WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marvel Characters, Inc. v. superherosquad.com Private Registrant, DreamHost Web Hosting

Case No. D2008-0504

1. The Parties

Complainant is Marvel Characters, Inc. (“Complainant”), a corporation incorporated under the laws of the State of Delaware, with a principal place of business located in Beverly Hills, California, United States of America.

Respondent is superherosquad.com, Private Registrant, DreamHost Web Hosting (“Respondent”) located in Brea, California, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <superherosquad.com> (the “Disputed Domain Name”). The registrar is DreamHost (the “Registrar”) located at Brea, California, United States of America.

3. Procedural History

On April 2, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On April 3, 2008, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On April 4, 2008, the Center received hardcopy of the Complaint. Complainant paid the required fee.

On April 5, 2008, 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 Disputed Domain Name and that the Disputed Domain Name is registered to “Respondent” as designated above.

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”).

On April 10, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On May 2, 2008, Respondent went into default after the Center advised Respondent that it had failed to file a Response. No Response has been received.

On May 14, 2008, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a sole panelist consisting of the Panel.

4. Factual Background

Complainant is a character-based entertainment company. Complainant has a proprietary library of over 5,000 characters and utilizes its character franchises in licensing, entertainment (via Marvel Studios), and publishing (via Marvel Comics).

Complainant has been publishing comic books since 1939. Complainant’s library of individual characters includes: Spider-Man, The Incredible Hulk, Captain America, Iron Man, Daredevil, Punisher and Thor, among others, as well as teams of individual characters, such as the X-Men, the Fantastic Four and the Avengers, among others.

Together with DC Comics (another character-based entertainment company) Complainant has been the owner of all rights to the SUPER HEROES (and variations of SUPERO HEROES, such as SUPER HERO and SUPER HERO WORLD) trademark (“SUPER HEROES Mark”) worldwide. The SUPER HEROES Mark was first used in 1967. Complainant has also been the sole owner of all rights to the MARVEL SUPER HEROES trademark since 1977. Complainant and DC Comics have continuously and successfully produced, marketed, and sold comic books and merchandise (including, toys, action figures, clothes, consumer home products, and video games) using the SUPER HEROES Mark. Additionally, Complainant began selling a line of toys featuring Complainant’s characters using the SUPER HERO SQUAD trademark since 2006.

Respondent first registered the <superherosquad.com> domain name in July 2006. At that time, Complainant had worldwide registrations for SUPER HEROES Mark and by the Spring of 2006 had announced and displayed to the press and retail buyers toys featuring the SUPER HERO SQUAD trademark.

Complainant has given Respondent written notice of Complainant’s rights and has demanded transfer of the Disputed Domain Name. Respondent has not responded to Complainant’s written notice or to the Complaint filed in this proceeding.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it holds over 67 registrations in 17 countries for the SUPER HEROES Mark (and various forms of SUPER HERO) jointly with DC Comics. Complainant also holds 12 registrations in 6 countries for MARVEL SUPER HEROES (and various forms of MARVEL SUPER HEROES). All but 2 of these registrations pre-date Respondent’s registration of the Disputed Domain Name.

In addition, Complainant asserts that the SUPER HEROES Mark is a famous mark that has acquired secondary meaning in the minds of consumers. Complainant further asserts common law rights to SUPER HERO SQUAD and alleges continuous and exclusive use since December 2006.

ii. Complainant argues that the Disputed Domain Name is confusingly similar to the SUPER HEORES Mark and to the common law rights in SUPER HERO SQUAD, pursuant to Paragraph 4(a)(i) of the Policy, because the Disputed Domain Name wholly incorporates the SUPER HERO SQUAD trademark and includes the entirety of the SUPER HEROES Mark with non-distinctive terms.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services.

Complainant cites to the history of its demands for transfer of the Disputed Domain Name as an indication that any use of the Disputed Domain Name by Respondent was not a bona fide offering of goods and services.

On October 24, 2007, Complainant notified Respondent but received no response. In a subsequent email dated January 18, 2008, Complainant notified Respondent of his infringing use of Complainant’s SUPER HEROES Mark and SUPER HERO SQUAD trademark, requested that the Disputed Domain Name be transferred to Complainant, and in any case, requested a response by January 22, 2008. At that time “www.superherosquad.com” was a website with no apparent purpose; users could click on simple illustrations, (which were not suggestive of any relation to SUPER HEROES) without any effect. There was no response on the part of Respondent either to the former emails or to Complainant’s final email dated January 31, 2008, which again requested transfer of the Disputed Domain Name. However, the website at “www.superherosquad.com” was subsequently transformed into a confusingly similar and infringing website for the NBA team known as the “Houston Rockets.” However, the new website is merely a collection of framed content and links from “www.nba.com”, “www.youtube.com”, “www.espn.com” and other sports and news sources that was hastily and suspiciously changed only when Complainant asserted rights to the Disputed Domain Name.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(ii) because he is not commonly known under the Disputed Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the SUPER HEROES Mark or the SUPER HERO SQUAD trademark in a domain name or in any other manner.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under Paragraph 4(c)(iii) because he is not making a legitimate noncommercial or fair use of the Disputed Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant further contends that Respondent has deliberately registered the Disputed Domain Name to attract the attention of internet users searching for the SUPER HEROES.

iv. Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Specifically, Paragraph 4(b)(iv) establishes a test for Respondent’s bad faith if Respondent is using the domain name, to 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

Lastly, Respondent has shown bad faith by actively altering his use of the Disputed Domain Name once Complainant made a transfer request. Prior to Complainant’s emails notifying Respondent of his infringing use of Complainant’s trademarks and requesting transfer of the Disputed Domain Name, the website to which the <superherosquad.com> Disputed Domain Name resolved was in effect dormant. While Respondent altered the website’s content into what seems to be a Houston Rockets fan site, it is an obvious pretext, and even contained copyrighted material from outside sources. Respondent’s modifications to the “www.superherosquad.com” website after ignoring Complainant’s assertions, were a weak attempt by Respondent to defend against this anticipated Complaint.

B. Respondent’s contentions

i.-iv. Respondent has chosen not to file a Response setting forth his contentions.

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 Complainant and Respondent 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 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. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

Failure to File a Response

A Respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the Respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

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

ii) that the Respondent has no rights or legitimate 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

Complainant contends that it holds over 67 registrations in 17 countries for the SUPER HEROES Mark and 12 registrations in 6 countries for MARVEL SUPER HEROES. In addition, Complainant asserts that the SUPER HEROES Mark is a famous mark that has acquired secondary meaning in the minds of consumers. Complainant further asserts common law rights to SUPER HERO SQUAD and alleges continuous and exclusive use since December 2006.

The registrations demonstrate that the relevant trademarks are valid and subsisting and serve as prima facie evidence of Complainant’s ownership and the validity of the SUPER HEROES Mark. 15 U.S.C. § 1115. The Panel is further satisfied that Complainant has provided sufficient evidence of common law rights in SUPER HERO SQUAD for the purpose of the present Policy proceeding.

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. Respondent has 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.

Respondent has chosen not to contest this prima facie showing. Therefore, the Panel finds that for purposes of this proceeding, the Complainant has enforceable rights.

Identity or Confusing Similarity

Complainant argues that the Disputed Domain Name is confusingly similar to the SUPER HEORES Mark and to the common law rights in SUPER HERO SQUAD, pursuant to Paragraph 4(a)(i) of the Policy, because the Disputed Domain Name wholly incorporates the SUPER HERO SQUAD trademark and includes the entirety of the SUPER HEROES Mark with non-distinctive terms.

As numerous courts and prior UDRP 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); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (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.

The Panel notes that the entirety of the SUPER HERO SQUAD trademark is included in the Disputed Domain Name. In addition, the entirety of the SUPER HEROES Mark is included with the non-distinctive addition of the term “squad” and the required extension for a gTLD “.com.” 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 (4^th ed. 1998).

Furthermore, Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the SUPER HERO SQUAD trademark and the SUPER HEROES Mark.

Therefore, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the SUPER HERO SQUAD trademark and to the SUPER HEROES Mark pursuant to the Policy, paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, 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.

Complainant has alleged that Respondent cannot meet any of the criteria set forth in Paragraphs 4(c)(i)-(iii) which would demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name. Complainant has sustained its burden of coming forward with a prima facie case that Respondent lacks rights to or legitimate interests in the Disputed Domain Name.

Respondent has chosen not to come forward with concrete evidence of use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of good or services. The website at the Disputed Domain Name appears to contain material related to the “Houston Rockets”, but Respondent has not come forward to explain how this content could be said to give rise to a right or legitimate interest in this particular domain name, or otherwise answer the Complainant’s case. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). Specifically, Paragraph 4(b)(iv) applies to Respondent’s actions establishing bad faith if Respondent is using the domain name, to intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.

Complainant further contends that Respondent has shown bad faith by actively altering his use of the Disputed Domain Name once Complainant made a transfer request. The Panel further notes that the Complainant’s SUPER HEROES mark has been registered and used since at least 1977, and that the Disputed Domain Name was registered in 2006, around the time the Complainant launched its line of SUPERHERO SQUAD branded action figures.

In the circumstances, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

The Panelist concludes (a) that the Disputed Domain Name <superherosquad.com> is identical or confusingly similar to Complainant’s SUPER HERO SQUAD trademark and SUPER HEROES Mark, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Name and (c) that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: May 28, 2008