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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Houghton Mifflin Co. v. The Weathermen, Inc.
Case No. D2001-0211
1. The Parties
Complainant is Houghton Mifflin Co., a Massachusetts corporation, represented by Donovan & Yee LLP.
Respondent is The Weathermen, Inc., a business operating in Texas, represented by Baker Botts LLP.
2. Domain Name and Registrar
The domain name at issue is: "curiousgeorge.net"
The Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Houghton Mifflin’s complaint (the "Complaint") on February 9, 2001, by email and February 12, 2001, in hard copy. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Houghton Mifflin made the required payment to the Center. The formal date of the commencement of this administrative proceeding was February 26, 2001.
On March 15, 2001, the Respondent timely submitted its Response to the Complaint and elected a three-member Panel. On April 4, 2001, after clearing for potential conflicts, the Center appointed Sally Abel and Michael Froomkin as Panelists and David H. Bernstein as the Presiding Panelist in this matter.
4. Factual Background
Complainant has been the publisher of the "Curious George" series of books about an inquisitive monkey, written and illustrated by Margaret and H.A. Rey, for more than six decades.
Respondent engages in a primarily web-based business, marketing compact discs, phonograph records, hats, t-shirts and related paraphernalia.
5. Parties’ Contentions
Complainant states that it is currently the owner of all trademarks and copyrights associated with the famous "Curious George" series. It has licensed over 90 companies to use the mark in association with a variety of goods and services. Its "Curious George" website can be found at "curiousgeorge.com". Complainant further alleges that the domain name at issue is identical to its "Curious George" mark.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name because Respondent does not use it as a trade name, is not commonly known by that name, and does not operate a business with any legitimate relationship to the name.
Complainant claims that Respondent intentionally attempted to attract Internet users to its website for financial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which offered various "Curious George" t-shirts for sale.
When Complainant demanded that such use be terminated and the domain name transferred to it, Respondent stopped selling goods on the site, but did not transfer the domain name. Instead, Complainant alleges Respondent offered the domain name for auction to the highest bidder at GreatDomains.com.
In its defense, Respondent alleges that it has not attempted to cause any confusion. Respondent alleges that its merchandise is manufactured with authorization by Signatures Network, a sublicensee of Complainant. Respondent further states that, before notice of this dispute, it was selling licensed "Curious George" merchandise on the website associated with the domain name at issue, and the site was registered and used, not to cause confusion, but to sell this legitimate merchandise.
Respondent claims that the domain name was put up for auction only to recoup Respondent’s out-of-pocket costs, and that there is no evidence that it was offering the domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Furthermore, Respondent states that its refusal to transfer the domain name to Complainant, without more, is no evidence of bad faith.
Finally, Respondent alleges that there are no other circumstances indicating bad faith, such as a pattern of registering domain names in order to prevent trademark owners from reflecting their trademarks, or registration primarily for the purpose of disrupting the business of a competitor, especially as Complainant had the opportunity to register "curiousgeorge.net" at the same time as it registered the domain name for its official site, "curiousgeorge.com".
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a Complainant must prove each of the following:
(1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the Respondent has registered and has been using the domain name in bad faith.
A. The Domain Name is Identical or Confusingly Similar to the "Curious George" Trademark
Respondent does not dispute that, under the Policy, the domain name is identical or confusingly similar to Complainant’s mark.
B. The Respondent Does Not Have a Legitimate Interest in the Domain Name
The extent to which a purveyor of legitimate goods can reflect that fact by using the manufacturer’s or licensor’s name as part of a domain name is a difficult issue. At a minimum, however, to establish a legitimate interest under the Policy, a licensee or reseller using a domain name that consists solely of a trademark owner’s mark must take steps to prevent confusion by making clear in its use of the domain name that it is not the mark owner, even if it offers legitimate goods.
Examination of the website operating under the domain name at issue, as it appeared before Complainant initiated this dispute, shows that Respondent’s use cannot be described as legitimate. Respondent used Complainant’s mark, including its distinctive lettering style and a drawing of the Curious George character, as the large-font title of the page. Even by scrolling down all the way to the bottom, a visitor would find no indication that the page was not associated with Complainant, and instead was a production of Respondent. Respondent’s name does not appear on any portion of the site as it has been submitted to the Panel, while Complainant’s mark is prominently featured. (Respondent does not allege that Complainant’s Exhibit F, containing printouts from the site, is inaccurate.)
As a result of the content of the page, a visitor to Respondent’s site would be likely to believe that it was Complainant’s official site. Such a confusing commercial use cannot be "legitimate" under the Policy.
C. The Respondent Registered and Used the Domain Name in Bad Faith
Respondent used "curiousgeorge.net" to offer "Curious George" merchandise for sale. As noted above, Respondent prominently featured the "Curious George" mark, with its distinctive lettering style and a drawing of Curious George himself, as the title of its site, but did not at any point identify itself as a separate entity from Complainant. Consumers were therefore likely to be confused into thinking that the merchandise offered therein was being offered by Complainant.
The Panel concludes that Respondent’s use of this domain name was in bad faith, in that it likely confused and diverted customers from Complainant. Absent any other evidence, bad faith registration may therefore be inferred. See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (decided June 29, 2000). No other evidence in this case suggests that an inference of bad faith registration is unjustified.
Because the Panel finds bad faith use and registration under paragraph 4(b)(iv) of the Policy, it need not consider Complainant’s argument that Respondent’s conduct also constitutes bad faith under paragraph 4(b)(i).
The fact that Complainant did not register the domain name at issue before Respondent is of no moment. Trademark owners are not required to stockpile multiple domain names to prevent bad faith registration and use. To consider conservative registration as evidence against a trademark owner would create perverse incentives for owners to register every conceivable domain name related to their marks, which would harm the interests in free expression and fair competition that inform the Policy.
For all of the foregoing reasons, the Panel decides that Complainant has met its burden of proof under paragraph four of the Policy: the domain name "curiousgeorge.net" is confusingly similar to a trademark in which Complainant has rights, Respondent lacks a legitimate interest in that domain name, and Respondent has registered and used the domain name in bad faith. Accordingly, this Panel concludes that the domain name at issue should be transferred to the Complainant.
David H. Bernstein
Dated: April 17, 2001