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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Twentieth Century Fox Film Corporation v. KeithMalley.com

Case No. D2007-0760

 

1. The Parties

The Complainant is Twentieth Century Fox Film Corporation, Beverly Hills, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.

The Respondent is KeithMalley.com, Brooklyn, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <thesimpsonsmovie.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2007. On May 24, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 24, 2007, Network Solutions, LLC transmitted by email to the Center its verification response indicating that KeithMalley.com was listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant filed an amendment to the Complaint on June 8, 2007, naming KeithMalley.com¹ as the Respondent. The Center verified that the Complaint together with the amendment to 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 June 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on July 16, 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

The animated television series “The Simpsons” debuted in 1989, and has become one of the longest running network series in television history. The series has garnered multiple awards and award nominations, including several Emmy Awards. The long awaited release of “The Simpsons Movie”, based on the well–known and award winning television series, is scheduled for late July 2007.

The Complainant is the owner of multiple federal trademark registrations in the United States of America for THE SIMPSONS respecting a broad array of goods and services. The earliest of these registrations was issued by the United States Patent and Trademark Office (USPTO) in May 1993. The Complainant also has registered THE SIMPSONS as a trademark in more than eighty (80) other countries worldwide, and the Complainant owns the domain name <simpsonsmovie.com>.

The Respondent registered the disputed domain name <thesimpsonsmovie.com> and is currently using the disputed domain name to direct Internet users to the Keith and the Girl website, a comedy podcast hosted by the Respondent (comedian Keith Malley).² The Respondent sells merchandize through this site, including CDs and DVDs featuring his stand up comedy, as well as “Keith and the Girl” apparel and other items.

The Respondent initially used the disputed domain name to resolve to a website that featured off-color and in some cases sexually explicit depictions involving several characters from “The Simpsons” television series. This website also contained a link to the Keith and the Girl site. When contacted by the Complainant’s counsel prior to the commencement of this administrative proceeding, the Respondent’s purported legal representative indicated that the Respondent would be willing to transfer the disputed domain name to the Complainant for $50,000 (USD).

 

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of at least 28 federal trademark registrations in the United States of America for THE SIMPSONS, and holds registrations for the mark in more than eighty (80) other countries around the world. The Complainant also claims common law rights in the mark THE SIMPSONS through continuous and exclusive use sufficient to establish secondary meaning. According to the Complainant, “The Simpsons” television series has generated billions of dollars in licensing revenue worldwide since the first episode aired in 1989. Further, the Complainant asserts that it has engaged in a multi-million dollar marketing campaign to promote “The Simpsons Movie”, and that the announcement of the movie alone has generated enormous publicity in print and television media and on the Internet. Accordingly, based on multiple registrations for the mark THE SIMPSONS, the many years of commercial exploitation of the mark, and the publicity surrounding the television series, licensed products, and the upcoming movie, the Complainant asserts it has developed tremendous goodwill in the mark.

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s mark. According to the Complainant, the Respondent has not been authorized to use the mark THE SIMPSONS and has no rights or legitimate interests in the disputed domain name. The Complainant maintains that the Respondent registered and is using the disputed domain name in a bad faith attempt to profit from the goodwill in the Complainant’s mark by diverting Internet users to the Respondent’s Keith and the Girl website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <thesimpsonsmovie.com> is confusingly similar to the Complainant’s mark THE SIMPSONS, which the Complainant unquestionably has established rights in through registration and use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The disputed domain name incorporates the Complainant’s mark THE SIMPSONS in its entirety. The mere addition of a generic or descriptive word such as “movie” does not diminish the confusing similarity of the disputed domain name to the Complainant’s mark THE SIMPSONS. See, e.g., Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Respondent is not affiliated with the Complainant and has not been authorized to use the Complainant’s mark THE SIMPSONS, or to register domain names corresponding to that mark. Further, there is no indication that the Respondent has been commonly known by the disputed domain name. Instead the record reflects the Respondent’s registration of a domain name incorporating in its entirety the Complainant’s mark, and its use to redirect the public to a website where the Respondent promotes his own products and merchandise.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.³ In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made any noncommercial or fair use of the domain name. The Respondent’s intentional use of a domain name corresponding to a third party’s mark to attract Internet traffic to his website for purposes of self-promotion does not constitute the use of the domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

Accordingly, the Panel deems that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel concludes from the circumstances in this case that the Respondent was well aware of the Complainant’s mark THE SIMPSONS when he registered the confusingly similar disputed domain name. The Panel further finds from the circumstances of this case that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant’s mark, by attracting Internet users looking for products or services associated with the mark THE SIMPSONS to the Respondent’s website, where the Respondent promotes and offers for sale his own products and merchandise. This constitutes bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. See The Saul Zaentz Company v. Siarhei Chyzhevich, WIPO Case No. D2006-0370.

Accordingly, for the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <thesimpsonsmovie.com> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Date: July 22, 2007

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¹ The Complaint named Keith Malley as the Respondent. For reasons discussed below, the Panel concludes that “KeithMalley.com” is a fictitious name for Keith Malley. Accordingly, the term “Respondent” as used herein refers to KeithMalley.com and Keith Malley without differentiation.

² Both the domain name <keithandthegirl.com> and the disputed domain name are registered to KeithMalley.com, according to the registrars’ Whois databases. The domain name <keithmalley.com> also is registered to KeithMalley.com. The Panel therefore concludes that KeithMalley.com is a fictitious name for Keith Malley. Hence, as noted above, the term “Respondent” as used herein refers to KeithMalley.com and Keith Malley interchangeably.

³ Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.