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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Danjaq LLC v. Conquerer

Case No. D2006-1552

 

1. The Parties

The Complainant is Danjaq LLC, of Santa Monica, California, United States of America, represented by Brinks Hofer Gilson & Lione, of Chicago, Illinois, United States of America.

The Respondent is “Conquerer”, of Imperial Beach, California United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <spy-007.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2006. On December 10, 2006, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 10, 2006, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the relevant contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2007. On January 6, 2007, the Respondent sent a brief e-mail to the Center in response to the Notification of Respondent Default.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 26, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant states that it “is the legal owner of all 007 and JAMES BOND 007 related registered and unregistered trademarks which Danjaq, its predecessors and related companies have used for over 40 years in connection with the 007 Series of Films and to market and produce such motion pictures and collateral merchandise”.¹ Danjaq is the owner of U.S. Reg. No. 1,739,332 for 007 and Gun Logo (registered December 15, 1992); U.S. Reg. No. 1,737,876 for JAMES BOND 007 and Gun Logo (registered December 8, 1992); and numerous trademark registrations in Europe that consist of or include the mark 007, including CTM Reg. No. 251,900 for 007 (registered September 24, 1998). Collectively, these are referred to hereafter as the “007 Marks”.

The Domain Name was created on July 26, 2001.

 

5. Parties’ Contentions

A. Complainant

In addition to the factual background set forth above, Complainant states that the 007 Marks “are widely recognized in their identification of the famous film character 007 and as source identifiers of Danjaq’s goods and services”. Complainant further states that it, and its predecessors, have produced 21 films in association with the 007 Marks since 1962, which films are “the most successful motion picture franchise in history”, generating more than $3.8 billion in sales of goods and services worldwide. These statements – and numerous others attesting to the widespread use and recognition of the 007 Marks – are all supported by an affidavit of David S. Pope, Complainant’s CEO, which itself is supported by some two dozen exhibits.

Complainant contends that, citing the registrations and uses discussed above, it has rights in the 007 Marks and that the Domain Name is confusingly similar to the 007 Marks because “when a domain name wholly incorporates a complainant’s registered mark, confusing similarity can be established”. Complainant further contends that “[t]he additional word ‘spy’ in the <spy-007.com> domain name merely reinforces consumer confusion because the 007 character is the most famous fictional spy of all time”.

Complainant contends that “Respondent is not affiliated with Danjaq in any way. Danjaq has never licensed, or otherwise authorized Respondent to use the 007 mark or any of Danjaq’s trademarks”. Complainant contends that “there is no reason to believe that Respondent has been commonly known by the <spy-007.com> domain name or that Respondent has any rights which might predate those of Danjaq”. Finally, Complainant contends that “Respondent is not making a legitimate noncommercial or fair use of the <spy-007.com> domain name without intent for commercial gain”. Complainant further contends that Respondent used the Domain Name “to advertise spy themed products, such as ‘Keylogger’ spy software, that suggest an affiliation with Danjaq’s services”.

Complainant contends that the 007 Marks are famous and that “Respondent’s registration of a domain name incorporating a famous mark is compelling evidence that Respondent has registered or acquired the domain name in bad faith”. Complainant further contends that, “[c]onsidering the worldwide fame of Danjaq’s 007 Marks, it is likely that Respondent chose its <spy-007.com> domain name to create the impression of an association with Danjaq and its goods and services offered under the 007 Marks”.

B. Respondent

The Respondent did not submit a formal response to the Complainant’s contentions. However, in an e-mail received by the Center on January 6, 2007, the Respondent wrote (in its entirety):

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the 007 Marks.

As to whether the Domain Name is identical or confusingly similar to the 007 Marks, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “spy-007”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

The Domain Name differs from the 007 Marks in only one respect: the Domain Name adds the word “spy” and a dash. The Panel finds that these additions do not negate the confusing similarity between the Domain Name and the 007 Marks. The Panel agrees with the Complainant’s assertion that the addition of the word “spy” to the Domain Name “merely reinforces consumer confusion because the 007 character is the most famous fictional spy of all time”. See, e.g., Chanel, Inc. v. Uraina Heyward, WIPO Case No. D2000-1802 (finding confusing similarity where a domain name contains a word that is “automatically associated” with a trademark). The presence of the dash is irrelevant. See, e.g., Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853 (a dash in a domain name “add[s] no distinctiveness whatsoever”).

Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that “Respondent is not affiliated with Danjaq in any way. Danjaq has never licensed, or otherwise authorized Respondent to use the 007 mark or any of Danjaq’s trademarks. Complainant also states that “there is no reason to believe that Respondent has been commonly known by the <spy-007.com> domain name or that Respondent has any rights which might predate those of Danjaq”. Complainant also contends that “Respondent is not making a legitimate noncommercial or fair use of the <spy-007.com> domain name without intent for commercial gain”. The Domain Name apparently is being used in connection with a website titled “Keylogger Download”, which contains information about “keyloggers” (which apparently enable tracking of keyboard strokes), offers “keylogger” software and hardware for sale, and contains a number of links to “keylogger downloads.”

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited February 9, 2007).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant alleges, inter alia, that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because “[c]onsidering the worldwide fame of Danjaq’s 007 Marks, it is likely that Respondent chose its <spy-007.com> domain name to create the impression of an association with Danjaq and its goods and services offered under the 007 Marks”. Under the circumstances, the Panel agrees. See, e.g., Zeeks, Inc. v. KME aka Mr. Steve Owen, WIPO Case No. D2003-0641 (“bad faith is established when it is very unlikely that the registrant would have chosen the domain name had it not known of its fame”). Given the fame of the Complainant’s 007 Marks, and the fact that the Respondent registered a domain name that combines that mark with the word ‘spy’, the Panel finds it inconceivable that the Respondent could have been unaware of the Complainant’s mark when it registered the Domain Name. The Domain Name apparently is being used to attract Internet users with an interest in the Complainant’s 007 Marks and related products to a website on which “keyloggers” are offered sale; such actions allow the Respondent to trade on the goodwill of the Complainant's mark. Such use in the Panel’s view falls squarely within the conduct described in paragraph 4(b)(iv) of the Policy.

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <spy-007.com> be transferred to the Complainant.

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Douglas M. Isenberg
Sole Panelist

Dated: February 9, 2007

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¹ Complainant states that it “is the joint owner, with various entities in the Metro-Goldwyn-Mayer (MGM) group of companies, of all copyright in the film character 007”.