DC Comics and Warner Bros. Entertainment,
Inc. v. Mike Beatty
Claim Number: FA0402000241919
PARTIES
Complainants
are DC Comics and Warner Bros. Entertainment, Inc. (hereinafter “Complainant”),
represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349.
Respondent is Mike Beatty (“Respondent”),
609 Bayshore Drive, #32, Ocean City, MD 21842.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <djbatman.com>,
registered with Network Solutions, Inc.
PANEL
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.
David A. Einhorn is appointed as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 24, 2004; the Forum received a hard copy of the
Complaint on February 25, 2004.
On
March 1, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <djbatman.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. 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
March 1, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 22,
2004 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@djbatman.com by e-mail.
A
timely Response was received on March 15, 2004. However, the Response did not contain the certification statement
required by UDRP Rule 5(b)(viii), and is thus not in compliance with the
Rules. Thus, the Panel does not rely on
the veracity of any of Respondent’s factual assertions in rendering this
decision. See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (concluding that no weight should be accorded to the facts
alleged in a Response lacking a Certification Statement).
Complainant’s
timely Additional Submission was received and determined to be complete on
March 17, 2004.
On March 25, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed David A. Einhorn
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
[a.]
DC Comics,
Inc. owns numerous trademark registrations for BATMAN. Some of these registrations cover comic
magazines, television and animated cartoon programs. One of these marks, registration number 1587507, is for BATMAN
for phonographic records and audio tapes and cassettes (the ‘507 Mark). The ‘507 Mark was registered on March 20,
1990 with a first use date of 1943.
[b.]
Respondent’s
<djbatman.com> domain is
confusingly similar to DC Comics’ BATMAN trademark.
[c.]
Respondent
has no legitimate interests in the mark because Respondent is not authorized by
Complainant to use the domain name in this or any other manner. Respondent uses the domain name to infringe
on Complainant’s mark and to usurp internet traffic rightly intended for
Complainant.
[d.]
Respondent’s
bad faith is shown by its knowledge of Complainant’s mark and its failure to
conduct a search. Further, Respondent’s
knowledge of Complainant’s mark is evidenced by the use of Complainant’s Batman
Shield logo on Respondent’s Web site.
Respondent also evidences bad faith in its failure to cease using the
mark after Complainant’s repeated cease and desist demands.
B.
Respondent
Respondent’s
contentions are not considered due to Respondent’s failure to include with the Response,
the Certification Statement required by UDRP Rule 5(b)(viii).
C.
Additional Submissions
Complainant
points out that the Response does not contain the Certification requirement of
UDRP Rule 5(b)(viii), nor does the Response contain the information required by
UDRP Rules 5(b)(ii), 5(b)(iii), 5(b)(vi) and 5(b)(vii).
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Complainant owns registrations for BATMAN
for, inter alia, phonographic records and audio tapes and cassettes. Respondent’s domain name <djbatman.com> is confusingly
similar to Complainant’s BATMAN mark as it merely adds the generic abbreviation
for the word “disc jockey” to Complainant’s mark. It is noted that Complainant’s phonograph and audio tape and cassette
products appear to be related to Respondent’s disc jockey services.
Therefore, Complainant has satisfied §
4(a)(i) of the Policy.
Complainant’s
trademark rights well predate Respondent’s domain name registration. While Respondent’s disc jockey services
appear to be related to Complainant’s phonographic and audio tape and cassette
products, Respondent is not a licensee of Complainant. Nor is there competent evidence in the record
of this case that Respondent is commonly known by the domain name in
question. For the foregoing reasons, it
is found that Respondent does not have rights or legitimate interests with
respect to the domain name <djbatman.com>. See Charles Jourdan Holding AG v. AAIM, D 2000-0403 (WIPO June 27,
2000) (finding no rights or legitimate interests where: 1) Respondent was not a
licensee of Complainant; 2) Complainant’s rights predated Respondent’s domain
registration; and 3) Respondent was not commonly known by the domain in
question).
Thus, Complainant has satisfied §
4(a)(ii) of the Policy.
Complainant has not even alleged, much
less established, that Respondent was aware of its trademark registration
number 1587507 for BATMAN for phonographic records and audio tapes and
cassettes. Complainant’s other
trademark registrations covering comic books and related items do not appear to
cover goods related to Respondent’s disc jockey services. See Warner Bros. – Seven Arts, Inc. v. Haralson, 165 U.S.P.Q. 618 (TTAB
1970) (finding defendant’s mark ROAD RUNNER for phonographic records unrelated
to and not likely to cause confusion with Warner Bros.’ registration [also a
Complainant in this case] for ROADRUNNER for comic books).
Complainant argues that Respondent’s
knowledge of its mark is evidenced by Respondent’s use of its Batman Shield
logo on its Web site. However, the
Batman Shield is not an element of the pertinent trademark registration number
1587507.
Complainant
also argues that Respondent evidences bad faith in its failure to cease using
the Web site despite repeated demands that Respondent cease and desist. This allegation, while of possible
significance, is disregarded for Complainant’s failure to attach any cease and
desist correspondence to its Complaint or to describe the contents of any such
correspondence. In particular, it is
not known from the record provided by Complainant whereby Respondent was
specifically put on notice of Complainant’s registration number 1582507 for
phonographic records and audiotapes and cassettes.
Thus, Complainant has NOT satisfied §
4(a)(iii) of the Policy.
DECISION
Having
failed to establish the requirements of the ICANN Policy § 4(a)(iii),
Complainant’s request for relief is hereby DENIED.
David A. Einhorn, Panelist
Dated: April 8, 2004
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