Sanrio Company, Ltd. and Sanrio, Inc. v. Stephanie Sims / Florida Job Link
Claim Number: FA1211001471284
Complainant is Sanrio Company, Ltd. and Sanrio, Inc. (“Complainant”), represented by Linda Joy Kattwinkel of Owen, Wickersham & Erickson, P.C., California, USA. Respondent is Stephanie Sims / Florida Job Link (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hellokittypageant.com> and <hellokittypageants.com>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2012; the National Arbitration Forum received payment on November 14, 2012.
On November 16, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hellokittypageant.com> and <hellokittypageants.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 November 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2012 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@hellokittypageant.com and postmaster@hellokittypageants.com. Also on November 16, 2012, 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 December 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant made the following contentions.
i. Respondent, Stephanie Sims and Florida Job Link, are not commonly known by the <hellokittypageant.com> and <hellokittypageants.com> domain names.
ii. Respondent has used the <hellokittypageant.com> domain name to promote and sell entrance to HELLO KITTY-themed children’s beauty pageants. Respondent has used Complainant’s mark and logo extensively, and has displayed counterfeit HELLO KITTY merchandise that was to be given out as prizes, and encouraged the wearing of HELLO KITTY attire. Respondent also falsely claimed that it had trademark rights in the “Hello Kitty Pageant” mark, which it does not. See Complainant’s Annex D.
iii. Complainant was “not aware of the existence of the <hellokittypageants.com> domain name until after the Respondent had removed all content from it,” but Complainant believes that this domain name resolved to the same or very similar website.
iv. Neither domain name has resolved to an active website since May 3, 2012. See Complainant’s Annex D, pg. 3.
i. A domain name registrant has a duty to investigate and refrain from using a domain name that infringes on another party’s rights. Respondent registered the disputed domain names on April 9, 2012 and April 11, 2012, which are well after Complainant established significant goodwill and acclaim in the HELLO KITTY mark. The content on the resolving website at the <hellokittypageant.com> domain name shows that Respondent clearly had actual knowledge of Complainant and its rights in the HELLO KITTY mark.
ii. Respondent’s registration of more than one domain name using the HELLO KITTY mark constitutes evidence of bad faith.
iii. Respondent was using the disputed domain names commercially in an effort to charge consumers to enter its themed beauty pageants and its offering to sell advertising services in connection with Complainant’s HELLO KITTY mark. Respondent used Complainant’s trademarks and artwork throughout the resolving website to confuse Internet users and consumers. Complainant believes that both domain names contained similar content.
iv. Further, Respondent has not made an active use of the disputed domain names since at least May 3, 2012, and such an extended non-use of the domain names is further evidence that Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant Sanrio Company, Ltd is a Tokyo Japan corporation while Complainant Sanrio, Inc. is an organization existing under the laws of California and is a wholly owned subsidiary of Complainant Sanrio Company, Ltd. They have both been engaged in the children’s clothing industry for many years and in the course of that business have created and owned cartoon characters including the popular and famous HELLO KITTY.
2. Complainant owns multiple trademark registrations around the world for the HELLO KITTY mark, including those with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,279,486 registered May 29, 1984). Complainant also has common law trademark rights in the HELLO KITTY mark due to its extensive use of the mark over many years.
3. Respondent registered the disputed domain names on April 9, 2012 and April 11, 2012 and has used them to promote and sell entrance to HELLO KITTY- themed children’s beauty pageants, using Complainant’s mark and logo extensively, displaying counterfeit HELLO KITTY merchandise and using the HELLO KITTY mark for its own commercial ends;
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 Complainants
There are two Complainants in this matter: Sanrio Company, Ltd. and Sanrio, Inc. Complainant Sanrio Company, Ltd is a Tokyo Japan corporation while Complainant Sanrio, Inc. is an organization existing under the laws of California and is a wholly owned subsidiary of Complainant Sanrio Company, Ltd.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
”It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it will therefore treat them all as a single entity in this proceeding. Accordingly, throughout this decision the Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which 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 disputed domain names were registered by Stephanie Sims, despite the appearance of “Florida Job Link” as the registrant of <hellokittypageants.com>. Complainant notes that both of the disputed domain names are registered with the same physical address and Stephanie Sims is listed as the registrant and administrative contacts for the <hellokittypageant.com> domain name, and as the administrative contact for the <hellokittypageants.com> domain name. Further, Complainant contends that Stephanie Sims was an officer of and the registered agent of the Florida Job Link Corporation, and that through e-mail correspondence with Complainant, Stephanie Sims indicated that she owned the disputed domain names. Complainant argues that such evidence indicates that the disputed domain names are owned and operated by the same entity, thus allowing the present proceeding to go forward.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it is the creator and owner of dozens of cartoon characters which appear on Complainant’s products, including its most famous character and mark, HELLO KITTY. Complainant claims that it uses the HELLO KITTY character in part to promote girls’ rights and the improvement of girls’ wellbeing worldwide, and believes that beauty pageants are antithetical to Complainant’s stated goals. Complainant notes that it owns multiple trademark registrations around the world for the HELLO KITTY mark, including those with the USPTO (Reg. No. 1,279,486 registered May 29, 2004). See Complainant’s Annex F. The Panel finds that Complainant’s registrations for the HELLO KITTY mark with the USPTO are sufficient for it to establish rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).The Panel also finds that Complainant has established common law trademark rights in the HELLO KITTY mark.
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s HELLO KITTY mark.
Complainant argues that Respondent’s <hellokittypageant.com> and <hellokittypageants.com> domain names are confusingly similar to the HELLO KITTY mark as the domain names merely add to the mark the generic term “pageant” and “pageants” respectively and the gTLD “.com.” The Panel notes that the disputed domain names also remove the space from between the terms of the HELLO KITTY mark. The Panel finds that the disputed domain names are confusingly similar to the HELLO KITTY mark under Policy ¶ 4(a)(i) as the words “pageant” and “pageants” appearing after the HELLO KITTY mark would be interpreted by the internet user to mean beauty pageants and to be a new business activity of the owner of the HELLO KITTY mark and a departure from its previous business practice in view of its well-known antipathy to beauty pageants. 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 the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HELLO KITTY trademark and to use it in its domain names, merely adding respectively the generic words “pageant” and “pageants”, which are bound to draw attention to the domain names , thereby strengthening the confusing similarity between the domain names and the trademark;
(b) Respondent has then used the domain names to promote and sell entrance to HELLO KITTY- themed children’s beauty pageants, using Complainant’s mark and logo extensively, displaying counterfeit HELLO KITTY merchandise and using the HELLO KITTY mark for its own commercial ends;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant has submitted that Respondent, Stephanie Sims and Florida Job Link per the WHOIS information, are not commonly known by the <hellokittypageant.com> and <hellokittypageants.com> domain names. The Panel finds that there is no information on record indicating that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant also contends that Respondent has used the <hellokittypageant.com> domain name to promote and sell entrance to HELLO KITTY-themed children’s beauty pageants. Complainant asserts that Respondent has used Complainant’s mark and logo extensively, and has displayed counterfeit HELLO KITTY merchandise that was to be given out as prizes, and encourage the wearing of HELLO KITTY attire. Further, Complainant argues that Respondent also falsely claimed that it had trademark rights in the “Hello Kitty Pageant” mark, which it does not. Complainant also claims that it was “not aware of the existence of the <hellokittypageants.com> domain name until after the Respondent had removed all content from it,” but Complainant maintains that this domain name resolved to the same or a very similar website. As the Panel accepts Complainant’s assertions and the evidence on which they are based, the Panel finds that neither of the disputed domain names has been used for 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”);
(f) Complainant further claims that neither domain name has resolved to an active website since May 3, 2012 and has tendered an affidavit to that effect. The Panel therefore finds that Respondent’s refusal to connect the disputed domain names with an active website is also evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s registration of more than one domain name using the HELLO KITTY mark constitutes evidence of bad faith. The Panel notes that prior panels have determined that a respondent’s registration of more than one trademark infringing domain name at a time constitutes bad faith under Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). The Panel agrees with that submission and finds that Respondent registered and is using the <hellokittypageant.com> and <hellokittypageants.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant also contends that Respondent was using the disputed domain names commercially in an effort to charge consumers to enter its themed beauty pageants and its offering to sell advertising services in connection with Complainant’s HELLO KITTY mark. Complainant asserts that Respondent used Complainant’s trademarks and artwork throughout the resolving website to confuse Internet users and consumers. Further, while only having evidence of such use from the <hellokittypageant.com> domain name, Complainant believes that both domain names contained similar content and were used in the same or very similar way. The Panel agrees, and determines that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv), by diverting Internet users to Respondent’s pageant advertising website presumably for financial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Thirdly, Complainant argues that Respondent has not made an active use of the disputed domain names since at least May 3, 2012, and such an extended non-use of the domain names is further evidence that Respondent registered and is using the domain names in bad faith. The Panel agrees and finds that Respondent’s non-use of the disputed domain names is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, Complainant asserts that a domain name registrant has a duty to investigate and refrain from using a domain name that infringes on another party’s rights. Complainant notes that Respondent registered the disputed domain names on April 9, 2012 and April 11, 2012, which are well after Complainant established significant goodwill and acclaim in the HELLO KITTY mark. Complainant contends that the content on the resolving website at the <hellokittypageant.com> domain name shows that Respondent clearly had actual knowledge of Complainant and its rights in the HELLO KITTY mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights and that it was motivated by that knowledge when it registered both domain names. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s HELLO KITTY marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hellokittypageant.com> and <hellokittypageants.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 20, 2012
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