DECISION

The Cartoon Network LP, LLLP v. (This Domain is For Sale) Joshuathan Investments

Claim Number:  FA0310000204070

PARTIES

Complainant is The Cartoon Network LP, LLLP (“Complainant”), represented by David J. Stewart, of Alston & Bird, LLP 1201 West Peachtree Street, Atlanta, GA 30309.  Respondent is (This Domain is For Sale) Joshuathan Investments  (“Respondent”), 62 Cleghorn Street, Belize City, Belize.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <artoonnetwork.com>, registered with Alldomains.Com Inc.

PANEL

The undersigned 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 Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 21, 2003; the Forum received a hard copy of the Complaint on October 23, 2003.

On October 23, 2003, Alldomains.Com Inc. confirmed by e-mail to the Forum that the domain name <artoonnetwork.com> is registered with Alldomains.Com Inc. and that Respondent is the current registrant of the name. Alldomains.Com Inc. has verified that Respondent is bound by the Alldomains.Com Inc. 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 October 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2003 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@artoonnetwork.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 November 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <artoonnetwork.com> domain name is confusingly similar to Complainant’s CARTOON NETWORK mark.

2. Respondent does not have any rights or legitimate interests in the <artoonnetwork.com> domain name.

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Since 1992, Complainant has operated a twenty-four hour cable and satellite television network under the service mark CARTOON NETWORK.  Complainant delivers its telecast to nearly 155 million households around the world and delivers its telecast to more viewers aged two to eleven during prime time than any other television network.  Complainant holds several registrations for the CARTOON NETWORK mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 1,877,681 (registered on February 7, 1995) and 2,322,672 (registered on February 29, 2000). Complainant also holds registrations for the mark in over 125 countries.   

Complainant operates the <cartoonnetwork.com> website in conjunction with its television network.    The website features interactive games, Cartoon Network programming and content information, and an online store through which Internet users can purchase a variety of CARTOON NETWORK branded apparel and merchandise.  The website averages more than 460 million hits per month.

Respondent registered the <artoonnetwork.com> domain name on December 23, 2000.  The WHOIS information for the domain name states that the domain name is for sale.  Respondent has used the domain name to resolve to a search engine that contained prominent links to explicit pornographic content.  The website also provided a banner that stated that the <artoonnetwork.com> domain name was for sale.  Currently the domain name resolves to a website that consists of a “Top 10 Sites” search engine that contains links to topics such as “Adult Entertainment,” “Online Gambling,” “BlackJack,” and “Viagra.”  The website continues to advertise that the domain name is 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 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 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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the CARTOON NETWORK mark through the mark’s registration with the USPTO and the mark’s use in commerce since 1992.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO April 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether Complainant’s mark is registered in a country other than that of Respondent’s place of business).

Respondent’s <artoonnetwork.com> domain name is confusingly similar to Complainant’s mark because the domain name merely omits the letter “c” from the CARTOON NETWORK mark and adds the generic top-level domain “.com.”  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

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

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights and legitimate interests in the <artoonnetwork.com> domain name.  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); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Furthermore, Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  The WHOIS information for the <artoonnetwork.com> domain name fails to establish that Respondent is commonly known by the disputed domain name.  Therefore the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

In addition, Respondent’s use of the misleading domain name to lure Internet users to a search engine website that provides links to pornography and gambling websites is evidence that Respondent is not using the <artoonnetwork.com> domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant Policy ¶ 4(c)(iii).  See Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that Respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy); see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where Respondent used the disputed domain name to redirect Internet users to an online casino); see also U.S. Franchise Sys., Inc. v. Howell III, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Also, Respondent’s “for sale” advertisement on the website that the disputed domain name resolves to and the advertisement within the <artoonnetwork.com> domain name’s WHOIS information is evidence that Respondent lacks rights and legitimate interests in the domain name.  See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).

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

Registration and Use in Bad Faith

It may be inferred that Respondent had actual or constructive knowledge of Complainant’s mark because the CARTOON NETWORK mark is well known through its use in the network’s national and international broadcast, the mark is registered with the USPTO and the mark is promoted through Complainant’s well known website.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Furthermore, Respondent’s use of the misleading domain name to redirect Internet users to a search engine website that provides links to pornography and gambling websites is evidence that Respondent is using the <artoonnetwork.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).

In addition, Respondent’s “for sale” advertisement on the website that the disputed domain name resolves to and the advertisement within the <artoonnetwork.com> domain name’s WHOIS information is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name Respondent chose for the registrant, “If you want this domain name, please contact me”).

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 relief shall be GRANTED.

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

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  December 10, 2003

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