Generic Top Level Domain Name (gTLD) Decisions

The Complainant is CEC Entertainment , Irving, TX, USA ("Complainant") represented by Nicole B. Emmons, Baker & McKenzie. The Respondent is Momm Amed Ia, Kwangju, KOREA ("Respondent").

The domain names at issue are "chuckiecheeses.com" and "chuckeecheese.com" registered with Bulkregister.

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Ralph Yachnin,as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 28, 2000; The Forum received a hard copy of the Complaint on October 2, 2000.

On 9/28/00, Bulkregister confirmed by e-mail to the Forum that the domain names "chuckiecheeses.com" and "chuckeecheese.com" are registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@chuckiecheeses.com and postmaster@chuckeecheese.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 30, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin, 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 Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." 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 the Respondent.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that in accordance with the Policy, Paragraph 4(a), incorporated into Respondent's registration agreement with BulkRegister.com, Respondent must submit to a mandatory administrative proceeding because:

(c) The domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not submit a response to the Complaint or otherwise contest the Complainant’s assertions.

Complainant is the owner of the chain of restaurants/entertainment facilities, both nationwide and in several countries outside the United States, known as Chuck E. Cheese's. "Chuck E. Cheese" and/or "Chuck E. Cheese's" have been used as trademarks since at least 1977. Complainant is one of the nation's largest restaurant and entertainment providers to children aged 2-12, and has acquired a nationwide reputation for quality goods and services and has accumulated substantial public goodwill. In the course of its business, Complainant has acquired extensive rights in numerous trade names, trademarks, service marks, including the marks "Chuck E. Cheese" and "Chuck E. Cheese's," and related trade dress used in connection with, among other things, restaurant and entertainment services.

The WHOIS Records for the domain names at issue reflect that Respondent registered the infringing domain names on July 27, 2000.

When an Internet user accesses Respondent's web sites, the user is taken to websites containing hard-core and graphic pornography. The websites change content on what appears to be a daily basis.

On September 7, 2000, Complainant notified the Technical and Administrative contact of Respondent, as listed in its domain name registrations, via international courier, that Respondent was infringing Complainant's trademarks and requesting that the domain names be transferred to Complainant. On September 18, 2000, after receiving no response from the administrative or technical contact, Complainant notified Respondent, via international courier, that Respondent should cease and desist from any use of "Chuck E. Cheese" and/or "Chuck E. Cheese's" and should take the necessary steps to transfer the domain names to Complainant. No response was received from Respondent.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three conditions to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Paragraph 15(a) of the Rules instructs the 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". Given that the Respondent has not submitted any statements or documents to the Panel, the Panel will base this decision on the Complaint, ICANN Policy and Rules, and applicable principles of law.

The Complainant’s trademarks and service marks, held by its wholly-owned subsidiary, ShowBiz Merchandising, Inc., consist of the words CHUCK E. CHEESE and CHUCK E. CHEESE’S. Respondent’s domain names "chuckiecheeses.com" and "chuckeecheese.com" are virtaully identical and confusingly similar to Complainant’s trademarks a and service marks. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to Complainant’s mark "Beanie Babies"). Adding additional letters to the Complainant’s marks does not create domain names that are distinct from the Complainant’s marks. Thus, the Panel is satisfied that the first condition has been met.

There is no evidence of Respondent's use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. Linking a domain name that infringes upon another’s mark is not a bona fide offering of goods and services. Further, Respondent was not authorized to use Complainant's marks for any of the period during which he has registered the domain names at issue. Respondent (as an individual, business, or other organization) also has never been commonly known by the domain names at issue and has no legitimate non-commercial or fair use of the domain names. Policy ¶ 4.c.(i) – (iii). See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website). Thus, the Panel is satisfied that the second condition has been met.

The domain names that are the subject of this proceeding were registered or acquired for a primary purpose of intentionally attempting to attract for commercial gain, Internet users to Respondent's web sites or other on-line locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web sites or locations. Policy ¶ 4.b.(iv). Further, linking a domain name that infringes upon another’s mark to a pornographic site is evidence of bad faith. See CCA Indust., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that "this association with a pornographic web site can itself constitute a bad faith"); MatchNet plc. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith). Thus, the Panel is satisfied that the third condition has been met.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "chuckiecheeses.com" and "chuckeecheese.com" be transferred from the Respondent to the Complainant.