Generic Top Level Domain Name (gTLD) Decisions

Complainant is Paws, Inc., Albany, IN, USA ("Complainant") represented by Robert C. Beasley, of Paws, Inc.. Respondent is garfieldonline.com, Bolivia, Chile ("Respondent").

The domain name at issue is <garfieldonline.com> registered with Network Solutions.

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.

John J. Upchurch as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 29, 2001; the Forum received a hard copy of the Complaint on June 1, 2001.

On June 1, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <garfieldonline.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 21, 2001 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@garfieldonline.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 June 25, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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." 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 the Respondent to the Complainant.

A. Complainant

The <garfieldonline.com> domain name is confusingly similar to Complainant’s GARFIELD family of marks.

Respondent has no rights or legitimate interests in the <garfieldonline.com> domain name.

Respondent registered and used the <garfieldonline.com> domain name in bad faith.

B. Respondent

No response was received from Respondent.

Complaint, Paws Inc., is an Indiana corporation owned by Jim Davis, the creator of the comic feature GARFIELD (the "Feature"). Complainant is the exclusive owner of all copyrights in the Feature, and the Garfield and Odie comic characters. Complainant is also the owner of approximately 195 registered trademarks for the famous GARFIELD trademark, including trademarks in Chile.

The Feature was first launched on June 19, 1978, and is the most widely syndicated comic strip in the world, appearing in over 2,600 newspapers in 63 countries and translated into 23 different languages. Garfield and Odie have also been the focal characters in books published worldwide by over 65 publishers. Over 120 million of such books have been sold on a global basis.

Complainant licenses the "Garfield" and "Odie" characters in connection with goods and services in most countries around the world. Currently, approximately 500 of such licenses are in effect.

"Garfield" and "Odie" also enjoy global exposure via <www.garfield.com>, the official Garfield website. The site enjoys over 1 million visitors on a monthly basis, with approximately 7 million page views per month.

The <garfieldonline.com> domain name was registered on March 15, 2001. Respondent has not made any use 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 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.

The <garfieldonline.com> domain name includes Complainant’s GARFIELD mark combined with the generic word "online." The addition of a generic word to a famous mark makes the domain name in question confusingly similar to Complainant’s GARFIELD mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <garfieldonline.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Respondent’s registration and passive holding of the <garfiledonline.com> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ("…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy").

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <garfieldonline.com> domain name, pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <garfieldonline.com> domain name pursuant to Policy ¶ 4(c)(iii), when Respondent is engaged in passive holding of the domain name. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <garfieldonline.com> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

Respondent’s passive holding of the disputed domain name is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, bad faith is evidenced by the obvious connection the <garfieldonline.com> domain name has with the Complainant’s enterprise, as it incorporates Complainant’s famous GARFIELD mark in its entirety. Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain name supports a finding of bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’"); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <garfieldonline.com> domain name be transferred from Respondent to Complainant.