Domain name – Domain name dispute resolution – Trademark ownership – Worldwide use – No registration of marks - Common law rights – Confusingly similar – Phonetics, appearance, spelling – Legitimate rights or interest – Bona fide business plan – Legitimate business – No bad faith – No pattern of warehousing domain names. 

Complainant owned trademarks and service marks for THE AVENGERS and AVENGERS, which it used to sell products around the world. Complainant had rights to the marks at common law but had not registered the marks. Respondent registered the domain name in dispute AVENGERS.COM. Complainant asks for transfer of the domain name. 

Held, Name Not Transferred

Domain name in question is confusingly similar to Complainant’s marks, phonetically, in appearance and in spelling. The inclusion of the article THE is not legally significant and there can be no exclusive rights in that word. 
Respondent has legitimate rights and interest in the domain name in dispute.  Respondent is using the domain in conjunction with its adventure business.  Respondent has laid out a significant sum of money for this business, and submitted a valid business plan. There is no evidence to doubt the legitimacy of Respondent’s business. 
There is no evidence that Respondent registered or is using the domain name in dispute in bad faith.  Complainant’s allegations of a pattern of warehousing domain names is not supported by any evidence, nor is there any evidence of attempts to sell the domain to Complainant. The Panel further recognizes that, in considering the totality of the circumstances surrounding the $500,000 price tag for <avengers.com>, the method through which the $500,000 figure was solicited is dubious at best. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Panel Decision referred to
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Diaz, Panelist: -
This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") before the presiding single panelist, Judge Nelson A. Diaz (Retired), of Philadelphia, PA. The presiding panelist has confirmed to the National Arbitration Forum that he has no known conflicts of interest. For the reasons explained below, the Panel orders that the domain name NOT be transferred to Complainant. 

1. The Parties 
Complainant is Canal + Image UK Limited, located at 6, Boulevard de la Republique, 92514 Boulogne Billancourt Cedex, France ("Complainant"). Complainant was represented by Michael M. Ratoza, Esq. Respondent is VanityMail Services, Inc., Respondent was represented by Daniel Hunter.

2. Procedural Findings 
Domain Name: <avengers.com>
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: VanityMail Services, Inc. 
Date of Domain Name Registration: May 3, 1995
Date Complaint Filed Electronically and Hard Copy: June 1, 2000
Date of NSI Confirmation of Domain Name Registration: June 5, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): June 13, 2000 
Due Date for a Response: July 5, 2000; a timely response was received
Relief Sought: Transfer of Domain Name
In compliance with Rule 2(a), the National Arbitration Forum ("The Forum") forwarded the Complaint to the Respondent in a timely manner. In compliance with Rule 4(d), The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and Complainant and Respondent that the administrative proceeding had commenced. 
The Panel issues its decision below based upon the complaint, the filed documents, the response, the Policy and Rules.

3. Factual Background 
Complainant is the owner of the trademark/service marks, THE AVENGERS and AVENGERS, which it has used in commerce in the United Kingdom since 1960, in the United States since 1966, and elsewhere worldwide in connection with entertainment services, namely, providing a television program in the field of murder-mystery. Complainant further uses the marks THE AVENGERS and AVENGERS in connection with printed matter, namely, calendars and posters, as well as videotapes and DVDs. Complainant has not registered the marks THE AVENGERS or AVENGERS in the United Kingdom or in the United States, but has gained significant rights at common law.
On May 3, 1995, Respondent registered the domain name <avengers.com>. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name pursuant to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Policy. Respondent has not yet launched a live website in connection with <avengers.com>.
On May 16, 2000, Complainant through its attorney contacted Daniel Hunter, Respondent’s Technical and Zone Contact for <avengers.com>, to discuss the status of <avengers.com>. Mr. Hunter returned Complainant’s telephone message, and the two conversed concerning <avengers.com>.

4. Parties’ Contentions 
A. Complainant contends that Respondent’s domain name <avengers.com> is identical to Complainant’s marks. 
B. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name. 
C. Complainant contends that Respondent registered and is using the domain name in bad faith. 
D. Respondent denies that the domain name is confusingly similar to Complainant’s marks. 
E. Respondent denies Complainant’s assertion that it has no rights or legitimate interest in the disputed domain name. 
F. Respondent denies that it has acted in bad faith in registering and using the domain name. 

5. Discussion and Findings 
To obtain the requested relief, paragraph 4(a) of the Policy requires the Complainant to 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; and 
2. That the Respondent has no rights or legitimate interest in the domain name; and 
3. That the domain name has been registered and used in bad faith. 
A. Similarity Between Registrant’s Domain Name and Complainant’s Trademark/Service Marks. 
Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, <avengers.com>, is confusingly similar to Complainant’s marks THE AVENGERS and AVENGERS both phonetically and in appearance and spelling. The Panel notes that the word "the" is not significant in determining confusing similarity, where trademark rights inhere primarily in the word "Avengers," and no exclusive rights can be claimed in the word "the." While additional factors beyond appearance, spelling and pronunciation are ordinarily considered in determining likelihood of confusion between trademarks, such as the goods with which the marks are used, the consumers involved, and the trade channels involved, it is clear that <avengers.com> is confusingly similar to Complainant’s marks under the Policy. The Panel concludes that Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainant’s trademark/service marks.
B. Respondent’s Rights or Legitimate Interest in the Domain Name. 
Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:
i. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; 
ii. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or 
iii. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark. 
In support of its claim that Respondent has no legitimate interest in <avengers.com>, Complainant asserts that "the site presently lies dormant," and that Respondent told Complainant that the domain name is held for sale only. Respondent avers that it has made a legitimate use of the disputed domain name, i.e., that it registered the domain name "for its recreational submarine adventure tours," in connection with which Respondent "has already spent in excess of Three Million Dollars ($3,000,000) towards the purchase of capital equipment . . . ." The Panel finds the proffered evidence to be persuasive in support of a bona fide offering of goods or services prior to notice of the dispute. The Panel has no reason to doubt the verity of the contents of the Business Plan submitted by Respondent, evidencing an extensive model for Avengers Recreational Submarine, Inc., a company initiated in May 1999, one year prior to Complainant’s first contact with Respondent. Moreover, Complainant has provided no evidence of an investigation lending support to the argument that Avengers Recreational Submarine, Inc., is an illegitimate business. Complainant has thus failed to meet its burden of proof with regard to the second prong under paragraph 4(c) of the Policy. 
A. Respondent’s Bad Faith Registration and Use of the Domain Name. 
Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:
i. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit; 
ii. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks; 
iii. Registration of the domain name for the purpose of disrupting the business of competitor; or 
iv. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark. 
Complainant submits that, under (i) above, Respondent has registered and used <avengers.com> in bad faith as evidenced by Respondent’s purported offer to sell the domain name to Complainant for $500,000. Complainant further submits that, under (ii) above, Respondent’s conduct evidences a pattern of warehousing domain names that are premised on others’ famous trademarks. Complainant’s argument focuses squarely on its attorney’s telephone call with Respondent’s contact on May 16, 2000. Respondent’s version of the telephone call substantially contradicts Complainant’s testimony. Ultimately, the Panel is not persuaded by the evidence submitted by Complainant.
Complainant asserts that in its telephone conversation with Respondent’s agent, Daniel Hunter, Mr. Hunter stated a willingness to sell the domain name to Complainant for $500,000. Respondent declares that its "offer" of $500,000 was merely to dissuade Complainant from further inquiry into <avengers.com>. Complainant asserts that Mr. Hunter admitted to having sold "other famous domain names to their trademark holders," and to having "taken this approach before with other domain names." Respondent directly refutes this allegation. In the final analysis, given the dearth of evidence surrounding the purported offer to sell <avengers.com>, the Panel is unable to find bad faith in either registration or use. Had Complainant submitted further evidence of the 300 domain names allegedly warehoused by Respondent, the Panel might have been further persuaded. The Panel further recognizes that, in considering the totality of the circumstances surrounding the $500,000 price tag for <avengers.com>, the method through which the $500,000 figure was solicited is dubious at best. 
The Panel hereby finds that Complainant has not met its burden of showing that Respondent has registered and used the domain name in bad faith.

6. Decision 
The Panel concludes: (a) that the domain name <avengers.com> is nearly identical to and confusingly similar to Complainant’s trademark/service marks; (b) that Respondent has a legitimate interest in the domain name; and (c) that Respondent has not registered and used the domain name in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain name <avengers.com> NOT be transferred to the Complainant, thereby remaining under the registration of Respondent.