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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Archie Comic Publications, Inc. v. Steven Feezle d/b/a Fozwell Productions
Case No. D2001-0188
1. The Parties
1.1 The Complainant is Archie Comic Publications, Inc., a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at 325 Fayette Avenue, Mamaroneck, New York, United States of America.
1.2 The Respondent is Steven Feezle d/b/a Fozwell Productions, an individual having an address at 13422 Bassett Street, Valley Glen, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are <josieandthepussycats.net>, <josieandthepusscats.org>, and <josieandthepussycats.ws>, which domain names are registered with Register.com, located in New York, New York.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 8, 2001, and the signed original together with four copies forwarded by express courier was received on February 5, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated February 8, 2001.
3.2 On February 8, 2001, a Request for Registrar Verification was transmitted to the registrar, Register.com requesting it to: (1) confirm that the domain names at in issue are registered with Register.com (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s),
e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On February 14, 2001, Register.com confirmed that the domain names at issue are registered with Register.com, are currently in active status, and that the Respondent is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on March 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Register.com and ICANN), setting a deadline of April 1, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 On March 27, 2001, the WIPO Center received an email from Respondent requesting additional time to respond to the Complaint. On March 30, 2001, the WIPO Center received an email from Complainant’s counsel stating that Complainant would not oppose a one-week extension.
3.7 A Response was received on April 2, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on April 2, 2001.
3.8 On April 17, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was April 30, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
3.9 On March 13, 2001, the WIPO Center received by email an additional informal submission from Complainant. Because the Panel did not request additional documents and because Complainant did not seek the Panel’s permission to file additional documents, the Panel exercises its discretion under Uniform Rules, Rules 10(d) and 12 to reject the submission. The submission will not be considered.
4. Factual Background
4.1 In 1963, Complainant introduced a new comic book series entitled "She’s Josie," featuring a teenage girl named "Josie" and her friends "Melody" and "Pepper." In 1969, Complainant changed the name of the series to "Josie and the Pussycats" and introduced an all-girl band made up of the three main characters ("Valerie" having replaced "Pepper.") The mark JOSIE AND THE PUSSYCATS has been utilized continuously in commerce since September 15, 1969, in connection with comic magazines and licensed products.
4.2 Complainant is the assignee of the registered trademark JOSIE AND THE PUSSYCATS, which mark was registered with the Untied States Patent and Trademark Office on December 8, 1970. Complaint, Annex C. Complainant has used and licensed others to use the trademark in conjunction with a variety of goods, including animated television programs, toys, books, musical recordings, home videos, T-shirts, and magnets.
4.3 On June 27, 1997, Complainant’s licensee, Archie Online, registered the domain name <josieandthepussycats.com>. Complaint, Annex D.
4.4 In 1998, Complainant licensed Universal Pictures to develop a live-action motion picture based upon the JOSIE AND THE PUSSYCATS characters. The upcoming movie was heavily publicized in the sprint of 2000.
4.5 Respondent registered the domain names at issue on June 26, 2000.
4.6 As of the date the Complaint was filed, Respondent had made no use of the domain names at issue.
4.7 On January 18, 2001, Complainant’s counsel sent Respondent an email demanding that Respondent cease and desist from any use of the domain names at issue. By reply email, Respondent stated: "If you would like to purchase these URL’s for your client, feel free to make an offer, otherwise feel free to do what ever [sic] you feel necessary." Complaint, Annex F. No mention was made in this email that Respondent had purchased the names for his nieces, or that they were intended to be used as fan sites.
4.8 In his Response, Respondent stated that he had purchased the three domain names as gifts for his two nieces, who are twelve and thirteen years of age. The two nieces are fans of two of the actresses who appear in the film, and Respondent intended to establish fan sites for the movie.
4.9 Respondent, who had registered the domain names at issue in June of 2000, is planning to give them to his two nieces on their birthday, both of the girls apparently having been born in May. This is the reason Respondent gives for not having done anything with the domain names at issue since their registration.
4.10 Respondent admits that he offered to sell the domain names at issue to Complainant, but contends that he did so after turning down an offer for the names from "a company that has a ‘Nude Celebrity" web site for $1,500 and after having received the threatening email from Complainant’s counsel.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered domain names which are identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent admits that the domain names at issue "may be identical" to Complainant’s trademark, but contends that Respondent has rights and legitimate interests in respect of the domain names, since the names were publicly available and were purchased as gifts, and that the names were registered in good faith and will be used to resolve to a fan site for the movie.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain names registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
(3) that the domain names have been registered and are being used in bad faith.
6.4 It is clear and Respondent has effectively admitted that the domain names at issue are identical to the mark in which the Complainant has rights.
6.5 Respondent contends that he registered the three domain names for his two nieces to establish one web site. Not only do the number of domain names registered fail to coincide with the number of the nieces and with the number of the web sites intended to be established, this purpose was not mentioned by Respondent in his first communication with Complainant. Moreover, such intent was only communicated long after Respondent had received notice of the dispute. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names at issue.
6.6 The questions to be determined are: have the domain names at issue been registered in bad faith, and are they being used in bad faith?
6.7 In his offer to sell the domain names at issue to Complainant, Respondent did not name any specific consideration he was prepared to accept. Therefore, the Panel cannot determine that Respondent offered to sell the domain names at issue to Complainant for an amount in excess of Respondent's costs related to the domain names at issue. Policy, ¶4(b)(i).
6.8 Neither does Respondent's conduct come squarely within any of the three other examples given of bad faith registration and use in paragraph 4(b) of the Policy.
6.9 However the examples set out in Paragraph 4(b) are intended to be illustrative, rather than exclusive. In the case of Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, it was established that "inaction" could constitute bad faith use. Numerous subsequent Panel decisions have adopted the reasoning and applied the analysis of Telstra in determining whether there is bad faith registration and use. Whether inaction can constitute bad faith registration and use is to be determined by an analysis of the particular facts in a given case.
6.10 In the present case, the facts are that Complainant’s trademark is well known in the United States, in which Respondent resides, that in the Spring of 2000 there was much publicity of the upcoming motion picture, which used the licensed trademark of Complainant as its name, that the three domain names at issue were registered by Respondent shortly after that publicity, that Respondent did nothing with the domain names at issue until contacted by Complainant, and that when contacted by Complainant, Respondent offered to sell the domain names to Complainant without any invitation to do so having been made by Complainant.
6.11 Under these facts, the Panel finds that Respondent's inaction constitutes bad faith registration and use.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <josieandthepussycats.net>, <josieandthepussycats.org>, and <josieandthepussycats.ws> be transferred to the Complainant.
M. Scott Donahey
Dated: April 25, 2001