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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marvel Characters, Inc. v. Namegiant Limited, Namegiant Domain are either owned by us or Client Managed

Case No. D2007-1252

1. The Parties

The Complainant is Marvel Characters, Inc. of Beverly Hills, United States of America, represented internally, United States of America.

The Respondent is Namegiant Limited, Namegiant Domain are either owned by us or Client Managed, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain name <silver-surfer.com> is registered with GoDaddy.com Inc.

The disputed domain name <silversurfer.com> is registered with Moniker Online Services, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2007. On August 17, 2007, the Center transmitted by email to Go Daddy.Com Inc Software and Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On August 27, 2007, Go Daddy.com Inc and Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10, 2007. 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 September 14, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2007.

The Center appointed Alistair Payne as the sole panelist in this matter on October 22, 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 Complainant is a character-based entertainment company which has been publishing comic books since 1939. In March 1966, the character Silver Surfer first appeared in one of the Complainant’s comic books. It has appeared thousands of times in such publications since then. The SILVER SURFER trademark has been licensed for use on various forms of merchandise, as well as for a motion picture.

The Complainant had over 20 registered SILVER SURFER trademarks worldwide at the times of registration of both of the Disputed Domain Names, in 2004 and 2005. The Respondent registered the domain name <silversurfer.com> four months after the release of a motion picture containing many of the Complainant’s related characters.

Complainant’s sought to settle this dispute through prior communications, but such attempts failed. The Complainant commenced proceedings under the Policy after the Respondent made an offer of sale for the Disputed Domain Names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Names are identical or confusingly similar to the SILVER SURFER marks in which it has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Complainant notes that the Respondent is not commonly known by the Disputed Domain Names, and has not been authorized by Complainant to use the Disputed Domain Names. The Complainant also contends that the provision of pay-per-click links is not a legitimate offering of goods or services. The Complainant contends that there has been no attempt by the Respondent to make a legitimate use of the Disputed Domain Names.

The Complainant contends that the Disputed Domain Names were registered and are being used in bad faith. The Complainant contends that the use of pay-per-click advertisements for commercial gain through the use of the registered marks of another is evidence of bad faith. The Complainant notes that the pattern of conduct displayed by the Respondent, in registering large numbers of domain names, is evidence of bad faith under the Policy. The Complainant contends that previous UDRP decisions ordering the Respondent to transfer domain names should be considered by this Panel as being evidence of this bad faith.

B. Respondent

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

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights; and

ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii. the Disputed Domain Names have been registered and are being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel accepts the Complainant’s evidence that it owns relevant trademark rights in the SILVER SURFER mark due to its various trademark registrations and its long established usage of its marks. The top level “.com” extension can be disregarded for the purposes of assessing whether the Disputed Domain Names are identical or confusingly similar. See Kyobo Life Insurance Co., Ltd. v. Max, WIPO Case No. D2003-0008. Similarly the hyphen can be disregarded in such assessments. See Chi-Chi’s, Inc. v. Restaraun Commentary (Restaurant Commentary), WIPO Case No. D2000-0321.

The Panel, therefore, finds that the Disputed Domain Names are confusingly similar to the various trademarks in which the Complainant has rights and the Complainant has satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden is on the Complainant to establish a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Names. The Complainant has highlighted that it has not authorized the Respondent to use any of its SILVER SURFER trademarks and the Respondent is not commonly known as <silversurfer.com> or <silver-surfer.com>. The Complainant points to the use of sponsored links by the Respondent and the fact that the Disputed Domain Names are misleadingly similar to the Complainant’s marks as evidence of the assertion that the Respondent is using the Disputed Domain Names with the intention of misleading consumers for commercial gain. The Panel is satisfied that the Complainant has established a prima facie lack of rights or legitimate interests on the part of the Respondent.

The Panel has not been provided with any evidence that the Respondent is using, or making demonstrable preparations to use, the Disputed Domain Names for legitimate purposes, beyond the references in the complaint itself to plans for an online dating service for the elderly. The provision of a pay-per-click site using a domain name containing the registered trademark of another does not constitute a bona fide offering of goods and services in circumstances where there is a conflict with pre-existing rights, such as the present case. See Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449.

In light of the Complainant’s evidence, and the fact that the Respondent has not replied to these contentions, the Panel is satisfied that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Names years after the Complainant obtained a trademark for SILVER SURFER. However, the Disputed Domain Names were registered soon after the release of a film featuring the “Silver Surfer” character. The Complainant’s characters are well known and it would appear, therefore, on the balance of probabilities, that the Respondent is attempting to mislead internet users by creating a likelihood of confusion with the Respondent’s site as to source, sponsorship, affiliation or endorsement with the Complainant and its trademark. This is a direct contravention of Paragraph 4(b)(iv) of the Policy.

The Respondent’s pattern of conduct in registering numerous other domain names reflecting well known trademarks is also indicative of bad faith. The Panel also notes that there are several previous Panel decisions finding against the Respondent.

The Panel is satisfied that all of the above is adequate evidence to infer that the Respondent has registered and used the Disputed Domain Names in bad faith.

The Complainant has therefore satisfied 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 names, <silver-surfer.com> and <silversurfer.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist

Dated: November 5, 2007