was not.

The Respondent is opposing the Complainantsí assertion that his willingness to alter the design to relieve the Complainantsí concerns would have any significance in establishing "bad faith" usage on his part, and finds that such assertion is baseless.

The Respondent is of the opinion that the registration of the disputed Domain Name is not an attempt to prevent the Complainants from exercising the rights under their trademark TOMB RAIDER Ė since the names are unrelated. He further contends that the Complainants are operating a <tombraider.com> website along with a number of other websites that cover their trademarks and legitimate business needs and that <thumbraider.com> cannot reasonably fall within the range of such needs. Furthermore, the Respondent asserts that he has never been accused or involved in a pattern of behavior of trying to interfere with an owner of a trademark legitimate use of a domain name.

The disputed registration is in the Respondentís view not an attempt to disrupt the business of a competitor as the Complainants can hardly be considered competitors of <thumbraider.com> as they are not in the business of providing links to websites of others featuring adult-oriented (a.k.a. pornographic) images. The Respondent further contends that at the same time he is not involved in any of the business areas that the Complainants are active in and concludes that the activities of <thumbraider.com> are not in any way disruptive to activities of the Complainants.

Finally, the Respondent affirms that users were never intentionally or otherwise attracted to <thumbraider.com> under the guise of the Complainantsí sponsorship, affiliation, or endorsement. The Panel notes, again, these claims have not been substantiated by any evidence whatsoever.

 

6. Discussion and Findings

As provided by Paragraph 4(a) of the Policy, the Complainants assert that the Domain Name in dispute:

(i) is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

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

In the administrative proceeding, the Complainants must prove that each of these three elements is present. The Panel, after having established its proper jurisdiction and having evaluated the Partiesí submissions on the basis of Paragraph 15(a) of the Rules, has come to the following conclusions:

A. Identical or Confusingly Similar

The Domain Name is confusingly similar to the Complainantsí trademarks TOMB RAIDER. While it is true that the Domain Name is comprised of the TOMB RAIDER trademark in a slightly modified spelling, exchanging the "o" for "hu", its phonetic similarity to the trademark is undeniable. The word "thumb" is as similar as one can get in English language in a search of a meaningful word with the phonetic similarity to the word "tomb". The similarity may be even further enhanced for the non-English speakers of the Internet. Such non-English speaking users may not be aware either of the meaning of the words "tomb" and "thumb", nor their respective correct spellings in the English language. The Panel thinks possible that the same would apply to many English-speaking users as well. The "raider" element remains unaltered in both domain names. The Panel agrees with the Complainants that the modification adds little or nothing and does not reduce the risk of confusion and that the Domain Name remains visually and phonetically similar to the trademarks.

The Panel finds the Respondentís argument that the word "thumb" is used in the Domain Name because it would direct its users to understand that the site provides links to sample galleries of thumbnail photos to be a rather stretched suggestion and a likely to be a mere post factum construction of the original intention to generate a rapport of similarity, thus trying to avoid the obvious consequences of the straightforward similarity analysis. The fact that the site originally contained visual reference to the logo of the "Tomb Raider" movie clearly shows that the Respondent was fully aware of the similarity and that he was trying to enhance this similarity and provides a clue for the true reason for selecting the Domain Name. Although the Respondent does not even claim to have selected the Domain Name under some free-speech defense such as parody, it has to be clearly stated that there could be no such defense available when there is no legitimate or any other type of comment at all of the Complainantsí activities involved on the Respondentís site. Therefore, the only conceivable defense for the similarity of the Domain Name has not even been invoked and the Panel accepts that confusing similarity exists.

The Panel finds that the content of the website to which the Domain Name resolves, at various stages of its existence reinforced the confusing similarity between the Domain Name and the Complainantsí trademarks. As mentioned above, it is documented in the Complaint that the "Tomb Raider" logo used in the recent "Tomb Raider" film was used on the website until recently modified slightly so as to read "Thumb Raider", but maintaining the full visual identity in its other elements. The Panel finds this use to both, enhance the substantial similarity and to confirm the awareness of the Respondent that he was trying to exploit the "TOMB RAIDER" trademarks goodwill when he selected the Domain Name for registration. On a more general level, this Panel considers that no defense would be available to a respondent which has at any point of time used or uses any element of a complainantís marketing properties, on a website that resolves to a disputed domain name, to claim to have registered and/or used disputed domain because s/he has not been aware of its confusing similarity with the marketing property of a complainant. Consequently, the Panel fully rejects the Respondentís contentions that his use of the word "thumb" was in any way conditioned by the term "thumbnails".

The Panel does consider the decision in the case Société des Bains de Mer v Javier Llorens, WIPO Case No. D2000-1319 to be generally pertinent. In a broad and well-reasoned sweep, this case confirmed that the domain name <casinomonaco.net> was confusingly similar to the "Casino de Monte-Carlo" trademark. Still, it is possible to distinguish the analysis of the confusing similarity in that case over the type of the confusing similarity in the present dispute on two grounds, both going against the Respondent. Firstly, while it may be reasonable to argue that the portion "casino" is really a generic term describing the activities of the parties who are involved in gambling activities, this Panel does not feel that this would apply to the term "raider" in the particular relation to the activities protected and practiced by the Complainants and practiced by the Respondent. In the present case the Complainants have had even lighter burden in showing that the Respondent is causing confusing similarity than in the cited case. At the same time, the Respondent did not rebut these assertions successfully. Secondly, the analysis of the similarity of the "tomb"/"thumb" portion is somewhat different than in WIPO Case No. D2000-1319, and here is again a lighter burden of showing the similarity between these terms than in the cited case. Altogether, the Domain Name only replaces the "o" with "hu", and the "raider" element is still identical.

The Panel holds that overall facts of the present case in light of the particular type of confusing similarity of the Domain Name and the Complainantsí registered trademarks suffice for the similarity to be established here even without application of the domain name law established by WIPO Case No. D2000-1319, which would in any way provide more than a sufficient framework for proving confusing similarity. The Domain Name is confusingly similar to the "TOMB RAIDER" trademarks because the "raider" element is identical and the Domain Name phonetically suggests the term "TOMB RAIDER". In addition the site resolving to the Domain Name was initially designed so to include the use of the similar logo with identical get up, and the still image of Lara Croft from the "Tomb Raider" film.

The Panel finds the Complainantsí reference to Reuters v Global Net 2000, WIPO Case No. D2000-0441 to be useful as well. The Panel does not find present case to be a classical "typo-squatting" case like most of the domain names from WIPO Case No. D2000-0441 arguably are, but its holding still remains pertinent in the present administrative dispute. For the English speaking, rather than a "typo-squatting", defined as illegitimately registering a domain name which could be accessed by a typing mistake by an Internet user searching for a known term, this behavior could be termed "association-squatting" where the illegitimately registered domain name seeks to invoke a mental association with the known proprietary term and lead the Internet user to its IP address. For those who are not English speaking besides being and association trap, it is easy to simply misspell the word "tomb" in a search of the original protected marketing property identifier. The holding of WIPO Case No. D2000-0441 confirmed that a domain name that differs by only one letter from a trademark is more likely to be confusingly similar where the trademark is highly distinctive. In the present case, the "TOMB RAIDER" trademarks are to be considered indisputably highly distinctive, at least in their relevant market segment, which partially overlaps with website activity of the Respondent. The Domain Name does provide access to visual media on a global computer network (the worldwide web). This is close to the Complainantsí trademark registrations for provision of goods and services through a global computer network and other visual media, including films. Therefore, the Panel rejects the Respondentís contentions that the difference in particular activities each Party is engaged in, i.e. within providing of goods and services through a global computer network and other visual media including films, suffices for finding the Respondentís activities are out of the scope of the Complainantsí pertinent trademark registrations.

In this sense Yahoo! Inc v David Murray, WIPO Case No. D2000-1013, which notes that phonetic similarity is sufficient to satisfy the test of confusing similarity is even more pertinent. If the principles established in that case are applied to the present facts, when considered as a whole, "THUMB RAIDER" and "TOMB RAIDER" are phonetically similar and the Domain Name is therefore confusingly similar to the "TOMB RAIDER" trademarks. Accordingly, as established above, the overall confusing similarity is found to exist on various levels of analysis.

B. Rights or Legitimate Interests

In order to demonstrate that he has rights to and legitimate interests in the Domain Name in responding to a complaint a respondent should show presence of any of the following circumstances:

(i) before any notice to you of the dispute, respondentís 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) respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) respondent is making a legitimate non-commercial 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.

It is of paramount importance that the Complainants' have not licensed or otherwise permitted the Respondent to use the Domain Name or the TOMB RAIDER trademarks which have been dully protected and became rather well known at the time of the registration of Domain Name. This Panel considers trademark registrations to represent a constructive notice of their rightful holders rights in their marketing properties. Further, the Respondent has no rights or legitimate interests in respect of the Domain Name because its business has no lawful connection or association with the TOMB RAIDER trademarks or with the Complainants.

The WHOIS search submitted by the Complainants confirms that the Respondent registered the Domain Name on March 29, 2000, after the Complainants had launched the extremely successful TOMB RAIDER series of computer games and after Core Design had registered the TOMB RAIDER trademarks, as set out above.

The Complainants assert that the Respondent must have been aware of the Complainants' extensive goodwill and reputation in the TOMB RAIDER trademarks when it registered the Domain Name. They further assert that close similarities in visual identities found initially on the site confirm that the Respondent has clearly misappropriated the TOMB RAIDER trademarks for its own use to be used in connection with the Domain Name without the authorization of the Complainants. This would lead to a conclusion that, given that the Domain Name was registered with knowledge of the extensive goodwill and reputation in the TOMB RAIDER trademarks, subsequent use of the Domain Name for the Respondent's business cannot be regarded as a bona fide offering of services that creates a legitimate interest in the Domain Name. The Panel agrees that the bona fide element is absent from the Respondentís use.

The Complainants made plausible that the Respondent's awareness of the goodwill and reputation in the TOMB RAIDER trademarks is shown by its use of the "Thumb Raider" logo. The use of the substantially similar logo and identical get up, and the use of the still image from the "Tomb Raider" film does show that the Respondent was not only aware of the trademarks but was prepared to trade off them.

Not only that this Panel follows the standard of simple preponderance of evidence from the learned reasoning of Madonna v Dan Parisi, WIPO Case No. D2000-0847, but it does accept the Complainantsí contentions, which decided that use of a domain name, which trades on the reputation of another cannot constitute a "bona fide" offering of goods or services. For the reasons laid out in the Complaint, the Respondent must have been aware of the existence and reputation in the TOMB RAIDER trademarks. The selection of <thumraider.com> as a domain name and the use of a similar logo and identical get up is an attempt to trade off the Complainants' reputation. The Respondent's offering of Internet service in pornography cannot therefore be legitimate use of the Domain Name.

The Panel is reverting to WIPO Case No. D2000-0441 as it notes in its reasoning regarding the lack of legitimate interest on the part of the Respondents following observation: "(o)ut of all of the potential derivations of letters the Respondent could have chosen to create his Domain Name, he chose one so similar to Complainantís that it cannot be inferred, without benefit of explanation, that he has a valid right or legitimate interest in the Domain Name." Similarly, in Fondazione Arena di Verona v. Giovanni Albertin, WIPO Case No. D2001-0567 it was established that in respect of the lack of legitimate interest that "(Ö) the Respondent prima facie may have rights to maintain part of his present website on another domain name, corresponding for instance to the name of his own city, his business or others." This means that in the present case there is no predominating reason for a respondent to maintain a website under a domain name registered and used without a legitimate interest. The Respondent cannot claim to have established a legitimate web presence under an illegitimate Domain Name registration. The mere fact of use of such a domain name over a couple of years remains irrelevant. In other words, present Respondent has a choice of other domain names to use in respect of his business on the web and did not and could not have established any legitimate interest in the Domain Name in spite of his use of it.

C. Registered and Used in Bad Faith

The following circumstances, in particular but without limitation, if found by the Panel to be present, for the purposes of Paragraph 4(a)(iii), under Paragraph 4(b)(iv) of the Policy, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that respondent has registered or respondent has 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 respondents documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondentís 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 respondent website or location or of a product or service on respondents website or location.

The Complainants assert that the Domain Name was registered in bad faith by the Respondent because, for the reasons set out above, it must have been aware of the TOMB RAIDER trademarks and the reputation and goodwill of the trademarks prior to registering the Domain Name.

According to the Complainantsí allegations, the choice of the confusingly similar domain name was to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the TOMB RAIDER trademarks and suggesting a similarity of origin, or a form of sponsorship, affiliation or endorsement of the Domain Name and website by the Complainants. The Respondent has made illegitimate use of the Domain Name, and has chosen the Domain Name purely to create an unlawful association with the Complainants and the TOMB RAIDER trademarks. This is reinforced by the content of the website. Until recently, the website contained a "Thumb Raider" logo which was substantially similar and adopted identical get up to the logo used in the recent "Tomb Raider" film and there was use of a still image of the face of Lara Croft in the "Tomb Raider" film (played by Angelina Jolie).

The Panel accepts the Complainantsí contentions that the use of the TOMB RAIDER trademarks in connection with the supply of pornography also may demonstrate that the Domain Name was registered, and is continuing to be used, in bad faith. The Complainants argue that the Respondent was aware of the Complainants' extensive goodwill and reputation but it nevertheless registered a confusingly similar Domain Name to offer services on the Internet. They conclude that it must have been apparent to the Respondent that the Complainants would not consent to the use of the TOMB RAIDER trademarks or any confusingly similar variant, in connection with the supply of pornography and that such association could only damage the Complainants' reputation and goodwill in the trademarks. They point out to the statement in which the Respondent has admitted that the Complainants' trademarks are sensitive to any such association because an element of the public believes the TOMB RAIDER series of games has a sexual element. This makes, in their opinion the use of the Domain Name in connection with pornography potentially more damaging to the Complainants' reputation and goodwill in the TOMB RAIDER trademarks. The Panel accepts this interpretation and finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantsí mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website. This Panel finds that such use, under the circumstances additionally described by the Complainants, is to be considered as use in bad faith in the sense contemplated by UDRP policy.

Further evidence of the Respondent's continuing bad faith is that, although it claimed not to be seeking the sale or transfer of the Domain Name, he was prepared to "turn it over" for "sizeable" compensation (see its email dated 26 August, 2002, at Annex 2), a reference to his willingness to sell the Domain Name for an amount greater than "out of pocket" expenses. The Panel finds this construction of the meaning of the Respondentís statement to be accurate and holds that the Respondent was trying to sell the Domain Name for an amount greater than "out of pocket" expenses.

Weetabix Limited v Mr J. Clarke, WIPO Case No. D2001-0775 decided that bad faith was established where "the Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name". This Panel adheres to the position under which in the circumstances of global usage of a registered trademark, a respondent cannot easily invoke a defense of not having constructive knowledge of trademark registration(s) in some countries in the world other then those in which he resides. If such a usage is also offered globally and/or over the Internet, such user should make at least a reasonable effort to learn whether the marketing properties in question are protected. It is clear that the Claimantsí marketing properties have been properly protected and have been clearly and unambiguously marked as such at Complainantsí official site. For these reasons the Respondent should have known, or possibly even knew that the TOMB RAIDER trademarks are dully protected before registering the Domain Name. The respondents that claim that they are viable businesses should be held to a higher degree of professional standards.

The Panel draws appropriate inference from the fact that the false contact details have been provided at the time of registration of the Domain Name. It is noted that the same decision WIPO Case No. D2001-0775 confirmed that the registration of false contact details was sufficient alone to establish bad faith. From the evidence submitted on the unsuccessful courier delivery attempts at the Ugandan address follows that the Respondent is not known at the given address. As none of the implications of this allegations were contested by the Respondent, and as it is not possible in the proceeding of this kind to further verify the related facts, the Panel accepts that the Respondent is in bad faith on this count, as it follows that the Ugandan contact details provided at the time of registration were incorrect.

In addition, the Panel also accepts the applicability of National Association of Stock Car Auto Racing, Inc v RMG Inc., WIPO Case No. D2001-1387, which decided that the Respondent was using the confusion or association in the minds of the public to direct users to the domain name for personal gain. This Panel also subscribe to its holding that the use of pornographic material per se does not have to constitute bad faith. But, in that case using the confusion or association in the minds of the public to direct users to the domain name for personal gain was particularly evidenced by the use of click-through pornographic advertising. It was also stated that pornographers rely on misleading domain names to attract users by confusion. The use of the Domain Name by the Respondent to attract Internet users and generate revenue through pornographic advertising is therefore in bad faith because it relies on confusion or association with the TOMB RAIDER trademarks for commercial gain.

Accordingly, the Panel unequivocally finds that the Respondent is using the Domain Name in bad faith on multiple counts.

 

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, <thumbraider.com> be transferred to the Second Complainant, Eidos Interactive Limited.

 


 

Mladen Vukmir
Sole Panelist

Date: December 27, 2002