Hanna-Barbera Productions, Inc. v. Streep Je
Claim Number: FA2201001982153
Complainant is Hanna-Barbera Productions, Inc. (“Complainant”), represented by Erin S. Hennessy of Haynes and Boone, LLP, New York, USA. Respondent is Streep Je (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scoobnb-doo.xyz>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2022; the Forum received payment on January 26, 2022.
On January 27, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <scoobnb-doo.xyz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2022 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@scoobnb-doo.xyz. Also on February 1, 2022, 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 February 28, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SCOOBY-DOO mark established by its ownership of the portfolio of trademark and service mark registrations described below and its extensive use of the mark in its entertainment and merchandising business.
Complainant asserts that it owns a number of animated characters and has created a number of cartoon series including The Flintstones, Tom and Jerry, The Jetsons, and Scooby-Doo.
Premiering in September 1969 a television program, Scooby-Doo, Where Are You?, which centers around a Great Dane dog and his teenaged friends who solve mysteries, ran for two seasons and 25 episodes on CBS from 1969-1970, followed by multiple spin offs and one-hour specials that aired on CBS through 1976.
From 1976 to 1991 the series moved to the ABC television network, with spin-offs such as Scooby’s All-Star Laff-A-Lympics, the Scooby-Doo/Dynomutt Hour, The 13 Ghosts of Scooby-Doo and A Pup Named Scooby-Doo, as well as the introduction of Scooby’s tiny nephew, Scrappy-Doo, in a series entitled Scooby-Doo and Scrappy-Doo.
In 2002, following the success of the reruns shown on Cartoon Network, a new series titled What’s New, Scooby-Doo? was aired on the Kids WB network, followed by Shaggy & Scooby-Doo Get A Clue!, Scooby-Doo! Mystery Incorporated, and Be Cool, Scooby-Doo!.
Complainant adds that the Scooby-Doo characters have been featured in multiple TV shows, comic books, TV specials, several live-action movies, 25 direct-to-DVD movies, and more than 20 video games, and characters from the Scooby-Doo series can be found in amusement parks all over the world.
Complainant alleges that the disputed domain name <scoobnb-doo.xyz>, is identical or confusingly similar to its SCOOBY-DOO mark, because the disputed domain name incorporates Complainant’s SCOOBY-DOO mark in its entirety, merely adding the generic financial term “BNB”2 in place of the letter “Y” followed by the “.xyz” generic Top-Level Domain (“gTLD”) extension <.xyz>.
The disputed domain name contains a misspelling of the word “SCOOBY” by adding the generic term “bnb” so that the term sounds like “SCOOBY AND B” when read aloud. Complainant submits that numerous previous decisions of panels established under the Policy have held that the addition of a common word or symbol, such as BNB, which is a well-known cryptocurrency exchange does not distinguish a disputed domain name from Complainant's mark or preclude a finding of confusing similarity. See, e.g., The Vanguard Group, Inc. v. david odinaka, FA 1968649 (Forum Nov. 11, 2021) (“The addition of a generic term and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it.”).
Furthermore, Complainant submits that given the globally famous nature of Complainant’s SCOOBY-DOO family of marks and its robust worldwide licensing programs, Respondent’s misappropriation of the SCOOBY-DOO mark in the disputed domain name, combined with its use of copyrighted images of the Scooby-Doo character, is likely to cause confusion. See Twentieth Century Fox Film Corporation v. CDP, FA 94827 (Forum July 7, 2000) (finding respondent’s registration and use of the <allymcbeal.com> domain name likely to cause confusion as to affiliation based, in part, on complainant’s world-wide use of its ALLY MCBEAL trademark, noting that “consumers strongly associate the ALLY MCBEAL trademark with Complainant and the ALLY MCBEAL series.”).
Complainant then alleges that numerous factors demonstrate that Respondent has no rights or legitimate interests in the disputed domain name, arguing that there is no evidence to suggest that Respondent is or was commonly known by the disputed domain name, or as SCOOBY-DOO, or any variation thereof, prior to the registration of the disputed domain name.
Complainant asserts that Respondent is not affiliated with Complainant nor has Respondent been authorized to use the SCOOBY-DOO family of marks in any manner.
Complainant refers to a screen capture of the website to which the disputed domain name resolves, which is annexed to the Complaint, on which Respondent purports to offer crypto currency services, and which prominently presents a copy of Complainant’s SCOOBY-DOO character on the main page,
Complainant argues that the screen capture shows that Respondent has not made a noncommercial fair use of the disputed domain name, but rather, the content of the website shows that Respondent’s demonstrated purpose and use of the disputed domain name is, and has been, to redirect Internet users seeking Complainant’s products and services to Respondent’s website purporting to offer cryptocurrency bearing a form of the SCOOBY-DOO mark which has not been sanctioned in any way by Complainant.
Complainant submits that such use cannot constitute a legitimate noncommercial or fair use of the disputed domain name. See, e.g., Warner Bros. Entertainment Inc. and DC Comics v. Jesse Lafferty, FA 347725 (Forum Dec. 2, 2004) (“The Panel determines that Respondent’s use of a domain name confusingly similar to Complainant’s BATMAN mark to redirect Internet users seeking Complainant’s products and services to Respondent’s commercial website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant adds that by using the SCOOBY-DOO mark and the SCOOBY-DOO character to offer cryptocurrency on the website, without authorization from Complainant, Respondent is endeavoring to create a false impression of an affiliation with Complainant in order to attract Internet users to Respondent’s website for Respondent’s own commercial gain, to trade on Complainant’s goodwill to sell cryptocurrency products.
Complainant argues that such actions cannot amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under the Policy. See, e.g., Home Box Office, Inc. v. salah Mch, FA 1855450 (Forum Aug. 29, 2019) (finding that respondent had no rights or legitimate interests in the <hboshops.com> which sold “Game of Thrones” related goods without complainant’s authorization because “[u]se of a disputed domain name to create a false affiliation with a complainant to sell unauthorized goods does not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”)
Furthermore, Complainant submits that such use of the disputed domain name has tarnished and diluted Complainant’s SCOOBY-DOO mark.
Complainant next submits that the disputed domain name was registered and is being used in bad faith, arguing that there can be no question that Respondent had knowledge of Complainant’s rights in the SCOOBY-DOO family of marks when it registered the disputed domain name. The disputed domain name was registered long after Complainant first registered the SCOOBY-DOO mark, and more than 52 years after the SCOOBY-DOO television series was first introduced. See, e.g., AOL Time Warner, Inc. v. apex domains aka Anti-Globalization Domains aka Domains Anti-Globalization, FA 198026 (Forum Nov. 3, 2003) (“The Panel infers that Respondent had actual knowledge of Complainant’s rights in [its SCOOBY-DOO mark] when it registered the disputed domain names, providing evidence that Respondent registered the domain names in bad faith. As Respondent is capitalizing on the goodwill Complainant has built up around its marks to express opinions that are not endorsed or officially supported by Complainant, Respondent’s use tarnishes Complainant’s marks and evidences bad faith use.”)
Complainant adds that Respondent’s registration and use of the disputed domain name is, and was, intended to divert Internet users away from Complainant’s own websites to Respondent’s website offering unauthorized cryptocurrency products bearing the SCOOBY-DOO mark as shown by the screen capture of the website to which the disputed domain name resolves. See, e.g., G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Furthermore, it is submitted that by displaying images of the SCOOBY-DOO character on its website Respondent is intentionally creating a false affiliation, and likelihood of confusion, with Complainant which constitutes bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See, e.g., Nintendo of America Inc. v. Adrienne Joiner, FA 1816084 (Forum Dec. 11, 2018) (finding bad faith where respondent used the disputed domain name <nintendousa.com> to sell unauthorized products; “[i]n terms of the Policy, the Panel finds that [r]espondent has used the domain name with the intention of attracting for commercial gain internet users to a website by creating a likelihood of confusion with [c]omplainant’s trademark.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides entertainment and merchandising services and is the owner of rights in numerous animation characters including the famous SCOOBY-DOO character which it uses and licenses as a trademark and for which it owns a large portfolio of trademark registrations.
Complainant has provided evidence of a representative sample of its trademark registrations, the earliest of which is United States registered trademark SCOOBY DOO, registration number 1579527, registered on the Principal Register on January 23, 1990 for services in international class 41 and subsequent registrations in Mexico, the United Kingdom, the European Union, Egypt, Saudi Arabia, the United Arab Emirates, Australia, the Republic of Korea and Brazil.
Complainant also owns a large portfolio of generic Top Level Domain (“gTLD”) and country code Top Level Domain (“ccTLD”) domain name registrations that incorporate its SCOOBY-DOO mark.
The disputed domain name was registered on August 16, 2022 and is being used as the address of a website that purports to offer cryptocurrency trading services and notably it prominently displays an image of Complainant’s SCOOBY-DOO character in the header.
There is no information available about Respondent except that which is provided in the Compliant, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name for the purposes of this proceeding.
The Registrar disclosed that the Respondent who failed to file a Response to the Complaint and has availed of a privacy service to conceal its identity on the published WhoIs. is the registrant of the disputed domain name.
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 has provided convincing uncontested evidence that it has rights in the SCOOBY-DOO mark, established by its ownership of its portfolio of trademark registrations described above and extensive use of the mark in its entertainment and character merchandising business.
The disputed domain name <scoobnb-doo.xyz> consists of Complainant’s mark with the letter “y” in the mark replaced by the letters “nb” in the domain name, in combination with the generic Top Level Domain (“gTLD”) extension <.xyz>.
Complainant’s SCOOBY-DOO mark is strongly suggested in the disputed domain name. When pronounced the sound of letter “y” in the SCOOBY-DOO mark is silent or more correctly elongates the “b” sound
The disputed domain name also contains a hyphen as does the SCOOBY-DOO mark.
The letters “bnb” within the disputed domain name taken together refer to BNB crypto currency products and are therefore descriptive and do not prevent a finding of confusing similarity in the context of the other elements of the disputed domain name.
Neither does the gTLD extension <.xyz> prevent a finding of confusing similarity because in the context use of the disputed domain name it would be considered by Internet users to a necessary technical requirement for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the SCOOBY-DOO mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not affiliated with Complainant;
· Respondent has not been authorized to use the SCOOBY-DOO family of marks in any manner;
· there is no evidence to suggest that Respondent is or was commonly known by the disputed domain name, or as SCOOBY-DOO, or any variation thereof, prior to the registration of the disputed domain name;
· the screen capture of the website to which the disputed domain name resolves which has been annexed to the Complaint demonstrates that Respondent’s purpose and use of the disputed domain name is, and has been, to redirect Internet users seeking Complainant’s products and services to Respondent’s website purporting to offer cryptocurrency bearing a form of the SCOOBY-DOO mark which has not been sanctioned in any way by Complainant;
· by using the SCOOBY-DOO mark and the SCOOBY-DOO character to offer cryptocurrency without authorization from Complainant, it is clear that the purpose of Respondent’s use and registration of the disputed domain name has been to create a false affiliation with Complainant in order to attract Internet users to Respondent’s website for Respondent’s own commercial gain and to further create an appearance of authority and affiliation with Complainant in order to sell Respondent’s products;
· such actions cannot amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under the Policy;
· Respondent’s use of the disputed domain name in this manner has diminished the public’s capacity to associate the SCOOBY-DOO mark with the quality products offered and/or licensed by Complainant, thereby undermining and tarnishing and diluting the brand value associated with the SCOOBY-DOO Family of Marks.
It is well established that once a respondent makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
There can be no question that Respondent had knowledge of Complainant’s rights in the SCOOBY-DOO family of marks when it registered the disputed domain name. Respondent registered the disputed domain name long after Complainant first registered the SCOOBY-DOO mark, and more than 52 years after the Scooby-Doo television series was first introduced.
On the balance of probabilities therefore the registrant had actual knowledge of Complainant’s prior rights when the disputed domain name was registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith to take predatory advantage of the goodwill and reputation that Complainant has established in the SCOOBY-DOO mark.
The evidence further shows that not only is Respondent creating confusion among Internet users by its use of the confusingly similar domain name, but it is also using Complainant’s SCOOBY-DOO character on the website to create the false and misleading impression of a relationship between the disputed domain name, Respondent, its business and Complainant.
This Panel finds therefore on the balance of probabilities, that by using the disputed domain name, Complainant has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and the cryptocurrency products purported to be offered on Respondent’s website.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <scoobnb-doo.xyz> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 2, 2022
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