Tee and Charles Addams Foundation v. Gro en
Claim Number: FA2304002040180
Complainant is Tee and Charles Addams Foundation (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is Gro en (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <addamsfamilycostumes.com>, registered with Key-Systems GmbH.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on April 14, 2023; Forum received payment on April 14, 2023.
On April 19, 2023, Key-Systems GmbH confirmed by e-mail to Forum that the <addamsfamilycostumes.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2023 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 firstname.lastname@example.org. Also on April 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Complainant states that it manages the art and intellectual property of the estate of Charles Addams, creator of the Addams Family. Born in 1912, Charles Addams’ prodigal artistic talent led him to become one of America’s most celebrated cartoonists. Addams started his career in 1933 at The New Yorker, and became one of that magazine’s marquee contributors until his death in 1988. Addams is known for creating characters who were darkly humorous and macabre. His body of work spans almost 60 years of output, and is estimated to contain several thousand works, many of which appear in prestigious permanent collections, including The New York Public Library, The Museum of the City of New York and the Library of Congress. In 1937, Addams drew the first of a series known as the Addams Family. The characters in the Addams Family include Gomez and Morticia Addams, their children Wednesday and Pugsley, Grandma, Uncle Fester, Lurch, Cousin Itt, and Thing. The Addams Family has become a staple of popular culture, spawning books, video games, multiple television series and movies, and a Broadway musical. The first live action television called The Addams Family premiered on ABC in 1964 and ran for two seasons. The Addams Family characters were again revived in a1990s film series – The Addams Family (1991) and Addams Family Values (1993), starting Anjelica Huston, Raul Julia, Christina Ricci, Christopher Lloyd and Joan Cusak. In 1992, Hanna-Barbera Productions produced a new animated series called The Addams Family, which ran for two seasons. In 2010, the Addams Family musical opened on Broadway, starring Nathan Lane and Bebe Neuwirth. Metro-Goldwyn-Mayer revived The Addams Family in two animated films, The Addams Family (2019) and The Addams Family 2 (2021). Most recently, in 2022, Netflix debuted Wednesday, a comedy horror television series starring Jenna Ortega that quickly became one of Netflix’s most watched series. THE ADDAMS FAMILY doesn’t just serve as the title of multiple series. It is also a brand, used by Complainant and licensed to third parties for use in connection with a wide variety of merchandise, including clothing, toys, confectionary, books, and, importantly, costumes. Indeed, THE ADAMS FAMILY store on Amazon offers licensed costumes for sale. Complainant has rights in the THE ADDAMS FAMILY mark through its registration of the mark in the United States in 2012.
Complainant alleges that the disputed domain name is confusingly similar to its THE ADDAMS FAMILY mark because it incorporates the significant portion mark (merely omitting the term “THE”) and merely adds the generic/descriptive term “costumes” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the THE ADDAMS FAMILY mark. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the resolving website offers adult-oriented material.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain by offering adult-oriented material. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the THE ADDAMS FAMILY mark.
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark THE ADDAMS FAMILY and uses it to market shows and goods (including costumes) based on the Adams Family cartoons.
Complainant’s rights in its mark date back to 2012.
The disputed domain name was registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a website that displays adult-oriented material.
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”).
The disputed domain name incorporates the significant portion of Complainant’s THE ADDAMS FAMILY mark (merely omitting the term “THE”) and merely adds the generic/descriptive term “costumes” and the “.com” generic top-level domain (“gTLD”). This is not sufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD); see also MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its THE ADDAMS FAMILY mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Gro en”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website offers adult-oriented material. Where a Respondent uses a disputed domain name to display adult-oriented material, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also National Spiritual Assembly of the Bahá’ís of the United States v. Moniker Privacy Services, FA 1644005 (Forum Dec. 1, 2015) (finding that the disputed domain’s resolving website contained adult-related content, including links to commercial pornographic websites, online, dating, and news related to porn actors and the porn industry, and therefore Respondent failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Vivendi Universal Games v. Chang, FA 206328 (Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant’s goods or services to pornographic material and links, while presumably earning a commission or referral fees from advertisers). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website displays adult-oriented material. Use of a disputed domain name to display adult-oriented material may be considered evidence of bad faith registration and use under Policy ¶¶ 4(a)(iii) and/or (iv). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”); see also Brown & Bigelow, Inc. v. Site Ads Inc., FA0011000096127 (Forum Jan. 11, 2001) (finding that the “[r]espondent has tarnished the Complainants mark by associating its mark with pornographic web site links, which also substantiates bad faith”); see also Youtv, Inc. v. Mr. Erkan Alemdar, FA 94243 (Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his web site for commercial gain and linked his web site to pornographic web sites); 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)). Thus the Panel finds Respondent’s registration and use of the disputed domain name to be in bad faith pursuant to Policy ¶¶ 4(a)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <addamsfamilycostumes.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 15, 2023
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