DECISION

 

The Cartoon Network, Inc. v. Huy Hoang

Claim Number: FA2506002161090

 

PARTIES

Complainant is The Cartoon Network, Inc. ("Complainant"), represented by Annie S. Wang-Poloskov of Wang Law Corporation, California, USA. Respondent is Huy Hoang ("Respondent"), Viet Nam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rickandmortyshop.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 16, 2025; Forum received payment on June 16, 2025.

 

On June 17, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <rickandmortyshop.com> 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 June 23, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2025 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@rickandmortyshop.com. Also on June 23, 2025, 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 July 15, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends in part as followed:

 

Complainant, The Cartoon Network, Inc., a wholly owned subsidiary of Warner Bros. Discovery, Inc., is a worldwide producer of entertainment goods and services such as animated movies and television programs. Among its portfolio is the widely popular and critically-acclaimed animation series Rick and Morty, which first premiered in December 2013 and is available worldwide.

 

Complainant, and/or its affiliated companies, has been for many years the owner of registrations for the RICK AND MORTY trademark in the United States, Iceland, and countries all over the world. Complainant, or its predecessors in interest, have continuously used and applied the RICK AND MORTY trademark in connection with a variety of goods and services.

 

Respondent's domain name fully incorporates complainant's famous, long-standing and widely registered trademark. The at-issue domain name is confusingly similar to Complainant's trademark, as it incorporates the trademark in its entirety with the only addition being the word "shop", referring to Complainant's related consumer products business, and the generic top-level domain indicator ".com".

 

Respondent has no legitimate interest in the domain name. Complainant need only demonstrate a prima facie case that Respondent has no rights or legitimate interests in the at-issue domain name before the burden shifts to Respondent to produce evidence to rebut this presumption. Respondent is not authorized by Complainant to use the at-issue domain name. Respondent is without any license or permission from the Complainant to use its trademark or to apply for or use any domain name incorporating such trademark, Respondent cannot claim a bona fide or legitimate use of the domain name. Respondent registered and uses <rickandmortyshop.com> to infringe Complainant's rights in RICK AND MORTY and to trade off Complainant's goodwill. Specifically, Respondent uses <rickandmortyshop.com> to divert internet users to an unauthorized website that falsely claims to offer "Official Rick and Morty Merch For Fans," using Rick and Morty-related images and marks to sell unauthorized merchandise and counterfeit goods. Respondent's unauthorized uses thus directly compete with Complainant's official and licensed merchandise. Respondent's use of the domain name thus does not and cannot constitute a bona fide offering of goods or services. Further, Complainant has not authorized Respondent to use its trademark or to seek the registration of any domain name incorporating the trademark. Respondent must have known when it selected the at-issue domain name that the public would incorrectly associate it with Complainant and Complainant's trademark. In fact, given the distinctiveness and fame of the Complainant's mark, there is no plausible explanation for the Respondent's registration of <rickandmortyshop.com> other than to trade upon the goodwill the Complainant has developed in RICK AND MORTY. Respondent had no legitimate interest in doing so. Respondent also is not and has not been commonly known by the domain name. Respondent does not use Complainant's trademarks to identify itself on the website or for any other legitimate purpose. Even if Respondent has used the trade names, such an unauthorized use does not establish legitimate interest in <rickandmortyshop.com>.

 

Respondent registered and uses the at-issue domain name in bad faith. Respondent intentionally uses the domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website, while offering goods or services bearing Complainant's Rick and Morty-related properties that are not authorized by Complainant. The fame of Complainant's RICK AND MORTY trademark combined with widespread marketing of Complainant's goods and services, including via Complainant's authorized website and the registration of the trademark, put Respondent on notice of Complainant's mark. Complainant's RICK AND MORTY trademark is so internationally distinctive and famous Respondent must have had actual knowledge of the mark prior registering the domain name. Likewise, Respondent's registration and use is in bad faith as it failed to check whether RICK AND MORTY was registered prior to its registration of the at-issue domain name. By registering the domain name with actual knowledge of Complainant's trademark, Respondent acted in bad faith by breaching its service agreement with the registrar because Respondent falsely represented that its domain name registration would not infringe upon or otherwise violate the rights of any third party. Respondent also engages in a pattern of domain abusive conduct. Similar to this case, the respondent in a prior UDRP case, "Huy Hoang" also of "Viet Nam," who was also using the same registrar as used in this case, registered the domain name <thesimsmerch.com> and operated a website offering infringing merchandise that incorporated the relevant complainant's trademarks. Respondent's involvement in any past UDRP cases where all the elements for transfer were met, would further support a finding of bad faith. Finally, Respondent's use of the RICK AND MORTY trademark and Complainant's images on its website demonstrates clear actual knowledge of Complainant's rights, further confirming Respondent's bad faith registration and use of the domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the RICK AND MORTY mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in RICK AND MORTY.

 

Respondent uses the at-issue domain name to direct internet users to a website featuring copies of Complainant's product images and offering unauthorized and/or counterfeit RICK AND MORTY related merchandize for sale.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has USPTO and other national registrations worldwide for its RICK AND MORTY trademark. Any of Complainant's trademark registrations is sufficient to demonstrate Complainant's rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

Respondent's <rickandmortyshop.com> domain name contains Complainant's RICK AND MORTY trademark less its domain name impermissible spaces, followed by the suggestive term "shop," and with all followed by the ".com" top-level domain name. The differences between Complainant's trademark and Respondent's domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent's <rickandmortyshop.com> domain name is confusingly similar to Complainant's RICK AND MORTY trademark under 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)).

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant's trademark in any capacity and as discussed below there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and "Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.").

 

The WHOIS information for <rickandmortyshop.com> indicates "Huy Hoang" is the domain name's registrant and there is nothing in the record that tends to prove that Respondent is otherwise known by <rickandmortyshop.com> or any relevant variation thereof. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the confusingly similar <rickandmortyshop.com> domain name to address a website that sells unauthorized and/or counterfeit RICK AND MORTY merchandize that directly competes with Complainant's official and licensed merchandise. Respondent thus commercially gains from internet traffic meant for Complainant that is being misdirected to Respondent's <rickandmortyshop.com> website. Respondent's use of <rickandmortyshop.com> in this manner is neither indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor of a non-commercial or fair use under Policy ¶4(c)(iii). See Disney Enterprises, Inc. v. Dot Stop, FA 145227 (Forum Mar. 17, 2003) ("the use of a confusingly similar domain name to redirect Internet traffic for Respondent's profit is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)").

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in respect of <rickandmortyshop.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, Respondent acted in bad faith pursuant to the Policy.

 

Respondent's at-issue domain name addresses Respondent's <rickandmortyshop.com> website. There, the confusingly similar domain name together with its associated website deceives internet users into falsely believing that the at-issue domain name and website are sponsored or authorized by Complainant. Like Complainant's sanctioned online presence, Respondent's website offers RICK AND MORTY related merchandize for sale, albeit Respondent's merchandize is not authentic, licensed, or authorized by Complainant. Respondent's use of <rickandmortyshop.com> is thus disruptive to Complainant's business and designed to attract internet users so that Respondent may capitalize on the confusion it created between its <rickandmortyshop.com> domain name and Complainant's RICK AND MORTY trademark. Respondent's use of the <rickandmortyshop.com> domain name and its referenced website demonstrates Respondent's bad faith registration and use of <rickandmortyshop.com> under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent's competing website); see also, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting).

 

Complainant also shows that Respondent has suffered at least one other prior adverse UDRP decision. Respondent thus exhibits a pattern of cybersquatting that is indicative of Respondent's bad faith in the instant case under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the RICK AND MORTY mark when Respondent registered <rickandmortyshop.com> as a domain name. Respondent's actual knowledge is evident given the mark's worldwide notoriety and given Respondent's use of the domain name to pass itself off as Complainant via the <rickandmortyshop.com> website. Respondent's actual knowledge of Complainant's trademark when registering <rickandmortyshop.com> further demonstrates Respondent's bad faith under the Policy. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum Sept. 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed 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 <rickandmortyshop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: July 16, 2025