WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Productions LLC v. toptendiets.org
Case No. D2011-0585
1. The Parties
Complainant is Atlas Productions LLC of New Jersey, United States of America represented by the law firm Loeb & Loeb, LLP, United States of America.
Respondent is toptendiets.org of Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <atlasshruggedmovies.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2011. On April 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 3, 2011, 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. Complainant filed an amendment to the Complaint on April 7, 2011.
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 April 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 2, 2011.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 10, 2011. The Panel finds that it was properly constituted. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On June 1, 2011, Respondent sent an email to the Center that stated:
“I am the owner of ‘atlasshruggedmovies.com’
I have no motives to go into infringe on any copyrights.
I am in fact the rightful owner and am waiting the interested party to contact me and make a reasonable communications regarding the domain.
I am not permitting the transfer of this domain to any parties at this time.
Thanks for your considerations.”
Ordinarily the Panel would reject this untimely filing out of hand, but to ensure that there is no question that Respondent has been “given a fair opportunity to present its case” the Panel will treat this communication as the Response.
4. Factual Background
Atlas Shrugged is a novel by Ayn Rand that was published in 1957. Somewhat popular when first published, over the last half-century it has gained almost a cult following as a paean to the free market system and a warning against any government regulation of business. In any sense of the word this novel is famous.
In the past few years, preparations have been made to make the novel into a movie. These have included widespread pre-release, perhaps even pre-filming, publicity. The forthcoming movie or series of movies has been the subject of much publicity in the entertainment and general media. According to the Complaint, production of Atlas Shrugged: Part 1 began in 2010 and the movie was scheduled to open last month.
Complainant asserts that in 1992 it acquired “exclusive rights to produce and distribute a motion picture adaptation of the book,” which rights included the exclusive right to use “the novel’s name in connection with a movie,” by assignment. Complainant has actively promoted this movie project since 2009 or earlier.
Respondent registered the disputed domain name in July 2009. The only use to which it has been put it is a page of hyperlinks, some to movies (among them pornographic movies).
5. Parties’ Contentions
Complainant asserts common law rights in Atlas Shrugged by virtue of the novel’s fame and the pre-release publicity for the film that Complainant has generated. Respondent has never been known by the disputed domain name and has never been licensed or otherwise authorized to use the disputed domain name or the novel’s name. Use of the disputed domain name for a page of hyperlinks to other movies is not legitimate or bona fide under Policy precedent, and is a textbook example of bad faith.
Respondent’s email communication is quoted above.
6. Discussion and Findings
There is no evidence that Respondent has ever been commonly known by the designation Atlas Shrugged, and Complainant has not licensed Respondent to use its mark. The only use to which the disputed domain name has been put is a parked page with a link to pornographic movies, something not related to the words in the disputed domain name or otherwise legitimate or bona fide. The disputed domain name is similar to the mark in which Complainant claims rights, as the addition of a common word to the dominant feature of the mark according to longstanding Policy precedent does not avoid confusing similarity.
This default case presents only one issue worthy of more than perfunctory discussion: whether Complainant holds rights in the mark upon which this case is predicated. Complainant asserts that it acquired such rights (including trademark rights) to Atlas Shrugged, at least in respect to movies, by means of an assignment that took place in 1992. Complainant however submits no evidentiary support for this assertion. There is no record in any national trademark registry that Complainant holds any such rights, and no evidence at all1 that Complainant has been authorized by the novel’s author or anyone else to enforce trademark rights in the novel’s name. Unlike civil litigation in the United States the Policy itself and precedent interpreting it are clear that, first, each pleaded allegation of fact must be proven with evidence submitted with the pleading,2 and, second, that a respondent’s failure to deny a factual allegation in the complaint does not constitute an admission of the veracity of the allegation. The absence of proof of the right to enforce this mark is particularly troublesome because evidence to support it is not dependent upon discovery or inference. If Complainant did acquire trademark rights by contract, documentary or other evidence of such rights are surely available to it and not dependent upon knowledge partially or wholly within Respondent’s control.3 The absence of such evidence therefore raises doubt about Complainant’s entitlement to bring this proceeding.
This not merely a technical or mechanical pleading issue. Not only is ownership or right to enforce the mark a predicate for a Policy proceeding (Policy, paragraph 4(a)(i)), when the complainant is not the owner of a registered mark but asserts rights obtained by contract the scope of the rights may be at issue. There may for example be geographic or field of use limitations placed upon the assignee. Any such limitations may impact the assignee’s rights in a Policy proceeding.
Complainant has provided evidence to show that it has recently expended considerable funds to promote its forthcoming movie. On this basis Complainant might be said to have proven common law rights in the movie’s title.4 The forthcoming movie definitely has been well publicized, and Complainant has provided evidence of its own expenditures and other activities to publicize it. In the circumstances of this case the Panel finds such evidence sufficient to show on balance that Complainant does hold such common law rights, though the matter is not free from doubt.
The Panel’s doubt and the shaky basis for his conclusion that this basic Policy criterion has been met could easily have been avoided by submission of the contract (of assignment or otherwise) that ceded Complainant the necessary trademark rights. 5 Complainants’ professional representatives in Policy proceedings are advised to familiarize themselves with the Policy’s procedural and substantive requirements, and to comply with them, particularly those that differ from their counterparts in civil litigation, before choosing to take advantage of the cost savings and expedited resolution that the UDRP process provides.
As Complainant has established each Policy element by a preponderance of the evidence, the Panel orders, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, that the domain name <atlasshruggedmovies.com> be transferred to Complainant.
Richard G. Lyon
Dated: May 17, 2011
1 As many panels have stated, an allegation of a factual matter required to be proven under paragraph 4(a) of the Policy, is not evidence, even when that allegation is not denied. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.6; Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (“The Policy requires the Complainant to prove each of the three [Policy] elements” (emphasis in original)).
2 Rules, paragraph 3(b)(xv)(“[The complaint shall] . . . [a]nnex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies.”) (emphasis added).
3 Compare Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383
4 It should be noted that a right to publicize does not necessarily equate to or include a right to enforce a trademark. This distinction is common in franchise agreements, for example.
5 . Any trade-sensitive data not directly relevant to the existence and scope of rights under the Policy, for example consideration paid by one party to another, could of course be redacted.