national arbitration forum

 

DECISION

 

The Cartoon Network, Inc. f/k/a Cartoon Network LP, LLLP v. bog@girls-pee.com

Claim Number: FA0803001172983

 

PARTIES

Complainant is The Cartoon Network, Inc. f/k/a Cartoon Network LP, LLLP (“Complainant”), represented by Emily S. Mechem, of Arent Fox LLP, Washington D.C., USA.  Respondent is bog@girls-pee.com (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cartoon-network-games.com>, registered with Onlinenic, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

James A, Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 31, 2008.

 

On March 31, 2008, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <cartoon-network-games.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On April 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 22, 2008
 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to

postmaster@cartoon-network-games.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cartoon-network-games.com> domain name is confusingly similar to Complainant’s CARTOON NETWORK mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cartoon-network-games.com> domain name.

 

3.      Respondent registered and used the <cartoon-network-games.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Cartoon Network Inc., operates a 24-hour and satellite television network that features original animated series and other programs targeted toward children and young adults.  Complainant owns a family of marks, including the CARTOON NETWORK mark (Reg. No. 2,554,469 issued April 2, 2002), with the United States Patent and Trademark Office (“USPTO”). 

 

Respondent, bog@girls-pee.com, registered the <cartoon-network-games.com> domain name August 11, 2003 and had been using the disputed domain name for an adult-oriented website, including links to adult-themed websites and photographs.  Recently, the disputed domain name resolves to a website titled “Apache 2 Test Page,” which is allegedly “under construction.” 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(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 and/or Confusingly Similar

 

Complainant alleges rights to its CARTOON NETWORK mark based on its USPTO trademark registration.  Under the Policy, registration of a mark with the pertinent government authority, such as the USPTO, confers rights in that mark on a complainant.  Complainant has thus established rights to the CARTOON NETWORK mark for purposes of Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).

 

Complainant alleges Respondent’s <cartoon-network-games.com> domain name is confusingly similar to its CARTOON NETWORK mark.  The disputed domain name contains Complainant’s entire mark, replacing the spaces between words with a hyphen.  Respondent also adds the term “games,” and the top-level domain (“gTLD”) “.com.”  The Panel finds spacing, the use of hyphens, and the addition of a gTLD are irrelevant in distinguishing the disputed domain name from Complainant’s mark.  Further, the Panel finds the addition of the common term “games” does not diminish the confusing similarity between the disputed domain name and Complainant’s mark.  Therefore, the Panel finds Respondent’s <cartoon-network-games.com> domain name is confusingly similar to Complainant’s CARTOON NETWORK mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights or legitimate interests in the <cartoon-network-games.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  Based on the allegations in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  Since Respondent has not responded to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests.  However, the Panel will examine the record to determine if such rights or legitimate interests are present pursuant to Policy ¶ 4(c).  See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).

 

Complainant alleges Respondent is not commonly known by the <cartoon-network-games.com> domain name.  The WHOIS information identifies Respondent as “bog@girls-pee.com” and no other information is provided suggesting Respondent might be commonly known by the disputed domain name.  Pursuant to Policy ¶ 4(c)(ii), the Panel concludes Respondent lacks rights and legitimate interests in the <cartoon-network-games.com> domain name.  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Complainant alleges Respondent lacks rights or legitimate interests in the <cartoon-network-games.com> domain name because the disputed domain name is not in connection with a legitimate noncommercial or fair use, and does not provide a bona fide offering of goods or services.  Respondent is currently using the disputed domain name to display an “under construction” web page but has previously used the disputed domain name to display links to adult-oriented websites.  The Panel presumes Respondent earns click-through fees for each redirected Internet user.  As such, the Panel finds Respondent’s use and registration of  <cartoon-network-games.com> domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”); see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The disputed domain name  previously resolved to an adult-oriented website.  Absent any evidence to the contrary, the Panel finds that this constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).

As previously stated, Respondent’s <cartoon-network-games.com> domain name currently resolves to a website purporting to be “under construction” but the disputed domain name has previously displayed adult-oriented materials and links.  This registration and use is creating a likelihood of confusion regarding Complainant’s sponsorship and affiliation with the disputed domain name.  The Panel also presumes Respondent is earning referral fees for each redirected Internet user.  Based on the above, the Panel finds the use and registration of Respondent’s <cartoon-network-games.com> domain name constitutes bad faith.  See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant.  Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

 

 

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cartoon-network-games.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Crary, Panelist

Dated:  May 13, 2008

 

 

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