The Complainant is Lucas Film Entertainment Company Ltd. LLC of California, the United States of America, represented by Shelston IP Lawyers, Australia.
The Respondent is Moxomo Pty Ltd (“Moxomo”) of New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with IntaServe. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2014. On April 29, 2014, the Center transmitted by email to IntaServe a request for registrar verification in connection with the disputed domain name. The request for registrar verification was re-sent to Intaserve on May 2, 2014, and again on May 8, 2014 after no response was received. After a number of phone-calls to Intaserve, the request for registrar verification was resent to Intaserve on May 12, 2014. Intaserve did not respond to the request for registrar verification. The Center sent an email to the .au Domain Administration Limited on May 20, 2014 raising serious concerns with the lack of response from the Registrar. The .au Domain Administration Limited responded to the Center on May 22, 2014, among other things stating that it had “approached the management” of the Registrar, although not disclosing what that approach had revealed.
In any event, no communication was received from the Registrar to confirm the WhoIs details. This is difficult to reconcile with the Registrar’s requirement to cooperate with the auDRP provider to ensure the efficiency and effectiveness of the proceedings, as required under paragraph 1.3 of the .au Dispute Resolution Policy – Clarification of Registrar Obligations (2003-01). This is particularly the case where, as noted by .au Domain Administration Limited in its communication to the Center in this case, “The registrar’s response plays a critical role among other things in ensuring that the information relied on by WIPO during the compliance and notification phases of the dispute is as accurate and up to date as possible.” Providing such details does not require the Registrar to participate in the proceedings as such, which, as the Clarification of Registrar Obligations indicates, the Registrar is not required to do.
On May 7, 2014, the Complainant filed an Amended Complaint specifying the remedies requested, and indicating that the Complainant has been contacted by the Respondent indicating consent to the transfer of the disputed domain name. Following communications with the Center regarding process for suspension and settlement, on June 2, 2014 the Complainant confirmed to the Center that it wished to proceed.
Notwithstanding the Registrar’s failure to reply to the Center’s multiple requests and based on available information, including the public WhoIs, the Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 June 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on July 8, 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. 4. Factual Background
The Complainant is the registered owner of a portfolio of Australian-registered marks for STAR WARS. The first of these marks was registered in 1977. The Complainant also has registrations for that mark in other countries, including the United States, United Kingdom of Great Britain and Northern Ireland, European Union and New Zealand.
The Complainant sent a “cease and desist” letter to the Respondent on February 4, 2014. The Complainant sent a follow up email on February 20, 2014. The Complainant received no reply to those communications.
The Respondent was an Australian registered company, based in Newington, New South Wales (later communications from the Complainant suggested that the Respondent was deregistered as a company at some point after the filing of the Complaint).
Given the failure of the Registrar to cooperate in verifying the WhoIs details in this case, the registration date of the disputed domain name is unknown. The Complainant notes that the “last modified date” was June 22, 2012, whereas the WhoIs of June 6, 2014 indicates “last modified date” was May 22, 2014. At the date of the Complaint, and of this decision, the disputed domain name did not resolve to an active website.
The Complainant’s mark has previously been the subject of administrative proceedings, although as a differently named complainant: e.g. Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,WIPO Case No. D2001-0700. 5. Parties’ Contentions A. Complainant
Star Wars is an American epic space opera franchise centered on a film series created by George Lucas. The principal film series consists of two trilogies. All six of the main films in the series were nominated for or won Academy Awards. All of the main films have been box office successes, with the overall box office revenue generated by the Star Wars films totaling USD 4.38 billion, making it the fifth highest grossing film ever. There have also been numerous spin offs including animated tv shows, as well as numerous books, comic books, computer and video games and licensed movie-related merchandise. The Complainant provided various evidence of the fame of the “star wars” films, including in Australia where the Respondent is based.
The Complainant says that it is clear that the STAR WARS franchise and trademark has, over the last 37 years, established an extremely strong and valuable reputation and goodwill, such that the Complainant’s marks are well known internationally and in Australia.
The Complainant notes that the disputed domain name wholly incorporates the Complainant’s registered mark for STAR WARS. The Complainant states that the generic Top-Level Domain (“gTLD”) should be ignored for the purposes of comparison. The Complainant refers to a number of prior Uniform Domain Name Dispute Resolution Policy (“UDRP”) decisions which found confusing similarity with a complainant’s mark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant refers to its “cease and desist” letter and the lack of a reply from the Respondent. The Complainant says that the Respondent has not made a bona fide use of the disputed domain name. The Complainant has also searched the history of the use of the disputed domain name and not found any prior evidence of bona fide use. The Complainant concludes that the only purpose for the Respondent’s registration of the disputed domain name was to capitalize on the goodwill in the Complainant’s trademark. It is not a trademark that a trader would legitimately choose unless they were seeking to create the impression of an association with the Complainant.
The Complainant claims, lastly, that the disputed domain name was registered and has been used in bad faith. The Respondent had no demonstrable plans to use the disputed domain name before registering it. The Respondent had actual or constructive knowledge of the Complainant’s mark. The registration of the disputed domain name prevents the Complainant from having one that corresponds to its mark. It is difficult to conceive that the use of the disputed domain name would not infringe the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complaint. 6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy. A. Identical or Confusingly Similar
The first thing which the Complainant must prove is that the disputed domain name is identical or confusingly similar to a mark in which it has rights.
There is no doubt that the Complainant has rights in the STAR WARS mark. The disputed domain name wholly incorporates that mark with no change or adornment. As the Complainant notes, in proceedings under the Policy the gTLD and the country code second-level domain suffixes are typically disregarded for the purpose of comparison. Disregarding these elements, it is plain that the disputed domain name is relevantly identical to the Complainant’s registered mark. Being identical, it is unnecessary for the Panel to consider whether it is also confusingly similar.
For these reasons, the Panel finds that the Complainant has proven this first element. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270.
Whether a respondent has rights or legitimate interests in the disputed domain name is something that is peculiarly within the knowledge of a respondent. As such, the burden of proof on the complainant is necessarily one discharged by the making of a prima facie case, and using whatever direct evidence the complainant is able to produce. In this case, there is no direct evidence of the Respondent’s motivations for registering the disputed domain name. There is no evidence as to the business of the Respondent, or the timing and circumstances in which the disputed domain name was registered. The disputed domain name does not resolve to an active website and so neither is there evidence that might have been inferred from such a site.
The Complainant has made a prima facie case against the Respondent. The Complainant has a large number of registered marks for STAR WARS, including a number of marks registered in Australia where the Respondent has its address. The Complainant’s mark is entitled to a presumption of distinctiveness. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Owens Corning Fiberglas Technology, Inc v. Hammerstone,WIPO Case No. D2003-0903. In addition, and importantly, the Panel accepts that the Complainant’s mark is very well known worldwide. The Complainant’s mark has achieved this reputation over a long period of time, through the “star wars” movies and through various “spin offs”. There was no evidence that the Complainant’s mark has any other association that might suggest the Respondent could plausibly have registered it for some purpose unconnected with the business of the Complainant. The Respondent provided no evidence to the contrary.
In these circumstances, the Panel cannot identify any basis for the Respondent having a right or legitimate interest in the disputed domain name. While the date of the registration of the disputed domain name is not known, the STAR WARS trademark has existed since before the exponential development of the Internet in the 1990’s and must have existed for a substantial period before the Respondent’s registration. The fame of the Complainant’s mark, and its exact incorporation in the disputed domain name, suggests it is highly likely that the Respondent was aware of it when it registered the disputed domain name. Paragraph 4(c) sets out how a respondent can demonstrate rights or legitimate interests in a disputed domain name. There is no evidence in the case file that the Respondent has used the disputed domain name for any of these purposes or otherwise.
For these reasons, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, any of which, if proven, may be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy. These are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 website or location.
As noted above, the Respondent did not reply to the Complaint, and there is no other direct evidence that is clearly suggestive of any of the above circumstances. Regardless, the circumstances set out in paragraph 4(b) are illustrative. Bad faith may be found in other circumstances where the Respondent knew of the Complainant’s mark, and registered the disputed domain name to exploit the value of that mark. There is a strong inference in this case that this is what the Respondent has done.
The Panel finds it likely that the Respondent was well-aware of the Complainant’s mark when it registered the disputed domain name. The evidence which points to this includes the fame of the Complainant’s mark, its place in the popular culture of Australia and world-wide, the lack of evidence that the Complainant’s mark might have other associations, and the exact incorporation of that mark in the disputed domain name. This evidence suggests that the Respondent registered the disputed domain name intending to benefit in some way from its associations with the Complainant’s mark.
Unlike the UDRP, the Policy requires that the disputed domain name was registered or subsequently used in bad faith. As the Panel has found that the dispute domain name was registered in bad faith, it is not strictly necessary to also consider whether it has been used in bad faith. However, for completeness, the Panel notes that it would also find that the disputed domain name has been used in bad faith. While the Respondent has not actively used the disputed domain name in connection with a website, it is well-established under the Policy that the passive holding of a domain name may relevantly constitute a bad faith “use” in appropriate circumstances. The Respondent’s passive holding of the disputed domain name in combination with having no rights or legitimate interests in the disputed domain name and the likelihood of being aware of the Complainant’s mark can be treated as bad faith use for the purposes of paragraph 4(a)(iii) of the Policy. Previous URDP decisions support this approach: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Bianjade Enterprises Pty Ltd v. Leigh Michael Connelly,WIPO Case No. DAU2003-0003.
The Respondent’s bad faith is further illustrated by the fact that it was informed of the Complainant’s rights after receiving a cease and desist letter requesting the transfer of the disputed domain name. See, e.g., Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556. The Respondent failed to respond to that letter. Such a failure to respond seems to the Panel, in the circumstances of this case, inconsistent with good faith conduct. The Panel infers from this failure that the Respondent simply had no good reply.
For these reasons, the Panel finds that the Complainant has also established its case under paragraph 4(a)(iii) of the Policy. 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 disputed domain name, , be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: July 21, 2014
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