WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blockbuster Inc. v. Planet Antigua Inc.
Case No. D2006-0302
1. The Parties
The Complainant is Blockbuster Inc., Dallas, Texas, of United States of America, represented by Baker Botts, LLP, United States of America.
The Respondent is Planet Antigua Inc., St. John's, Antigua, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <blockbusteronline.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2006. On March 10, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 14, 2006, Network Solutions, LLC 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 March 20, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2006.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on April 20, 2006. 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
The Complainant is a well-known provider of videos, DVDs and video games with stores in 24 countries. Total revenue for the year 2004 was approximately US$6.1 billion. In 2004, the Complainant and its franchisees spent over US$250 million on advertising and marketing. As a result of the extensive advertising and promotion by the Complainant, the BLOCKBUSTER mark is well-known worldwide.
The Complainant and its predecessors-in-interest have used the mark BLOCKBUSTER in the United States since 1985. The Complainant owns several US registrations for the BLOCKBUSTER and BLOCKBUSTER ONLINE marks. The Complainant also owns several registrations covering the BLOCKBUSTER mark in Antigua & Barbuda. The Complainant also owns the domain name <blockbuster.com>, which resolves to a site through which the Complainant rents videos, DVDs and video games.
5. Parties’ Contentions
The domain name is confusingly similar to the BLOCKBUSTER trademarks registered and used by the Complainant. The Complainant’s use and registration of the BLOCKBUSTER trademark long predates any use or registration of the domain name.
The Respondent is not making a legitimate noncommercial or fair use of the domain name. The Respondent is not (either as an individual, business or other organization) known by the domain name. There is no evidence whatsoever of the Respondent's 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. The Respondent is using the domain name to redirect Internet users to a gambling website, apparently operated on behalf of “www.goldenpalace.com”. The Respondent is not a licensee of the Complainant, and has not received any permission or consent to use the trademark BLOCKBUSTER ONLINE or apply for the domain name.
The domain name was registered and is used in bad faith. The domain name causes Internet users to mistakenly believe that the Respondent is affiliated with the Complainant. The initial user confusion that the domain name causes is evidence that the Respondent registered and used the domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Additionally, it has been widely held by previous panels that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration. The Respondent was or should have been aware of the existence of the Complainant's marks at all relevant times. Further, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location of a product or service on the Respondent's website or location pursuant to paragraph 4(b)(iv) of the Policy. The Respondent’s diversion of Internet users to its website for commercial gain through use of its confusingly similar domain name constitutes bad faith registration and use in violation of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in which the Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the record confirms that the Complainant has used the marks BLOCKBUSTER and BLOCKBUSTER ONLINE for several years prior to the registration of the domain name, and that the Complainant succeeded in obtaining several registrations of said marks. The Panel finds that the Complainant has rights in the marks BLOCKBUSTER and BLOCKBUSTER ONLINE.
As to the second question, the Panel finds that the domain name is confusingly similar to such marks. The only difference between the Complainant’s mark BLOCKBUSTER ONLINE, and the domain name is the addition of a suffix “.com”, which is also a generic top-level domain reference. As a rule, addition of the generic top-level domain (gTLD) reference ".com", which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.
The Panel thus finds for the Complainant on the first part of the test.
6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on the Complainant’s prior use of the BLOCKBUSTER and BLOCKBUSTER ONLINE marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to Paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There are no elements showing that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
6.3 Was the domain name Registered and Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 the Respondent's web site or location or of a product.
There is evidence of the situation described in Paragraph 4(b)(iv). The relevant facts are mentioned above. Given the well-known nature of the Complainant’s marks, it is reasonable to conclude that only someone who was familiar with the marks and what they stand for would have gone through the trouble of registering the domain name. It is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under US trademark law.
The Panel thus finds for the Complainant on the third part of the test.
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 <blockbusteronline.com> be transferred to the Complainant.
Daniel J. Gervais
Dated: May 1, 2006