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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini
Case No. D2001-0700
1. The Parties
Complainants are Lucasfilm Ltd., and Lucas Licensing Ltd. ("Complainants" or "Lucasfilm"), California corporations, with principal places of business in Marin County, California located at 5858 Lucas Valley Road, Nicasio, California 94946, USA.
Respondents are Cupcake City and John Zuccarini ("Respondents" or "Cupcake") located at 957 Bristol Pike Suite D-6, Andalusia, Pennsylvania 19020, USA.
2. The Domain Name(s) and Registrar
The domain names at issue are:
and shall be collectively referred to as the "Domain Names."
The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
On May 24, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint via email. On May 25, 2001, the Center received hardcopy of the Complaint. On May 28, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainants. The Complainants paid the required fee.
On June 1, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the name OF Cupcake City.
The Center verified that the Complaint with Amendment 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").
On June 5, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint, with a copy to the Complainants. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On June 19, 2001, the Center received the Response of Respondents via email. On June 20, 2001, the Center notified Respondents that the Response was deficient.
On June 25, 2001, the Center received the Amended Response of Respondents via email. On this same date, the Center received Complainants’ Reply to Respondents’ Amended Response.
On June 26, 2001, the Center received Respondents’ Opposition to Complainants’ Amended Response to Respondents’ Answer to the Complaint.
On August 10, 2001 after the Center received completed and signed Statements of Acceptance and Declaration of Impartiality and Independence from each of the panelists, the Center notified the parties of the appointment of a three-member administrative panel consisting of Dennis A. Foster, Andrew Christie and Richard W. Page ("Presiding Panelist").
The Panel decided that it would allow the filing of Complainants’ Reply to Respondents’ Amended Response and Respondents’ Opposition thereto. The Panel has considered both filings.
4. Factual Background
Lucasfilm is, and at all material times hereto has been, a corporation organized under the laws of the State of California, having its principal place of business in Marin County, California.
Lucasfilm is and for over twenty years developed a reputation for producing films of the highest quality. As detailed herein, Lucasfilm is the owner of trademark rights in and to the STAR WARS films, and all associated characters, logos, elements, and names.
In 1977, Lucasfilm released the theatrical motion picture entitled, "Star Wars: Episode IV – A New Hope" ("ANH"), which was released to theatres in the United States and thereafter throughout the world. In 1980, a sequel to ANH entitled "Star Wars: Episode V – The Empire Strikes Back" ("ESB") was released worldwide. In 1983, Lucasfilm released its third STAR WARS film "Star Wars: Episode VI – Return of the Jedi" ("ROJ").
In 1997, Lucasfilm produced special editions of ANH, ESB and ROJ, which were released theatrically worldwide. These special editions contained newly created or digitally enhanced footage, new songs and digitally remastered sound, all of which Lucasfilm and/or its affiliated entities produced.
In 1999, a prequel to ANH entitled "Star Wars: Episode I – The Phantom Menace" ("TPM") was released. (All four STAR WARS films are hereinafter collectively referred to as the "STAR WARS Films").
Since 1977, the STAR WARS properties have acquired fame, distinctiveness and tremendous goodwill in the United States and elsewhere throughout the world.
The STAR WARS Films have proved to be among the most successful theatrical motion picture properties in history. News sources have reported that each of the four STAR WARS Films released to date is among the fifteen highest grossing movies of all time at the worldwide box office. These news sources have reported that ANH has grossed approximately $797,900,000 worldwide and is the fifth highest grossing film worldwide; ESB has grossed approximately $553,800,000 worldwide and is the fifteenth highest grossing film worldwide; ROJ has grossed approximately $572,700,000 worldwide and is the twelfth highest grossing film worldwide; and TPM has grossed approximately $922,300,000 worldwide and is the second highest grossing film worldwide. According to these sources, the four films combined have grossed approximately $2,846,700,000 worldwide.
Lucasfilm and its affiliated entity Lucas Licensing Ltd., have authorized the manufacture and sale of numerous items, including but not limited to toys and models, based upon the STAR WARS Films, throughout the United States and elsewhere in the world. The STAR WARS properties are a successful licensing and merchandising venture. Revenue from sales of licensed merchandise worldwide were reported in a
February 10, 1997, "Time" magazine article to be approximately four billion dollars ($4,000,000,000).
Based on the fame of the STAR WARS trademark, the success of the STAR WARS Films, and the licensing of Complainants’ rights in these films, Complainants have obtained numerous trademark registrations, including the following:
November 7, 2000
32 (soft drinks)
September 26, 2000
18 (various types of bags)
Lucas Licensing Ltd.
July 11, 2000
09 (computer game software)
January 26, 1999
09 (computer game software)
Lucas Licensing Ltd
December 21, 1999
09 (educational software)
February 14, 1995
06 (pewter miniature vehicles and figures)
Lucas Licensing Ltd.
December 4, 1979
16 (comic magazines)
Lucas Licensing Ltd.
October 30, 1979
14 (watches), 16 (paint sets), 21 (lunch boxes), 25 (socks and pajamas), and 28 (board games and puzzles)
November 12, 1985
July 16, 1985
28 (video game cartridges)
16 (books, stationery, calendars, etc.)
November 19, 1985
25 (suspenders, slippers, and shoes)
July 2, 1985
21 (toothbrushes, candy molds, and cake pans)
June 25, 1985
09 (phonograph records and pre-recorded cassettes)
December 11, 1984
09 (carrying case for pre-recorded audio cassettes and phonograph records)
October 30, 1984
September 11, 1984
28 (equipment sold as a unit for playing a video game)
May 29, 1984
21 (paper cups)
May 3, 1983
41 (entertainment services)
Complainants have also obtained registration for their STAR WARS trademarks in a multitude of international classes in the following countries around the world: Argentina, Australia, Austria, Azerbaijan, Bahrain, Belize, Benelux, Bolivia, Botswana, Brazil, Bulgaria, Cambodia, Canada, Chile, China, Colombia, Costa Rica, Croatia, Czech Republic, Denmark, Dominican Republic, Ecuador, European Union, Finland, France, German Federal Republic, Greece, Guatemala, Honduras, Hong Kong, Hungary, Iceland, India, Indonesia, Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kazakhstan, Kenya, Latvia, Lebanon, Lesotho, Lithuania, Macao, Malawi, Malaya, Malaysia, Mexico, Moldova, Morocco, Netherlands Antilles, New Zealand, Norway, Pakistan, Panama, Paraguay, Peru, Philippines, Portugal, Puerto Rico, Romania, Russian Federation, Saudi Arabia, Singapore, Slovak Republic, Slovenia, South Africa, South Korea, Spain, Sudan, Swaziland, Sweden, Switzerland, Syria, Taiwan, Tajikistan, Thailand, Trinidad and Tobago, Tunisia, United Arab Emirates, United Kingdom, Uruguay, Uzbekistan, Vietnam, and Zimbabwe.
Complainants have obtained registrations for their STAR WARS trademark for online Internet related services in a multitude of countries around the world, including: Argentina, Australia, Austria, Bahrain, Bolivia, Bulgaria, Chile, Costa Rica, Czech Republic, Denmark, Estonia, European Union, German Federal Republic, Guatemala, Hong Kong, Indonesia, Italy, Kenya, Lesotho, Mexico, Moldova, Morocco, New Zealand, Norway, Panama, Paraguay, Puerto Rico, Romania, Saudi Arabia, and Slovak Republic.
Based on Complainants’ rights in the STAR WARS trademark, and their use of the STAR WARS trademark in connection with Internet services well before Respondents’ registration of their Domain Names, Lucasfilm has also filed numerous additional applications to register these marks, including application no. 75306990, to the United States Patent & Trademark Office, filed on June 11, 1997, to register STAR WARS in International Class 42 ("for computer services, namely, providing computer databases, indexes of information, websites and interactive interface services which provide audio, visual and audiovisual entertainment in the field of education and entertainment via global computer networks and other electronic computer networks; computer services, namely, providing an on-line bulletin board in the field of education and entertainment relating to motion picture films, interactive computer games, television shows and science fiction"); application no. 75015254, to register STARWARS.COM in International Classes 41 and 42 (for "entertainment services provided over a global network, namely, providing information regarding artwork, and regarding the sound editing of a motion picture, information regarding television programs, television commercials and musical recordings; entertainment services provided over a global computer network in the nature of motion pictures and motion picture clips, stills and sound effects" and for "computerized online ordering services featuring clothing and general merchandise bearing references to motion pictures, motion picture exhibition systems, motion picture technology and sound editing; computerized online ordering services featuring computer games, computer programs, motion pictures and other audiovisual works; and computerized online ordering services for the sale, license or distribution of goods and services in the fields of motion pictures, related derivative works, motion picture exhibition systems, motion picture technology and sound editing"); and application no. 75306995, to register STAR WARS in International Class 42 (for "licensing of intellectual property) and International Class 35 (for "Retail store and computerized electronic on-line retailing and ordering services…").
Respondents have used the Domain Names to direct web surfers to various websites unconnected with Complainants. Specifically, when users attempt to visit websites located at the Domain Names they are automatically redirected to a multitude of websites, including sites such as musiclyrics.net, mp3-downloads.com, gamesmp3.com (all owned by Respondents) which involve material directly related to the entertainment industry – music lyrics, music videos, and online games. Further, one window, which is automatically opened by attempting to visit websites at the Domain Names offers for sale stereo equipment.
On May 1, 2001, Complainants sent Respondents a letter detailing Complainants’ rights in the STAR WARS trademark. Despite Respondents actual notice that their registration of the Domain Names violated Complainants’ trademark rights in the STAR WARS trademark, Respondents have not responded to Complainants’ letter, have not provided any evidence or claim of legitimate rights to use the STAR WARS trademark, and have not transferred the Domain Names to Complainants.
5. Parties’ Contentions
A. Complainants’ Contentions
(i) Complainants contend that they have numerous registrations of the STAR WARS trademark.
As a result of use and extensive licensing, the STAR WARS Films, including all associated trademarks, have become widely known and recognized in connection with Complainants’ businesses. These films and trademarks have become well known and popular in close association with Complainants, their businesses and licensees, and thus have become highly valuable assets and symbols of Complainants’ goodwill. As a result, STAR WARS has become a famous trademark worldwide.
(ii) Complainants argue that the Domain Names are confusingly similar to the STAR WARS trademark mark, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the STAR WARS trademark with the addition of generic or descriptive terms.
(iii) Complainants contend that Respondents have no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.
Complainants allege that Respondents are among the most open and notorious cybersquatters. Respondents’ infringing activities have resulted in over thirty cybersquatting cases in which ICANN panels or United States federal courts have found that Respondents are engaged in bad faith cybersquatting of domain names in which Respondents have no legitimate interest. As in these cases, Respondents have no legitimate interest in their Domain Names. Each of Respondents’ Domain Names incorporates the world-famous STAR WARS trademark and utilizes this mark to lead consumers to websites associated with the entertainment industry in which Complainants do extensive business, thereby further misleading consumers to sites which are not sponsored, affiliated, or authorized by Complainants.
Complainants have never licensed Respondents to use the Complainants’ trademarks, and therefore Respondents have no legitimate rights to Complainants’ trademarks. Despite their lack of rights, Respondents have registered and used the Domain Names, which are virtually identical and confusingly similar to Complainants’ famous trademarks. Complainants assert that neither the registration nor use of the Domain Names confers any rights on Respondents, and Respondents’ actions are therefore in violation of paragraph 4(a)(ii) of the Policy.
(iv) Complainants contend that Respondents registered and are using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).
Respondents registered the Domain Names on May 7, 1999, well after Complainants established their rights in their STAR WARS trademarks through worldwide use of those marks on a wide variety of products and services.
The Domain Names duplicate Complainants’ trademarks, which are trademarks coined and owned by Complainants, and Respondents’ acts of registration alone constitute strong evidence of their bad faith intent. See Shields v. Zuccarini, 89 F. Supp. 2d 634 (Zuccarini "admitted that he registered the variations on …thousands of … domain names … because they are confusingly similar to others’ famous marks or personal names – and thus are likely misspellings of these names – in an effort to divert Internet traffic to his sites."); affirmed by Third Circuit in Shields v. Zuccarini, 2001 U.S. App. LEXIS 13288 (3rd Cir. 2001), wherein the court upheld the lower court’s decision in Shields v. Zuccarini, 89 F. Supp. 2d 634 (E.D. Pa. 2000).
"Respondents have registered variations of the following trademarks, trade names, and celebrity names as domain names: DISNEY, SONY, BLUE MOUNTAIN ARTS, HEWLETT-PACKARD, NATIONAL CAR RENTAL, BRITNEY SPEARS, SALMA HAYEK, OPRAH WINFREY, JENNIFER LOPEZ, STAR WARS, MAYO CLINIC, MICHAEL JORDAN, ALLY MCBEAL, RICKY MARTIN, USA TODAY, TACO BELL, AUSTIN POWERS, MICROSOFT, and PLAYBOY." Yahoo Inc. v. Cupcakes, at ¶ 74.
By choosing to register the Domain Names, Respondents have appropriated, in their entirety, Complainants’ inherently distinctive and famous trademarks with the clear intent to trade off of the reputation of Complainants’ and the Complainants’ trademarks. Such unauthorized and illegal appropriation of famous marks has been acknowledged to be a common practice of Respondents. See Encyclopaedia Britannica, Inc. v. Zuccarini, WIPO Case No. D2000-0330 (WIPO June 7, 2000) ("the fact that: (1) Complainant’s marks are well-known and enjoy a strong reputation; (2) Respondents [Zuccarini] have demonstrated a history of registering domain names consisting of misspellings of widely-known marks or of the names of celebrities; (3) Respondents have been enjoined from engaging in the very conduct at issue in this proceeding; and (4) Respondents failed to respond to Complainant’s efforts to make contact, provide strong support for a determination of "bad faith" registration and use."). Respondents’ scheme of registering among the world’s most famous trademarks as domain names, including the Infringing Domain Names, does not confer any rights to Respondents in those marks.
Respondents’ use of the Domain Names is likely to confuse consumers. Not only have Respondents chosen to register domain names which incorporate Complainants’ famous trademarks, Respondents have also added terms to each of the Domain Names which are clearly intended to attract fans of the STAR WARS Films. The Domain Names <starwarspics.com> and <starwarspictures.com> add terms intended to attract fans of the STAR WARS Films who seek pictures from the famous STAR WARS Films or pictures of the famous STAR WARS characters. The <starwarssounds.com> domain name seeks to attract fans of the STAR WARS Films who attempt to obtain sound files created from the STAR WARS Films. The <starwarstrailer.com> domain name seeks to attract those who are looking for online copies of the trailers for the STAR WARS Films. (A trailer is a preview, commonly shown in movie theatres prior to the feature presentation.) The <starwarswallpaper.com> domain name seeks to attract fans of the STAR WARS Films who would like to obtain wallpaper software for their computers.
Rather than containing legitimate licensed material relating to the STAR WARS Films as each of the Domain Names would imply, all of Respondents’ Domain Names instead "mouse-trap" the viewer with numerous "pop-up" windows containing websites and advertising for third parties selling various goods and services, including online games, credit card services, auction services, and free music videos and MP3s. As a result of Respondents’ activities, Internet users may mistakenly enter websites located at Respondents’ Domain Names instead of websites authorized by Complainants. Such Internet users are likely to be misled into believing that Complainants sponsor or endorse these advertisers. See, e.g. Yahoo!, Inc. v. Cupcake Patrol, WIPO Case No. D2000-0928. As found by the panels in the numerous ICANN decisions issued against Respondents, the Respondents’ registration and use of the Infringing Domain Names in this action violation paragraph 4(a)(iii) of the Policy. See, Policy, Paragraph 4(b)(iv).
Not only is Respondents’ use of the Domain Names likely to confuse consumers as to Complainants’ association with Respondents and/or the source of the various "pop-up" windows found at the Domain Names, Respondents also illegally benefit financially from the registration and use of the Domain Names. As the various cases against Respondents make clear, Respondents register domain names and use these domain names in order to divert traffic to Respondents’ commercial advertisements. Respondents "have registered over 1,300 domain names, many of which are misspellings of widely known and famous marks or celebrity names, including <cosmopoliton.com>, <ophrawinfrey.com> and <jeneferlopex.com>." Encyclopaedia Britannica, Inc. v. Zuccarini, WIPO Case No. D2000-0330. "Taking advantage of consumers’ known disposition to misspell domain names, Zuccarini has diverted Internet traffic to his websites, thereby earning substantial revenue from advertisers." Id. According to the Shields case, Zuccarini’s revenue from this click based confusion approaches $1 million per year. Shields v. Zuccarini, 89 F. Supp. 2d 634; Electronics Boutique Holdings Corp., v. Zuccarini, 2000 U.S. Dist. LEXIS 15719. In the Shields decision, Zuccarini "admitted that he registered the variations on ‘Joe Cartoon,’ as well as thousands of other domain names, because they are confusingly similar to others’ famous marks or personal names – and thus are likely misspellings of these names – in an effort to divert Internet traffic to his sites." Shields v. Zuccarini, 89 F. Supp. 2d 634. Just as in the above actions, Respondents have received and continue to receive compensation from online advertisers with regard to his use of the Domain Names, and are thereby financially benefiting from their unauthorized exploitation of Complainants’ famous trademarks.
Complainants allege that Respondents’ activities constitute bad faith under the Policy paragraph 4(B)(iv). Respondents have no purpose for the Domain Names other than to intentionally attract, for commercial gain, Internet users to their online advertising scheme by creating a likelihood of confusion with Complainants’ famous trademarks. The existence of Respondent's scheme of profiting from its creation of consumer confusion is supported by the many previous decisions against Respondents, which hold that Respondents systematically and intentionally exploit some of the world’s most famous trademarks for commercial gain. Complainants’ reference to the many prior decisions denouncing Respondents’ scheme as bad faith infringement supports the claim that Respondents have continued in that very scheme with respect to the Domain Names.
B. Respondents’ Contentions
(i) Respondent does not dispute that the Complainant has numerous registrations of the STAR WARS trademark.
(ii) Respondent asserts that the Domain Names are not identical or confusingly similar to the STAR WARS trademark.
Respondents argue that it is well-settled that a domain name is simply an Internet Protocol (IP) address. In essence, a numerical code that can alternatively be used with a name to reach the same place on the Internet, See Thomas v Network Solutions, Inc., 176 F.3d 500, 503 (D.C. Cir. 1999). In the instant case, as in all cases of domain name misspellings, Zuccarini purchased a particular numerical IP address that in no way can be confused with any of the Complainants’ domain IP addresses.
In fact, recent decisions in federal courts in the United States have determined that similarity of domain names cannot be construed as confusing simply because a visitor may inadvertently visit the challenged Internet site. In a recent Court decision, Interstellar Starship Services V. Epix Incorporated, 125 F.Supp.2d 1269, 2001 WL 10885 (D.Or. 2001)), the Court found that "The fact that some of defendant's potential customers go to "epix.com" by mistake because they hazard a guess that defendant owns the site also does not demonstrate actual confusion. Today's Internet user knows that search engines, such as "Hotbot," "Lycos," and "Google," provide a quick, free and reliable way to locate a business' web site when its exact Internet address in not known. Nevertheless, many users will still try "[company name].com" before using a search engine because there is little effort and no cost to anyone in making a guess."
In legislating trademark infringement, Congress has determined that its legislation will not apply to all commercial uses of a trademarked phrase in a domain name. Instead of a simple showing of "visual similarity", a plaintiff must show three elements, including: (1) a sufficiency of similarity of marks present to place in the minds of consumers the mental association, (2) that causes, (3) any actual harm to the senior mark’s economic value in identifying a given product. This threshold allows for a domain to be partly composed of a trademark phrase, yet no dilution of a trademarked phrase is caused by its use.
The Courts, in determining whether there has been any confusion (of domain names), will take into account whether the defendant’s use of the disputed mark has prevented another from obtaining the services the plaintiff has to offer, or whether the plaintiff’s reputation has been damaged in any way, I.P. Lund Trading v Kohler Co., 163 F.3d 27, 36-27 (1st Cir. 1998).
In Hasbro v Clue Computing, Inc., 66 F.Supp 117 (D. Mass 1999), the Court ruled in favor of the defendant after a thorough traditional trademark analysis. It found that the marks of both parties were essentially the same. However, it focused on other factors to render its judgment. It found that there was virtually no similarity between the products that the parties offered. It found that those who visited the website "were sophisticated enough to know the difference between a game and a computer consulting service…. And held "There was no reasonable likelihood of confusion because any visitor who mistakenly traveled to the site would instantly realize that he or she was in the wrong site and would then use other methods to find the place he or she wished to view…"
The Complainant’s suggestion that the Domain Names dilute the STAR WARS trademark is flawed. In a recent District Court ACPA case, Hartog & Co. AS v. Swix.Com and Swix.Net, 2001 WL 300382 (E.D.Va.)), the Court found that "Dilution occurs when a defendant's "junior mark," adopted after a plaintiff's mark became famous, dilutes the famous mark either by "tarnishment" or by "blurring."
Respondents argue that the Domain Names cannot be construed as identical or confusingly similar to those of the Complainants nor can it be proven that Zuccarini’s Domain Names dilute or tarnish the image of the Complainant’s mark.
(iii) Respondents assert that they have rights to or legitimate interests in the Domain Names because their activities are protected by free speech, free enterprise and property interest in the Domain Names.
Respondents assert that Zuccarini purchased the Domain Names through a legitimate registration process on the Internet and Zuccarini has legitimate business interests in the Domain Names. While misunderstood by most, Zuccarini’s business operation is in essence a proactive search-engine portal for various advertising and freeware website sponsors.
Applied to this specific case, Zuccarini receives no income or economic benefit whatsoever for any web traffic visiting the Domain Names and therefore does not cipher any revenues from the Complainant. Instead, Zuccarini obtains legitimate business revenues from the various advertisements offered on his domains only after the visitor has decided to visit one of those websites, e.g. click-through. No visitor is forced to click into one of the advertiser’s sites, to register with or to purchase any product or service from these providers.
Zuccarini’s practice of misspelling and typo-squatting services the unique market on the Internet where a large number of "web surfers" specifically type misspelling of words and phrases in order to search for unusual information, advertising and products. Here, the Complainant has suggested that since Zuccarini has been the subject of a number of complaints in these arbitration proceedings and in federal court, he must not have a legitimate interest in the Domain Names. However, the reverse is true. The potential number of available domain names diminishes daily with the active registration processes throughout the world. Mr. Zuccarini simply participates in an active and thriving business on the Internet of purchasing unused and available Internet Protocol Addresses. It should be noted that there are many players on the Internet who engage in the same or similar business as Zuccarini. However, it should be apparent that Zuccarini has been targeted in a number of these cases simply because he has chosen to advocate free expression on the Internet.
(iv) Respondents deny that they registered or used the Domain Names in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which apply:
Respondents assert that the mere listing of some of the cases allegedly brought against Respondent, is designed for no purpose other than to prejudice the panel.
In Hartog & Co. AS v. Swix.Com and Swix.Net , supra., the Court rejected a bad faith intent argument where it found that "Through SID, Burgin runs an Internet services business that is entirely different from plaintiff's ski products business. Burgin never had any intent to divert plaintiff's customers from plaintiff's own website, and plaintiff does not contend that he did. Because Burgin's business is so different from plaintiff's, the court has found no likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of either plaintiff's site or those operated by SID."
Respondents assert that they do not offer or sell domain names to anyone. The Respondents do not conduct any trade or business similar to nor do they create confusion with regard to the Internet visitor. The fact is that when a visitor reaches one of the Respondents’ sites he/she will be directed to the Respondents’ advertisers who range from bank credit cards, to various forms of advertising and adult content websites. There is absolutely no suggestion that its websites are affiliated with any organization, e.g. STAR WARS, or that Lucas or Lucasfilms endorse or support the site. Instead, the Respondents engage in a business of obtaining and utilizing the limited availability of domain names in the market today. To accept the Complainants’ argument would even further curtail the number of available names on the "Net" where one Corporation or one Person would be able to monopolize the registration of terms and names simply by claiming that it received substantial revenue from a generic term or name.
Respondents request that the Panel reject this form of Reverse Domain Name Hijacking by the Complainant and adopt Respondents’ contention that the Internet was formed and developed as a free market enterprise with unlimited usage of generic terms and URLs in order to facilitate a free and open business marketplace. Here, the Respondents have persuasively shown that the Domain Names are comprised of generic and/or descriptive terms, and, in any event, are not exclusively associated with Complainants’ business.
There is no evidence of bad faith based on Paragraph 4(b)(iv) because Respondent is making a fair, non-commercial use of the Domain Names.
6. Discussion and Findings
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."
Because both the Complainants and Respondents are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainants have met their 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. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (Apr. 10, 2001), n. 3.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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; and,
(ii) that the Respondent has no legitimate rights or interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainants contend that they have numerous registrations of the STAR WARS trademarks. The evidence shows the registrations are valid and subsisting and serve as prima facie evidence of Complainants’ ownership and the validity of the STAR WARS trademark. 15 U.S.C. § 1115. The registrations further are incontestable and conclusive evidence of Complainants’ ownership of the trademark and exclusive right to use the trademark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondents have the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is the Panel's belief that Respondents have not met their burden.
Respondents have not contested the assertions by Complainants that they have valid registrations of the trademark. Therefore, the Panel finds that Complainants, for purposes of this proceeding, have enforceable rights in the trademark.
The question as to whether a mark is or has become generic such that the Complainant should not be seen to have "rights" in respect of the mark used and/or registered has been presented to a number of panels. The Panel adheres to the position that such defenses are beyond the purview of the Panel. We believe that the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases, and the acquisition of secondary meaning. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. Therefore, the Panel accepts the registered trademark as prima facie evidence of the existence of the mark without analysis of Respondents’ assertions that the STAR WARS trademark is descriptive or generic and without analyzing secondary meaning. 402 Shoes Inc dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223.
Identity or Confusing Similarity
Complainants further contend that the Domain Names are identical with and confusingly similar to the STAR WARS trademark pursuant to the Policy paragraph 4(a)(i).
Respondents cite a number of federal cases analyzing dilution under United States trademark law and argue that the use of the Domain Names does not create confusion in the minds of the Internet user.
As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
The Panel notes that Respondents are using the entirety of the phrase "star wars" in each of the Domain Names. The additional phrases "pics," "pictures," "sounds," "trailers," and "wallpaper" are merely descriptive.
Contrary to the Respondent’s contention, the owner of the registered trademark does not have to show "likelihood of confusion", as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this first factor. Under Paragraph 4(a)(i), the question of identity and confusing similarity is evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (Jan. 29, 2001). It thus is irrelevant, for purposes of evaluating the first factor, whether consumers would avoid confusion by reviewing the content of Respondents’ website.
We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainants have rights. The Panel is to compare the mark and the domain name alone, independent of the use factors usually considered in a traditional infringement action. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Café, WIPO Case No. D2000-0068. There is no dispute that Complainants have rights in the STAR WARS trademark. Numerous panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Gorstew Limited, Jamaica, and Unique Vacations, Inc. v. Cottrell Travel, ICANN Case No. FA94923.
Therefore, the Panel finds that the Domain Names are confusingly similar to the STAR WARS trademark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
Complainants contend that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Respondents have never been licensed to use the Complainants’ trademarks.
Complainants allege that Respondents are notorious cybersquatters who have been the subject of numerous decisions before the WIPO and the federal courts of the United States. Complainants further allege that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.
Paragraph 4(a)(ii) requires the Complainants to prove that the Respondents have no rights to or legitimate interests in the Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
The Panel finds that the allegations of Complainants are sufficient to establish a prima facie case that Respondents have no rights to or legitimate interest in the Domain Names. Therefore, the burden shifts to the Respondents to rebut the allegations.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Domain Names:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Respondents assert that their use of the Domain Names is protected by free speech and constitutes fair use without the intent for commercial gain under the Policy paragraph 4(c)(iii).
Respondents argue that they are not offering for sale any of the Domain Names. The only revenue, which Respondents receive, is from advertisers on their websites. The Panel finds that the receipt of advertising revenues is sufficient to conclude that Respondents are operating a commercial enterprise and that Respondents have not adequately rebutted the showing of Complainants.
Therefore, the Panel finds that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of the Domain Names:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product
Complainants allege that Respondents have demonstrated their bad faith under the Policy paragraph 4(b)(iv).
Respondents admit attracting Internet users to their websites. The Panel has already found above that the purpose of Respondents is commercial gain. Therefore, the only additional analysis necessary for a finding under the Policy paragraph 4(b)(iv) is the likelihood of confusion as to the source, affiliation or endorsement of the websites.
Complainants argue that each of the Domain Names includes the phrase "star wars," plus some additional phrase designed to attract fans of the STAR WARS Films. The <starwarspics.com> and <starwarspictures.com> Domain Names are intended to attract fans of the STAR WARS Films who seek pictures from the famous STAR WARS Films or pictures of the famous STAR WARS characters. The <starwarssounds.com> Domain Name seeks to attract fans of the STAR WARS Films who attempt to obtain sound files created from the STAR WARS Films. The <starwarstrailer.com> Domain Name seeks to attract those who are looking for online copies of the trailers for the STAR WARS Films. (A trailer is a preview, commonly shown in movie theatres prior to the feature presentation.) The <starwarswallpapaer.com> seeks to attract fans of the STAR WARS Films who would like to obtain wallpaper software for their computers.
When a web surfer enters the Domain Names as the URL for a website, the web surfer is directed to various of Respondents’ websites. None of these websites deal in licensed material relating to the STAR WARS Films as each of the Domain Names would imply. Instead, Respondents’ Domain Names "mouse-trap" the viewer with numerous "pop-up" windows containing websites and advertising for third parties selling various goods and services, including online games, credit card services, auction services, and free music videos and MP3s. As a result of Respondents’ activities, Internet users may mistakenly enter websites located at Respondents’ Domain Names instead of websites authorized by Complainants. Such Internet users are likely to be misled into believing that Complainants sponsor or endorse these advertisers.
The Panel finds that this evidence is sufficient to establish likelihood of confusion as to the source, affiliation or endorsement of the Domain Names and websites. Therefore, Complainants have shown the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and that Respondents registered and used the Domain Names in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Panel concludes (a) that the Domain Names are confusingly similar to Complainants’ registered STAR WARS trademark, (b) that Respondents have no rights or legitimate interests in the Domain Names and (c) that Respondents registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Lucasfilm, Ltd.
Richard W. Page
David A. Foster
Dated: September 15, 2001