TMP International, Inc. (d/b/a McFarlane
Toys) v. Baker Enterprises
Claim
Number: FA0310000204112
Complainant is TMP International, Inc. (d/b/a McFarlane Toys) (“Complainant”), represented by Michael A. Kahn, 720 Olive, Suite 2400, St. Louis 2400, MO 63101. Respondent is Baker Enterprises (“Respondent”), 27106 Safe Haven Lane, Port
Charlotte, FL 33983.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <moviemaniacs.com>, registered with Names4Ever.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 22, 2003; the Forum received a hard copy of the
Complaint on October 23, 2003.
On
October 24, 2003, Names4Ever confirmed by e-mail to the Forum that the domain
name <moviemaniacs.com> is registered with Names4Ever and that
Respondent is the current registrant of the name. Names4Ever has verified that
Respondent is bound by the Names4Ever registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
October 29, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 18, 2003 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@moviemaniacs.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 24, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Louis E. Condon 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."
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 makes the following assertions:
1. Respondent’s <moviemaniacs.com>
domain name is identical to Complainant’s MOVIE MANIACS mark.
2. Respondent does not have any rights or
legitimate interests in the <moviemaniacs.com> domain name.
3. Respondent registered and used the <moviemaniacs.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1998,
Complainant has continuously used the MOVIE MANIAC mark in connection with the
various toys it manufacturers and distributes throughout the United States and
the world. Complainant is the holder of
the MOVIE MANIACS mark, for which registration on the Principal Register of the
United States Patent and Trademark Office (“USPTO”) was granted on August 26,
2003 (Registration No. 2,755,312). This
trademark registration is for “[t]oys, namely, toy action figures and accessories
therefore.”
Respondent
registered the <moviemaniacs.com> domain name on December 12,
1999. Before filing this Complainant,
there was no actual website in operation for the <moviemaniacs.com>
domain name.
After sending
Respondent a letter asserting its rights in the MOVIE MANIACS mark and
requesting transfer of the <moviemaniacs.com> domain name to
Complainant, Complainant received a telephone call from Respondent’s
representative. Respondent’s
representative told Complainant that it had twice attempted to sell the <moviemaniacs.com>
domain name to Complainant for $15,000, but the proposal had not been
accepted. The following day,
Complainant offered to pay Respondent $500 for the transfer of the <moviemaniacs.com>
domain name, however, the offer was rejected by Respondent’s representative.
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.
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.
The Panel finds
that Complainant established rights in the MOVIE MANIACS mark through
continuous use in commerce since 1998, prior to Respondent’s registration of
the <moviemaniacs.com> domain name. In addition, since Respondent’s registration of the domain name,
Complainant has established rights in its mark with the USPTO on August 26,
2003. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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).
Respondent’s <moviemaniacs.com>
domain name is identical to Complainant’s MOVIE MANIACS mark. Respondent merely added the top-level domain
“.com” to Complainant’s entire mark.
The top-level domain name “.com” is not relevant in determining whether
Respondent’s domain name is identical or confusingly similar to Complainant’s
mark because all domain name registrations require a top-level domain
name. Thus, the Panel finds that
Respondent’s domain name is not sufficiently distinguishable from Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See
Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of
the generic top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants");
see also Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to Complainant's registered
trademark GAY GAMES).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this proceeding. Therefore, the Panel has not been presented
with any circumstances establishing that Respondent has rights or legitimate
interests in the <moviemaniacs.com> domain name. Consequently, the Panel is unable to find that Respondent has
rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Bayerische Motoren
Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding
that in the absence of a Response the Panel is free to make inferences from the
very failure to respond and assign greater weight to certain circumstances than
it might otherwise do); see also BIC
Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
There is no
evidence before the Panel suggesting that Respondent is commonly known by the <moviemaniacs.com>
domain name. Accordingly, the Panel
concludes that Respondent is not commonly known by the domain name under Policy
¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use).
Respondent has
not used the <moviemaniacs.com> domain name in connection with a
website or for any other legitimate use since registering the domain name on
December 12, 1999. In addition,
Respondent has not presented the Panel with any evidence that it has used the
domain name in connection with a bona fide offering of goods or services or
that it is making preparations to do such.
Therefore, the Panel concludes that Respondent’s passive holding of the
domain name does not establish rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has
advanced no basis on which the Panel could conclude that it has a right or
legitimate interest in the domain names, and no use of the domain names has
been established); see also Melbourne
IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or
legitimate interests in the domain name where there is no proof that Respondent
made preparations to use the domain name or one like it in connection with a
bona fide offering of goods and services before notice of the domain name
dispute, the domain name did not resolve to a website, and Respondent is not
commonly known by the domain name).
Not only is
Respondent passively holding the <moviemaniacs.com> domain name,
but Respondent has offered the domain name for sale to Complainant for $15,000
twice. Thus, the Panel finds that
Respondent’s lack of legitimate interests is further evidenced by Respondent
offering the domain name for sale to Complainant. See J. Paul Getty
Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000)
(finding rights or legitimate interests do not exist when one has made no use
of the websites that are located at the domain names at issue, other than to
sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since registration of the domain name on December 12, 1999, Respondent
has failed to use the <moviemaniacs.com> domain name for any legitimate
purpose. Twice, Respondent has offered
to sell the domain name to Complainant for $15,000; however, Complainant
rejected both of these offers. When
Complainant offered to purchase the domain name from Respondent for $500,
Respondent refused the offer. The fact
that Respondent offered to sell the domain name for $15,000 and refused to
accept Complainant’s offer of $500 evidences Respondent’s bad faith. Based on these facts, the Panel infers that
Respondent registered the domain name for the purpose of selling the domain
name registration to Complainant for valuable consideration in excess of its
documented out-of-pocket expenses directly related to the domain name. Thus, the Panel finds that Respondent
registered the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale,
D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name
in any context other than to offer it for sale to Complainant amounts to a use
of the domain name in bad faith); see also Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where
Respondent, a domain name dealer, rejected Complainant’s nominal offer of the
domain in lieu of greater consideration); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith
under Policy paragraph 4(b)(i) where Respondent stated in communication with
Complainant, “if you are interested in buying this domain name, we would be
ready to sell it for $10,000”).
The fact that
Respondent has not used the <moviemaniacs.com>
domain name in any manner since December 12, 1999 further evidences Respondent’s
bad faith. Passive holding of a domain
name is a prima facie case of bad faith under the Policy. Consequently, the Panel concludes that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that Respondent’s passive holding of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <moviemaniacs.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon , Panelist
Dated:December 6, 2003
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