The Cartoon Network, Inc. f/k/a The Cartoon Network, LP, LLLP v. septen
Claim Number: FA1101001368601
Complainant is The Cartoon Network, Inc. f/k/a The Cartoon Network, LP, LLLP (“Complainant”), represented by Emily S. Mechem of Arent Fox, LLP, Washington D.C., USA. Respondent is septen (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ben10spiele.com>, registered with SPOT DOMAIN LLC d/b/a DOMAINSITE.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2011; the National Arbitration Forum received payment on January 20, 2011.
On January 20, 2011, SPOT DOMAIN LLC d/b/a DOMAINSITE.COM confirmed by e-mail to the National Arbitration Forum that the <ben10spiele.com> domain name is registered with SPOT DOMAIN LLC d/b/a DOMAINSITE.COM and that Respondent is the current registrant of the name. SPOT DOMAIN LLC d/b/a DOMAINSITE.COM has verified that Respondent is bound by the SPOT DOMAIN LLC d/b/a DOMAINSITE.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ben10spiele.com. Also on January 25, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant operates a satellite-television network specializing in the presentation of animated content.
Complainant has in its lineup of television offerings an animated series named “Ben 10.”
Complainant owns trademark registrations for the BEN 10 mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 3,450,846, issued June 17, 2008).
Complainant uses the BEN 10 mark in support of many online computer games offered at its website.
Respondent registered the disputed domain name on February 24, 2009.
The disputed domain name resolves to a site offering numerous games, some related to Complainant’s business, which display the BEN 10 mark and directly compete with the services offered by Complainant.
Along with the games, Respondent also offers links to other third-party websites through its disputed domain name.
Respondent presumably receives click-through fees from the visits of Internet users to these linked sites.
Respondent’s <ben10spiele.com> domain name is confusingly similar to Complainant’s BEN 10 mark.
Complainant has never authorized Respondent to use the BEN 10 mark in a domain name.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <ben10spiele.com>.
Respondent registered and uses the disputed <ben10spiele.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established its rights in the BEN 10 mark by registering the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
It is of no consequence that Complainant has registered its mark in a jurisdiction which is different from Respondent’s country of residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in its mark in some jurisdiction).
Respondent’s <ben10spiele.com> domain name is confusingly similar to Complainant’s BEN 10 mark. The disputed domain name includes the entire mark while adding the generic term “spiele” (the German word for “games,” a plain reference to Complainant’s business), removing a space from the mark and adding the generic top-level domain (“gTLD”) “.com.” These changes fail to distinguish the disputed domain name from Complainant’s BEN 10 mark under Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive elements to the distinctive element in a domain name is immaterial to an analysis under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent failed to differentiate the <aimprofiles.com> domain name from a complainant’s AIM mark by merely adding the generic term “profiles”); further see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Once Complainant has made out a prima facie showing that Respondent lacks rights to and legitimate interests in a domain name, the burden of proof shifts to that respondent demonstrate that it does have such rights or interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under this head of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in disputed domain name).
Complainant has made out a prima facie case on the point of Respondent’s lack of rights to or legitimate interests in the disputed domain name. Respondent’s failure to answer the Complaint submitted by Complainant therefore permits us to presume that Respondent lacks rights to or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first observe that Complainant alleges, without objection from Respondent, that Complainant has never authorized Respondent to use the BEN 10 mark in a domain name and that Respondent is not commonly known by the <ben10spiele.com> domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain only as “septen,” which is not similar to the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the relevant WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next note that Complainant alleges, and Respondent does not deny, that Respondent’s domain name resolves to a website offering online computer games in competition with Complainant’s services, as well as links to third-party websites unrelated to Complainant. This use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a contested domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used the domain to operate a website featuring links to websites offering goods and services unrelated to a complainant); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant, was not a bona fide offering of goods or services within the meaning of the Policy).
The Panel thus finds that the proof requirements of Policy ¶ 4(a)(ii) have been met by Complainant.
Respondent’s use of the <ben10spiele.com> domain name as alleged disrupts Complainant’s business by offering products that directly compete with that business at a website reached via a domain name which is confusingly similar to Complainant’s BEN 10 mark. This use of the disputed domain name constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the domain name <eebay.com> in bad faith where that respondent used the domain to promote competing auction sites); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that a respondent registered and used the domain <openmail.com> to disrupt the business of a complainant, within the meaning of Policy ¶ 4(b)(iii), by employing it to offer personal e-mail accounts identical to that complainant’s services marketed under the OPENMAIL mark).
It is evident that Respondent is using its <ben10spiele.com> domain name for its own pecuniary gain. Respondent’s domain name, which is confusingly similar to Complainant’s BEN 10 mark, resolves to a website offering products and services in competition with the business of Complainant, presumably motivated by receipt of click through fees from the linked sites. This is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that a respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and a complainant’s LIL PUNK mark by using the contested domain name to maintain a website with links to third-party websites unrelated to that complainant, and that such use for that respondent’s commercial gain demonstrated bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ben10spiele.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 18, 2011
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