Treasure Studio, Inc. v. Maria Montilla
Claim Number: FA2003001886549
Complainant is Treasure Studio, Inc. (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York. Respondent is Maria Montilla (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cocomelon-nurseryrhymes.com>, registered with 1&1 IONOS SE.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2020; the Forum received payment on March 2, 2020.
On March 3, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <cocomelon-nurseryrhymes.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 March 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2020 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@cocomelon-nurseryrhymes.com. Also on March 6, 2020, 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 March 31, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 is engaged in the production of children’s education and entertainment content. Complainant has rights in the COCOMELON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,830,142, registered Aug. 6, 2019). Respondent’s <cocomelon-nurseryrhymes.com> domain name is identical or confusingly similar to Complainant’s mark as it is comprised of Complainant’s mark and the generic words “nursery rhymes.”
Respondent lacks rights or legitimate interests in the <cocomelon-nurseryrhymes.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not affiliated with or authorized by Complainant to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to confuse internet users into believing there is an affiliation, connection, or association of the parties.
Respondent registered and uses the <cocomelon-nurseryrhymes.com> domain name in bad faith. Respondent uses the disputed domain name to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Finally, given the immense fame of Complainant’s mark, Respondent must have had actual knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <cocomelon-nurseryrhymes.com> domain name on February 9, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the COCOMELON mark based on registration with the USPTO (e.g. Reg. No. 5,830,142, registered Aug. 6, 2019). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds that Complainant has established rights in the COCOMELON mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <cocomelon-nurseryrhymes.com> domain name is identical or confusingly similar to Complainant’s mark as it is comprised of Complainant’s mark and the generic words “nursery rhymes.” The Panel notes that the disputed domain name also incorporates the “.com” generic top-level domain (“gTLD”). The addition of generic terms and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that the <cocomelon-nurseryrhymes.com> domain name is identical or confusingly similar to the COCOMELON mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the <cocomelon-nurseryrhymes.com> domain name as Respondent is not commonly known by the disputed domain name and Respondent is not affiliated with or authorized by Complainant to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated that the respondent was not commonly known by the domain name). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Maria Montilla,” and there is no other evidence to suggest that Respondent was authorized to use the COCOMELON mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain name to confuse internet users into believing there is an affiliation, connection, or association of the parties. Use of a confusingly similar domain name to divert Internet users to a respondent’s own webpage by creating the false impression of affiliation or connection is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant argues that the similarity between Complainant’s COCOMELON mark and the disputed domain name is likely to cause confusion and deceive Internet users into believing there is an affiliation, connection, or association between the parties. The Panel agrees, and finds that respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Therefore, Complaint has also satisfied Policy ¶4(a)(ii).
Complainant contends that Respondent registered and uses the <cocomelon-nurseryrhymes.com> domain name in bad faith, as Respondent uses the disputed domain name to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that the disputed domain name incorporates Complainant’s COCOMELON mark in its entirety, as well as a product for which Complainant is known, “nursery rhymes.” Thus, it is apparent that the disputed domain name was registered with Complainant in mind, and that the Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cocomelon-nurseryrhymes.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 10, 2020
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