Hanna-Barbera Productions, Inc. v.
Entertainment Commentaries
Claim Number: FA0606000741828
PARTIES
Complainant is Hanna-Barbera Productions, Inc. (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349, USA. Respondent is Entertainment Commentaries (“Respondent”), c/o Internet Services, PO Box 342021, Bethesda, MD 20827.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hannabarbera.com>,
registered with Network Solutions, 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.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 29, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 30, 2006.
On July 3, 2006, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <hannabarbera.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 July 5, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 25, 2006 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@hannabarbera.com by e-mail.
A Response was received on July 26, 2006 and determined to be deficient
pursuant to Supplemental Rule #5(a), as it was received one day late and not in
hard copy.
On July 31, 2006, Complainant filed an additional submission with the
National Arbitration Forum. The
submission was timely under Supplemental Rule #7(a), but the required payment
was received late.
Several informal e-mail exchanges between the parties occurred between
July 31 and August 2, 2006 and form part of the record submitted to the Panel.
On August 3, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
·
Complainant has
operated businesses using the HANNA-BARBERA name for over forty years.
·
Complainant has
owned registered trademarks incorporating the HANNA-BARBERA name for over
twenty years based on its first use of the name in 1960.
·
Complainant
owns additional registrations for its HANNA-BARBERA marks in other
jurisdictions around the world.
·
Respondent
registered the Domain Name nearly two decades after Complainant registered its
HANNA-BARBERA mark with the United States Patent and Trademark Office.
·
The Domain Name
incorporates the Complainant’s HANNA-BARBERA mark in its entirety.
·
Respondent is
not authorized by Complainant to use the Domain Name
·
Respondent is
not otherwise known by the Complainant’s HANNA-BARBERA mark.
·
Respondent used
demonstrably invalid WHOIS information to conceal its identity, and it
registered the Domain Name under the generic, non-descriptive phrase
“Entertainment Commentaries.”
·
The term
“Entertainment Commentaries” is so broad as to justify an inference that the
Respondent intends to refer to entertainment products generally and not only
those productions developed, produced, and/or distributed by Complainant or its
affiliates.
·
Respondent
registered the Domain Name with actual knowledge of the Complainant’s HANNA-BARBERA
mark. Respondent’s actual knowledge of
Complaint’s HANNA-BARBERA mark may be inferred from the similarity between the
Domain Name and the Complainant’s mark as well as Complainant’s
long-established and widespread use of its HANNA-BARBERA mark.
·
Respondent’s
registration of the Domain Name using false contact information violated its
registration contract with the Registrar and is evidence of bad faith
registration.
·
Respondent has
passively held the Domain Name for the past nine years.
B. Respondent
·
The
registration of the Domain Name is invalid, having expired in 2003.
·
The
registration was abandoned years before 2003, but the Registrar renewed the
registration without Respondent’s consent until 2003.
·
At this time,
the Registrar has sole ownership and control of the Domain Name and may have
offered it for sale through one of its auction sites.
·
The Respondent
no longer has ownership, access, or control of the Domain Name.
·
Bad faith
registration may not be inferred because the Domain Name was registered in
1997, and the Policy was not even written at the time of registration.
C. Complainant’s Additional Submission
·
Respondent does
not contest Complainant’s allegations and essentially concedes all elements
required by the Policy to be proved by Complainant.
·
Respondent’s
unsubstantiated assertions regarding the registration status of the Domain Name
are contradicted by records showing the Domain Name as being registered through
August 2006, the Registrar’s records that show the Domain Name as
“unavailable,” and the registrar verification procedures required by the
National Arbitration Forum.
FINDINGS
The Panel finds it appropriate to consider
Respondent’s Response as well as Complainant’s Additional Submission in
resolving this case, notwithstanding minor technical deficiencies in each. Additionally, the Panel will consider the
parties’ e-mail communications between July 31 and August 2, 2006 in making its
decision.
Based on the considerable evidence in the
record, the Panel finds that the Domain Name is active and registered to
Respondent.
The Panel finds that the Domain Name is
confusingly similar to Complainant’s federally registered HANNA-BARBERA
marks. Further, the Panel finds that
Respondent essentially concedes that it has no rights or legitimate interests
in the Domain Name through its expressed indifference toward the Domain
Name. Finally, the Panel finds that
Respondent registered and is using its Domain Name in bad faith.
DISCUSSION
I. Preliminary
Considerations
A. Timing
of Response
The National Arbitration Forum received a
Response in this matter by e-mail on July 26, 2006. This Response is deficient under ICANN Rule #5(a), having been
submitted one day late and not in hard copy.
As an initial matter, the Panel must decide
what weight, if any, should be given to Respondent’s late submission. See ICANN
Rule #10(a); Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Mar. 3, 2000). A
single day’s delay in a submission that is received before a panel is appointed
does little harm to the parties. See Bd. of Governors of the Univ. of Alberta
v. Katz, D2000-0378 (WIPO June 22, 2000).
Here, the Response is dated July 25, but the e-mail time stamp indicates
that the Response was sent at 12:00 A.M. on July 26, which is only one minute
late, a delay that is plainly of no consequence.
B. Complainant’s
Additional Submission
On July 31, 2006, Complainant filed a timely
Additional Submission under Supplemental Rule #7. Complainant’s Additional Submission, however, is technically
deficient under Supplemental Rule #7, as the required payment was received
late. Despite this deficiency, the
Panel finds no harm to Respondent in considering Complainant’s Additional
Submission.
C. Parties’
E-Mail Correspondence
Between July 31, 2006 and August 2, 2006, the
parties communicated extensively by e-mail.
The National Arbitration Forum included these messages as part of the
record before the Panel. Under ICANN
Rule #10, the Panel is given great discretion as to what evidence it will
consider in resolving the dispute.
Because these messages contain information useful in understanding the
nature of this dispute, the Panel finds it appropriate to consider the
information discussed in these e-mail exchanges in resolving this matter.
D. Expired
Status of the Domain Name
Respondent contends that the Domain Name
registration expired in 2003 and argues that this dispute should be dismissed
because the Panel has no power to transfer expired domain names under the
Policy.
As an initial matter, Respondent is incorrect
that panels may not transfer expired domain names under the Policy. Where, as here, the registrar confirms that
the respondent is the current registrant of the disputed domain name, panels
have transferred domain names with expired or lapsed registrations. See,
e.g., Texas Lottery Comm’n v. Eggers,
FA 405059 (Nat’l Arb. Forum Mar. 9, 2005); see
also Warner Bros. Entm’t Inc. v.
Willett, FA 705263 (Nat’l Arb. Forum June 26, 2006) (transferring the
disputed domain name where the respondent argues that the domain name
registration has expired). Respondent’s
argument that this Panel is powerless to transfer an expired domain name is
wrong.
Further, even if Respondent’s argument had
some merit, it is misplaced because the record shows that the Domain Name is
still active. First, the WHOIS
information provided in Complainant’s Exhibit A demonstrates that the Domain
Name registration will expire on August 22, 2006. Second, the Registrar confirmed that the Domain Name is still
active and registered to Respondent in an e-mail dated July 3, 2006. Third, after the National Arbitration Forum
received the Response stating Respondent’s objections to this proceeding, the
Registrar reconfirmed that the Domain Name is still active, noting, however,
that payment for the registration is past due.
Finally, the Registrar’s own website, presented in Complaint’s
Additional Submission Exhibit A, shows that the Domain Name is unavailable.
In view of this evidence, which demonstrates
that the Domain Name is active and registered to Respondent, the Panel has the
authority under the Policy to resolve this matter.
II. Merits
of Case
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Ownership of a federally registered trademark
is strong evidence of a complainant’s rights in that mark under Policy ¶
4(a)(i). See, e.g., Microsoft Corp. v.
Burkes, FA 652743 (Nat’l Arb. Forum Apr. 17, 2006); Paisley Park Enters. v. Lawson, FA 384834 (Nat’l Arb. Forum Feb. 1,
2005). Here, Complainant has owned the
federally registered HANNA-BARBERA mark for its cartoons since 1985 based on
its first use in commerce in 1960.
Further, Complaint holds federal registrations for several other
HANNA-BARBERA formative marks.
Respondent does not challenge Complainant’s rights in its HANNA-BARBERA
marks, and the Panel finds that Complainant has rights in these marks under
Policy ¶ 4(a)(i).
Mere punctuation changes, including the
addition or deletion of hyphens, are not sufficient to defeat confusing
similarity. See, e.g., Nat’l Cable Satellite
Corp. v. Black Sun Surf Co., FA 94738 (Nat’l Arb. Forum June 19, 2000); Ritz-Carlton Hotel Co. v. Club Car Executive
Transp., D2000-0611 (WIPO Sept. 18, 2000).
Here, the Domain Name incorporates Complainant’s HANNA-BARBERA mark in
its entirety, only omitting the hyphen.
Accordingly, the Panel finds the Domain Name confusingly similar to a
mark in which Complainant has rights.
Before shifting the burden to Respondent,
Complainant must first make a prima facie
case that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii). See, e.g., Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001).
Complainant has met its initial burden by pointing out that Respondent
is neither commonly known by the Complainant’s HANNA-BARBERA marks nor
authorized or licensed to use these mark.
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat’l Arb. Forum Jan. 23, 2001) (finding that the respondent
does not have rights in a domain name when the respondent is not known by the
mark); Guerlain S.A. v. Peikang,
D2000-0055 (WIPO Mar. 21, 2000) (“[I]n the absence of any license or permission
from the Complainant to use any of its Trademark or to apply for or use any
Domain Name incorporating those Trademark, it is clear that no actual or
contemplated bona fide or legitimate use of the Domain Name could be claimed by
Respondent.”).
Additionally, Respondent’s failure to use, or
even to make demonstrable preparations for using, the Domain Name indicates
that Respondent lacks rights and legitimate interests in the <hannabarbera.com> domain
name. See, e.g., LFP, Inc. v. B
& J Props., FA 109697 (Nat’l Arb. Forum May 30, 2002); Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000).
Respondent provides no evidence to
demonstrate rights or legitimate interests in the Domain Name. Indeed, Respondent’s argument that the
Domain Name is expired, having been abandoned for years prior to 2003, essentially
concedes that it has neither rights nor legitimate interests in the Domain
Name. Thus, the Panel finds that
Respondent has no rights or legitimate interests in the Domain Name.
Respondent contends that bad faith
registration may not be inferred in this case because the Domain Name was
registered two years before the adoption of the Policy. Respondent cites no authority in support of
its theory. Instead, numerous panels
have found bad faith registration based on activities occurring before the
adoption of the Policy. See, e.g., World Wrestling Fed’n Entm’t v. Bosman, D1999-0001 (WIPO Jan. 14,
2000); Ellenbogen v. Pearson,
D2000-0001 (WIPO Feb. 17, 2000); Boardwalk
Bank v. Thurgood, D2000-0213 (WIPO May 20, 2000). Therefore, Respondent’s argument that bad faith registration may
not be inferred from activities occurring before the adoption of the Policy is
without merit.
Registration of a domain name with demonstrably false contact information evidences bad faith under the Policy ¶ 4(a)(iii). See, e.g., Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Ticketmaster Corp. v. Prem, D2000-1550 (WIPO Jan. 16, 2001); Ulysses Learning Corp. v. G. Sone & Assocs., Inc., FA 645878 (Nat’l Arb. Forum Mar. 27, 2006). Here, Respondent’s WHOIS information gives a fictitious contact name — “Dom Reg,” lists an invalid postal address, and provides a false fax number. Indeed, Complainant’s Exhibit J demonstrates that initial attempts at contacting Respondent were frustrated because of this false information. Respondent does not contest that the WHOIS contact information provided is false. Indeed, when pressed to provide legitimate contact information for the purposes of receiving the Complainant’s exhibits, Respondent provided a different fax number than the one provided in the WHOIS information. Thus, the Panel finds Respondent’s use of demonstrably false contact information to be evidence of bad faith registration.
Additionally, Respondent is charged with constructive knowledge of Complainant’s federally registered mark. See, e.g., Orange Glo Int’l v. Blume, FA 118313 (Nat’l Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
The Panel also notes that it is highly unlikely that Respondent registered the Domain Name without actual knowledge of Complainant’s HANNA-BARBERA mark. Indeed, where, as here, the similarity of the disputed domain name to the complainant’s mark is coupled with the complainant’s long-established and widespread use of its mark, the panel may infer the respondent’s actual knowledge of the complainant’s mark. See, e.g., Muppet Holding Co. v. Brown, FA 518373 (Nat’l Arb. Forum Aug. 26, 2005).
Respondent’s knowledge, both constructive and
actual, of Complainant’s mark allows for a presumption of registration and use
in bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat’l Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”).
Accordingly, the Panel finds
that Respondent’s knowledge of Complainant’s mark provides a separate basis for
inferring bad faith registration and use.
Finally, Respondent’s passive holding of the
Domain Name for the past nine years is evidence of bad faith registration and
use under Policy ¶ 4(a)(iii). See, e.g., Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000); Caravan Club v.
Mrgsale, FA 95314 (Nat’l Arb. Forum Aug. 30, 2000).
Respondent challenges this claim of passive
holding, at least indirectly, by arguing that it has had no control over the
Domain Name for the past three years because the Domain Name registration
expired in 2003. As discussed above,
however, the Panel finds that the Domain Name is still active and registered to
Respondent. Therefore, Respondent’s
holding of the Domain Name during that time without having it resolve to a
webpage constitutes bad faith use of the Domain Name.
Further, even if it had no control over the
Domain Name during the past three years, Respondent essentially admits passive
holding of the Domain Name for years before 2003. Respondent notes that it had abandoned the Domain Name years
before 2003 but that the Registrar kept renewing the Domain Name
registration. Thus, Respondent’s
admitted holding of the Domain Name without any interests in using it provides
further evidence of bad faith use under Policy ¶ 4(a)(iii).
In sum, Complainant has proved bad faith
registration and use through the Respondent’s use of false contact information,
knowledge of Complainant’s federally registered mark, and passive holding of
the Domain Name.
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 <hannabarbera.com>
domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: August 18, 2006
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