Todd McFarlane and TMP International LLC v. ye chen
Claim Number: FA2301002029529
Complainant is Todd McFarlane and TMP International LLC (“Complainant”), represented by Stephen J. Strauss of BUCHALTER, USA. Respondent is ye chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salemcfarlanetoys.com>, registered with Gname.com Pte. Ltd..
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 27, 2023; Forum received payment on January 27, 2023.
On January 31, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <salemcfarlanetoys.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. 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 February 2, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of February 22, 2023 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@salemcfarlanetoys.com. Also on February 2, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Preliminary Issue: Multiple Complainants
In the instant proceeding, there are two complainants: Todd McFarlane and TMP International LLC. Todd McFarlane is a creator and writer who created a toy company, using the MCFARLANE TOYS mark to merchandise collectable action figures based on his comic book characters. McFarlane formed TMP International LLC as the intellectual property holding company for the MCFARLANE TOYS mark. TMP International LLC is the owner, by assignment of the MCFARLANE TOYS mark.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding. The matter may therefore go forward on that basis. Nonetheless, throughout the below memo, the Complainants will be collectively referred to as “Complainant”.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. However, Rule 11(a) enables a panel to find in all the circumstances that another language is more appropriate. That is argued by Complainant, who persuasively points to the circumstances that the domain name and Respondent’s website are both in English, so Respondent must have facility with that language.
Pursuant to Rule 11(a), the Panel therefore determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that it is more appropriate in all the circumstances that the remainder of the proceeding be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant asserts that Complainant is a writer, creator and artist of comic books. Complainant also created a toy company to merchandise collectible action figures based on his work. Complainant has rights in the MCFARLANE TOYS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,904,096, registered November 23, 2004). See Amend. Compl. Annex 4. Respondent’s <salemcfarlanetoys.com> domain name is identical or confusingly similar to Complainant’s MCFARLANE TOYS mark as it merely adds the generic word “sale” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <salemcfarlanetoys.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the MCFARLANE TOYS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent’s disputed domain name diverts users to a website selling collectible toy action figures under the MCFARLANE TOYS mark on an unauthorized basis.
Respondent registered and uses the <salemcfarlanetoys.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to pass off as Respondent and sell unauthorized products for Respondent’s financial gain. Further, Respondent had actual knowledge of Complainant’s rights to the MCFARLANE TOYS mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent writer, creator and artist of comic books who also created a toy company to merchandise collectible action figures based on his work.
2. Complainant has rights in the MCFARLANE TOYS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,904,096, registered November 23, 2004).
3. Respondent registered the <salemcfarlanetoys.com> domain name on January 4, 2023.
4. Respondent has caused the disputed domain name to divert internet users to a website selling collectible toy action figures under the MCFARLANE TOYS mark on an unauthorized basis.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MCFARLANE TOYS mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 2,904,096, registered on November 23, 2004). See Amend. Compl. Annex 4. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the MCFARLANE TOYS mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MCFARLANE TOYS mark. Complainant argues that Respondent’s <salemcfarlanetoys.com> domain name is identical or confusingly similar to Complainant’s MCFARLANE TOYS mark as it merely adds the generic word “sale” and the “.com” gTLD to form. The addition of a generic or descriptive term and a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (FORUM June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MCFARLANE TOYS mark and to use it in its domain name, adding the word “sale”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <salemcfarlanetoys.com> domain name on January 4, 2023;
(c) Respondent has caused the disputed domain name to divert internet users to a website selling collectible toy action figures under the MCFARLANE TOYS mark on an unauthorized basis;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <salemcfarlanetoys.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the MCFARLANE TOYS mark. When 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. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “Ye Chen” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the MCFARLANE TOYS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <salemcfarlanetoys.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as Complainant by advertising counterfeit versions of Complainant’s products for sale on an unauthorized basis. Using a disputed domain name to pass off as a complainant for the purpose of the unauthorized sale of counterfeit versions of a complainant’s products 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 ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides representative screenshots of Complainant’s legitimate site and Respondent’s resolving website which closely imitates the style, photographs and nature of Complainant’s website as well as using Complainant’s registered logo. Compare Amend. Compl. Annex 3 to Amend. Compl. Annex 5. Complainant argues Respondent is neither an authorized distributer nor licensee of Complainant. The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and uses the <salemcfarlanetoys.com> domain name in bad faith as Respondent registered the disputed domain name to pass itself off as Respondent and sell unauthorized and counterfeit versions of Complainant’s products for Respondent’s financial gain. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant by selling unauthorized and counterfeit versions of products can evince bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). The Panel notes that Complainant provides screenshots of the resolving webpage of the disputed domain name in which Respondent offers competing or unauthorized products for sale. See Amend. Compl. Annex 5.The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent registered the <salemcfarlanetoys.com> domain name with actual knowledge of Complainant’s rights in the MCFARLANE TOYS mark. Use of a mark to divert Internet traffic to a disputed domain name where a respondent passes itself off as a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent’s registration of the disputed domain name fully incorporating Complainant’s mark demonstrates actual knowledge of Complainant’s rights in the mark prior to registration. As the Panel agrees, it finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <salemcfarlanetoys.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 3, 2023
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