Marvel Characters, Inc. v. Helen Totton
Claim Number: FA1811001814666
Complainant is Marvel Characters, Inc. (“Complainant”), represented by Annie S. Wang of Wang Law Corporation, California, USA. Respondent is Helen Totton (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ukmarvel.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2018; the Forum received payment on November 1, 2018.
On November 2, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <ukmarvel.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 November 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2018 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@ukmarvel.com. Also on November 5, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant is a worldwide producer of entertainment goods and services such as comic books, movies, television programs, and merchandise. Complainant has rights in the MARVEL trademark through its registration with the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office (“EUIPO”) and other national trademark registration offices. Such registrations date back at least to 1969. Respondent’s <ukmarvel.com> domain name was registered on September 20, 2017 and is identical or confusingly similar to Complainant’s MARVEL mark because Respondent only added the geographic indicator “uk” (for “United Kingdom”) and the “.com” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interest in the <ukmarvel.com> domain name because Respondent is not authorized to use Complainant’s MARVEL mark nor is it commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name in the email address l.remington@ukmarvel.com and it sent a letter to someone inside Complainant’s company in an attempt at passing itself off as Complainant in furtherance of a phishing scheme. Such letter is signed with the name Laura Remington, Office Administrator.
Respondent registered and uses the <ukmarvel.com> domain name in bad faith. Respondent uses the abovementioned email address associated with the disputed domain name to impersonate Complainant and its Office Administrator. Additionally, Respondent fails to actively use the disputed domain name as the website which resolves from the name is a parked page that shows only Complainant’s MARVEL logo. Furthermore, due to the widespread fame of the MARVEL mark, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
Paragraph 4(a) of the Policy requires that Complainant must 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 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(f), 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 (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.”).
Complainant claims to have rights to the MARVEL trademark through its registration with the USPTO, the EUIPO, and other national trademark registration offices. Registration of a mark with multiple trademark national agencies is sufficient to establish rights in the mark. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Here, Complainant has provided this Panel with copies of some of its USPTO and EUIPO registrations for the MARVEL mark. Thus, the Panel finds that Complainant has rights in the MARVEL mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ukmarvel.com> domain name is identical or confusingly similar to Complainant’s mark because respondent only added the geographic indicator “uk” and the gTLD “.com” to the mark. Adding a geographic indicator and a gTLD to a fully incorporated mark may be insufficient to differentiate the disputed domain name from the mark under Policy ¶ 4(a)(i). See Hess Corp. v. GR, FA 1783413 (Forum May 30, 2018) (finding that the respondent’s <ml-uk.com> domain name was confusingly similar to the complainant’s ML mark, as the mere addition of “uk,” a hyphen and a gTLD failed to sufficiently differentiate the disputed domain name from the registered mark). Complainant contends Respondent only added the term “uk” (for “United Kingdom”) and the gTLD “.com” to Complainant’s MARVEL mark.
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s MARVEL mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts that Respondent has no rights or legitimate interests in the <ukmarvel.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant did not authorize Respondent to use Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Helen Totton,” and there is no evidence to suggest that Respondent is known otherwise or was authorized to use the MARVEL mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next contends that Respondent does not use the <ukmarvel.com> domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair us. Specifically, Complainant argues that Respondent uses an email address to pass itself off as the Complainant in furtherance of a phishing scheme. An attempt to pass oneself off as a complainant through emails may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides a Declaration from its Paralegal Specialist, who states that Respondent uses an email address of l.remington@ukmarvel.com to pass itself off as one of Complainant’s employees named Laura Remington, Office Administrator. Complainant also provides a copy of an email sent from the above-mentioned email address to someone inside Complainant’s company. The content of the letter is rather odd and makes an obtuse reference to “Michael and Helen's financial situation”, states that “Gambit has a project worth of $630 million” and claims that “It is absolutely imperative that we face as little hurdles or complications as physically possible with the aim of keeping Mike in the title role.” It goes on to mention a “Mr. Whedon” – perhaps referring to the well-known television and movie director of that name? – and references the importance of promoting the image of the above-referenced actor named “Michael”. The letter concludes with the statement “We ask that if you wish to see Michael succeed, and I am sure you do, that over the coming months, you do as we say.” Although the Complaint provides no explanation of, or context for the content of this letter other than to claim that it is “fraudulent” and “possibly for purposes of obtaining personal information (“phishing”)”, it is quite clear to this Panel that it is written with the intent of impersonating Complainant and one of its actual employees named Laura Remington. Therefore, this Panel finds Respondent’s attempts to impersonate (pass itself off as) Complainant in furtherance of an undefined objective is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Finally, while Complainant does not specifically claim that Respondent fails to use the disputed domain name, holding of a domain name to resolve to a static page with no substantive content may not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant provides a screenshot of the website that resolves from the disputed domain name and this shows only a static image of the MARVEL logo with no other content. Based on this evidence, the Panel finds that the resolution of the <ukmarvel.com> website does not provide Respondent with any rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
In light of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent was well aware of Complainant’s rights in the MARVEL mark at the time Respondent registered the <ukmarvel.com> domain name and this demonstrates bad faith registration and use. Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant contends that due to the widespread marketing of its goods and services and the international fame of the MARVEL trademark, plus the use to which the disputed domain name has been put. Respondent must have had actual knowledge of the mark prior to registration of the disputed domain name. Other Panels have found as much. See, Marvel Characters, Inc. v. Sheng Liang / Sarawina, FA1509001636226 (Forum Oct. 16, 2015) (“in view of the fame and notoriety of the MARVEL mark, Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names…”) This Panel therefore finds that Respondent had actual knowledge of the MARVEL mark at the time of registration of the disputed domain name, thus providing a foundation upon which bad faith registration and use may be found under Policy ¶ 4(a)(iii).
Next, Complainant alleges that the <ukmarvel.com> domain name is used in bad faith because Respondent attempts to impersonate Complainant for the purpose of obtaining personal information (“phishing”). Generally, the use of a domain name to phish for personal information is evidence of bad faith. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”) Complainant alleges that Respondent is using the disputed domain name to impersonate Complainant in furtherance of a fishing scheme. However, from the evidence and arguments presented, it is not clear to this Panel how Respondent’s letter seeks to gather personal information or otherwise profit from use of the <ukmarvel.com> domain name. No explanation is given on this point in the Complaint. Nevertheless, the scenarios provided in Policy ¶ 4(b) are not intended to limit a Panel’s ability to find bad faith but are merely examples of common activities carried out by domain name registrants acting in such manner. See, e.g., Ipsen Pharma S.A.S. v. Admin - This Domain is for sale on Godaddy.com Escrow.com, Trnames Premium Name Services, D2018-0089 (WIPO March 12, 2018) (“Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.”) In the present case, this Panel will not speculate on Respondent’s ultimate objective, whether it is commercial in nature or not. However, the Panel does find that the very clear evidence of impersonation demonstrated by Respondent’s letter using the name of one of Complainant’s employees and an address that incorporates the <ukmarvel.com> domain name provides sufficient evidence of bad faith registration and use. See Desarrollo Marina Vallarta, S.A. DE C.V v. David White / No Company, FA1810001813866 (Forum Nov. 26, 2018) (bad faith found where “Respondent registered a domain name incorporating Complainant's well-known mark and is using the domain name to impersonate Complainant in connection with a fraudulent scheme.”)
Finally, Complainant alleges Respondent’s failure to make active use of the <ukmarvel.com> domain name indicates bad faith registration and use. Failure to make active use of a disputed domain name can be regarded as bad faith registration and use under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Complainant alleges the disputed domain name does not resolve to an active webpage but rather to a static page that displays the MARVEL logo. In light of the other grounds upon which bad faith has been found, the Panel does not feel the need to examine this additional claim and so makes no finding on the point.
In light of the above, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ukmarvel.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 3, 2018
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