Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Paws, Incorporated, Albany, IN, USA ("Complainant") represented by Robert C. Beasley, Paws, Incorporated. The Respondent is Dulles Nokes, Dulles, VA, USA ("Respondent").

The domain names at issue are garfield-online.com, garfieldonline.net, and garfield-online.net registered with Domain People.

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

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 4, 2000; The Forum received a hard copy of the Complaint on December 7, 2000.

On December 5, 2000, Domain People confirmed by e-mail to the Forum that the domain names garfield-online.com, garfieldonline.net, and garfield-online.net are registered with Domain People and that the Respondent is the current registrant of the name. Domain People has verified that Respondent is bound by the Domain People registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@garfield-online.com; postmaster@garfieldonline.net; and postmaster@garfield-online.net 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 January 2, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 Forumís 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

Inasmuch as Respondent (a) registered domain names that are identical to a registered trademark owned by Complainant; (b) registered domain names that are identical to the name of a famous copyrighted comic character owned by Complainant; (c) registered domain names without any apparent legitimate purpose; (d) has refused to reply to the Complainant, who has expressed willingness to reimburse Respondent for site registration expenses; (e) uses the domain names, any such use will undoubtedly trade off the goodwill of Complainantís property rights, and cause a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service thereon, Complainant respectfully submits that Respondent has no legitimate use for the domain name, and has registered and/or maintained the same in bad faith.

B. Respondent

The Respondent has not contested the allegations of the Complainant, nor submitted evidence to the Panel.

Complainant is an Indiana corporation owned by Jim Davis, the creator of the comic feature, GARFIELD. The two primary characters in the comic are a cat named Garfield and a dog name Odie.

Complainant is the owner of all copyrights in the comic, including the Garfield and Odie characters.

Complainant is the owner of approximately 195 registered trademarks for the word mark "Garfield" and approximately ten registered trademarks for the word mark "Odie."

The comic 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 been the featured characters in books published worldwide and numerous animated television shows.

Complainant owns the website <garfield.com>, which enjoys over one million visitors per month.

The domain names in question are currently not in use.

Complainant contacted the Respondent by letter dated September 10, 2000. Respondent did not reply.

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 domain names in question combine the Complainantís famous GARFIELD mark and the broad term "online." Adding a broad word to the Complainantís mark does not terminate the Complainantís rights in the mark nor create a separate and distinct mark. Adding a generic word to a mark does not alter the fact that the domain names are confusingly similar to the Complainantís marks. See The Body Shop International PLC v. CPIC NET and Syed Hussain, D2000-1214 (Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainantís said <THE BODY SHOP> trademark); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n]either the addition of an ordinary descriptive wordÖnor the suffix ë.comí detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy 4.a.(i) is satisfied).

Paragraph 4(c) of the Policy sets out three circumstances in which a registrant may prove to the satisfaction of the Panel a right or legitimate interest in the domain names at issue. These are as follows:

(i) before any notice to the registrant of the dispute, the registrantís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the registrant (as an individual, business or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain names, as required under paragraph 4.a.(ii) of the UDRP. The Respondent has not refuted this assertion.

Respondent's websites are currently inactive, and on information and belief have never been active. The Respondent has submitted no evidence of intent to use the domain names by revealing demonstrable preparations to use the domain names. Policy � 4.c.(i). Given the inactive domain names and the Respondentís failure to assert an intention to use the domain names with a legitimate offering of commercial or non-commercial purposes, the Panel concludes that the Respondent cannot meet Policy � 4.c.(i) or (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the Respondent failed to submit a response to the Complaint and had made no use of the domain name in question).

Respondent is neither affiliated with, nor been licensed or permitted to use the GARFIELD mark. In view of the Complainantís long-term use of the mark, its strong association with the mark and the Respondentís failure to submit any claim to the mark, the Panel determines that the Respondent is not commonly known by the GARFIELD mark contained within the domain names. Policy � 4.c.(ii). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that the Respondent is not commonly known by the mark contained in the domain name where the Complainant has not permitted the Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names "Nokia" and/or "wwwNokia").

The Panel notes that the Complainant must prove that both the registration of the domain name and its subsequent use support a finding of bad faith.

In relation to the first element, the following leads the Panel to conclude that the registration was undertaken in bad faith. In this case, the ODIE and GARFIELD marks are undeniably world famous. Given the uniqueness and the extreme international popularity of the marks, the Respondent knew or should have known that registering the domain names in question would infringe upon the Complainantís goodwill. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the Respondent, at the time of registration, had notice of the Complainantís famous POKÉMON and PIKACHU trademarks given their extreme popularity); The London Metal Exchange Ltd. v. Syed Hussain; D2000-1388 (WIPO Dec. 15, 2000) (finding that the "letters ëlmeí are so obviously connected with a well-known entity that their very use by someone with no connection to the Complainant suggests opportunistic bad faith"); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). Registration and use of such domain names by any person not associated with the Complainant would amount to bad faith.

In relation to the second element, the Panel notes that the word "use" in this context does not require a positive act on the part of the Respondent; passively holding a domain name can constitute use in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); Alitalia ñLinee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (same).

In this case, the Respondent has made no use of the domain names in question. Therefore, the Panel concludes that the domain names are being used in bad faith.

Having proved that the domain names were both registered and used in bad faith, the Panel finds that the Complainant has satisfied the third element of Policy � 4.a. See E. & J. Gallo Winery v. Oak Investment Group, D2000-1213 (WIPO Nov. 13, 2000) (finding bad faith where 1) Respondent knew or should have known of the Complainantís famous GALLO marks and 2) Respondent made no use of the domain name "winegallo.com").

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 garfield-online.com, garfieldonline.net, and garfield-online.net be transferred from the Respondent to the Complainant.