DECISION

The Cartoon Network, LP, LLLP v. John Zuccarini d/b/a Cupcake Patrol d/b/a The Cupcake Patrol

Claim Number: FA0308000183906

PARTIES

Complainant is The Cartoon Network, LP, LLLP, Atlanta, GA (“Complainant”) represented by Wendy L. Robertson of Alston & Bird LLP. Respondent is John Zuccarini d/b/a Cupcake Patrol d/b/a The Cupcake Patrol, Volcan, Panama (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <carttoonnetwork.com> and <cartonorbit.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 13, 2003; the Forum received a hard copy of the Complaint on August 18, 2003.

On August 15, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain names <carttoonnetwork.com> and <cartonorbit.com> are registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the names. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com 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 August 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 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@carttoonnetwork.com and postmaster@cartonorbit.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 September 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <carttoonnetwork.com> and <cartonorbit.com> domain names are confusingly similar to Complainant’s CARTOON NETWORK and CARTOON ORBIT marks, respectively.

2. Respondent does not have any rights or legitimate interests in the <carttoonnetwork.com> and <cartonorbit.com> domain names.

3. Respondent registered and used the <carttoonnetwork.com> and <cartonorbit.com> domain names in bad faith.

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

FINDINGS

Since 1992 Complainant has operated a 24-hour cable and satellite television network under the service mark CARTOON NETWORK that features original animated series and classic cartoons. Complainant has produced evidence of several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CARTOON NETWORK mark, including Reg. No. 1,819,542 (registered on February 1, 1994) in relation to cable telecasting services.

Complainant has continuously used the CARTOON ORBIT mark since at least as early as September 29, 2000 in relation to an online community sponsored by Complainant. Complainant was granted a federal trademark registration with the USPTO for the CARTOON ORBIT mark on February 19, 2002 (Reg. No. 2,539,999).

Respondent registered the <carttoonnetwork.com> domain name on April 2, 2000. Respondent is using this domain name to divert Internet traffic to a website at the <hanky-panky-college.com> domain name, which features pornographic material.

Respondent registered the <cartonorbit.com> domain name on August 15, 2001. Respondent is using this domain name to redirect Internet users to a website at the <yes-yes-yes.com> domain name, which is a portal website offering a variety of services, including gambling.

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 its rights in the CARTOON NETWORK and CARTOON ORBIT marks through registration with the USPTO and continuous use in commerce.

Complainant argues that the <carttoonnetwork.com> and <cartonorbit.com> domain names are confusingly similar to Complainant’s marks because the domain names incorporate Complainant’s marks and merely add one letter or omit one letter from the marks. Neither the addition of a letter nor the omission of a letter serves to eliminate the confusing similarity between Respondent’s domain names and Complainant’s marks. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward and contest the allegations of the Complaint. Thus, the Panel accepts all of Complainant’s reasonable allegations and inferences to be true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, based on Respondent’s failure to contest the Complaint, the Panel presumes Respondent lacks any rights to or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <carttoonnetwork.com> and <cartonorbit.com> domain names to redirect Internet traffic to websites that feature, inter alia, pornography and gambling. Respondent’s use of the disputed domain names does not demonstrate either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); 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).

Complainant maintains that Respondent has never received consent, express or implied, from Complainant to register or use the disputed domain names. Moreover, Respondent has proffered no proof and there is no evidence in the record that suggests Respondent is commonly known by <carttoonnetwork.com> or <cartonorbit.com>. Therefore, the Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain names in accord with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has registered and used domain names confusingly similar to Complainant’s marks to attempt to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s marks. Such use demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).

Moreover, Respondent is a well-known typosquatter. Typosquatting is the intentional registration of domain names that capitalize on common typing errors of Internet users. Typosquatting is itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <carttoonnetwork.com> and <cartonorbit.com> domain names be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  September 30, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/937.html