national arbitration forum

 

DECISION

 

Disney Enterprises, Inc. v. iWich Domains

Claim Number: FA1301001481980

 

PARTIES

Complainant is Disney Enterprises, Inc. (“Complainant”), represented by J. Andrew Coombs of J. ANDREW COOMBS, A Professional Corporation, California, USA.  Respondent is iWich Domains (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <henryhugglemonster.com> and <thehappyhugglemonsters.com>, registered with NAME.COM LLC.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2013; the National Arbitration Forum received payment on January 25, 2013.

 

On January 25, 2013, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <henryhugglemonster.com> and <thehappyhugglemonsters.com> domain names are registered with NAME.COM LLC and that Respondent is the current registrant of the names.  NAME.COM LLC has verified that Respondent is bound by the NAME.COM LLC 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 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2013 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@henryhugglemonster.com, and postmaster@thehappyhugglemonsters.com.  Also on January 28, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <henryhugglemonster.com> and <thehappyhugglemonsters.com> domain names are confusingly similar to Complainant’s HENRY HUGGLEMONSTER and THE HAPPY HUGGLEMONSTERS marks.

 

2.    Respondent does not have any rights or legitimate interests in the <henryhugglemonster.com> and <thehappyhugglemonsters.com> domain names.

 

3.    Respondent registered and used the <henryhugglemonster.com> and <thehappyhugglemonsters.com> domain names name in bad faith.

 

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

 

FINDINGS

Complainant holds a trademark registration for THE HAPPY HUGGLEMONSTERS with the United Kingdom Intellectual Property Office (“UKIPO”), via the European Union’s Office for Harmonization in the Internal Market (“OHIM”), (Reg. No. E1074512 registered on July 26, 2012).  Complainant has a pending United States Patent & Trademark Office (“USPTO”) registration for THE HAPPY HUGGLEMONSTERS mark (Serial No. 85575765 filed on Mar. 21, 2012) and pending registrations with both the USPTO (e.g. Serial No. 85734537 filed on Sept. 20, 2012) and UKIPO, via the OHIM, (e.g. Reg. No. E11213931 filed on Sept. 25, 2012) for the HENRY HUGGLEMONSTER mark.

 

Respondent registered the <henryhugglemonster.com> and <thehappyhugglemonsters.com> domain names on October 11, 2012 with the intention of selling them for an amount exceeding its out-of-pocket costs.

 

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."

 

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.

 

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.”).

 

Preliminary Issue: Multiple Respondents

 

Complainant has alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that both registrants use the same address, phone number, creation dates, expiration dates, and registrar, and both are offered for sale for an amount exceeding out-of-pocket costs.  Complainant states that “Marcus Heap” and “iWich Domains” are the same entity/person and therefore should be treated as a single Respondent.

 

In the absence of any evidence to the contrary, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and will proceed with the case as filed, referring to only one “Respondent” throughout.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s UKIPO and USPTO registrations illustrate Complainant’s rights in THE HAPPY HUGGLEMONSTERS mark dating back to the day the marks were filed with the respective agencies.  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).  Thus, the Panel finds that Complainant has rights in THE HAPPY HUGGLEMONSTERS mark under Policy ¶ 4(a)(i).

 

The Panel notes that the HENRY HUGGLEMONSTER mark was first used by Complainant in a December 20, 2011, press release, and in the marketing and promotion of Complainant’s television series since that December 20, 2011, press release.  Previous panels have found that a complainant can establish common law rights in a mark when it has proven that it gave the mark secondary meaning at a given point in time.  See Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark).  The Panel finds that Complainant has expended sufficient resources in cultivating the HENGRY HUGGLEMONSTER mark, and thus has common law rights in the mark under Policy ¶ 4(a)(i).

 

Respondent’s disputed domain names incorporate Complainant’s HENRY HUGGLEMONSTER and THE HAPPY HUGGLEMONSTERS marks, merely deleting the spaces and adding the gTLD “.com.”   These changes do not distinguish the disputed domain names from Complainant’s marks.  See 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”).  Therefore, the Panel finds that the <henryhugglemonster.com> domain name is identical to the HENRY HUGGLEMONSTER mark, and the <thehappyhugglemonsters.com> domain name is identical to THE HAPPY HUGGLEMONSTERS mark.

 

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

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims that Respondent is not commonly known by either the <henryhugglemonster.com> or <thehappyhugglemonsters.com> domain names.  Complainant declares that it has not authorized Respondent to use the marks embedded in these domain names for any purpose.  Complainant avers that Respondent has not otherwise used Complainant’s marks to identify itself.  The WHOIS information lists “iWich Domains” as the registrant of both names.  Previous panels have determined that a respondent is not commonly known by a given domain name when there is no evidence to suggest otherwise.  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).  Therefore, the Panel finds that Respondent is not commonly known as either the <henryhugglemonster.com> or <thehappyhugglemonsters.com> domain names under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent’s use of the domain names at issue does not constitute a bona fide offering of goods, or a legitimate noncommercial or fair use.  Complainant shows that the <henryhugglemonster.com> domain name resolves to a website purporting to be the blog of the cartoon character Henry Hugglemonster, and Respondent states within the website that it hopes to sell off the domain name for ₤1,000.00.  The <thehappyhugglemonsters.com> domain name resolves to a website featuring extensive details surrounding Complainant’s television show involving the marks, where Respondent also seeks to sell the domain name for ₤2,500.00.  Previous panels have agreed that a respondent cannot create a bona fide offering of goods or services, or legitimate noncommercial or fair use, when it appears the respondent registered the domain name with the intent of ultimately selling it to the complainant.  See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the complainant).  Thus, Respondent’s use of the disputed domain names constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

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

 

Registration and Use in Bad Faith

 

The Panel reiterates that the Respondent seeks to sell the <henryhugglemonster.com> domain name for ₤1,000.00 and the <thehappyhugglemonsters.com> domain name for ₤2,500.00.  Previous panels have held that while the offering of domain names for sale is not always an act of bad faith, it is bad faith when the domain names offered are confusingly similar or identical to trademarks held by other parties.  See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy.  However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”)The Panel finds that Respondent has offered to sell the disputed domain names in bad faith under Policy ¶ 4(b)(i).

 

Respondent is intentionally using the domain names to trade on the value of Complainant’s trademarks for its own commercial profit.  The disputed domain names resolve to websites containing information regarding Complainant’s HENRY HUGGLEMONSTER and THE HAPPY HUGGLEMONSTERS marks and related goods and services.  Previous panels have concluded that it is bad faith use and registration by a respondent when that respondent’s domain name seeks to merely trade on the goodwill created by a complainant through its marks.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).  The Panel therefore finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv).

 

Complainant contends that Respondent has engaged in a pattern of conduct in which it registers domain names infringing upon the same marks.  Complainant has provided a list of 213 domain names held by Respondent that infringe on various marks.  However, since the 213 domain names have not been scrutinized by a UDRP panel, they are not evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii) in the present matter.

 

Complainant concludes by arguing that Respondent must have known of Complainant’s rights in the marks.  Complainant alleges that its trademarks are distinctive in Respondent’s location, the United Kingdom, due to the announcement of Complainant’s upcoming television show.  The Panel finds that Respondent had actual knowledge of Complainant's marks and rights, due to the content of the websites resolving from the disputed domain names, evidence of bad faith under Policy ¶ 4(a)(iii).  See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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

 

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 <henryhugglemonster.com> and <thehappyhugglemonsters.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  February 28, 2013

 

 

 

 

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