WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merlin Attractions Operations Limited v. Adam West
Case No. D2014-0351
1. The Parties
The Complainant is Merlin Attractions Operations Limited of Poole, Dorset, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Lane IP Limited, United Kingdom.
The Respondent is Adam West of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <madametussaudsbangkok.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2014. On March 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the concerned registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) "[t]he [disputed] domain name has been registered to this particular registrant through [the Registrar] since September 2012";
(d) the language of the Registration Agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 15, 2014. 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 April 28, 2014, the Panel issued the Administrative Panel Procedural Order No. 1 pursuant to paragraph 12 of the Rules seeking clarification of ownership details of the trademarks relied on by the Complainant. A response to that request was received by the Center on April 30, 2014. The terms of the Procedural Order permitted the Respondent an opportunity to respond to any filing by the Complainant pursuant to the Procedural Order and extended the projected date for decision. In the event, the Respondent did not make any supplemental filing.
4. Factual Background
The Complainant owns and operates, amongst other things, the Madame Tussaud's attractions. The business now known as Madame Tussaud's can be traced back to 1777 when the future Madame Tussaud, then known by her maiden name Marie Grosholtz, made her first model wax likeness – of Voltaire. In 1795, Marie Grosholtz married Francois Tussaud. In 1802, the now Madame Tussaud moved her works to London, travelling throughout the United Kingdom and Ireland during the Napoleonic wars. In 1835, Madame Tussaud established a permanent base for her exhibition in Baker Street, London. Madame Tussaud moved the permanent base to its present site in Marylebone Road in 1884.
In addition to London, the Complainant now operates Madame Tussaud's attractions in Amsterdam, Bangkok, Beijing, Berlin, Blackpool, Hollywood, Hong Kong, Las Vegas, New York City, Orlando, San Francisco, Shanghai, Sydney, Tokyo, Vienna, Washington DC and Wuhan.
The centre in Bangkok was opened on December 4, 2010. The waxworks on display include Thai royalty, Princess Diana, Beethoven, Albert Einstein, Michael Jackson, David Beckham and George Clooney. According to TripAdvisor, the Madame Tussaud's in Bangkok is rated 39 out of 232 attractions in Bangkok. It has been granted a Certificate of Excellence and an average rating of 4 out of 5.
The Complainant has a large number of trademark registrations for MADAM TUSSAUDS or MADAM TUSSAUD'S. In Thailand, these include Trademark No. TM333508 in class 25 and SM48779 in class 41. There are also registrations as Community Trade Marks and in, amongst other places, Australia, Hong Kong, India, the United States of America.
The disputed domain name was created on March 25, 2012. It does not resolve to an active website. Instead, a page headed "HostGator.com Website Hosting" states "ERROR 403 – FORBIDDEN". There then follows a banner advertisement for Hostgator webhosting services.
5. Discussion and Findings
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above, including the registrations in Thailand for MADAM TUSSAUDS.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant's trademarks by the addition of "Bangkok" and the generic Top-Level Domain (gTLD), ".com" and, in some cases the possessive apostrophe. It is therefore not identical.
In undertaking the comparison, it is permissible in the present circumstances to disregard the ".com" component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
To the extent that the Complainant's trademarks include the possessive apostrophe, the difference with the disputed domain name can be disregarded as a mere difference in punctuation, especially as in general second level domains in a gTLD may consist only of alphanumeric characters and hyphens.1
The word "Bangkok" is a descriptive place name. Its inclusion in the disputed domain name is likely to be taken by many users of the Internet as suggesting that the disputed domain name is associated with the or a Madam Tussaud's attraction at Bangkok. Its inclusion in the disputed domain name does not dispel or negate any potential for confusion.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent can demonstrate his rights or legitimate interests in the disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
It may be inferred from the Complaint that the Complainant has not authorized the Respondent to use MADAM TUSSAUDS and that the Respondent is not associated with the Complainant or its MADAM TUSSAUDS business in any way.
The disputed domain name is plainly not derived from the Respondent's name (which is the same as the actor who played Batman in the 1960s television series of that name). From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
So far as the record in this case shows that any use is being made of the disputed domain name, that use consists of promoting Hostgator.com's web hosting services. The use of someone else's trademark to promote services not provided by or associated with that trademark owner does not constitute bona fide use under the Policy: WIPO Overview 2.0 paragraph 2.6.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
Paragraph 4(b) of the Policy provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:
(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 [disputed] domain name; or
(ii) [the Respondent has] registered the [disputed] 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 [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] 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] website or location or of a product or service on [the Respondent's] web site or location.
The instances of bad faith set out in paragraph 4(b) of the Policy are examples only, intended to illustrate types of conduct which is caught by the Policy. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
Given the long history and extensive use of the MADAM TUSSAUDS and its worldwide renown, it seems highly unlikely that the Respondent was not aware of the trademark significance of MADAM TUSSAUDS as indicating the waxwork attractions of the Complainant before he registered the disputed domain name especially as the Complainant has been successfully operating a Madam Tussaud's attraction in Bangkok (where the Respondent apparently resides) for more than a year.
As already discussed in section 5B above, the Respondent is not known as Madam Tussaud's or Madam Tussauds and appears to have no connection with the Complainant's trademarks MADAM TUSSAUD'S and MADAM TUSSAUDS.
In all of these circumstances, therefore, it is difficult, if not impossible to imagine what legitimate use the Respondent could make of the disputed domain name without in some way seeking to take advantage of the trademark significance of MADAM TUSSAUDS as indicating some association with the Complainant's business.
The Panel readily finds on the record in this case that the Respondent registered the disputed domain name in bad faith.
Further, to the extent that the Respondent is not making any actual use of the disputed domain name, it has long been established that passive holding of a disputed domain name in such circumstances constitutes use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
If the "ERROR 403 – FORBIDDEN" page to which the disputed domain name resolves constitutes use, its use is to promote the webhosting services of Hostgator.com. MADAM TUSSAUDS has no connection or association with those services and, consequently, the use of the Complainant's trademark to promote those services, without permission, constitutes bad faith under the Policy also: see e.g. WIPO Overview 2.0 paragraph 3.8.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy.
For 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 <madametussaudsbangkok.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 15, 2014
1 Application Techniques for Checking and Transformation of Names, RFC 3696.