Sanrio Company, Ltd. and Sanrio, Inc. v. Michael Sedan
Claim Number: FA1604001669997
Complainant is Sanrio Company, Ltd. and Sanrio, Inc. (“Complainant”), represented by Linda Joy Kattwinkel, California, United States. Respondent is Michael Sedan (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <badhellokitty.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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 11, 2016; the Forum received payment on April 11, 2016.
On April 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <badhellokitty.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2016 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@badhellokitty.com. Also on April 12, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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 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
Complainant, Sanrio Company, Ltd. and Sanrio, Inc., uses the HELLO KITTY mark in connection with a famous brand and character. Complainant has registered the HELLO KITTY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,215,436, registered Nov. 9, 1982) which establishes rights in a mark. Respondent’s <badhellokitty.com> domain name is confusingly similar to the HELLO KITTY mark as it incorporates the mark in its entirety while eliminating spaces, adds the generic term “bad” and the generic top-level domain (“gTLD”) “.com.”
Respondent, Michael Sedan, has no rights or legitimate interests in the <badhellokitty.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <badhellokitty.com> domain name. Rather, the domain name resolves to an active website containing adult oriented material.
Respondent is using the <badhellokitty.com> domain name in bad faith. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website by using HELLO KITTY in its entirety in the domain name, and offering adult oriented material for a fee. Further, Respondent had actual or constructive knowledge of the HELLO KITTY mark and Complainant’s rights therein because of the mark’s fame, notoriety and multiple trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the HELLO KITTY mark in connection with a famous brand and character. Complainant has rights in the HELLO KITTY mark through numerous trademark registrations worldwide, including registration with the USPTO (e.g., Reg. No. 1,215,436, registered Nov. 9, 1982). Respondent’s <badhellokitty.com> domain name is confusingly similar to the HELLO KITTY mark.
Respondent registered the <badhellokitty.com> domain name on June 11, 2015. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name. Further, Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <badhellokitty.com> domain name. The domain name resolves to an active website containing adult oriented material.
Respondent registered and uses the <badhellokitty.com> domain name 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."
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(f), 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.”).
Complainant has rights the HELLO KITTY mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <badhellokitty.com> domain name is confusingly similar to the HELLO KITTY mark under Policy ¶ 4(a)(i) as it incorporates the mark in its entirety while eliminating spaces, adds the generic term “bad” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <badhellokitty.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information lists “Michael Sedan” as registrant of record. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <badhellokitty.com> domain name as the domain name resolves to an active website soliciting customers to pay for adult oriented material. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (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).”); see also Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum October 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”).
Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent’s behavior constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (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); see also Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Respondent’s use of the <badhellokitty.com> domain name with adult oriented materials constitutes bad faith registration and use under Policy ¶ 4(a)(iii).See Wells Fargo & Co. v. Party Night Inc., FA 144647 (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).
Respondent had actual knowledge of Complainant's rights in the HELLO KITTY mark. Therefore, Respondent registered and uses the <badhellokitty.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <badhellokitty.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 19, 2016
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