WIPO Domain Name Decision: D2004-0768

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Studio Peyo S.A., International Merchandising Promotion and Services (I.M.P.S.) v. WW Productions

Case No. D2004-0768

1. The Parties

The Complainants are Studio Peyo S.A. of Geneva, Switzerland and International Merchandising Promotion and Services (I.M.P.S.) of Genval, Belgium, represented by Gevers & Partners S.A. of Diegem, Belgium.

The Respondent is WW Productions of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <netsmurf.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2004. On September 23, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. Also on September 23, 2004, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 1, 2004. 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 October 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2004.

The Center appointed Anders Janson as the sole panelist in this matter on November 26, 2004. 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 Swiss limited company and its exclusive licensor, a company situated in Belgium.

The Complainant owns more than 350 registered copyrights in the United States of America. The Complainant is also the owner of various domain names including the term “SMURF”, inter alia <smurf.biz> <smurf.com>, <smurf.net>, <smurfs.net>, <thesmurfs.com>, <smurfies.com>, <smurfworld.com> and <smurfvillage.com>. The Complainant operates a website at <smurf.com> that offers games and information on the Smurfs, directed at children.

The Complainant is the owner of numerous American, International and European community trademarks registrations and applications for marks that consist of or feature the term “SMURF”, inter alia:

- Application No 76/297 866, of “SMURF”, in the USA, filed August 8, 2001, for classes 9, 14, 16, 20, 24, 25, 28 and 30;

- Registration No 1.369.189, of “SMURF” in the USA, filed September 29, 1981, for class 26;

- Registration No 1.247.655, of “SMURF” in the USA, filed November 5, 1980, for class 16

- Registration No 1.262.207, of “SMURF” in the USA, filed November 24, 1981, for class 41

- Registration 0440092, for “SCHTROUMF SMURF SCHLUMPF”, International Trademark for the countries, inter alia, Algeria, Armenia, Austria, Dem Republic of Korea, France, Germany, Latvia, Moldavia, Russian Federation, Switzerland, Ukraine, registered August 11, 1978;

- Registration 000686576, for “SMURF”, Community Trademark, registered September 22, 2000, for the classes 9, 14, 16, 20, 21, 24, 25, 28, 30, 38 and 41;

- Registration 001414911, for “SMURF”, Community Trademark, registered January 30, 2001, for class 16;

- Registration 002750768, for “SMURF”, Community Trademark, registered June 26, 2002, for class 3, 29, 30 and 32;

The Complainant’s right to the trademark “SMURF” has been determined in a prior UDPR decision (Studio Peyo S.A and IMPS S.A v. Nev Zevo Case No FA0212000137033 ).

The “SMURF” mark has been used for more than 20 years, among other things famous because of the animated TV series, the Smurfs. The characters in the animated feature, which are blue with a white cap and white pants, reflect the “SMURF” mark in their name. In addition, the Smurf mark has been continually used in connection with ancillary markets. In particular, the “SMURF” mark is used in conjunction with clothing, coloring books, pencils, stickers and video games, via agreements with companies such as Fisher Price, Infogramme, Atari and Ferkers.

The panel notes that the registration dates of all of the above-referenced registrations as well as the vast majority of the registrations listed in the Complaint predate the date of registration of the disputed domain name by the Respondent, which was on October 23, 2002.

The panel finds it established that “SMURF” is a well-recognized trademark and that the trademark is both distinctive and famous.

The Respondent is WW Productions, with a stated address in Scottsdale, Arizona, USA. The Disputed Domain names links to a site containing homosexual adult material.

The Respondent is in default, and accordingly, has not challenged the conclusions of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is identical and confusingly similar to trademarks or service marks in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name;

- The domain name have been registered and are being used in bad faith; and

- The domain name <netsmurf.com> should be transferred to the Complainant

B. Respondent

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

6. Discussion and Findings

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

(i) that the disputed 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 rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name at issue is <netsmurf.com>. Complainant is the holder of a large number of registered trademarks of the word and figure mark “SMURF”. The Complainant is also the holder of several domain names including the term “SMURF”, as well as 350 registered copyrights in the USA. The trademark is famous.

The disputed domain name differs from the Complainant’s trademark only by the prefix “net” and the generic and functional top level domain name “.com”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs which constitutes the suffix, shall be disregarded.

The question is therefore if the addition of the prefix “net”, which in this context must be perceived as referring to the Internet, renders the disputed domain name dissimilar from the trademark “SMURF”.

In previous decisions, the Panelist has found that the addition of the prefix or suffix “net” has no influence in the appreciation of the likelihood of confusion with the Complainant’s trademark rights (SBC Communications Inc. v Fred Bell aka Bell Internet, WIPO Case No. D2001-0602 and Arthur Guinness Son & Co (Dublin) Ltd. V Gisoo Cho, WIPO Case No. D2000-1731).

The Panel finds that the distinguishing part of the domain names, “SMURF”, is in itself a distinguished trademark. The addition of the word “net” is commonly used in conjunction with trade names and trademarks to refer the customer to a location on the Internet. Internet users are likely to assume that the addition of the word “net” to the trademark “SMURF” signify a website associated with the Complainant and the Complainant’s goods and services offered on the Internet.

The Panel finds that the addition of the prefix “net” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.

The domain name must therefore be considered confusingly similar to the trademark “SMURF”. The panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).

B. Rights or Legitimate Interests

The Complainants asserts that there are no registered trademarks in the name of the Respondent in the USA for the terms “NETSMURF” or “SMURF”, and that the Respondent, to the best of the Complainant’s knowledge, does not operate any business under any mark that incorporates the terms “NETSMURF” or “SMURF”.

The Complainants also asserts that the Respondent is not commonly known as “NETSMURF”, and that the Respondent has made no lawful use of the domain name. In conclusion, the Complainant asserts that the Respondent has no right or legitimate interest in respect of the domain name. The website to which the domain name links contains adult material, including pictures of “young teen boys”. The disputed domain name does not correspond to the content of the website. The Complainant’s “SMURF” products are mainly intended for children.

The Respondent has not filed a Response in accordance with the Rules, paragraph 5. In those circumstances, when the Respondent does not have an obvious connection with the disputed domain name, the mere assertion from the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exists.

The Panel finds it established that the Respondent is not in any way affiliated with the Complainant.

The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

Finally the Panel has to consider the question of the disputed domain name having been registered and used in “bad faith.”

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your web-site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant has asserted and provided evidence of that the Complainant’s trademark, and goods and services provided is well known on the Internet. If the term “SMURF” is searched on Google on the Internet, it provides more than 500.000 hits.

The Panel has established that the mark “SMURF” is recognizable and internationally famous. The Panel considers it highly unlikely that the Respondent by coincidence have registered the disputed domain name, which is different from the Complainant’s trademark and several websites only by the addition of the prefix “net”. Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. There are no obvious reasons for the Respondent to have a legitimately use of the domain name. As has been established above, the only use of the domain name seems to be to offer a website containing explicit sexual content.

The site to which the disputed domain name resolve, is pornographic. The website is also commercial as it offers access to its content for a fee. This in itself constitutes use in bad faith. The fact that the Complainant’s trademark is mainly directed at children, further supports this conclusion.

The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to 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 name <netsmurf.com> be transferred to the Complainant.

Anders Janson
Sole Panelist

Date: December 9, 2004