WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Marvel Characters, Inc v. Chris Hansen

Case No. D2007-1151

 

1. The Parties

The Complainant is Marvel Characters, Inc. of Beverly Hills, California, United States of America, represented internally by Eli Bard.

The Respondent is Chris Hansen of Issaquah, Washington, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <spidermanandfriends.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 7, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 7, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on September 17, 2007. 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 publisher of comic books. The character Spider-Man is one of a number of characters that have been featured in comic books published by the Complainant. The Complainant has registered SPIDER-MAN for use in the United States of America1 and in more than fifty (50) other countries around the world, and has licensed its SPIDER-MAN mark for use with a variety of products, including toys, clothing, animated television series, and video games, in addition to a popular series of motion pictures, the first of which debuted in May 2002. The Complainant has used SPIDER-MAN AND FRIENDS for toys since 2003, and claims common law trademark rights therein.

The Respondent registered the disputed domain name <spidermanandfriends.com> on March 3, 2005. The Respondent is using the domain name to direct Internet users to a website containing what appear to be pay-per-click advertising links in addition to commentary regarding various comic books. The Respondent’s website prominently displays the “Spider-Man and Friends” legend and images of the Spider-Man character.

 

5. Parties’ Contentions

A. Complainant

The Complainant maintains that is has established trademark rights in SPIDER-MAN as a result of the registration and use of the mark in the United States of America and in fifty four (54) other countries around the world, and worldwide licensing of the mark for use with various products and a series of successful movies. The Complainant asserts that its SPIDER-MAN mark is a famous mark. The Complainant further asserts common law trademark rights in SPIDER-MAN AND FRIENDS based on it use since 2003 with a line of toys.

The Complainant contends that the disputed domain name is identical and confusingly similar to its SPIDER-MAN AND FRIENDS mark, and confusingly similar to its SPIDER-MAN mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has not been licensed or otherwise authorized to use the Complainant’s marks, has never been commonly known by the disputed domain name, is not using the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the domain name. Rather, the Complainant contends that the Respondent is using the domain name with intent for commercial gain to divert consumers to a pay-per-click website. The Complainant argues that the Respondent’s attempt to add commentary and blog entries following receipt of notice of this dispute is pretextual.

The Complainant maintains that the Respondent is using the disputed domain name in bad faith to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation of endorsement of the Respondent’s website. According to the Complainant, the use of a domain name confusingly similar to a complainant’s mark for pay-per-click advertisements is evidence of bad faith. The Complainant further alleges that the Respondent has infringed copyrighted Spider-Man images, which adds to the likelihood of confusion created by the appearance of the Respondent’s website.

The Complainant contends that the Respondent’s registration of the disputed domain name is part of a pattern of conduct to prevent trademark owners from using their own marks in domain names. According to the Complainant, the Respondent has registered over 450 domain names, including domain names containing third-party trademarks, a number of which the Respondent is using to generate pay-per-click revenue.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <spidermanandfriends.com> is confusingly similar to the Complainant’s SPIDER-MAN mark, in which the Complainant unquestionably has established rights through registration and continuous and extensive use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Here, the disputed domain name incorporates the Complainant’s SPIDER-MAN mark in its entirety. Neither the omission of the hyphen found in the mark nor the addition of the neutral words “and friends” dispels the confusing similarity of the disputed domain name with the Complainant’s mark. See, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.2

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s SPIDER-MAN mark, nor has it authorized the Respondent to register a domain name corresponding to that mark. Nor is there any indication that the Respondent has been commonly known by the disputed domain name. Further, the record reflects the Respondent’s registration and use of the disputed domain name, which is confusingly similar to the Complainant’s mark, to attract Internet users to a website replete with what appear to be pay-per-click advertising links.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to him of the dispute, 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; or

(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.3 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name. The Respondent’s use of a disputed domain name confusingly similar to another’s trademark ostensibly to generate pay-per-click revenue based on the attractive quality of the mark does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449.

While the Respondent has provided some commentary regarding comic books on his website, he also is using the disputed domain name to attract Internet users to a website from which the Respondent appears to generate pay-per-click revenues. The record in this case suggests that the Respondent did not add commentary to his website until after being contacted by the Complainant regarding the disputed domain name. To the extent the Respondent’s use of the domain name incorporating the Complainant’s mark is to generate pay-per-click revenue, Respondent is precluded from claiming any legitimate noncommercial or fair use of the domain name under the meaning of paragraph 4(c)(iii) of the Policy. See, Bata Brands S..r.l v. Charles Power, WIPO Case No. D2006-0191.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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;

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

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

A strong inference can be drawn from the circumstances of this case that the Respondent was well aware of the Complainant’s SPIDER-MAN mark when he appropriated the Complainant’s mark for use in his domain name, and the Panel so finds. The Panel further finds from the circumstances of this case that the disputed domain name was registered and is being used in bad faith by the Respondent in an attempt to profit from and exploit the Complainant’s SPIDER-MAN mark by generating what appears to be pay-per-click revenue based on the attractive quality of the Complainant’s mark. See, e.g., ETS, infra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

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 <spidermanandfriends.com> be transferred to the Complainant.


William R. Towns
Sole Panelist

Dated: October 1, 2007


1 The Complainant obtained its first U.S trademark registration for SPIDER-MAN on May 29, 1973. The character Spider-Man first appeared in a comic book published by the Complainant in 1962.

2 The Complainant also asserts common law trademark rights in “SPIDER-MAN AND FRIENDS”. Clearly, the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050. Common law rights in a trademark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Because the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SPIDER-MAN mark, it is unnecessary for the Panel to consider whether the Complainant has established common law rights in “SPIDER-MAN AND FRIENDS”.

3 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.