WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edgar Rice Burroughs, Inc. v. MySexPortal.net, Dejan Nikitovic
Case No. D2002-1169
1. The Parties
The Complainant is Edgar Rice Burroughs, Inc., a California Corporation of Tarzana, California 91356, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC of New York, New York, United States of America.
The Respondent is MySexPortal.net, Dejan Nikitovic, Ljubljana, NA 1000, Slovenia.
2. The Domain Name and Registrar
This dispute concerns the domain name <tarzansex.com> (the "Disputed Domain Name"). The Disputed Domain Name is registered with Register.com of 575 Eighth Avenue, 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 24, 2002. On December 27, 2002, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On December 27, 2002, Register.com transmitted 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 December 31, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 22, 2003.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 29, 2003. 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
Since the Respondent failed to submit a response, the Panel finds the following facts based upon the Complaint and its supporting exhibits:
- The Complainant is the owner and successor to all rights, titles and interests in and to the service of library works authorised by the late Edgar Rice Burrows. Amongst the most successful of these are those in which the principal element has been the character "Tarzan".
- The Complainant is the owner of trade mark registrations for the trade mark TARZAN throughout the world, including the United States, Germany, India, South Africa and Spain, for a variety of goods and services, as well as numerous domain names related to works and products in which the principal element has been the character identified as Tarzan.
- The Complainantís exploitation of the trade mark TARZAN has included the sale of books and magazines and the production of motion pictures over at least 80 years. The Complainant and its licensees have spent a great deal of money to develop and promote the trade mark TARZAN.
- The Respondentís Disputed Domain Name was registered on March 21, 2002. It appears that the website that has been maintained at the Disputed Domain Name has been used to distribute copies of pornographic movies, although it is not clear whether this is with or without the permission of the relevant copyright owners. What might be described as " jungle imagery " is used in that connection.
5. Partiesí Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainantís trade mark TARZAN, in that it fully incorporates the Complainantís famous trade mark TARZAN with the addition of the suffix "sex".
The Complainant contends that the Respondent has not and cannot demonstrate or establish any rights or legitimate interests in the Disputed Domain Name. The Complainant contends there is no evidence that the Respondent is commonly known by the Disputed Domain Name and that the Respondent is clearly attempting to misleadingly divert consumers to its presumably for-profit commercial site by using the famous trade mark TARZAN. The Complainant further contends that the Respondent is tarnishing the image of the trade mark TARZAN by using it in connection with pornographic and possibly pirated or illegal videos and that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant requests that the Disputed Domain Name be immediately transferred to the Complainant or, alternatively, that the Disputed Domain Name be cancelled and that the Complainant be given advance notice thereof so that it can register it.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
6.1 Paragraph 4a of the Uniform Domain Name Dispute Resolution Policy requires that the Respondent, as registrant of the Disputed Domain Name, submit to a mandatory administrative proceeding in the event that the Complainant establishes:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
6.2 Identical or confusingly similar
The Disputed Domain Name incorporates in whole the Complainantís famous registered trade mark TARZAN. The only deviation is that the word "sex" has been added as a suffix. It is well established that the addition of this generic term does not distinguish the Disputed Domain Name from the Complainantís famous registered trade mark (see, for example, Viacom International, Inc and Erwin Tan, WIPO Case No. D2001-1440). Accordingly, the Disputed Domain Name is confusingly similar to the Complainant's famous registered trade mark TARZAN.
6.3 Rights or Legitimate Interests
The Respondent has not responded to the Complainantís contention and has, accordingly, not demonstrated any rights or legitimate interests in respect of the Disputed Domain Name. Whilst the Disputed Domain Name has been used by the Respondent before notice of the dispute, such use has not been demonstrated to be a bona fide offering of goods or services, the Respondent has not demonstrated that it has been commonly known by the Disputed Domain Name and nor has it demonstrated that use of the Disputed Domain Name is fair without intent to tarnish the Complainantís famous registered trade mark TARZAN.
6.4 Registered and Used in Bad Faith
The relevant head for this case is that the following circumstances shall be evidence of the registration and use of the Disputed Domain Name in bad faith:
- By using the domain name, the Respondent has intentionally attempted to attract, for a commercial gain internet users to its website by creating a likelihood of confusion with the Complainantís famous trade mark TARZAN as to the source, sponsorship, affiliation or endorsement of its website or product or service on its website.
It is also to be noted that the circumstances of bad faith are not limited to those set out in paragraph 4b(i) Ė (iv). This can also occur when a domain name is "obviously connected with such a well-known product that it is used by someone with no connection with the product which suggests opportunistic bad faith" (see Ė Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group, WIPO Case No. D2000-0163).
The Panel finds that the Respondentís bad faith is evidenced by the overwhelming fame and reputation of the Complainantís famous trade mark TARZAN, by the apparent commercial nature of the Respondentís website and by the obvious connection between the Respondentís unauthorised Disputed Domain Name and the Complainantís famous registered trade mark TARZAN, exacerbated by the use of Jungle imagery.
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, <tarzansex.com> be transferred to the Complainant.
Michael D. Cover
Dated: February 12, 2003