WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alloy Entertainment LLC v. Dauben Inc. d/b/a Texas International Property Associates Case No. D2009-0837 1. The Parties
The Complainant is Alloy Entertainment LLC of New York, New York, United States of America, represented internally.
The Respondent is Dauben Inc. d/b/a Texas International Property Associates of Dallas, Texas, United States of America, represented by Jan Paul Guzman of Rothstein Rosenfeldt Adler, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with WebNIC.cc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2009. On June 24, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On June 25, 2009, Compana LLC (registrar at the time of the Complainant's filing of the Complaint with the Center) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information. 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 the Respondent of the Complaint, and the proceedings commenced on July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. The Response was filed with the Center on July 28, 2009.
After receipt of Response, it came to the Center's attention that the disputed domain name was no longer registered with Compana, LLC, but that apparently a transfer to a different registrar and registrant had been allowed to occur in violation of paragraph 8 of the Rules. In reply to a query from the Center as to this situation (on August 3, 2009), WebNIC.cc through its reseller stated:
In regard to Case No. D2009-0837 / , please note that ‘Modern Outlook Sdn Bhd' is a whois privacy service that has been removed and that the Whois information cited below for Texas International Property Associates has been reinstated.
In addition, the domain name currently resides at W as the registrar and is currently locked. As can be re-affirmed by W, they are willing to follow the appropriate UDRP procedures and avoid any further unnecessary delay and permit the domain name to reside here for the remainder of the proceedings.
While the reason for this is not clear, the Panel is satisfied that notice to the Respondent was effective and that the registrars Compana LLC and/or WebN will give effect to this decision under the terms of their obligations under their Registrar Accreditation Agreement(s) and the UDRP.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 6, 2009. 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, a United States of America company, is the successor-in-interest to the ownership of all rights in a series of books published under the title, “The Vampire Diaries.” The books have been sold continuously since 1991, the last republication having occurred in 2007. The United States Patent and Trademark Office (“USPTO”) registration of the mark, THE VAMPIRE DIARIES (Registration No. 2161987, issued June 2, 1998), filed by the Complainant's predecessor-in-interest, was cancelled on March 5, 2005.
The Respondent, a United States of America company, registered the disputed domain name, , and the record of registration was created on February 15, 2005. The Respondent uses the name to furnish Internet users with links to third party websites; the Respondent collects fees whenever these users click on the third party website icons. 5. Parties' Contentions A. Complainant
- The Complainant is the successor-in-interest to rights in a series of books published under the title “The Vampire Diaries.” Publication started in 1991.
- The Complainant's predecessor-in-interest obtained a valid USPTO trademark to the mark, THE VAMPIRE DIARIES. That registration lapsed due to an inadvertent clerical error.
- The Complainant has common law rights in THE VAMPIRE DIARIES mark. The books bearing that title have been commercially available continuously since 1991, with reprints occurring in both 2001 and 2007. The Complainant owns the sole right to exploit the books in derivative form and has commissioned an author to write three additional books for the series. The Complainant has also licensed production of a television series based on the books to a United States of America television production company. It is scheduled for distribution by a United States of America television network in the fall of 2009.
- The Complainant owns and operates a website at the domain name .
- The disputed domain name, , is identical to the Complainant's trademark, THE VAMPIRE DIARIES.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no authorization to use the Complainant's THE VAMPIRE DIARIES mark. The Respondent is not now and has never been commonly known by the disputed domain name. The Respondent operates a website at that domain name that does not provide a bona fide offering of goods or services. The Respondent is not making a noncommercial or fair use of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The Respondent would not have selected the disputed domain name but for knowledge of the Complainant's mark. The website found at that name offers links to third party websites that furnish products and services relating to the horror fiction genre. As such, the Respondent is intentionally using the disputed domain name to generate revenue through the likely confusion between the name and Complainant's trademark.
- The Respondent is a serial cybersquatter and has suffered many adverse UDRP rulings in the past. B. Respondent
- The USPTO registration held by the Complainant's claimed predecessor-in-interest was cancelled on March 5, 2005 – more than four years prior to the instant UDRP filing – for failure to file an affidavit supporting the continued use of the trademark in commerce. Therefore, the Complainant effectively abandoned its trademark rights in the mark, THE VAMPIRE DIARIES.
- Three years of discontinued use of a trademark is prima facie evidence of abandonment, so the Complainant has no rights in its claimed trademark even if the disputed domain name is confusingly similar to that mark.
- The Complainant's registration of the domain name, , confers upon it no relevant rights in this proceeding, since such registration occurred on March 29, 2009, only shortly before filing of the Complaint.
- The third party with whom the Complainant has claimed agreement for production of a television series has filed a trademark application with the USPTO for rights in the mark, THE VAMPIRE DIARIES. This is further evidence that the Complainant now lacks exclusive rights to that mark.
- The Complainant has the burden to prove the Respondent has no rights or legitimate interests in the disputed domain name. Because the Complainant abandoned its trademark rights in its mark, the Complainant has no authorization to give with respect to that mark.
- The Respondent's use of the disputed domain name, to furnish Internet users with click-through access to third party commercial websites, is a bona fide offering of goods and services. The Respondent provides its website offerings in conjunction with Internet industry leaders, Google and Yahoo. Per contractual agreement, a third party, not the Respondent, is responsible for the exact content contained in Respondent's website.
- The Complainant fails to demonstrate that the disputed domain name was registered and is being used in bad faith. The Complainant's trademark registration has lapsed, and the Complainant has made no attempt to revive it. Also, the Complainant has not alleged that the Respondent registered the disputed domain name with the intent to sell it to the Complainant.
- The Respondent's click-through use of the disputed domain name is not necessarily evidence of bad faith. The Complainant presented no evidence that Internet users have actually confused the disputed domain name with the Complainant's claimed trademark. 6. Discussion and Findings
Policy paragraphs 4(a)(i) – (iii) require that, before the Panel directs a transfer of the disputed domain name, , the Complainant must demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name is registered and being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant has conceded that it does not have a currently valid trademark registration in any jurisdiction for its claimed mark, THE VAMPIRE DIARIES. However, this circumstance does not bar the Complainant from asserting its rights in the mark, as the overwhelming consensus of prior UDRP rulings have held that common law trademark rights are sufficient to satisfy Policy paragraph 4(a)(i) requirements. See, Bronco Wine Company v. Midnight Wine Cellars a/k/a Joe Thrift, NAF Claim No. 97740; and Stanford Microdevices, Inc. v. Sheryl Morace,WIPO Case No. D2001-0382 (“Given that United States law protects unregistered marks, Complainant (a United States company) can prevail under the first factor if it can show sufficient use of the mark in U.S. commerce to create common law trademark rights.”).
The Complainant bases its claim of common law rights in THE VAMPIRE DIARIES mark on the lapsed USPTO registration it inherited from its predecessor-in-interest, which was in effect from 1998 to 2005, and the continuous use of the mark in commerce since 1991. The Complainant cites as evidence of continued use its ongoing publication and sale of books bearing that title – republication having occurred most relevantly in 2007 – and its production license for a television series of the same name. The Respondent does not dispute any of these claims, and thus the Panel accepts them as true. Accordingly, the Panel finds that this commercial activity is enough to sustain the Complainant's contention that it owns common law rights in the mark, THE VAMPIRE DIARIES, for purposes of paragraph 4(a)(i).
The disputed domain name, , differs minimally from the Complainant's trademark, THE VAMPIRE DIARIES, as only the initial definite article “the” is omitted along with the space between the second and third words. Naturally, the disputed domain name is in all lower case letters and a gTLD is added to the end, distinctions which are immaterial in a UDRP case comparability examination. Following the precedents set in prior Policy cases, the Panel finds that, despite such minor differences, the disputed domain name is confusingly similar to the Complainant's trademark. See, The Weather Channel, Inc. v. Versata Software, Inc.,WIPO Case No. D2009-0548 (finding to be confusingly similar to THE WEATHER CHANNEL, and stating “[t]he presence or absence of the word ‘the' does not affect the idea, or impression, created by the Complainant's mark…”); The Pensions Advisory Service Ltd v. Labitrav,WIPO Case No. D2008-1161 (finding that the domain name, , was confusingly similar to the common law trademark, THE PENSIONS ADVISORY SERVICE, and noting “[t]he omission of the definite article ‘the' does not remove the risk of confusion.”).
In view of the above, the Panel rules that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent contends correctly that the Complainant has the burden of proving that the Respondent has no rights or legitimate interests in the disputed domain name. However, countless prior Policy panels have held that, should a complainant establish a prima facie case with respect to this issue, the burden then shifts to the corresponding respondent. See AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200 (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); and Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828.
In the instant case, the Complainant has sustained such a prima facie case by furnishing the Panel with concrete evidence of the Complainant's rights in a trademark that is confusingly similar to the disputed domain name and by asserting that permission was never granted the Respondent to use said trademark.
Eschewing rebuttal to said prima facie case based on paragraphs 4(c)(ii) or 4(c)(iii) of the Policy, the Respondent contends that it has rights or legitimate interests in the disputed domain name per paragraph 4(c)(i). The Respondent asserts that its use of the disputed domain name to host a website that provides links to third party websites, in return for click-through fees from such third parties, constitutes a “bona fide offering of goods or services.”
To support its position, the Respondent relies heavily on the prior UDRP case, Super Supplements, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0244. However, in that case, the panel noted that such click-through use is bona fide only when the taint of bad faith is absent. In ruling for the respondent in that case, the panel noted that registration of the domain name under consideration occurred in October 2005, before registration of the corresponding trademark in August 2007. That finding prompted the panel to conclude that there was no bad faith registration or use of said domain name.
In this case, the Respondent concedes that when it registered the disputed domain name, , on February 15, 2005, the USPTO trademark registration for THE VAMPIRE DIARIES was still in force; not lapsing until March 5, 2005. Clearly, as evidenced by the number of previous Policy rulings in which it has taken part, the Respondent is certainly not a novice in the registration of domain names. To the contrary, the Respondent implies that this is its primary (if not sole) business. As such, the Panel believes that the Respondent did conduct, or should have conducted, a cursory check of existing USPTO trademark registrations before registering the disputed domain name. Such check did disclose, or would have disclosed, at the time of the domain name's registration the Complainant's valid trademark registration. Consequently, the Panel, as noted below, views this circumstance as bad faith registration of the domain name.
Ergo, the Panel concludes that the decision rendered in Super Supplements, supra, does not apply to the case at hand. In addition, the Panel can cite many prior UDRP rulings where using a disputed domain name to link Internet users to websites of third parties in order to garner click-through fees is not a “bona fide offering of goods or services.” See, for example, St. Lawrence University v. Nextnet Tech c/o Domain Dept, FA 881234 (“Respondent is commercially benefiting from redirecting Internet users who reach Respondent's website to third-party websites, by earning “click-through” fees. This use is not a bona fide offering of goods or services under Policy [paragraph] 4(c)(i)…”); and MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050.
Accordingly, the Panel finds that the Complainant has sustained its burden to show that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As noted above, the Panel believes that the Respondent acted in bad faith when it registered the disputed domain name. The Panel concludes that, given the apparent nature of the Respondent's business, it was, or should have been, well aware that it was using an established trademark when it registered the name.
However, the Policy requires that the Respondent must be found also to have been using the disputed domain name in bad faith.
The Complainant contends, and the Respondent does not dispute, that the website attached to the disputed domain name links Internet consumers to “horror fiction genre” websites of third parties for the Respondent's commercial benefit via the collection of click-through fees. Although both “vampire” and “diaries” are common English language, i.e., dictionary words, the Panel believes that their combination would not be readily expected. As a result, the Panel believes that the Respondent uses that combination solely because the Complainant has popularized it through the mass publication of books under a nearly identical title. Thus, the Panel concludes that the Respondent seeks to maximize the number of Internet users coming to its website under the reasonable assumption that a significant number (if not the majority) will confuse the disputed domain name with the Complainant's common law trademark. In doing so, the Panel finds that the Respondent has run afoul of the circumstance cited in Policy paragraph 4(b)(iv), which leads to a finding of bad faith use:
"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] web site or location or of a product or service on [the Respondent's] web site or location".
The Respondent's explanation that the specific content of its website is selected by a third party, and not the Respondent itself, is not persuasive on this issue. The Panel, following the reasoning of prior Policy panels, holds the Respondent ultimately responsible for all content appearing on its website. For example, see State Farm Mutual Automobile Insurance Company v. Richard Pompilio, NAF Claim No. 1092410 (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately Respondent who is responsible for how its domain name is used.”); and Ideal Products, LLC v. Manila Industries, Inc., NAF Claim No. 819490 (“Respondent cannot duck its responsibility for the site by saying that others choose the content.”).
As a result, the Panel finds that the Complainant has sustained its burden in proving that the disputed domain name was registered and is being used in bad faith. 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.
Dennis A. Foster
Sole Panelist
Dated: August 21, 2009
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