The Cartoon Network, Inc. f/k/a Cartoon Network LP, LLLP v. BWI Domain Manager c/o Domain Manager
Claim Number: FA0902001247435
Complainant is The Cartoon Network, Inc. f/k/a Cartoon
Network LP, LLLP (“Complainant”),
represented by Emily S. Mechem, of Arent Fox LLP, Washington, DC, USA. Respondent is BWI Domain Manager c/o Domain
Manager (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <adultswimgames.com>, registered with Rebel.com.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2009.
On February 17, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <adultswimgames.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 February 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 2009 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@adultswimgames.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <adultswimgames.com> domain name is confusingly similar to Complainant’s ADULT SWIM mark.
2. Respondent does not have any rights or legitimate interests in the <adultswimgames.com> domain name.
3. Respondent registered and used the <adultswimgames.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cartoon Network, Inc., operates a 24-hour television network. Complainant uses the ADULT SWIM mark in connection with its late-night animated programs designed to appeal to adults. Complainant operates a website that resolves from the <adultswim.com> offering a programming guide and online games. Complainant owns a number of trademark registrations for the ADULT SWIM mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,854,297 issued June 15, 2004).
Respondent registered the <adultswimgames.com> domain name on November 27,
2005. Respondent’s disputed domain name
resolves to a website displaying third-party links and advertisements to
websites containing adult-oriented content.
Respondent has a history of registering domain names infringing upon the trademark rights of others, and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Time Warner, Inc. v. BWI Domain Manager aka Domain Manager aka BWI Domains, FA 1235722 (Nat. Arb. Forum Jan. 19, 2009); see also AMFM, Inc. v. BWI Domain Manager, FA 1084750 (Nat. Arb. Forum Nov. 20, 2007); see also AARP v. BWI Domain Manager, FA 1094042 (Nat. Arb. Forum Nov. 26, 2007); see also American Girl, LLC v. BWI Domain Manager, FA 1104431 (Nat. Arb. Forum Dec. 14, 2007).
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.
The Panel finds that Complainant has established rights in
the ADULT SWIM mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)); see also
Complainant argues that Respondent’s <adultswimgames.com> domain name is confusingly similar to Complainant’s ADULT SWIM mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds a generic term with an obvious relationship to Complainant’s business due to Complainant’s website which offers games, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that generic terms, especially generic terms with an obvious relationship to a complainant’s business operation that are added to a complainant’s registered mark, create a confusing similarity between the disputed domain name and the mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."). Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s ADULT SWIM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
The Panel finds that the evidence on record indicates that
Respondent’s <adultswimgames.com>
domain name resolves to a website offering third-party links to websites
featuring adult oriented content. As a
result, the Panel finds that Respondent’s use of the disputed domain name does
not constitute either 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 Target Brands,
Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002)
(finding that use of the <targetstore.net> domain name to redirect Internet users to a adult-oriented website
did not equate to a bona fide offering of goods or services under Policy
¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under
Policy ¶ 4(c)(iii)); see also Paws, Inc. v. Zuccarini, FA 125368
(Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is
confusingly similar to an established mark to divert Internet users to an
adult-oriented website “tarnishes Complainant’s mark and does not evidence
noncommercial or fair use of the domain name by a respondent”).
Furthermore, the evidence on record fails to demonstrate that Respondent is commonly known by the <adultswimgames.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not authorized to use the ADULT SWIM mark. Additionally, Respondent’s WHOIS information suggests that Respondent is known as “BWI Domain Manager,” and not by the disputed domain name. Thus, the Panel concludes that the evidence on record does not establish that Respondent is commonly known by the <adultswimgames.com> domain name in accord with Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <adultswimgames.com>
domain name
to intentionally divert Internet users to the associated website, which
displays third-party links to adult-oriented websites. In cases such as this, the Panel may assume
that Respondent is collecting click-through fees and attempting to profit by
creating a likelihood of confusion between Complainant’s mark and the disputed
domain name. The Panel finds that
Respondent’s use of the disputed domain name is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006)
(finding that the respondent’s use of the <arizonashuttle.net> domain
name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to the respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also
In addition, Respondent has
a long history of registering domain names infringing upon the trademark rights
of others, and has been ordered by previous UDRP panels to transfer the
disputed domain names to the respective complainants. See Time Warner, Inc. v. BWI
Domain Manager, FA1235722 (Nat. Arb. Forum Jan. 19, 2009); see also AMFM, Inc. v. BWI
Domain Manager, FA 1084750 (Nat. Arb. Forum Nov. 20, 2007); see also AARP v. BWI Domain Manager, FA 1094042 (Nat. Arb. Forum Nov. 26,
2007); see also American Girl, LLC v. BWI Domain Manager, FA 1104431 (Nat. Arb.
Forum Dec. 14, 2007). The Panel
finds that a pattern of registration and use of domain names with established
marks is further evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See
Armstrong Holdings, Inc. v. JAZ Assocs.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon
others’ famous and registered trademarks); see
also EPA European Pressphoto Agency B.V. v.
Lastly, the Panel finds that Respondent utilizes the <adultswimgames.com> domain name to operate a website displaying adult-oriented content. Consequently, the Panel finds that Respondent registered and used the disputed domain name, which is confusingly similar to Complainant’s ADULT SWIM mark, to tarnish Complainant’s registered mark. Therefore, the Panel concludes that Respondent registered the <adultswimgames.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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); see also 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.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adultswimgames.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 6, 2009
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