Walter Lantz Production, Inc. v. Robert L. Thomsen
[Indexed as: Lantz v. Thomsen]
[Indexed as: woodywoodpecker.net]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0334
Commenced: 26 April 2000
Judgement: 16 June 2000
Presiding Panelist: Richard W. Page
Domain name Domain name dispute resolution policy Trademark Service mark Recognition Identical Confusingly similar Bad faith registration Bad faith use Legitimate rights.
Complainant was registrant of service marks and trademarks for Woody Woodpecker in numerous countries. Respondent registered the domain name woodywoodpecker.net. Complainant alleged that the name is identical with and confusingly similar to its registered marks, that Respondent has no rights or legitimate interests in the domain name, and that Respondent registered and used the name in bad faith.
Held, Name Transferred to Complainant
Respondents registered domain name is identical with and confusingly similar to the trademarks and service marks of Complainant. Respondent does not dispute this.
Respondent has no rights or legitimate interests in the domain name. The evidence shows that Complainant did not authorize Respondent to use its marks. Also, there is no evidence to show that Respondent intended to use the name for its own purposes.
It can be implied that Respondent registered and used the domain name in bad faith. Respondent planned to hold the name for future use, but had no demonstrable plan for its use. Respondent was also well aware of Complainants registered marks. In addition, Respondent holds domain names of other well known song titles.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Panel Decision referred to
J. Crew International, Inc. v. Crew.com, WIPO D2000-0054.
Page, Panelist: -
1. The Parties
Complainant is Walter Lantz Productions, Inc. ("Lantz"), a corporation
organized and existing under the laws of the State of California, with
its principal place of business at 100 Universal City Plaza, Universal
City, California 91608 USA.
Respondent is Robert L. Thomsen ("Thomsen"), an individual who resides
at 125 S. Congress Street, Suite 1818, Jackson, Mississippi 39201 USA with
a mailing address is P.O. Box 1847, Jackson, Mississippi 39215 U.S.A.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <woodywoodpecker.net>. The registrar
is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon,
Virginia 20170-5139 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the
Complaint of Complainant on April 26, 2000. The Complainant paid the required
fee.
On May 1, 2000, the Center sent an Acknowledgment of Receipt of Complaint
to Complainant. Also on May 1, 2000, the Center sent to the Registrar a
request for verification of registration data. On May 3, 2000, the Registrar
confirmed, inter alia, that it is the registrar of the domain name in dispute
and that <woodywoodpecker.net> is registered in the Respondent's name.
On May 3, 2000, 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 May 3, 2000, the Center sent a Notification of Complaint and Commencement
of Administrative Proceeding to the Respondent together with copies of
the Complaint, with a copy to the Complainant. This notification was sent
by the methods required under paragraph 2(a) of the Rules.
On May 24, 2000, the Center received Respondents Response. On May
25, 2000, the Center received communication from Complainants representative
and acknowledged receipt of the Response.
On May 26, 2000, the Center advised the Complainant that the acceptance
of any Reply would be within the discretion of the Panel to be appointed.
On May 31, 2000, the Center received a completed and signed Statement
of Acceptance and Declaration of Impartiality and Independence from Richard
W. Page, Esq. (the "Presiding Panelist"). On June 2, 2000, the Center notified
the parties of the appointment of a single-arbitrator panel consisting
of the Presiding Panelist.
Upon review of the Complaint and the Response, the Presiding Panelist
has determined not to consider the Reply.
4. Factual Background
In 1940, Walter Lantz, Complainant Lantzs predecessor-in-interest,
created one of the most enduring cartoon characters of the 20th century,
Woody Woodpecker. The character immediately became popular, and original
cartoon episodes featuring the character were produced from 1940 through
1972. In addition, the character became one of the worlds most popular
licensed properties, with the WOODY WOODPECKER mark appearing on everything
from cereal boxes to comic books. Since 1972, "The Woody Woodpecker Show"
has appeared on network and cable television. Most recently, a new version
of the show was introduced in 1999, and continues to air in 38 countries
around the world.
Lantz is the owner of registered trademarks and service marks in the
United States for the mark WOODY WOODPECKER. The registered trademarks
and service marks are valid and subsisting, including Registration Nos.
752,010, 752,141, 752,142, 755,106, 1,297,351, 1,307,196, 1,308,094, 1,324,210,
1,324,766, 1,325,698, 1,327,004 and 1,334,212 have become incontestable.
In addition, Complainant owns registrations for and applications to
register the WOODY WOODPECKER mark in 33 countries, including Argentina,
Australia, the Benelux, the Peoples Republic of China, France, Germany,
Italy, Japan, Mexico, Spain, and the United Kingdom.
The goods and services in connection with which Lantz has used the
WOODY WOODPECKER mark are voluminous and are identified in Exhibit 3 to
the Complaint. In addition, a portion of the amusement park at Universal
Studios Florida is designated "Woody Woodpeckers KidZoneK." Through the
long, continuous and extensive use of the WOODY WOODPECKER mark on and
in connection with Complainants and its predecessors products and services,
the mark has become well known by the consuming public in the United States
and throughout the world, and has become famous.
On or about August 10, 1998, Respondent registered the domain name<woodywood
pecker.net>. Complainant has neither licensed nor otherwise permitted the
Respondent to use the WOODY WOODPECKER mark or to apply for or use any
domain name incorporating the WOODY WOODPECKER mark. The domain name currently
does not resolve to an active website.
On February 23, 2000, the authorized representative for Complainant
attempted to send an e-mail to the Respondent at the contact information
listed on the <woodywoodpecker.net> domain name registration: "Robert
L. Thomsen" at the email address <[email protected]>. The email was
rejected as having permanent fatal errors because the user was unknown.
On February 23, 2000, the authorized representative for Complainant
telephoned the Respondent at the contact information listed on the <woodywoodpecker.net>
domain name registration: "Robert L. Thomsen" at (601) 948-5838. Complainants
authorized representative offered to purchase the <woodywoodpecker.net>
domain name for $500. Complainant alleges that Respondent indicated that,
while he was willing to sell the domain name to Complainant, he would not
sell it for the $500 figure that was offered. Instead, Respondent asked
that he be given a "piece" of the profits made by the Complainant through
the use of the domain name. Respondent denies that he asked for any such
profits.
On March 6, 2000, Complainants authorized representative again telephoned
Respondent, and identified Complainant as the originator of the "Woody
Woodpecker" character and the owner of trademark and service mark registrations
for the WOODY WOODPECKER mark throughout the world. Complainants authorized
representative informed Respondent that, pursuant to the Policy, and under
United States law, Complainant was entitled to own the domain name registration.
Respondent again refused Complainants $500 offer to purchase the domain
name, and stated that if Complainant were to provide evidence that it owned
the WOODY WOODPECKER mark, Respondent would revisit the matter. Respondent
also stated that another party claimed ownership of the WOODY WOODPECKER
mark and that he was discussing the sale of the domain name to that party
as well.
On March 7, 2000, Complainants authorized representative forwarded
to Respondent a copy of the registration certificates.
5. Parties Contentions
Complainant contends that the domain name <woodywoodpecker.net>
is identical with and confusingly similar to the WOODY WOODPECKER trademarks
and service marks pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest
in the domain name <woodywoodpecker.net> pursuant to the Policy paragraph
4(a)(ii).
Complainant contends that Respondent registered and is using the domain
name <woodywoodpecker.net> in bad faith in violation of the Policy paragraph
4(a)(iii).
Respondent presented no evidence contesting that the domain name <woodywoodpecker.net>
is identical with or confusingly similar to the WOODY WOODPECKER trademarks
and service marks.
Respondent contends that he has rights or legitimate interest in the
<woodywood pecker.net> domain name.
Respondent denies that he has registered or used the <woodywoodpecker.net>
domain name in bad faith.
6. Discussion and Findings
Identity or Confusing Similarity.
Complainant is the sole and exclusive owner of the WOODY WOODPECKER
trademarks and service marks. The domain name <woodywoodpecker.net>
contains the identical phrase "Woody Woodpecker." Respondent does not contest
that the phrase is identical. Therefore, the Presiding Panelist finds that
the domain name <woodywoodpecker.net> is identical with and confusingly
similar to the trademarks and service marks WOODY WOODPECKER pursuant to
the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
The evidence demonstrates that Respondent has no permission from the
owner of the WOODY WOODPECKER marks to use the marks. The evidence further
demonstrates that since registering the domain name on August 10, 1998
Respondent has not used <woodywoodpecker.net > to link to a website
or to any other online presence. Respondent has not shown any demonstrable
evidence of an intent to use the domain name <woodywoodpecker.net >
for its own purposes prior to the dispute arising with Complainant. Therefore,
the Presiding Panelist finds that Respondent has no rights or legitimate
interest in the domain name <woodywoodpecker.net > pursuant to the Policy
paragraph 4(a)(ii).
Bad Faith.
Respondent argues that his lack of use of the domain name <woodywoodpecker.net>
prevents a finding that he has acted in bad faith. In addition, Respondent
argues that unplanned, potential future uses which may be permissible are
sufficient to prevent a finding that he has acted in bad faith. Neither
of these arguments is compelling. Bad faith can be implied from the circumstances
of a case without use of the contested domain name. Unplanned, potential
future use is too speculative without a showing of demonstrable preparations
for the use of the domain name.
Respondent admits in paragraph 12 of his Response that he has registered
numerous domain names:
Respondent is an investor who has acquired various domain name registrations,
including registrations relating to his investment business in the oil
and gas industry, as well as registrations for various song titles, including
Woody Woodpecker, Jingle Bells and White Christmas. Respondent has used
domain names in connection with his oil and gas business, but has otherwise
never attempted to sell, ransom, or make improper use of any of the other
domain names. Respondent considers these domain names to be long term investments
which he is holding for future development as business opportunities arise,
similar to his investments in the oil and gas industry. (Emphasis added.)
In the case, J. Crew International, Inc. v. crew.com, WIPO D2000-0054,
a definition was developed to identify when speculation in domain names
is in bad faith. Registration of domain names for speculative purposes
constitutes a bad faith registration and use when (1) the respondent
has no demonstrable plan to use the domain name for a bona fide purpose
prior to registration or acquisition of the domain name; (2) the
respondent had constructive or actual notice of another's rights in a trademark
corresponding to the domain name prior to registration or acquisition of
the domain name; (3) the respondent engages in a pattern of conduct
involving speculative registration of domain names; and (4) the domain
name registration prevents the trademark holder from having a domain name
that corresponds to its registered mark.
The Presiding Panelist finds that each of the elements of this definition
is present. As previously discussed, the Respondent has not offered demonstrable
plans for use of the domain name. Respondent had constructive notice of
the Complainants rights because of the numerous registrations in the United
States. The Respondent admits to the registration of a number of domain
names for long term investment or speculation. The Complainant is prevented
by the Respondents registration from using <woodywoodpecker.net> which
corresponds to Complainants registered trademarks and service marks.
The evidence concerning the offers to purchase the domain name for
$500 show that these offers were initiated by Complainant. Therefore, they
are not supportive of bad faith by Respondent. Furthermore, the purported
counteroffer to give Respondent a "piece" of the profits from the use of
the domain name <woodywoodpecker.net> is contested by Respondent and
is not sufficiently documented to provide a basis for a finding of bad
faith.
7. Decision
The Presiding Panelist concludes (a) that the domain name <woodywoodpecker.net
> is identical with and confusingly similar to the trademarks and service
marks WOODY WOODPECKER, (b) that Respondent has no rights or legitimate
interest in the domain name and (c) that Respondent registered and
used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i)
of the Policy and 15 of the Rules, the Panel orders that the domain name
<woodywoodpecker.net > be transferred to Complainant Walter Lantz Productions,
Inc.