Summit Entertainment, LLC v. Direct Privacy ID 1B75E
Claim Number: FA1108001404119
Complainant is Summit Entertainment, LLC (“Complainant”), represented by Jill M. Pietrini of Manatt, Phelps & Phillips, LLP, California, USA. Respondent is Direct Privacy ID 1B75E (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <breakingdawnthemovie.com>, registered with Directnic, Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2011; the National Arbitration Forum received payment on August 25, 2011.
On August 30, 2011, DIRECTNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <breakingdawnthemovie.com> domain name is registered with Directnic, Ltd. and that Respondent is the current registrant of the name. Directnic, Ltd. has verified that Respondent is bound by the Directnic, Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@breakingdawnthemovie.com. Also on September 7, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Summit owns the common law rights in the word mark BREAKING DAWN, which Summit has used in interstate and foreign commerce within and outside of the United States of America since June 20, 2010 for motion pictures and related entertainment and media and promoted the upcoming motion picture. Before June 20, 2010, Summit had engaged in interstate and foreign commerce by licensing the BREAKING DAWN mark to third parties who create or distribute a vast array of products and services, including cosmetics and non-medicated skin care; candles and lamp oils; air fresheners, deodorants and bandages; metal items; media hardware and software; lighting products; jewelry; paper products; leather goods; plastic, cork, vinyl and resin products; housewares; lanyards and cords; textiles; clothing; personal accessories; toys and sporting goods; and the licensing of merchandise and intellectual property associated with motion pictures.
Summit has filed 18 applications to register the trademark BREAKING DAWN with the United States Trademark and Patent Office (“PTO”). The trademark applications are filed in the following classes and assigned the following serial numbers by the PTO:
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“BREAKING DAWN” U.S. TRADEMARK APPLICATIONS |
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Serial Number |
Class |
Goods and Services[1] |
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85/229,489 |
3
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Personal care products, cosmetics, nail care products, fragrances and incense. |
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85/229,490 |
4
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Candles and lamp oils |
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85/229,491 |
5
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Air fresheners, bandages for skin wounds, car deodorizers, and room deodorants |
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85/229,492 |
6
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Metal key chains, metal bag clips, non-luminous and non-mechanical metal signs, metal boxes, and metal door knockers |
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85/229,496 |
9
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Computer products, electronic devices and audio/visual products containing motion pictures, cellphone products, camera products, slot machines, and eyewear. |
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85/229,497 |
11
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Book lights, candle lamps, flashlights, lamps, lamp shades, lanterns, electric night lights, ornamental fountains, and pen lights |
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85/229,498 |
14
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Brass wrist cuff bracelets, clocks, dog tags for wear by humans for decorative purposes, jewelry, jewelry boxes, lapel pins, medals, rings, rubber bracelets, silver wrist cuff bracelets, watch bands, watch bracelets, and watches |
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85/229,499 |
16
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Stationery products, paper products, magazines, books, lithographs, temporary tattoos, photographs mounted as life-size cardboard cutouts, stickers and kits containing sticker books, magnets and figurines featuring fictional characters; |
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85/229,501 |
18
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Various carrying cases, key chains of leather and imitation leather, luggage, pet clothing, pet collars, purses, umbrellas, wallets |
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85/229,502 |
20
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Plastic bag clips, bar stools, beach chairs, bulletin boards, cat scratching posts, corks for bottles, decorative boxes of plastic or wood, decorative wall plaques of plastic or wood, directors chairs, drawer pulls of plastic or wood or substitutes therefor, key chains made of plastic, letter boxes not of metal or masonry, mirror picture frames, handheld mirrors, non-metal dog tags, non-metal wall hooks, personal compact mirrors, picture frames, pillows, plastic banners, plastic novelty license plates, rubber key caps, wind chimes, window shades, and wrist cuffs made of resin; and vinyl appliques for attachment to windows, mirrors and other solid surfaces |
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85/229,503 |
21
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Beverageware, and accessories therefor bottle openers, candle candy dishes, ceramic figurines, compacts sold empty, containers for household or kitchen use, decorative plates, dishes, lunch boxes with thermal containers, meal trays, napkin holders, piggy banks not made of metal, ornamental glass spheres, pet feeding dishes, portable coolers, salt and pepper shakers, serving trays, vases, waste baskets, makeup applicators, hair brushes, hair combs, and dinnerware |
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85/229,504 |
22
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Lanyards for holding key chains, key fobs, eyewear, portable electronic devices, badges, identification cards, bottles and containers, pens, keys, toys, charms and whistles; all-purpose straps, bungee cords, canvas bags for laundry, and multi-purpose cloth bags |
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85/229,507 |
24
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Bed linen, bath linen, cloth banners, cloth coasters, curtains, decorative wall hangings of textile, and table linens |
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85/229,508 |
25
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Clothing, aprons, gloves, leggings, mittens, neckties, scarves, belts; footwear; headwear; and wrist bands made of cloth, leather, or imitation leather |
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85/229,509 |
26
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Armbands, belt buckles, embroidered or cloth patches for clothing, ornamental novelty buttons, ribbons and bows for gift wrapping, shoelaces, and zipper pulls; hair accessories |
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85/229,510 |
28
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Toys, games, playthings, sporting goods, Christmas stockings, Christmas tree ornaments and decorations, Christmas tree skirts, pet toys, playing cards, snow globes |
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85/229,512 |
41
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Entertainment in the nature of ongoing dramatic television programs; production and distribution of motion pictures; providing information relating to motion pictures, television programs and literary works; providing a website featuring information on motion pictures, television programs, literary works and music; providing online computer games |
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85/229,513 |
45
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Licensing of merchandise and intellectual property associated with motion pictures; providing online information on the licensing of merchandise and intellectual property associated with motion pictures; and providing a selection of online greeting cards |
ICANN Rule 3(b)(viii).
This Complaint is based on the following factual and legal grounds:
Summit has been financing, producing and distributing films and related entertainment products since 1991. As part of that business, Summit also enters into licenses with third parties who create and distribute goods and services which bear trademarks that Summit owns or is allowed to sublicense.
Stephenie Meyer is the author of several works of fiction which will be referred to herein as the “Twilight Novels.” Specifically, the four Twilight Novels are titled Twilight, New Moon, Eclipse and Breaking Dawn. The four Twilight Novels, which were published between 2005 and 2008, have been a global success, selling millions of copies and being translated into more than thirty languages.
Stephenie Meyer has licensed the film rights of the Twilight Novels to Summit. As part of the license, Stephenie Meyer has authorized Summit to create and distribute (or to enter into licenses with third parties to create and distribute) goods and services to be sold under the names of the various Twilight Novels, and Summit is the owner of the trademarks associated with the Twilight Novels as used for the motion pictures, DVDs featuring the motion pictures, and merchandise associated with the motion pictures.
Summit has produced and released film versions of the first three Twilight Novels, which are titled Twilight, The Twilight Saga: New Moon (“New Moon”), and The Twilight Saga: Eclipse (“Eclipse”) (collectively the “Twilight Motion Pictures”.). Twilight was released in November 2008, New Moon was released in November 2009, and Eclipse was released in June 2010. All of the Twilight Motion Pictures were released in theaters and in home video formats in the United States and internationally. The first three Twilight Motion Pictures have been enormously successful and popular, generating substantial revenue and third-party recognition as well as earning industry awards.
Summit is currently producing the filmed version of the fourth Twilight Novel, Breaking Dawn. Due to the length and complexity of the book, the filmed version of Breaking Dawn will be released as two separate motion pictures, which are titled The Twilight Saga: Breaking Dawn ‑ Part 1 (which is currently scheduled to be released in the United States on November 18, 2011) and The Twilight Saga: Breaking Dawn ‑ Part 2 (which is currently scheduled to be released in the United States on November 16, 2012).
In July 2007, Summit optioned the motion picture rights to the Twilight series and immediately began to use the marks TWILIGHT, NEW MOON and ECLIPSE – the titles of the three Twilight Novels which had been completed up to that point -- in interstate commerce. Without limitation, Summit used the marks while engaging in commerce with potential financing sources, with actors and creative elements (such as potential directors), with motion picture exhibitors, with overseas motion picture distributors, with advertising and media buying agencies, with the creators of third party licenses for products and services which could be released in conjunction with the Twilight Motion Pictures, with home video distributors and retailers, and with consumers.
Summit at all times anticipated that it would produce and release motion pictures of all of the Twilight Novels.
Stephenie Meyer announced in or before February 2007 that the working title of the fourth Twilight Novel was Breaking Dawn.
As part of its agreement with Stephenie Meyer, Summit owns the trademarks BREAKING DAWN, ECLIPSE, TWILIGHT, and NEW MOON for use with motion pictures, DVDs featuring the motion pictures, and merchandise associated with motion pictures. After that Breaking Dawn was announced as the title of the fourth Twilight Novel, Summit began to use the trademark BREAKING DAWN in interstate commerce within and outside of the United States to promote the Breaking Dawn motion pictures and began to license the right to use such mark for merchandise.
Summit’s Twilight Marks have become famous due to the phenomenal, unprecedented success of the Twilight Motion Pictures and Summit’s licensed products derived therefrom, which has been noted in Summit Entertainment, LLC v. Topics Entertainment, Inc., United States District Court, Case No. 10-CV-939-GHK before the Honorable Gary Fees in granting Summit’s motion for preliminary injunction against Topics Entertainment. Summit has obtained injunctive relief relating to its Twilight property in other court cases as well.
In creating web pages to promote the Twilight Motion Pictures and related merchandise, Summit has selected web pages that follow the specific format of the title of the book followed immediately by the words “the movie” with no intervening punctuation (such as a hyphen). Thus, Summit registered and used -- and continues to use -- the domain name <twilightthemovie.com> to promote the first film, the domain name <newmoonthemovie.com> to promote the second film, and the domain name <eclipsethemovie.com> to promote the third film.
Based on this practice, an ordinary consumer of Summit’s Twilight Motion Pictures or of the related merchandise would expect that the fourth film would be marketed by Summit at the domain name <breakingdawnthemovie.com>. In addition, an ordinary consumer would expect that Summit was the registrant of the domain name <breakingdawnthemovie.com> and would expect that Summit was the source of origin of the web page visible at that domain name.
Summit is not the registrant of <breakingdawnthemovie.com> (the “Domain Name”). Summit has no ownership or control over the Domain Name. Currently, Summit is marketing the fourth film at the domain name <breakingdawn-themovie.com>, with a hyphen between the terms “breaking dawn” and “the movie.”
The current registrant and technical contact for the Domain Name is a company in the Cayman Islands named Direct Privacy Ltd. Direct Privacy Ltd. is a private domain name registrar which operates in conjunction with the domain name registrar Directnic Ltd. The person who controls the Domain Name is a person who has chosen to hide his or her identity behind Direct Privacy Ltd. and who is therefore referred to in these proceedings as Respondent Jane Doe.
The Domain Name was registered by Respondents on June 27, 2008 – after Stephenie Meyer announced that Breaking Dawn was the working title of the fourth book, and after Summit began to use the domain name <twilightthemovie.com> to promote the first motion picture in the series. By June 27, 2008, a potential cybersquatter acting in bad faith (such as Respondent Jane Doe) could have reasonably guessed that Summit intended to use the domain name <breakingdawnthemovie.com> to promote the motion picture adaptation of the Breaking Dawn novel given Summit’s prior registration and use of <twilightthemovie.com>.
The web page which exists at <breakingdawnthemovie.com> is principally a “parked” web page. The web page contains almost no content. It consists of a series of film-related terms such as “Dvds Online” and “Bollywood”, which link to other lists of links which, in turn, link to entertainment-industry-related web sites. The web page at <breakingdawnthemovie.com> appears intended to divert consumer attention away from authorized Breaking Dawn motion picture sites and to generate revenue via click-through income and the sale of links. The web page at <breakingdawnthemovie.com> does not contain any commentary, analysis, news or other evidence of potentially good faith use.
There is no evidence that Respondent Jane Doe has acquired trademark rights in the trademark BREAKING DAWN. None of the Respondents has been issued a license by Summit to use the BREAKING DAWN mark. None of the Respondents has been authorized by Summit to conduct business on its behalf. Summit has not authorized Respondent Direct Privacy Ltd. to register or host the Domain Name.
Respondents’ use and registration of the Domain Name is confusingly similar to Complainant’s mark, Respondents have no legitimate interests in the Domain Name, and Respondents are using the Domain Name in bad faith. The UDRP was designed to address exactly this kind of misconduct and to allow trademark owners to recover domain names containing their marks.
In order to prevail in this proceeding, Complainant must establish three elements: (1) the Domain Name is identical to or confusingly similar to Complainant’s trademark, (2) Respondents have no rights or legitimate interests in the Domain Name, and (3) Respondents registered and are using the Domain Name in bad faith. Complainant has met that test.
ICANN Rule 3(b)(ix)(1-3). ICANN Policy ¶4(a)(i-iii).
Summit is the owner of trademark rights in BREAKING DAWN. These rights are evidenced by, without limitation, the facts that Summit has been using the BREAKING DAWN mark in interstate commerce since June 2010, it was well known that Summit acquired the right to produce motion pictures related to all of the Twilight Novels and the Twilight Motion Picture was a huge success, Summit has filed 18 trademark applications to register BREAKING DAWN with the PTO, and Summit is currently using the domain name <breakingdawn-themovie.com> to promote its upcoming motion pictures to be titled The Twilight Saga: Breaking Dawn – Part 1 and The Twilight Saga: Breaking Dawn – Part 2.
A party may file a UDRP action to protect common law trademark rights. CBS Broadcasting, Inc. f/k/a CBS, Inc. v. Nabil Z. Aghloul, WIPO Case No. D2004-0988 (finding protectable rights in unregistered common law mark). Having used the trademark BREAKING DAWN, Summit has common law rights in such mark and therefore standing to bring this Complaint.
The fact that the Domain Name selected and registered by Respondents differs from Summit’s currently used domain name by the exclusion of a hyphen is of no significance. The “use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.” Chernow Communications, Inc. v. Jonathan D. Kimball, Case No. D2000-0119 (WIPO May 18, 2000). Neither does elimination of the space between the terms of a mark. George Weston Bakeries Inc. v. Charles McBroom, Claim No. FA0703000933276 (NAF April 25, 2007). Consequently, Respondents’ domain name <breakingdawnthemovie.com> is identical, for UDRP purposes, to Summit’s currently used domain name <breakingdawn-themovie.com>.
UDRP panels have recognized many times that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that such a domain name is identical or confusingly similar to a complainant’s registered mark. See F. Hoffmann-LaRoche AG v. George McKennitt, Case No. D2005-1300 (WIPO Feb. 6, 2006); Hoffmann-La Roche Inc. v. Patsy Hail, Case No. D2008-1343 (WIPO Oct. 31, 2008). Here, Respondents have incorporated the entirety of Summit’s mark BREAKING DAWN into their Domain Name. On this basis alone, the Domain Name should be ordered transferred to Summit.
Respondents’ addition of the words “the movie” to Summit’s mark does not mitigate the confusing similarity between the disputed Domain Name and Summit’s trademark. The mere addition of generic or descriptive terms to a complainant’s mark does not negate the confusing similarity of a respondent’s domain name. See, e.g., Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, Case No. D2001-0026 (WIPO March 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); Space Imaging LLC v. Stephen J. Brownell, Case No. AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).
Registrants who merely add the term “the movie” or “the film” to an established trademark are routinely ordered to transfer their domain names – particularly when a motion picture incorporating the trademark is in production and when the circumstances reveal that the registrant knew of the film or of the complainant’s interest in the mark at the time the domain was registered. In a factually analogous decision, a WIPO Panel ordered the transfer of <harrypotterfilm.com> and similar domain names which incorporated the world-famous HARRY POTTER mark. Time Warner Entertainment Co. v. HarperStephens, Case No. D2000-1254 (WIPO Dec. 13, 2000). In that case – as in Summit’s instant case – the mark originated from a best-selling series of fantasy books, the author licensed the use of the mark to the motion picture studio, the studio had filed multiple federal trademark applications, the studio had generated considerable goodwill by promoting the upcoming motion pictures, and the respondent registered the confusingly similar domains after the studio publicly announced that the movies were slated for production.
Arbitration panels routinely order the transfer of domains which attach “the movie” or a similar expression to a well-known entertainment industry trademark. See, e.g., Fox Group Legal v. Saeid Yomtobian, Claim No. FA0010000095839 (NAF Dec. 18, 2000) (<alienmovies.com>); Warner Bros. Entertainment Inc. and DC Comics v. Jesse Lafferty, Claim No. FA0410000347725 (NAF Dec. 2, 2004) (<batman-the-movie.com>); Paramount Pictures Corp. v. Pete Gilchrist, Case No. D2007-0128 (WIPO May 8, 2007) (<ironmanfilm.com>); Twentieth Century Fox Film Corp. v. KeithMalley.com, Case No. D2007-0760 (WIPO July 22, 2007) (<thesimpsonsmovie.com>).
Consequently, under the ICANN Rules and Policy and its attendant precedent, the Respondents’ domain name <breakingdawnthemovie.com> is identical or confusingly similar to Summit’s BREAKING DAWN mark. The Domain Name therefore meets the test of confusing similarity under the UDRP.
ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
There is no evidence that Respondent Jane Doe has acquired trademark rights in the mark BREAKING DAWN. None of the Respondents owns a trademark registration of, or application to register, BREAKING DAWN, and none of the Respondents have been issued a license by Summit to use the BREAKING DAWN mark. None of the Respondents has been authorized by Summit to conduct business on Summit’s behalf. Summit has not authorized Respondent Direct Privacy Ltd. to register or host the domain name <breakingdawnthemovie.com>.
Respondent Jane Doe is not making a legitimate noncommercial or fair use of the Domain Name, but is capitalizing upon the reputation and goodwill of the Twilight Motion Pictures and the BREAKING DAWN mark to divert the attention of web users who are interested in Summit’s upcoming Breaking Dawn films. The web page which exists at <breakingdawnthemovie.com> is principally a “parked” web page with almost no content. The web page consists of a series of film-related terms such as “Dvds Online” and “Bollywood” that link to other lists of links which, in turn, link to entertainment-industry-related web sites. The web page at <breakingdawnthemovie.com> appears intended to divert consumer attention away from authorized Breaking Dawn motion picture sites and to generate revenue via click-through income and the sale of links. The web page at <breakingdawnthemovie.com> does not contain any commentary, analysis, news or other evidence of potentially good faith use.
A parked website with little content is not a legitimate use of a domain name. “The Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names. The Respondent is not using the domain names in connection with a bona fide offering of goods and services nor for a legitimate noncommercial purpose.” Computer Doctor Franchise Systems, Inc. v. The Computer Doctor, Claim No. FA008000095396 (NAF Sept. 8, 2000). Parked pages with links are typically revenue-generating pages in which the beneficial registrant is compensated on a “pay-for-click” basis. Paramount Pictures Corp. v. Pete Gilchrist, Case No. D2007-0128 (WIPO May 8, 2007).
In short, the Domain Name is not being used in good faith. It is an attempt to divert the attention of web users seeking information or discussion about Complainant’s upcoming films and to potentially obtain revenue from consumer confusion.
Respondents’ use of the BREAKING DAWN mark to misleadingly divert the attention of web users who are interested in Summit’s films is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use under ICANN Policy ¶¶4(c)(i) & (iii). Thus, Summit has established the second element of the test which is that Respondents have no rights or legitimate interests in the Domain Name.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
The Domain Name was registered and is being used in bad faith for the reasons articulated in ICANN Policy ¶4(b)(iv). Specifically, and without limitation, Respondents, by using the Domain Name, have intentionally attempted to attract, for commercial gain, internet users to the Domain Name by creating a likelihood of confusion with Complainant’s BREAKING DAWN mark as to the source, sponsorship, affiliation or endorsement of the Domain Name or of products or services advertised through the Domain Name.
The Respondents registered a domain name containing Summit’s famous mark despite the fact that Respondents had no connection with or permission from Summit. This conduct alone is powerful evidence of bad faith. Rhino Entertainment Co. v. DomainSource.com, Inc., Case No. D2006-0968 (WIPO Oct. 18, 2006); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., Case No. D2000-0163 (WIPO May 1, 2000) (Respondent’s domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). Bad faith can be found on this basis alone.
Alternatively, a respondent is acting in bad faith when he or she is “clearly aware” of a mark yet registers a domain name which is identical or confusingly similar to it. “Bad faith registration can be found . . . when at the time of the domain name registration the respondent was clearly aware of the complainant, or the respondent’s aim was to take advantage of the confusion between the domain name and any potential complainant rights.” Paramount Pictures Corp. v. Pete Gilchrist, Case No. D2007-0128 (WIPO May 8, 2007). A panel may infer that a respondent was “clearly aware” of a mark’s existence from the totality of the circumstances. See Twentieth Century Fox Film Corp. v. KeithMalley.com, Case No. D2007-0760 (WIPO July 22, 2007) (finding that respondent was “well aware” of the Simpsons cartoon characters).
The Twilight Novels and the Twilight Motion Pictures are among the most famous and successful entertainment properties launched in the last decade. Just as the respondent in Paramount Picture Corp. was found to be “clearly aware” of the Iron Man comic book character and film, and just as, to quote the WIPO panel in Fox Group Legal, only someone “living the life of a hermit” would be unaware of the Alien films, so too Respondents were clearly aware of the Breaking Dawn Novel, the Twilight Novels and the forthcoming film adaptations thereof and Summit’s rights in the BREAKING DAWN mark.
There is no reasonable chance that Respondents chose the Domain Name innocently or fortuitously. The domain name <breakingdawnthemovie.com> was registered by Respondents on June 27, 2008 – after Stephenie Meyer announced that Breaking Dawn was the working title of the fourth book and after Summit began to use the domain name <twilightthemovie.com> to promote the first motion picture in the series. By June 27, 2008, a potential cybersquatter acting in bad faith could have reasonably guessed that Summit intended to use the domain name <breakingdawnthemovie.com> to promote the motion picture adaptation of the Breaking Dawn novel.
Moreover, Respondents are continuing to act in bad faith. As of the date of filing this Complaint, the Domain Name is active.
By using the Domain Name and creating a likelihood of confusion with Summit’s BREAKING DAWN mark, Respondents have intentionally attempted to attract internet users to the Domain Name for the purposes of commercial gain. As such, bad faith is conclusively and clearly established under ICANN Policy ¶4(b)(iv).
ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
B. Respondent failed to submit a Response in this proceeding.
Complainant Summit Entertainment, LLC is the owner of the BREAKING DAWN mark. Complainant’s predecessor in interest, Stephanie Meyer, the author of the Twilight books, including Breaking Dawn, assigned all rights in the BREAKING DAWN mark to Complainant. In or before February 2007, Meyer announced that BREAKING DAWN would be the title of the fourth installment of the Twilight series. Complainant has used the BREAKING DAWN mark in connection with the upcoming release of two films adapted from Meyer’s novel since June 2010. Additionally, Complainant has filed numerous applications with the United States Patent and Trademark Office (“USPTO”) (e.g., App. No. 85/229,489 filed January 29, 2011).
Respondent Direct Privacy ID 1B75E registered the disputed domain name on June 27, 2008. The <breakingdawnthemovie.com> domain name displays links to entertainment-industry-related websites.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In order for a finding favorable to the complainant, the complainant must demonstrate it has rights in its mark. The Panel finds registration of the mark with a trademark authority is unnecessary. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Instead, Complainant may demonstrate it has “common law” rights in the mark under Policy ¶4(a)(i).
Complainant contends the BREAKING DAWN mark has developed secondary meaning. Previous panels, such as those in Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), and Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006), have held continuous and ongoing use as well as promotion efforts are sufficient to establish secondary meaning in a mark which generates common law rights. Stephanie Meyer is the author of all of the books in the Twilight series. Prior to June 2008, Ms. Meyer announced BREAKING DAWN would be the title of the fourth installment of the series and assigned to Complainant all rights in the BREAKING DAWN mark for the purposes of adapting the book into two movies and the promotion of both. Since this point, Complainant has used the BREAKING DAWN mark to create and promote the movies. Complainant has also filed numerous applications with the United States Patent and Trademark Office (“USPTO”) (e.g., App. No. 85/229,489 filed January 29, 2011). Given the continuous use of the BREAKING DAWN mark through the creation and promotion of the BREAKING DAWN films, the Panel finds Complainant has established secondary meaning, and common law rights, in the BREAKING DAWN marks pursuant to Policy ¶4(a)(i).
Complainant also argues Respondent’s <breakingdawnthemovie.com> domain name is confusingly similar to its BREAKING DAWN mark. Respondent eliminates a space and adds the generic top-level domain (“gTLD”) “.com” to the end of Complainant’s mark. The Panel finds this is not sufficient to distinguish the domain name from the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”). Further, Respondent adds the phrase “themovie” to the end of Complainant’s mark. The Panel finds this addition is not sufficient to distinguish between the common law mark and the domain name in making a Policy ¶4(a)(i) determination. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). As such, the Panel finds Respondent’s <breakingdawnthemovie.com> domain name is confusingly similar to Complainant’s BREAKING DAWN mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
A Complainant has an obligation to support its allegations with a prima facie case before the burden shifts to Respondent to disprove Complainant’s claims. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant argues Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds Complainant has made a prima facie case. Out of an abundance of caution, the Panel will review the record and make all reasonable inferences from the information available under Policy ¶4(a)(i) without the benefit of a response from Respondent. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant argues Respondent is not commonly known by the disputed domain name. Past panels have determined a review of Complainant’s contentions, as well as the WHOIS record for the disputed domain name, will generally provide the necessary information to make a determination as to whether a respondent is commonly known by a disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant claims Respondent has not been authorized to use the BREAKING DAWN mark in any capacity. The WHOIS record for the disputed domain name lists “Direct Privacy ID 1B75E” as the domain name registrant. The Panel finds this to be very different from the BREAKING DAWN mark and the <breakingdawnthemovie.com> domain name. Therefore, the Panel concludes Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant next asserts Respondent has not been using the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website which displays links to websites which compete with Complainant in the entertainment industry. Therefore, the Panel finds Respondent’s <breakingdawnthemovie.com> domain name has been used for neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
The disputed domain name resolves to a website which displays competitive website links. Panels have found the display of competing links is disruptive in cases such as Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007). The Panel finds Respondent’s registration and use of the <breakingdawnthemovie.com> domain name to display links to websites which compete with Complainant’s business to be disruptive to Complainant’s business and evidence of bad faith pursuant to Policy ¶4(b)(iii).
Finally, Complainant argues the <breakingdawnthemovie.com> domain name was registered and is being used in order to intentionally attract, for commercial gain, Internet users to its disputed domain name by creating a likelihood of confusion as to the affiliation of the <breakingdawnthemovie.com> domain name to Complainant’s BREAKING DAWN mark. The disputed domain, resolving to a website which displays links to competing sites, is confusingly similar to Complainant’s mark. Therefore, the Panel finds Internet users will become confused about its affiliation with Complainant. The Panel infers Respondent receives compensation for the Internet users who click through these links. The Panel concludes Respondent’s <breakingdawnthemovie.com> domain name was registered and is used in bad faith under Policy ¶4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶4(b)(iv).”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <breakingdawnthemovie.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: October 3, 2011
[1] This column consists of non-comprehensive summaries of the categories of goods and services for which the mark was registered. The specific goods and services are listed in the applications.
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