Trademark Owner Gains Control of Trademark Domain Name from Cybersquatter under UDRP Aribtration

August 12th, 2011

As an Internet Law Attorney knows, domain name trademark issues often arise in situations where Internet users register a domain name which is trademark protected. Such an Internet user runs the risk of being prosecuted for cybersquatting under the Uniform Dispute Resolution Policy (UDRP) or the Anti-Cybersquatting Consumer Protection Act (ACPA).

Another instance of this often repeated scenario occurred in July to a cybersquatter who lost control of the trademark domain name, manofsteel.com, when a UDRP arbitration panel transferred the trademarked domain name to the parent company of DC Comics (the registered trademark owner of “MAN OF STEEL”), Warner Bros. Entertainment (owned by Time Warner). The cybersquatting culprit is listed on the National Arbitration Forum (NAF) decision as: raton, Coni c/o (‘in care of’) LBR Enterprises, a California based company (Respondent).

Superman Man of Steel, The Movie;

This UDRP administrative decision was rendered shockingly close to the start of filming for Superman: Man of Steel, the newest installment in the Superman series, for which filming was set to begin this August, just one month after DC Comics won the arbitration and gained control of manofsteel.com. Indeed, as of today www.manofsteel.com is not yet live – DC Comics and Time Warner will undoubtedly populate the domain name with content geared towards the upcoming Superman movie, set to be released in 2013.

The UDRP Panel’s decision;

This was a relatively easy arbitration win for DC Comics. After DC Comics filed the UDRP Complaint the cybersquatting Respondent failed to respond to the complaint. Consequently, the UDRP Panel was entitled to accept all reasonable allegations and inferences in DC Comic’s Complaint as true unless the available evidence is clearly contradictory.

However, to succeed in wresting control of the disputed trademark domain name, DC Comic still had to satisfactorily establish all three elements required under the ICANN policy. These three elements are as follows;

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2)  Respondent has no rights or legitimate interests in respect of the domain name; and
(3)  the domain name has been registered and is being used in bad faith.

Identical or confusingly similar to DC Comic’s trademark;

After noting that the deletion of spaces and addition of a gTLD (in this case ‘.com’) to a trademark (“MAN OF STEEL”) does not distinguish the domain name from the trademark, the UDRP Panel easily concluded that manofsteel.com was identical to DC Comic’s registered trademark. DC Comic satisfied the first prong.

Rights or legitimate interests;

DC Comics provided evidence that it is the owner of the “MAN OF STEEL” trademark which was sufficient to prove that it has rights and legitimate interests in the disputed domain name. (Internet Law Lawyers and lay-users alike can use the USPTO’s TEAS to identify ownership of trademarks currently registered and even those no longer in use). This in turn shifted the burden to Respondent to demonstrate its rights or legitimate interests. Although Respondent never ‘responded’ to the complaint; the Panel explored the possibility that Respondent may demonstrate such rights or legitimate interests by virtue of Respondent being commonly known by the disputed domain name.

To satisfy this query, the Panel commonly refers to the relevant WHOIS information for the disputed domain name. (This information can be found here; WHOIS manofsteel.com)

At the time of this UDRP arbitration process, the WHOIS information for the disputed domain name revealed the domain name registrant as “LBR Enterprises.” Furthermore, the Panel found that DC Comic had not given Respondent permission to use the “MAN OF STEEL” trademark. Accordingly, Respondent is not commonly known by the disputed domain name manofsteel. DC Comic satisfied the second prong.

Registration and use in bad faith;

Respondent had used manofsteel.com to display links and advertisements unrelated to DC Comic’s use of the trademark. From this, the Panel inferred that Respondent received compensation from third-parties for displaying the links and ads. Knowledge of the history of cybersquatting practices enabled the Panel to come to the greater inference that Respondent had selected the domain name and displayed unrelated ads to confuse Internet users and profit from users’ association of the disputed domain name with DC Comic’s popular Superman comic and movie series.

This was sufficient for the Panel to conclude that the registration and use of the disputed domain name demonstrates Respondent’s bad faith conduct. DC Comic satisfied prong three.

DC Comic successfully demonstrated that all three prongs of the ICANN policy were satisfied.

After profiting by cybersquatting on the disputed domain name since 2001, Respondent lost the UDRP Arbitration proceeding, consequently manofsteel.com was transferred to DC Comic’s parent company Warner Bros. Entertainment.

The UDRP Panel’s full decision regarding this trademark domain name dispute can be found here; NAF Decision, Claim Number: FA1106001395018.