DECISION

The Ohio Art Company v. Angus Young dba Crazyhorse Images

Claim Number: FA0112000102842

PARTIES

Complainant is Ohio Art Company, Bryan, OH (“Complainant”) represented by Jennifer Mikulina, of McDermott, Will and Emery.  Respondent is Angus Young dba Crazyhorse Images, Toronto, ON (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <etchasketch.com>, registered with Gandi.

PANEL

On January 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 12, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.

On December 13, 2001, Gandi confirmed by e-mail to the Forum that the domain name <etchasketch.com> is registered with Gandi and that Respondent is the current registrant of the name.  Gandi has verified that Respondent is bound by the Gandi 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 December 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 3, 2002 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@etchasketch.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.

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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <etchasketch.com> is identical to registered ETCH A SKETCH marks, in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant produces toys under the ETCH A SKETCH mark and other marks incorporating the words ETCH A SKETCH.  Complainant holds registered trademarks in Canada, the United States, and at least seven other countries.  Complainant registered its Canadian ETCH-A-SKETCH trademark in 1962 and ETCH A SKETCH trademark in 1983.  Complainant asserts that by way of significant goodwill, wide public recognition, and secondary meaning, the ETCH A SKETCH mark has become famous.

Respondent registered the disputed domain name <etchasketch.com> on April 1, 1998, and has used it to host its personal website.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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.

Identical and/or Confusingly Similar

Complainant has established its rights in the ETCH A SKETCH trademark through registration with the Canadian Intellectual Property Office.  The disputed domain name is identical to Complainant’s mark.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

The removal of spaces from the mark is insignificant to the determination of whether the domain name and mark are identical, as spaces are not permitted in domain names; similarly, the addition of “.com” is not relevant as the use of a generic top-level domain such as “.com” is required of domain name registrants.  See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also World Wrestling Fed’n Entm’t, Inc. v. Rapuano, DTV 2001-0010 (WIPO May 23, 2001) (finding that the <worldwrestlingfederation.tv> domain name was identical to Complainant’s WORLD WRESTLING FEDERATION mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights to and interests in the ETCH A SKETCH mark.  Because Respondent has not provided any evidence to suggest it has rights or interests in the disputed domain name, the Panel may presume no such rights or interests exist.  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).

There is no evidence that Respondent has used the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or that Respondent is commonly known as “etchasketch” or “etchasketch.com” pursuant to Policy ¶ 4(c)(ii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

Further, Respondent’s use of the disputed domain name, which infringes on Complainant’s trademark rights, to host a personal web page without authority or license from Complainant cannot be deemed a legitimate noncommercial or fair use of the domain name within the meaning of Policy ¶ 4(c)(iii).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing an otherwise legitimate site does not give rights to use a famous mark in its entirety).

The Panel thus finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of the notoriety and distinctiveness of Complainant’s ETCH A SKETCH mark, it is presumed that Respondent was aware of its proprietary nature.  See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time it registered the domain name at issue); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark).

By registering and using a domain name that incorporated Complainant’s mark in its entirety, Respondent demonstrated opportunistic bad faith under the Policy.  See Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous Chanel mark suggests opportunistic bad faith); see also Exxon Mobil Corp. v. Fisher, supra, (finding that Respondent’s intentional registration of a domain name it knew reflected Complainant’s marks was in bad faith). 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

 James P. Buchele, Panelist

Dated:  January 25, 2002

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