Complainant is Columbia Pictures Industries, Inc. of Culver City, California, United States of America (“U.S.A.”) represented by Davis Wright Tremaine LLP, U.S.A.
Respondent is INternational Pictures of Los Angeles, California, U.S.A. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 January 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 10, 2012.
The Center appointed Richard W. Page as the sole panelist in this matter on February 16, 2012. 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
From 1978 through 1984, Complainant produced (and is the copyright owner of) the Fantasy Island television series about a mysterious island where people could come to live out their fantasies. The original series starred Ricardo Mantalban as Mr. Roarke, and featured a sidekick named Tattoo whose shout of “The plane! The plane!” is famously known. The original series has continued to be telecast in the U.S.A. and in numerous countries throughout the world since its debut in 1978. In 1998, Complainant produced a new version of this series, which was telecast on the ABC television network in the U.S.A. and also internationally. In addition to the television show, Complainant has licensed the manufacture and sale of FANTASY ISLAND-related goods.
Complainant has continuously been engaged in development and provision of various FANTASY ISLAND-related entertainment products and services, since at least the late-1970’s. Complainant owns all right, title and interest in, to and under all relevant trademarks, service marks, registrations, applications and corresponding common law marks related to FANTASY ISLAND (collectively referred to as the “FANTASY ISLAND Mark”). Complainant’s registrations include U.S. Service Mark Registration No. 1,166,825 and International Serial No. 77,847,237).
Since at least 1978, Complainant has expended, and continues to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising and building consumer recognition and goodwill in Complainant’s FANTASY ISLAND-brand goods and services under and in connection with its FANTASY ISLAND Mark.
In late 2009, Complainant discovered Respondent’s Disputed Domain Name. Complainant’s subsequent investigation revealed that Respondent was using the Disputed Domain Name to re-direct Internet users from Complainant or its products and services to Respondent’s website. Respondent’s website is a commercial search portal site displaying links to various third party websites, including websites purporting to offer television, motion picture, resort lodging and entertainment-related products and services.
Respondent’s website provides numerous links to third party websites, many of which sell and offer for sale products and services that compete directly with Complainant. Respondent’s website provides links to other websites selling or prompting television shows, books, resort services and other products that are often directly competitive with those of Complainant.
The hyperlinked headings and categories on Respondent’s website imitate or mirror names of television shows, movies, characters from television shows and movies, and other properties and/or products that one would expect to see on a website run by Complainant or that suggest that the website is supported by a company involved in the television or movie industry, such as Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that for over 30 years, the general public both in the U.S.A. and in many countries throughout the world has exclusively associated the name “Fantasy Island” with Complainant’s television series of that name. Complainant further contends that it has enforceable trademark rights in the FANTASY ISLAND Mark, which are extremely valuable and famous throughout the world. Complainant further contends that its FANTASY ISLAND Mark includes a U.S. Service Mark registration, as well as exclusive common law rights in, to and under the FANTASY ISLAND Mark.
Complainant alleges that the Disputed Domain Name is confusingly similar to the FANTASY ISLAND Mark, because it incorporates the entirety of the FANTASY ISLAND Mark.
Complainant further alleges that Respondent has no legitimate rights or interest in the Disputed Domain Name. Complainant further alleges that Respondent intentionally and wrongfully chose to register the Disputed Domain Name that is virtually identical to Complainant’s FANTASY ISLAND Mark solely to trade upon Complainant’s notoriety and goodwill. Complainant further alleges that Respondent registered the Disputed Domain Name intending and knowing that its actions would deceive, mislead and divert a large number of consumers seeking Complainant’s good and services. Complainant further alleges that Respondent’s intent alone precludes a finding of a bona fide offering of goods and/or services or a legitimate noncommercial or fair use.
Complainant asserts that Respondent is in no way associated with Complainant and has never received authorization or a license to use the FANTASY ISLAND Mark. Complainant further asserts that Respondent has made no legitimate offering of goods or services using the Disputed Domain Name. Complainant further asserts that Respondent has never been commonly known as “Fantasy Island.”
Complainant contends that Respondent is engaging in activity by confusing and misleading consumers to Respondent’s own websites for commercial gain.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraphs 4(b)(iii) and (iv). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant, Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Claim No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957 and Gorstew, Jamaica, and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant’s contentions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant is the owner of the famous FANTASY ISLAND Mark, including a U.S. Service Mark Registration. 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. Respondent has chosen not to participate in this proceeding or contest the allegations of Complainant. Therefore, the Panel finds that, for purposes of this proceeding, Complainant has enforceable trademark rights in the FANTASY ISLAND Mark.
Complainant alleges that the Disputed Domain Name is confusingly similar to the FANTASY ISLAND Mark, because it incorporates the entirety of the FANTASY ISLAND Mark.
As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that the Disputed 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 , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH). See also; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; eBay, Inc v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (where a disputed domain name incorporates a complainant’s mark in its entirety, the respondent offers directly competing goods or services, and the addition of a generic term does not help differentiate or diminish any confusion, the panel will find the domain name is confusingly similar to a mark in which a complainant has rights).
The addition of other terms such as the gTLD “.com” in the Disputed Domain Name does not affect a finding that the Disputed Domain Name is identical or confusingly similar to the complainant’s registered trademark. Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the FANTASY ISLAND Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant contends that Respondent is in no way associated with Complainant and has never received authorization or a license to use the FANTASY ISLAND Mark.
The Policy, 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.
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:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed 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 Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the allegations of Complainant are sufficient to constitute a prima facie showing and to shift the burden of production to the Respondent. Respondent has chosen not to participate this proceeding or contest the allegations of Complainant.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraphs 4(b)(iii) and (iv).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names under the Policy, paragraph 4(a)(iii). The paragraphs 4(b)(iii) and (iv) cited by Complainant are set forth below:
(ii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
The Panel accepts Complainant’s allegations that Respondent intentionally and wrongfully chose to register the Disputed Domain Name that is virtually identical to Complainant’s FANTASY ISLAND Mark solely to trade upon Complainant’s notoriety and goodwill. Complainant further alleges that Respondent registered the Disputed Domain Name for commercial gain intending and knowing that its actions would deceive, mislead and divert a large number of consumers seeking Complainant’s good and services. Respondent has chosen not to participate in this proceeding or contest the allegations of Complainant.
The Panel finds that Complainant has met the elements of proof for the Policy, paragraph 4(b)(iv). Therefore, the Panel finds that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
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 be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: February 19, 2012
Full & Egal Universal Law Academy