The Cartoon Network, Inc. v. Baptiste Barbaud / BB STORES OU
Claim Number: FA2101001929449
Complainant is The Cartoon Network, Inc. (“Complainant”), represented by Erin S. Hennessy, New York, USA. Respondent is Baptiste Barbaud / BB STORES OU (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ricketmorty.com>, registered with PlanetHoster Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2021; the Forum received payment on January 22, 2021.
On March 17, 2021, PlanetHoster Inc. confirmed by e-mail to the Forum that the <ricketmorty.com> domain name is registered with PlanetHoster Inc. and that Respondent is the current registrant of the name. PlanetHoster Inc. has verified that Respondent is bound by the PlanetHoster Inc. 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2021 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@ricketmorty.com. Also on March 22, 2021, 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 April 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 a multimedia entertainment platform and production studio which is owned by Warner Media, LLC and is based in the United States of America. Certain of its programming is directed to older teens and adults with more mature content during its late-night network, called Adult Swim, on which a popular animated show called Rick and Morty airs. Complainant also licenses the Rick and Morty name for the sale of various merchandise items including comic books, graphic novels, video games, original music, apparel, jewelry, and household items. Complainant has rights in the trademark RICK AND MORTY through its use in commerce since 2013 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the European Intellectual Property Office (“EUIPO”), IP Australia, and other trademark offices. It also owns the domain names <rickandmorty.com> and <rickandmorty.net>. Respondent’s <ricketmorty.com> domain name, registered on February 28, 2018, is confusingly similar to Complainant’s mark as Respondent merely replaces the word “and” with the French translation “et” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <ricketmorty.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use the RICK AND MORTY mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass itself off as Complainant in order to sell unauthorized or counterfeit goods. Furthermore, after being placed on notice of the Complaint, Respondent has resolved the disputed domain name to an inactive page.
Respondent registered and uses the <ricketmorty.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business and attract Internet users for commercial gain by passing itself off as Complainant to sell unauthorized or counterfeit goods. Furthermore, the disputed domain name now resolves to an inactive page. Finally, Respondent’s website contained the notice “Official Rick and Morty Fan Store” and so Respondent had actual knowledge of Complainant’s RICK AND MORTY mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this Proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 and evidence 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 and supported 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 claims rights in the RICK AND MORTY mark through its use in commerce and registration of the mark with the USPTO, EUIPO, IP Australia, and other national and regional trademark offices. Registration of a mark with such national or regional trademark offices is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) (“It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights”). Therefore, the Panel finds that the Complainant has rights in the RICK AND MORTY mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ricketmorty.com> domain name is confusingly similar to Complainant’s mark as Respondent merely replaces the word “and” with the French translation “et” and the “.com” gTLD. Replacing a word in a complainant’s mark with a translation and adding a gTLD may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Villanueva, FA 236589 (Forum Apr. 2, 2004) (“The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks.”); see also Richemont International SA v. Jo Yungu, D2016-1888 (WIPO Nov. 8, 2016) (“The only difference between Complainant's mark and the disputed domain name [<baumeetmercier.com>] is the addition or substitution of ‘et’ (French for ‘and’ and equivalent to ‘&’."). In light of the insignificant differences between Respondent’s <ricketmorty.com> domain name and Complainant’s RICK AND MORTY mark, the Panel finds that the domain name is confusingly similar to such mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <ricketmorty.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to inform the determination of whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed 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 Panel notes that the WHOIS record identifies “Baptiste Barbaud / BB STORES OU” as the Registrant of the <ricketmorty.com> domain name and no information in the record indicates that Respondent is known otherwise or that it is authorized to use Complainant’s mark. Respondent has not filed a Response or made any other submission in this case and so the Panel finds no evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <ricketmorty.com> domain name in connection with a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof. Rather, Respondent is attempting to pass itself off as Complainant in order to sell unauthorized or counterfeit goods. Using a disputed domain name to pass oneself off as a complainant to sell unauthorized or counterfeit goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)): see also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant provides screenshots of Respondent’s <ricketmorty.com> website before the start of this dispute and these show Complainant’s mark and copyrighted characters displayed on unauthorized apparel, toys, and collectables. Further, Respondent’s website contained the notice “Official Rick and Morty Fan Store” thus further supporting the assertion that Respondent was seeking to pass itself off as Complainant or an authorized licensee of the RICK AND MORTY mark. Therefore, the Panel finds that Complainant has made out an unrebutted prima facie case and, upon a preponderance of the evidence, holds that Respondent fails to use the <ricketmorty.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent lacks rights and legitimate interest in the disputed domain name, as it now resolves to an inactive webpage. After considering all of the circumstances of a given case, inactive holding of a disputed domain name may show that a respondent lacks rights and legitimate interest in that domain name under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant submits a screenshot of the currently-resolving webpage for the disputed domain name, which displays the message “This site can’t be reached.” As Respondent has provided no explanation for the removal of its website, the Panel finds the resolution of the disputed domain name to a blank page does not supply any evidence that Respondent has any rights and legitimate interest in the domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the well-known RICK AND MORTY mark at the time of registering the <ricketmorty.com> domain name. A respondent’s actual knowledge of a complainant's rights in the asserted mark prior to registering the disputed domain name can provide a foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant claims that “Rick and Morty is one of the most popular animated programs in the United States and around the world”, that the mark “has developed a considerable reputation and goodwill in the United States and worldwide”, and that “[t]he Rick and Morty series has grown into an extremely valuable brand and media franchise”. To support these assertions, Complainant submits screenshots of websites that sell its licensed RICK AND MORTY merchandise, news articles mentioning the popularity of the show, lists of awards won by Complainant for the Rick and Morty show as well as for its merchandise licensing program, and a website offering streaming of the show in France. Also submitted are screenshots of Respondent’s original website that displays Complainant’s mark and the notice “Official Rick and Morty Fan Store”. In light of the notoriety of Complainant’s RICK AND MORTY mark and the content of Respondent’s website, the Panel finds it highly likely that Respondent had actual knowledge of Complainant’s right in its mark at the time that the disputed domain name was registered.
Next, Complainant argues that Respondent registered and uses the <ricketmorty.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business and attract Internet users for commercial gain by passing itself off as Complainant to sell unauthorized or counterfeit goods. Registering a disputed domain name to pass oneself off as a complainant and sell unauthorized or counterfeit goods is evidence of bad faith under Policy ¶¶ 4(b)(iii) or (iv). See CWC Direct LLC v. Ju Yu, FA 1599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”). As noted above, Complainant has submitted screenshots of Respondent’s website taken prior to the initiation of this dispute, which shows Complainant’s mark and copyrighted characters displayed on unauthorized apparel and collectables as well as a claim of being an official fan store. Respondent has not participated in this case and so it does not disputed these assertions or Complainant’s evidence. Therefore, upon a preponderance of the evidence presented, the Panel finds that Respondent registered and uses the <ricketmorty.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Next, Complainant argues that Respondent registered and uses the <ricketmorty.com> domain name in bad faith because the disputed domain name now resolves to an inactive page. Registering a disputed domain name to then holding it in an inactive state may be evidence of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Here, Complainant’s submits screenshots of Respondent’s website taken both before and after initiation of the present proceedings. The older version of the website shows the above-mentioned infringing content but the current resolving webpage only displays the message “This site can’t be reached.” Taking into account all of the circumstances of this case, the Panel finds that Respondent’s removal of its website content after initiation of these proceedings further supports the conclusion that it registered and uses the <ricketmorty.com> domain name in bad faith under 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 <ricketmorty.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 21, 2021
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