DECISION

 

The Cartoon Network LP, LLLP v. CostNet aka Domain Manager

Claim Number:  FA0301000141820

 

PARTIES

Complainant is The Cartoon Network LP, LLLP, Atlanta, GA USA (“Complainant”) represented by John D. Haynes, of Alston & Bird, LLP. Respondent is CostNet aka Domain Manager, San Jose, costa rica (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cartonnetwork.com>, registered with Register.com, 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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 13, 2003; the Forum received a hard copy of the Complaint on January 13, 2003.

 

On January 15, 2003, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <cartonnetwork.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 January 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2003, 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@cartonnetwork.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On February 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <cartonnetwork.com> domain name is confusingly similar to Complainant’s cartoon network mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cartonnetwork.com> domain name.

 

3.      Respondent registered and used the <cartonnetwork.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for several marks that consist in whole or in part of the cartoon network mark, including marks for television distribution services (Reg. No. 1,798,899, October 12, 1993) and for merchandise (Reg. No. 1,877,681, February 7, 1995). Complainant has continuously and exclusively used the cartoon network mark since 1992 to identify its television services and cartoon network-brand merchandise.

 

Complainant operates a website at <cartoonnetwork.com>. The site features interactive games, network programming and content information, and an online store where customers can purchase a variety of cartoon network-brand apparel and merchandise.

 

Respondent registered the disputed domain name on December 17, 1998. Respondent is using <cartonnetwork.com> to redirect Internet users to <www.linkster.com>. This website provides links to various categories of content on the Internet, including hobbies, travel, shopping and entertainment, as well as links to gambling. A pop-up window simultaneously opens underneath <www.linkster.com> that solicits one of Respondent’s products, CleanBrowser computer software.

 

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.

 

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 has established rights to the cartoon network mark through registration with the USPTO and continuous use of the mark since 1992.

 

Respondent’s <cartonnetwork.com> domain name is confusingly similar to Complainant’s cartoon network mark because the domain name capitalizes on a typographical error by eliminating the second “o”. “It has been repeatedly held that a domain name that contains obvious misspellings of the trademark owner’s mark is considered identical or confusingly similar.” Ltd Commodities, Inc. v. CostNet/Domain Manager, D2002-0031 (WIPO May 3, 2002). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

 

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

 

Rights or Legitimate Interests

 

Respondent has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

 

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name. When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

 

Respondent is using the disputed domain name to divert Internet users to websites that make no mention of and have no affiliation with the misspelled domain name. This type of use is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a misspelled domain name because Respondent did not provide any bona fide products in connection with the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks its use of the names was not in connection with the offering of goods or services or any other fair use).

 

Respondent has not come forward with any proof and there is no evidence on record to establish that Respondent is commonly known as CARTON NETWORK or <cartonnetwork.com>. Furthermore, Respondent would be hard pressed to establish that it is commonly known as the disputed domain name because of the fame of Complainant’s CARTOON NETWORK mark. Therefore, the Panel infers that Respondent is not commonly known as CARTON NETWORK or <cartonnetwork.com>, and has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

 

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

 

Registration and Use in Bad Faith

 

It can be inferred that Respondent had knowledge of Complainant’s CARTOON NETWORK mark when Respondent registered the disputed domain name because the domain name is a misspelling of Complainant’s mark. Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

 

Respondent is engaged in a practice called “typosquatting.” This practice diverts Internet users who misspell Complainant’s mark to a website engaged in the solicitation of goods for Respondent’s commercial gain. Typosquatting has been recognized as a bad faith use of a domain name under the UDRP pursuant to Policy ¶ 4(b)(iv). See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

 

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

 

DECISION

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

 

Accordingly, it is Ordered that the <cartonnetwork.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  February 13, 2003

 

 

 

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