WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Stanley Pace / M Smurth Waite
Case No. D2010-1149
1. The Parties
Complainant is Viacom International Inc. of New York, New York, United States of America, represented internally.
Respondent is Stanley Pace / M Smurth Waite of Flower Mound, Texas, United States of America, and Fairfield, California, United States of America, respectively.
2. The Domain Name and Registrar
The Disputed Domain Name <bobesponja.com> is registered with 1 More Name, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2010. On July 13, 2010, the Center transmitted by email to 1 More Name, LLC a request for registrar verification in connection with the Disputed Domain Name. On August 3, 2010, 1 More Name, LLC transmitted by email to the Center its verification response verifying the registrant and contact information in their publicly-available WhoIs database for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 6, 2010 providing the registrant and contact information disclosed by the Registrar, notifying Complainant that the Complaint was administratively deficient, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 10, 2010. 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on August 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2010.
The Center appointed Richard W. Page as the sole panelist in this matter on September 6, 2010. 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
Viacom is the owner of numerous valid, subsisting and existing federal trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) and worldwide for the mark SPONGEBOB SQUAREPANTS, along with variants of this mark which incorporate the element “SpongeBob” and/or the Spanish translation, “Bob Esponja” (collectively the “SPONGEBOB Marks”). Viacom has used the SPONGEBOB Marks continuously since July 17, 1999 in connection with the television show, “SpongeBob SquarePants”. An example of one of the service mark registrations is United States Trademark No. 2355702 for SPONGEBOB SQUAREPANTS in International Class 41.
SpongeBob SquarePants is an animated series aimed at pre-teens. The star of the show, SongeBob, is a rectangular, yellow and porous sea sponge, who wears brown pants, which make him appear squarish rather than rectangular, a white shirt, a red tie, athletic socks and black shoes. This square shape fits the intended personality of an innocent, “nerd” sponge, a character stuck between a boy and a man.
The first episode of SpongeBob SquarePants aired on the children’s cable television channel Nickelodeon on May 1, 1999. In the time since it inception, SpongeBob SquarePants has grown to become one of the most-watched television cartoons and over 100 episodes have been created spanning seven seasons. Notably, SpongeBob SquarePants is Nickelodeon’s highest rated television show, the most distributed property of MTV Networks, and one of the most watched television shows on Nicktoons, a Nickelodeon sister station that broadcasts animated television programs. Several SpongeBob SquarePants compilation DVD’s have been sold, and a feature film of the series was released in theaters on November 19, 2004. Due to its enormous popularity, SpongeBob SquarePants has renewed for a ninth season, which will make it the longest running show in Nickelodeon’s history.
Complainant is the owner of valid, subsisting and existing United States registrations of the SPONGEBOB Marks in various International Classes. Complainant also owns the foreign language translations of these marks, including the Spanish translation of “Bob Esponja”. “Where, as here, the allegedly infringing trademark is a foreign word, the court generally apply the doctrine of foreign equivalent.” Popular Bank of Florida v. Banco Popular de Puerto Rico, 9 F.Supp.2d 1347, 1359 (S.D. Fla. 1998). “Under the doctrine of foreign equivalent, if a foreign phrase is translated into English is exactly the same as the existing English trademark, the marks are considered to be confusingly similar.” Id. The term “sponge” translates to “esponja” in Spanish, and the name Bob lacks a clear Spanish translation, so the Spanish equivalent of Sponge Bob is Bob Esponja. Complainant alleges that its marks are entitled to presumptive validity under 15 U.S.C. §1057(b).
Complainant also owns valid, subsisting and exiting international registrations for the BOB ESPONJA Mark in the following countries: Mexico, Argentina, Brazil, Portugal and Spain.
Complainant has used the SPONGEBOB Mark and the BOB ESPONJA Mark continuously since their respective first dates of use.
Complainant has numerous websites targeting its Spanish speaking customers which websites prominently feature Bob Esponja – including the countries of Spain, Mexico and Argentina.
Complainant alleges that Respondent has been named in numerous other UDRP actions and has been ordered to transfer the disputed domain names to the complainant in those proceedings. Complainant alleges that Respondent is receiving click-through fees each time an Internet user clicks on the sponsored links featured at the Disputed Domain Name. Complainant alleges that Respondent has a regular practice of registering and parking domain names which mimic third party trademarks.
The Disputed Domain Name provides only links to other websites, in the guise of offering various Bob Esponja and SpongeBob SquarePants oriented entertainment good and services, such as “JUEGO DE BOB ESPONJA” and “SPONGEBOB SUAREPANTS: Save Big on SpongeBob Square Pants Table Pads, Video Games, Bags, etc.” Presumably Respondent is generating revenue based on click-through fees for each Internet user that clicks on the aforementioned sponsored links. The goods and services listed on the Disputed Doman Name compete with those promoted by Complainant under the SPONGBOB and BOB ESPONJA Marks, the dates of first use for which all predate the inception of the website associated with the Disputed Doman Name.
5. Parties’ Contentions
The registrations for SPONGEBOB SUAREPANTS, SPONGEBOB and BOB ESPONJA expressly provide for their use in connection with online information in the field of entertainment concerning television programs and with online services providing entertainment and education information, entertainment services and interactive computer games. Thus, the BOB ESPONJA and SPONGEBOB Marks clearly occupy the territory within which the Disputed Domain Name falls.
The Disputed Domain Name is identical to the BOB ESPONJA Mark. As such the Disputed Domain Name is unquestionably confusingly similar to the SPONGEBOB SQUAREPANTS, SPONGEBOB and BOB ESPONJA Marks. Because the Disputed Domain Name and the SPONGEBOB Marks serve fundamentally identical purposes, namely to direct users to SpongeBob SquarePants content on the Internet, the goods and services offered in connection with the Disputed Doman Name will cause confusion and mistake or otherwise deceive consumers as to the source of Respondent’s goods and services and/or Complainant’s affiliation with and/or sponsorship of the Disputed Domain Name.
Complainant alleges that Respondent has made no use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services.
Complainant is not aware of any evidence that Respondent has been commonly known by the Disputed Domain Name. Where a complaint alleges that Respondent has no rights or legitimate interest with respect to the domain name, it is respondent who must come forward with “concrete evidence” rebutting this assertion, since this information is uniquely within respondent’s knowledge and control. See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
Complainant alleges that Respondent is making an illegitimate, commercial, non-fair use of the Disputed Domain Name with the intent of commercial gain, by misleadingly diverting consumers away from the legal and legitimate purchase of goods and services associated with the SPONGEBOB SQUAREPANTS, SPONGE BOB, and BOB ESPONJA Marks, and by tarnishing the SPONGEBOB SQUAREPANTS, SPONGEBOB, and BOB ESPONJA Marks. See Société Air France v. FP Transitions Pty Ltd, WIPO Case No. D2007-0988, holding that domain parking and/or the operation of a link farm in connection with the unauthorized use of a widely known trademark is “a clear indication of a lack of bona fides.”
Complainant alleges that Respondent’s website is just such a link farm trading on Complainant’s famous Marks by providing consumers with links to websites which are directly competitive with the goods and services offered by Complainant under the Marks. Complainant further alleges that against this factual and legal backdrop, Respondent’s conduct satisfies all of the indicia of bad faith identified in Société Air France case. Accordingly, there is more than sufficient evidence in the record to support a finding of no legitimate interest.
Paragraph 4(a)(ii) requires complainant to prove that respondent has no rights to or legitimate interests in the disputed domain name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Complainant alleges that it has shown an intent by Respondent to use (and has used) the Disputed Domain Name in bad faith under either Policy, paragraphs 4(b)(iii) or 4(b)(iv). Complainant alleges that the Disputed Domain Name is being used to misdirect Internet users to a link farm that, inter alia, has links to unauthorized SpongeBob SquarePants and Bob Esponja oriented entertainment information. Such a use of Complaint’s well-known SPONGEBOB Marks in the Disputed Domain Name to attract users to Respondent’s link farm website to promote goods or services which compete with Complainant’s products and services is bad faith use under the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Viacom is the owner of numerous valid, subsisting and existing federal trademark and service mark registrations with the USPTO and worldwide for the SPONGEBOB Marks.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is the Panel's belief that Respondent has not met its burden.
Respondent has not contested the assertions by Complainant that it has valid registrations of the SPONGEBOB Marks. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the SPONGEBOB Marks.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the SPONGEBOB Marks pursuant to the Policy paragraph 4(a)(i).
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to complainant’s registered trademark. It is important to note that in this case the direct translation of Complainant’s mark in Spanish does not preclude a finding of the Disputed Domain Name being confusingly similar to that mark.
Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the SPONGEBOB Marks.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the SPONGEBOB Marks pursuant to the Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name if:
(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 trademark 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 trademark or service mark at issue.
Complainant in its contentions has sustained its burden of coming forward with proof that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has chosen not to contest the allegations of Complainant.
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant alleges that it has shown an intent by Respondent to use (and has used) the Disputed Domain Name in bad faith under either Policy, paragraphs 4(b)(iii) or 4(b)(iv). Complainant alleges that the Disputed Domain Name is being used to misdirect Internet users to a link farm that, inter alia, has links to unauthorized SpongeBob SquarePants and Bob Esponja oriented entertainment information. Such a use of Complaint’s well-known SPONGEBOB Marks in the Disputed Domain Name to attract users to Respondent’s link farm website to promote goods or services which competed with Complainant’s products and services is bad faith use under the Policy.
Respondent has not disputed these allegations by Complainant. Therefore, the Panel, based upon this evidence, finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy, paragraph 4(b)(iii) and (iv) and that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <bobesponja.com> be transferred to Complainant.
Richard W. Page
Dated: September 21, 2010