WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Twentieth Century Fox Film Corporation v. WTSO Case No. D2008-1982 1. The Parties
The Complainant is Twentieth Century Fox Film Corporation of Los Angeles, California, United States of America (“USA”) represented by Cantor Colburn LLP, USA.
The Respondent is WTSO of Glencoe, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, Inc. (the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on December 23, 2008, and in hard copy on December 29, 2008. The Complaint as filed identified the Respondent as Domains by Proxy, Inc.
The Center transmitted its request for registrar verification to the Registrar on December 24, 2008. The Registrar responded on December 24, 2008, stating that it had not received a copy of the Complaint, that it was the Registrar of the Domain Name, but that Domains by Proxy, Inc. was not the registrant. The Registrar identified the registrant as WTSO and provided the full contact details in respect of the registration on its WhoIs database. The Registrar further confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration; that the Domain Name would expire on October 1, 2009, and would remain locked during this proceeding; that the registration agreement was in English; and that the registrant had submitted in the registration agreement to the jurisdiction at the location of its principal office for court adjudication of disputes concerning or arising from the use of the Domain Name.
On December 24, 2008, an email was sent to the Center from the email address indicated in the contact details for the Domain Name on the Registrar's WhoIs database, inquiring as to when the Domain Name would be active again. The Center replied on January 8, 2009, that the Center was verifying whether the Complaint satisfied the formal requirements of 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”); that once the formal requirements have been confirmed, notification would be given that the proceeding has been commenced; and that the Domain Name had been placed and would remain on Registrar lock during the course of the proceeding.
A further email of January 14, 2009, sent to the Center from the email address The Center informed the Complainant by email of January 8, 2009, that the Registrar had identified the registrant of the Domain Name as WTSO of Glencoe, Ontario, Canada, and invited the Complainant to file an amendment to the Complaint. The Complainant filed an amendment to the Complaint to substitute WTSO as the Respondent by email on January 13, 2009, and in hard copy on January 16, 2009. The Panel is satisfied that the Respondent is correctly identified in this amendment in accordance with the information provided by the Registrar; Domains by Proxy, Inc. appears to be merely a privacy or proxy registration service. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the UDRP, the Rules and the Supplemental Rules. In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 14, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 5, 2009. The Center appointed Jonathan Turner as the sole panelist in this matter on February 17, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background The Complainant or one of its affiliates broadcasts a popular and long-running animated television series called “The Simpsons”. It has also supplied episodes of the series on DVDs and through the Internet and has produced a commercially successful film based on the series called “The Simpsons Movie”. The Complainant has further exploited its goodwill in the series by licensing a wide variety of merchandise bearing the name “The Simpsons”. The Complainant has registered “The Simpsons” as a trade mark in numerous countries. The Respondent registered the Domain Name on October 2, 2007, and has used it to make unauthorised webcasts of episodes of the “The Simpsons” available to Internet users. The Respondent's website also displayed advertising by third parties. 5. Parties' Contentions A. Complainant The Complainant contends that it has registered and unregistered rights in the mark THE SIMPSONS and that the Domain Name is confusingly similar to this mark, in that it comprises the distinctive name “The Simpsons” combined with the descriptive terms “watch” and “online”. The Complainant submits that the Respondent has no legitimate interest in the Domain Name, pointing out that it was registered after the Complainant established rights in the mark “The Simpsons”, that there is no relationship between the Complainant and the Respondent, and that the Respondent's only purpose in registering the Domain Name was to offer infringing content for commercial gain. The Complainant further alleges that the Domain Name was registered and is being used in bad faith. It states that the Respondent has sought to profit from an unauthorised association with its mark by offering full episodes of its series online without its permission. It submits that the layout, colour scheme and content of the Respondent's website are confusingly similar to its own website. It contends that the Respondent registered the Domain Name in order to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with its mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or service. According to the Complainant, the Respondent is not only obtaining commercial gain in the form of advertising revenue, but is also disrupting the Complainant's legitimate business by diverting Internet users from its website to the Respondent's website. The Complainant seeks a decision that the Domain Name be transferred to it. B. Respondents As stated above, the registrant of the Domain Name stated that it had no interest in the case and did not reply to the Complainant's contentions. 6. Discussion and Findings A. General In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondents' default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. It has been held that a genuine unilateral consent on the part of a respondent to the transfer of a disputed domain name to a complainant provides a basis for an immediate order for transfer without further consideration of the requirements of paragraph 4(a) of the UDRP: see John Bowers QC v. Tom Keogan,WIPO Case No. D2008-1720 and cases cited there. The Panel considers that in the present case the registrant's indication that he has no interest in the case falls short of a genuine consent to transfer. The Panel will therefore consider whether the requirements of paragraph 4(a) have been satisfied, while bearing in mind that the Complainant's evidence has not been disputed. B. Identical or Confusingly Similar The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark THE SIMPSONS The Panel further finds that the Domain Name is confusingly similar to this mark, in that consists of this mark together with the descriptive elements, “watch” and “online” and the generic top level domain suffix. To many Internet users the Domain Name would indicate a website of the Complainant on which they can watch episodes of “The Simpsons”. The first requirement of the Policy is satisfied. C. Rights or Legitimate Interests The Panel finds on the evidence that the Respondents have not used the Domain Name for a bona fide offering of goods or services. The provision of illicit webcasts of a television series is not a legitimate offering in the same way as the resale of genuine products which have been placed on the market by the owner of the mark. Furthermore, the website at the Domain Name is misleading in that it implies that it is a website of the Complainant providing legitimate webcasts of the Complainant's series. The conditions of paragraph 4(c)(i) of the Policy are not met. The Respondents are not commonly known by the Domain Name and are not making legitimate non-commercial or fair use of it. Paragraphs 4(c)(ii) and (iii) of the Policy do not apply. The Panel finds that there is no other basis on which the Respondents could claim to have a right or legitimate interest in respect of the Domain Name. The second requirement of the Policy is satisfied. D. Registered and Used in Bad Faith The Panel finds on the evidence that the Respondents are using the Domain Name to attract Internet users to the website to which it is pointed for commercial gain in the form of advertising revenue by creating a likelihood of confusion with the Complainant's mark THE SIMPSONS as to the source, sponsorship, affiliation or endorsement of that website and the illicit webcasting of episodes of “The Simpsons” through it. This constitutes evidence of bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy. This presumption has not been displaced by any countervailing evidence. The Panel accordingly concludes that the third requirement of the Policy is satisfied. 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, be transferred to the Complainant. Jonathan Turner Dated: March 3, 2009
Sole Panelist
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