WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Paramount Pictures Corporation v. Buy This Domain aka Domains Best Domains

Case No. D2003-0058

 

1. The Parties

The Complainant is Paramount Pictures Corporation, Mallory Levitt, Counsel, Viacom International Inc., 1515 Broadway, New York, NY 10036, of United States of America, represented by Mallory Levitt of United States of America.

The Respondent is Buy This Domain, John Barry, (also known as Domains, Best Domains) 5444 Arlington Avenue g14, Bronx, New York 10471, of United States of America.

 

2. The Domain Names and Registrar

The disputed domain names are: <startrekarmada.com> and <startrekarmada2.com>, both of which are registered with eNom

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2003. On January 28, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On January 29, 2003, eNom 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. 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 January 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 20, 2003.

The Center appointed Henry Perritt, Jr. as the Sole Panelist in this matter on March 10, 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.

On March 27, 2003, the Center granted an extension of time for the panel decision until March 31, 2003.

 

4. Factual Background

Complainant is engaged in, among other things, the creation, production and distribution of television programs and motion pictures using variations on the mark STAR TREK. Complainant owns and controls copyrights, trademarks, service marks, and trade dress associated with the phrase STAR TREK.

The STAR TREK Properties are the subject of numerous trademark registrations in the U.S. and over 80 countries worldwide. Among Complainantís U.S. registered trademarks are:

TRADEMARK

REG. #

CLASS (Goods)

STAR TREK

2,129,154

9 (Computer Game Software)

STAR TREK

1,931,146

9 (Entertainment Motion Picture Films Featuring Science Fiction, etc.)

STAR TREK

1,160,868

14 (Wrist Watches)

STAR TREK

905,126

14 (Watches and Parts Thereof)

STAR TREK

1,095,937

16 (Paper Goods and Printed Matter)

STAR TREK

1,096,032

21 (Plastic Dishes)

STAR TREK

1,248,398

24 (Towels, Sheets, etc.)

STAR TREK

1,098,210

25 (Bathing Suites, Caps, etc.)

STAR TREK

1,096,135

28 (Games and Toys)

STAR TREK

2,129,155

28 (Card Games)

STAR TREK

1,218,491

28 (Toy Tricycles; Toy Plastic Dishes; etcÖ)

STAR TREK

1,169,496

30 (Candy and Gum)

STAR TREK

1,077,290

38 (Film Series and Film Series for Television

STAR TREK DEEP SPACE NINE

2,130,720

9 (Computer Game Software)

STAR TREK: DEEP SPACE NINE

2,003,325

9 (Pre-recorded Entertainment Video Cassettes)

STAR TREK: DEEP SPACE NINE

1,810,036

16 (Paper Goods)

STAR TREK: DEEP SPACE NINE

1,780,392

25 (T-Shirts, Sweatshirts, etc.)

STAR TREK: DEEP SPACE NINE

1,866,503

28 (Poseable Figurines, etc.)

STAR TREK: DEEP SPACE NINE

1,802,943

41 (Television Series)

STAR TREK: DEEP SPACE NINE

1,793,018

41 (Television Drama Series)

STAR TREK: DEEP SPACE NINE HARBINGER

2,012,846

28 (Computer Programs)

STAR TREK: FIRST CONTACT

2,157,598

16 (Paper Goods, etc.)

STAR TREK: FIRST CONTACT

2,175,529

21 (Commemorative Plates, etc.)

STAR TREK: FIRST CONTACT

2,137,955

25 (Boxer Shorts, Caps, etc.)

STAR TREK: THE ALIENS

1,627,857

25 (T-shirts)

STAR TREK: THE NEXT GENERATION

1,888,327

9 (Pre Recorded Video Cassette Tapes, etc.)

STAR TREK THE NEXT GENERATION

2,130,714

9 (Computer Game Software)

STAR TREK: THE NEXT GENERATION

1,790,357

16 (Stickers, etc.)

STAR TREK: THE NEXT GENERATION

1,789,469

25 (T-shirts, Sweatshirts, etc.)

STAR TREK: THE NEXT GENERATION

1,786,883

28 (Program Cartridges For Computer Video Games, etc.)

STAR TREK THE NEXT GENERATION

2,130,713

28 (Card Games)

STAR TREK THE NEXT GENERATION

1,583,006

41 (Television Series)

STAR TREK: THE NEXT GENERATION

1,798,276

41 (Television Drama Series)

STAR TREK UNLIMITED

2,180,822

16 (Series of Comic Books)

STAR TREK VOYAGER

2,130,719

9 (Computer Game Software)

STAR TREK VOYAGER

2,198,333

9 (Prerecorded Video Cassette Tapes, etc.)

STAR TREK: VOYAGER

1,947,526

14 (Ornamental Lapel Pins; etc.)

STAR TREK: VOYAGER

2,144,825

16 (Paper Goods and Printed Matter, etc.)

STAR TREK: VOYAGER

1,960,900

25 (T-Shirts, Sweatshirts, etc.)

STAR TREK: VOYAGER

2,125,898

28 (Program Cartridges For Computer Video Games, etc.)

STAR TREK: VOYAGER

1,964,469

41 (Television Drama Series)

Respondent registered the <startrekarmada.com> domain name on May 30, 2002. On June 18, 2002, "www.startrekarmada.com" linked to an "Abortion is Murder" site, which contains graphic pictures of fetuses and links to propaganda on abortion and birth control.

Respondent registered the <startrekarmada2.com> domain name on June 6, 2002. "www.startrekarmada2.com" links to what appears to be the same "Abortion is Murder" site referred to in the previous paragraph.

 

5. Partiesí Contentions

A. Complainant

Complainantís Rights in the STAR TREK Trademark

Complainant is engaged in, among other things, the creation, production and distribution of television programs and motion pictures, including the television series STAR TREK, STAR TREK: THE NEXT GENERATION, STAR TREK: DEEP SPACE NINE, STAR TREK: VOYAGER and ENTERPRISE, and the ten STAR TREK motion pictures (collectively referred to herein as the STAR TREK Productions).

Complainant owns and controls, and at all times relevant hereto owned and controlled, all copyrights, trademarks, service marks, and trade dress associated with the world-famous STAR TREK Productions, and all goods and services related thereto (collectively referred to herein as the STAR TREK Properties). The STAR TREK Properties are among Complainantís most valuable and popular properties and have, since their introduction in 1966, developed a dedicated and vast following throughout the world.

The original STAR TREK television series (the Original Series) was first broadcast on network television in September 1966, and continued to be broadcast nationwide on NBC through 1969. The 79 classic one-hour episodes of the Original Series have since been rerun in syndication for the past 30 years in more than 100 domestic television markets and 75 countries, and are available throughout the United States and Canada on home videocassette and DVD.

STAR TREK: THE NEXT GENERATION was broadcast as a syndicated weekly television series beginning in 1987, and continued for seven seasons until 1994. The 178 episodes of STAR TREK: THE NEXT GENERATION have been broadcast in syndication in more than 217 United States markets and 75 countries. Between 1991 and the broadcast of the final episode in May 1994, STAR TREK: THE NEXT GENERATION aired in many markets as frequently as 7 times a week (5 times in reruns and twice with newly produced episodes). Reruns currently air in many markets across the United States, Canada and worldwide.

STAR TREK: DEEP SPACE NINE was first broadcast as a syndicated weekly series in 1993 and continued seven seasons until June 1999. Reruns currently air in many markets across the United States, Canada and worldwide.

STAR TREK: VOYAGER was first broadcast as a first run weekly series in 1995 on UPN. Reruns currently air in syndication in many markets across the United States, Canada and worldwide.

From 1979 through the present, Complainant has produced and distributed the following STAR TREK feature motion pictures: STAR TREK: THE MOTION PICTURE (1979); STAR TREK II: THE WRATH OF KAHN (1982); STAR TREK III: THE SEARCH FOR SPOCK (1984); STAR TREK IV: THE VOYAGE HOME (1986); STAR TREK V: THE FINAL FRONTIER (1989); STAR TREK VI: THE UNDISCOVERED COUNTRY (1991); STAR TREK: GENERATIONS (1994); STAR TREK: FIRST CONTACT (1996); STAR TREK: INSURRECTION (1998); and STAR TREK: NEMESIS (2002).

The STAR TREK Properties have become a cultural phenomenon with millions of fans throughout the world.

Since 1967 and continuing through the present, Complainant has produced, licensed and marketed thousands of products and services throughout the world utilizing the copyrights, trademarks, service marks and trade dress derived from and related to the STAR TREK Properties.

In order to provide better service to its customers in general, Complainant has established a strong presence on the Internet. Complainant operates many different Internet sites, which are used to promote Complainantís feature films, television shows, characters, products, and services, including a web site dedicated to promotion of the STAR TREK Properties. Complainantís STAR TREK web site located at <startrek.com> is among the most frequented sites on the Internet. Complainant has also registered <startrek.net> for use in connection with a members-only STAR TREK themed site and email service. The ability to market and promote the STAR TREK Properties via its Internet site is of inestimable value to Complainant.

The STAR TREK Properties are the subject of numerous trademark registrations in the U.S. and over 80 countries worldwide, as listed in section 4. These registrations are valid, subsisting and in full force and effect and serve as prima facie evidence of the validity of the STAR TREK trademarks and of Complaintís exclusive right to use the STAR TREK trademarks on the goods and services listed in the registrations. In addition, many of the U.S. registrations are incontestable and thereby serve as conclusive evidence of Complainantís exclusive rights to use the STAR TREK trademarks on the goods and services listed.

Complainant licensed Activision, Inc. the right to produce a computerized video game entitled "STAR TREK ARMADA," which it released in March 2000. This product was the best selling STAR TREK game of all time with worldwide revenue to date exceeding $10 million. Based on the popularity of this game, Complainant licensed the rights for a sequel, which was released in November 2001 (hereinafter STAR TREK Games).

By virtue of the wide renown of the STAR TREK trademarks and the worldwide distribution and extensive sale of authorized goods, Complainantís STAR TREK trademarks have developed secondary meaning and significance in the minds of the purchasing public. Goods and services bearing the STAR TREK trademarks are immediately associated by the purchasing public with Complainant.

Based on its trademark registrations, its continuous use of the STAR TREK trademarks for over 30 years, and the worldwide fame and recognition of the STAR TREK Properties in the minds of the public, Complainant has extraordinarily strong rights in the STAR TREK trademarks, and is entitled to protection from Respondent's acts of cybersquatting.

Complainant has successfully litigated its rights in and to the STAR TREK trademarks against bad faith domain name registrations in situations similar to the one at hand. For example, in the case of Paramount Pictures Corp. v. Langley, Case No. 99-00451-R (BQRX), (C.D. Cal. January 28, 1999), the court ordered the registrant of the <startrekinsurrection.com>, <startrekinsurrections.com> and <startrekfirstcontact.com> domain names to transfer these domain names to Complainant.

Respondentís Infringing Acts

Respondent registered the <startrekarmada.com> domain name on May 30, 2002. On June 18, 2002, Complainant received notification from an unrelated third party advising Complainant of its concern about Respondentís registration of <startrekarmada.com> and the fact that the site automatically links to "http://www.abortionismurder.org," an anti-abortion site featuring images of partial birth fetuses. The third party was particularly concerned that children searching for Complainantís STAR TREK Games would likely come upon this controversial site. Based on the foregoing, Complainant sent Respondent a cease-and-desist letter on June 19, 2002, demanding that Respondent immediately deactivate the website and transfer the domain name to Complainant. Respondent did not respond to Complainantís letter or comply with its demands.

Complainant subsequently learned that Respondent also registered <startrekarmada2.com>, which also automatically links to "http://www.abortionismurder.org," and that the registrant and contact information for <startrekarmada.com> had been slightly modified (See Exhibit A). Specifically, the contacts for registrant, administrative and technical administrators were changed to Best Domains with an email address of "tomk668@aol.com." All other information remained the same. Accordingly, Complainant sent Respondent a revised cease-and-desist letter on December 30, 2002, and in response, Respondent offered to sell the disputed domain names for $500 each. Respondent has not deactivated the links to the site "abortionismurder.org."

Complainantís investigation has also revealed that Respondent has repeatedly registered domain names incorporating well-known trademarks and linking them to the "abortionismurder.org" website. These registrations have been the subject of frequent UDRP proceedings, all of which have ruled against Respondent. See Taylor Corporation v. Buy This Domain a/k/a/ John Barry, FA 112563 (Nat. Arb. Forum June 25, 2002); The PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains for Sale Inc., FA 104101 (Nat. Arb. Forum February 25, 2002); Sears, Roebuck and Co. v. John Barry, FA 105210 (Nat. Arb. Forum April 1, 2002); The Rittenhouse Development Company v. Domains for Sale, Inc., FA 105211 (Nat. Arb. Forum April 8, 2002); Shoreline Community College v. na, FA 101518 (Nat. Arb. Forum December 19, 2001); Rochester Institute of Technology v. Domain for Sale inc. a/k/a/ John Barry, FA 112475 (Nat. Arb. Forum June 3, 2002); The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, FA 114354 (Nat. Arb. Forum June 28, 2002); The City University of New York v. Domain for Sale Inc., FA 114477 (Nat. Arb. Forum June 24, 2002); The Reed Institute v. Domains for Sale, Inc. FA 109043 (Nat. Arb. Forum May 13, 2002); Kansas City Kansas Community College v. John Barry d/b/a Domain For Sale Inc., FA 117910 (Nat. Arb. Forum October 11, 2002).

Respondentís Actions Violate Paragraph 4(a) of the Policy

The disputed domain names are subject to transfer under Paragraph 4(a) of the Policy because:

(i) The disputed domain names are identical or confusingly similar to trademarks and/or services marks in which the Complainant has rights;

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

(iii) The disputed domain names were registered and being used in bad faith.

The Disputed Domain Names Are Identical or Confusingly Similar To Complainantís Trademarks

[Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1)]

As set forth above, Complainant owns clear, irrefutable rights in the STAR TREK trademarks. <startrekarmada.com> and <startrekarmada2.com>, the disputed domain names, incorporate Complainantís incontestable STAR TREK trademarks and are identical to the titles of two of Complainantís popular STAR TREK Games.

ICANN panels have held domain names to be confusingly similar to trademarks in similar factual situations to that at issue in this dispute. See, e.g., Twentieth Century Fox Film Corp. v. CDP, FA 94827 (NAF July 7, 2000), (ordering the transfer of the <allymcbeal.com> domain name as a result of the confusing similarity to the title of the "Ally McBeal" television series); Capcom Co. Ltd. v. Walker, D2000-0200 (WIPO May 1, 2000), (ordering the transfer of the <residentevil.com> domain name as result of the confusing similarity to the title of the "Resident Evil" video game). ICANN panels have also held that the addition of the generic top level domain ".com" is irrelevant to a Policy paragraph 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), (finding that the top level domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Respondent Has No Rights or Legitimate Interest in The Disputed Domain Names

[Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2)]

Respondent has no statutory or common-law trademark rights or any other rights or legitimate interest in the STAR TREK trademarks, the STAR TREK Games or the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondentís use of the STAR TREK trademarks. See Compagnie de Saint Gobain v. Com-Union Corp. D2000-0020 (WIPO March 14, 2000), (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission for Complainant to use the trademarked name). Furthermore, Respondentís failure to otherwise assert rights in the STAR TREK trademarks proves that Respondent has no legitimate rights or interests in the STAR TREK trademarks, but rather has simply attempted to frustrate Complainantís efforts to use the domain names which incorporate its famous trademark and promote its licensed goods.

Respondentís use of the disputed domain names identical to Complainantís STAR TREK trademarks and the titles of two STAR TREK Games to divert Complainantís potential market to a website featuring graphic depictions of aborted fetuses demonstrates that Respondent has used the disputed domain names to tarnish the goodwill associated with Complainantís STAR TREK trademarks and STAR TREK Games. ICANN panels have held that such use is not considered bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Its offer to sell the disputed domain names to Complainant for consideration in excess of his out-of-pocket expenses is further evidence of lack of legitimate interests in the disputed domain names. See The Rittenhouse Development Company v. Domains For Sale, Inc., supra; see also Skipton Bldg. Socíy v. Colman, D2000-1217 (WIPO December 1, 2000), (finding no rights in the domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites).

Respondent is well-known for his activities of registering domain names and linking them to the "abortionismurder.org" website. Respondent has repeatedly demonstrated that he has no rights or legitimate interests in numerous third party domains and more importantly, the disputed domain names pursuant to paragraph 4(c)(ii) of the Policy.

Respondent Registered And Used The Disputed Domain Names in Bad Faith

[Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)]

Respondentís conduct proves that it registered the disputed domain names in bad faith to damage Complainant by preventing Complainantís or its licenseeís use of its famous trademark to promote its STAR TREK Games, and directing visitors to the "abortionismurder.org" website.

The Extraordinary Fame and Success of the STAR TREK Properties Demonstrates That Respondentís Registrations Alone Constitute Bad Faith

The fame of the STAR TREK Properties alone demonstrates Respondentís bad faith in registering the disputed domain names. ICANN panels have held that any registration and/or use of a domain name confusingly similar to a famous mark is an opportunistic attempt to attract customers, and that such use constitutes bad faith under paragraph 4(c) of the Policy. See Sears, Roebuck and Co. b. John Barry, supra; see also Nike, Inc. v. B.B. de Boer, D2000-1397 (WIPO December 21, 2000); see also Sanrio Co., Ltd. v. Neric Lau, Case No. D2000-0172 (WIPO March 3, 2000), (Panel found that Respondentís registration of domain names incorporating Complainantís trademark was in bad faith, when there was no plausible circumstance in which Respondent could have used the domain names).

Respondentís registration of the Disputed Domain names has already resulted in consumer confusion with the STAR TREK Properties and STAR TREK Games. See paragraph 30, supra.

Respondentís Registrations and Failure to Transfer the Disputed Domain Names After Actual Knowledge of Complainantís Rights Is Further Evidence of Respondentís Bad Faith

After being informed by Complainant of its rights to the STAR TREK Properties, Respondent refused to transfer the disputed domain names to Complainant and continued to keep the sites active and liked to the "abortionismurder.org" website.

Respondentís Demand for Costs in Excess of His Out-Of-Pocket Expenses Demonstrates Further Evidence of Bad Faith

Respondentís initial use of the registrant name Buy This Domain, and contact information listing its E-Mail address as Dom4Sale@aol.com is evidence that Respondentís intention when it registered the disputed domain names was to resell them. Thus Respondent registered the disputed domain names in bad faith. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO March 9, 2000), (finding bad faith where the Respondentís WHOIS registration information contained the words, "This domain name is for sale").

Besides this inference and Respondentís subsequent modification to its WHOIS information, Respondent has demonstrated his intent to sell the disputed domain names by offering them to Complainant for $500 each. Respondent thus clearly has registered the disputed domain names in bad faith pursuant to paragraph 4(b)(i). See American Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum March 16, 2000), (finding bad faith where Respondent offered domain names for sale).

Respondentís Use of the Disputed Domain Names and Pattern of Behavior Is Evidence of Respondentís Bad Faith

Respondent has linked the disputed domain names, which are identical to Complainantís titles of two STAR TREK Games, to a graphic and politically charged website thereby creating a likelihood of confusion with Complainantís STAR TREK trademarks as the source, sponsorship, affiliation or endorsement of Respondentís website. Respondentís use of Complainantís STAR TREK Properties in the disputed domain names without Complainantís approval represents bad faith registration pursuant to paragraph 4(b)(iv) of the Policy. See The Rittenhouse Development Company v. Domains for Sale, Inc., supra.

Respondent has engaged in a pattern of behavior of registering well-known marks and linking the domain names to the "abortionismurder.org" website, and has been involved in numerous UDRP proceedings under similar circumstances. Respondentís past behavior makes it clear that it was fully aware of Complainantís interests in the STAR TREK trademarks, and the inevitable confusion that would result when unsuspecting Internet users searching for Complainant were diverted to the graphic anti-abortion website. This behavior evidences bad faith under paragraph 4(b)(ii) of the Policy. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum August 17, 2000), (finding that the Respondent violated paragraph 4(b)(ii) by registering multiple domain names which infringe upon othersí famous and registered trademarks).

Preventing Complainant From Reflecting Its STAR TREK Trademark in the Disputed Domain Names Constitutes Bad Faith

By registering domain names that are identical to Complainantís titles of two STAR TREK Games, Respondent has prevented Complainant from exercising its right to reflect its identical STAR TREK trademark in the corresponding domain names. Its prior conduct proves that this is a pattern of conduct in which it has repeated engaged. Paragraph 4(b)(ii) states that "registration and use of a domain name in bad faith can be established by showing that the domain name was registered in order to prevent the owner of the trademark Ö from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct." See Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1325 (9th Cir. 1998) (defendant acted "as a spoiler, preventing Panavision and others from doing business on the Internet under their trademarked names unless they pay his fee); see also ISL Marketing AG v. Chung, D2000-0034 (WIPO) (Respondentís warehousing of domain names incorporating the Complainantsí trademark prevented Complainants from reflecting their trademark in a corresponding domain name, demonstrating Respondentís bad faith).

Conclusion

Based on the circumstances enumerated above, it is clear that Respondent registered and used the disputed domain names in violation of the Policy. The disputed domain names should be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Under paragraph 5(e) of the Rules, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. No exceptional circumstances exist.

A. Jurisdiction

This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreements, pursuant to which the domain names that are the subject of this Complaint are registered, incorporate the Policy.

Domain name registrar eNom Inc. incorporates into its Registration Agreement at paragraph 4, the Uniform Dispute Resolution Policy, paragraph 4(a) of which requires Respondent to submit to this proceeding.

Under Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because the complaint alleges that:

(1) The domain names are identical or confusingly similar to service marks in which the Complainants have rights; and

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

(3) The domain names were registered and are being used in bad faith.

B. Identical or Confusingly Similar

I find, under Paragraph 4(a)(i) of the Policy, that the disputes domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Complainant owns the STAR TREK trademarks.

<startrekarmada.com> and <startrekarmada2.com>, the disputed domain names, incorporate Complainantís incontestable STAR TREK trademarks and are identical to the titles of two of Complainantís popular STAR TREK Games.

ICANN panels and U. S. courts have held marks and domain names confusingly similar in factual situations similar to those in this case. See Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, February 20, 2000 (Richard W. Page, Sole Panelist), (finding <4microsoft2000.com> to be confusingly similar to Microsoft trademark); 109 F.3d 275, 283-284 (6th Cir. 1997) (reversing dismissal of trademark infringement claim by owner of "Daddyís" and "Daddyís Junky Music Stores" against competitor using name "Big Daddyís Family Music Center"); International Bancorp v. Societe des Bans de Mer ed du Cercle des Etrangers a Monaco, 192 F. Supp.2d 467, 482-483 (E.D. Va. 2002) (use of phrase "Casino de Monte Carlo" in domain names with other phrases infringed mark).

Complainantís mark is well known in the entertainment field. Appending the phrase "armada" or "armada2" to the mark does not signify a different field of use, unlike appending the phrase "travel" to the mark "CITI," which is best known in conjunction with financial services. Accordingly this situation is different from than presented in Citigroup, Inc. v. Joseph Parvin, Case No. D2002-0969 (2003), (declining to order transfer of CITITRAVEL domain)

C. Rights or Legitimate Interests

Respondent has no statutory or common-law trademark rights or any other rights or legitimate interest in the STAR TREK trademarks, the STAR TREK Games or the disputed domain names.

Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondentís use of the STAR TREK trademarks.

Respondent is not using the domain name in connection with a bona fide offering of goods or services

Respondentís use of the disputed domain names to divert Complainantís potential market to a website featuring graphic depictions of aborted fetuses does not involve bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Any arguable legitimate noncommercial or fair use of the domain name is overridden by the obvious intent to tarnish the Star Trek mark.

D. Registered and Used in Bad Faith

Respondentís initial use of the registrant name Buy This Domain, and contact information listing its E-Mail address as Dom4Sale@aol.com is evidence that Respondentís intention when it registered the disputed domain names was to resell them. Thus Respondent registered the disputed domain names in bad faith. See Parfums Christian Dior v. QTR Corp., WIPO D2000-0023 (March 9, 2000), (Geert Glas, Sole Panelist) (finding bad faith where the Respondentís WHOIS registration information contained the words, "This domain name is for sale").

Respondent has demonstrated his intent to sell the disputed domain names by offering them to Complainant for $500 each. Respondent thus registered the disputed domain names in bad faith pursuant to paragraph 4(b)(i).

Respondent has engaged in a pattern of behavior of registering well-known marks and linking the domain names to the "abortionismurder.org" website, and has been involved in numerous UDRP proceedings under similar circumstances. Respondentís past behavior makes it clear that it was fully aware of Complainantís interests in the STAR TREK trademarks, and the inevitable confusion that would result when unsuspecting Internet users searching for Complainant were diverted to the graphic anti-abortion website. This behavior evidences bad faith under paragraph 4(b)(ii) of the Policy.

By registering domain names that are identical to Complainantís titles of two STAR TREK Games, Respondent has prevented Complainant from exercising its right to reflect its identical STAR TREK trademark in the corresponding domain names. This is a pattern of conduct in which it has repeatedly engaged. Paragraph 4(b)(ii) states that "registration and use of a domain name in bad faith can be established by showing that the domain name was registered in order to prevent the owner of the trademark Ö from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct." See Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1325 (9th Cir. 1998) (defendant acted as a "spoiler," preventing Panavision and others from doing business on the Internet under their trademarked names unless they pay his fee); see also ISL Marketing AG v. Chung, D2000-0034 (WIPO) (Respondentís warehousing of domain names incorporating the Complainantsí trademark prevented Complainants from reflecting their trademark in a corresponding domain name, demonstrating Respondentís 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 domain names, <startrekarmada.com>, and <startrekarmada2.com>, be transferred to the Complainant.

 


 

Henry H. Perritt, Jr.
Sole Panelist

Dated: March 30, 2003