DECISION

The Cartoon Network LP, LLLP v. SFi-R.com

Claim Number:  FA0407000297930

PARTIES

Complainant is The Cartoon Network LP, LLLP (“Complainant”), represented by Wendy L. Robertson, of Alston & Bird LLP, 1201 West Peachtree Street, Atlanta, GA 30309.  Respondent is SFi-R.com  (“Respondent”), 1902 S Center, Sioux Falls, SD 57105.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <athf.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.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.

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 19, 2004; the Forum received a hard copy of the Complaint on July 22, 2004.

On July 19, 2004, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the Forum that the domain name <athf.com> is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.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 July 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 2004 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@athf.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 August 23, 2004, 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 <athf.com> domain name is identical to Complainant’s ATHF mark.

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

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

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

FINDINGS

On December 29, 2000, Complainant began using the AQUA TEEN HUNGER FORCE mark in commerce in connection with motion picture films directed toward children and young adults, as well as other cable and broadcast programs.  In connection with the foregoing, on January 28, 2003, Complainant successfully registered the AQUA TEEN HUNGER FORCE mark with the United States Patent and Trademark Office (Reg. No. 2,681,782). 

More specifically, the AQUA TEEN HUNGER FORCE is an animated program that is included as part of Complainant’s “Adult Swim” block of programming targeted to teenagers and adults, which averaged 1.3 million viewers in the month of June 2004.  As a compliment to it’s programming, Complainant operates interactive websites at the domain names <cartoonnetwork.com> and <adultswim.com>.  At these online locations, Complainant features interactive games, and an online store that offers a variety of goods, including AQUA TEEN HUNGER FORCE branded merchandise.

As part of its presentation, Complainant has provided evidence that the AQUA TEEN HUNGER FORCE mark is commonly identified by the public as “ATHF.”  Specifically, Complainant has provided printouts of a Google search for the term “ATHF” that yielded 4,760 results, the overwhelming majority of which related directly to Complainant’s AQUA TEEN HUNGER FORCE program.

Respondent registered the disputed domain name <athf.com> on February 18, 2002.  As of mid-January 2004, the domain name has resolved to a website at the second-level domain <toyzz.com> and has contained the following message:

(Breaking News!) Toyzz.com aquires (sic) Aqua Teen Hunger Force Web site ATHF.com!  Toyzz.com has just aquired (sic) the Aqua Teen Hunger Force Web site ATHF.com and it is now a Toyzz.com company!

The resolved website sells AQUA TEEN HUNGER FORCE merchandise and various action figures, including adult-film star figures.  Moreover, Respondent provides links to adult-oriented websites under the heading “PLAYBOY/MATURE” at the domain name at issue.  

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 AQUA TEEN HUNGER FORCE mark as the result of its federal registration of the mark with the United States Patent and Trademark Office.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainant has also alleged common law rights in the abbreviation for the AQUA TEEN HUNGER FORCE mark, specifically the letters “ATHF.”  Common law rights in a mark are established upon a showing of distinctiveness associated with the mark.  A mark may acquire distinctiveness as the result of the inherent nature of the mark or through secondary meaning associated with the mark.  See Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.).  Complainant has advanced evidence of secondary meaning associated with the ATHF mark in the form of a Google search for the letters “ATHF.”  At base, the usefulness of such a search in determining whether a mark has acquired secondary meaning associated with Complainant’s services in the public’s mind is highly questionable.  Yet, it is some evidence to suggest the public identifies the letters ATHF with Complainant. 

Complainant states in its Complaint that “[c]ourts and scholars agree that abbreviations and nicknames of trademarks – even if used only by the public and not by the owner of the mark – give rise to protectable trademark rights in the modified mark.”  Complaint at 4.  Complainant also cites Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., in which the court states that the “public use by others inures to the claimant’s benefit and, where this occurs, public use can reasonably be deemed use ‘by’ that party in the sense of a use on its behalf.”  [1991] USCAFED 396; 937 F.2d 1572, 1577-78 (Fed. Cir. 1991); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”).  Moreover, Complainant cites Volkswagenwerk Aktiengesellschaf v. Church, where the court found the abbreviation “VW” protectable as a trademark in connection with the “Volkswagen” mark.  [1969] USCA9 340; 411 F.2d 350 (9th Cir. 1969).  The leading treatise on trademark law states the following in connection with whether an abbreviation of a trademark is capable of protection:

In the author’s opinion, an abbreviation should be protectable from infringement if in the public mind the abbreviation identifies a company or its product, even if the company itself has not used the abbreviation in a formalistic way as a trade name, trademark or service mark.  It is public use that will set the stage for confusion, which is the evil to be remedied in trademark cases. See 1 J. Thomas McCarthy, McCarthy on Trademark and Unfair Competition § 7:18 (4th ed. 1996).

This Panel is not a court of law, but is able, pursuant to UDRP Rule 15(a) to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”  In the instant case, the Panel chooses to draw upon the cases and opinions cited above, with ancillary attention paid to the specific use of the disputed domain name, discussed later under paragraph 4(a)(ii).  Therefore, the Panel finds that Complainant has established rights in the ATHF mark pursuant to Policy ¶ 4(a)(i).  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

The disputed domain name <athf.com> contains Complainant’s ATHF mark in its entirety, without change, and has merely added the generic top-level domain “.com” to the mark, which is immaterial for the determination of identical or confusingly similar under paragraph 4(a)(i) of the Policy.  Therefore, the disputed domain name is identical to Complainant’s mark.  See 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); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Complainant has established that the disputed domain name is identical to its ATHF mark, in which Complainant has rights, pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Consistent with prior decisions under the Policy, the failure of Respondent to respond to the Complaint may function as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name and it allows the Panel to accept all reasonable allegations set forth in the Complaint as true. See Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not come forward to explain what legitimate use it may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain names at issue”).

Respondent has used the disputed domain name <athf.com> to redirect internet users to a website located at the separate and distinct second-level domain <toyzz.com>.  Moreover, the WHOIS registration fails to expressly or implicitly evidence that Respondent is commonly known as “athf.”  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name <athf.com> pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the notion that a respondent is commonly known by a domain name, the notion must be rejected).

Respondent is using a domain name, which is identical to Complainant’s ATHF mark, for the purpose of selling merchandise directly related to Complainant’s goods and services offered under its mark.  Using a domain name identical to a third party’s mark to offer goods or services that directly compete with those offered under the third party’s mark does not equate to a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy.  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells goods and services similar to Complainant's goods and services.  Such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent used the names to divert Internet users to a website that offered competing services with those offered by the complainant under its marks).

Moreover, Respondent has used a domain name identical to Complainant’s mark to provide links to adult-oriented material, including offering adult-film star action figures and links headlined “PLAYBOY/MATURE.”  Standing alone, links to adult-oriented material does not necessarily establish that Respondent has no rights and legitimate interests in the domain name.  However, using a domain name which is identical to a third party’s mark to offer such material, especially when the attached website is obviously connected with the third party’s goods or services, does not evidence rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy.  See Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult- oriented website as evidence that the registrant lacks rights or legitimate interests in the domain name.”); see also Paws, Inc. v. Zuccarini, 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”).

Therefore, Complainant has established that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has registered a domain name identical to Complainant’s mark in order to attract Internet users to its website for the purpose of financial gain, which amounts to piggy-backing upon the goodwill and reputation that Complainant has developed in its mark through substantial investment.  The parasitic nature of such registration and use of the domain name at issue is precisely the type of “abusive registration” the Policy was designed to remedy.  See Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is “intended only for the relatively narrow class of cases of ‘abusive registrations’”).

The fact that Respondent registered a domain name identical to Complainant’s ATHF mark and then proceeded to sell merchandise directly related to the goods or services offered by Complainant under its mark is evidence that Respondent had actual knowledge of Complainant’s rights in the ATHF mark at the time it registered the domain name at issue.  Registering a domain name that is identical to a third party’s mark with full knowledge of the third party’s rights in the mark is evidence of bad faith registration and use. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Bad faith registration and use may also be established under paragraph 4(b)(iv) of the Policy when a respondent intentionally attempts to attract Internet users to its website for commercial by creating a likelihood of confusion with a complainant’s mark.  In the instant case, the activity of Respondent evidences the immediately preceding circumstances.  Evidence that Respondent has intentionally attempted to attract Internet users to its website is found in the simple fact that Respondent registered the disputed domain name <athf.com>.  The more important inquiry is whether Respondent did so by creating a likelihood of confusion with Complainant’s mark.  Evidence of the latter may be found in that Respondent registered a domain name that is identical to Complainant’s ATHF mark for the purpose of selling products directly related to the goods and services provided by Complainant under its mark.  The fact that Respondent is selling these products establishes the last requirement set forth in paragraph 4(b)(iv), mainly that Respondent attracted these Internet users for commercial gain.  Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.  See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

Moreover, the disputed domain name <athf.com> resolves to a website that provides adult-oriented content and links to adult-oriented material.  Decisions under the Policy have held that using a domain name that is identical to a third-party mark for the purpose of linking the domain name to adult-oriented material is evidence of bad faith.  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Wells Fargo & Co. v. Party Night Inc. & Peter Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). 

Complainant has established that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

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 <athf.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  September 3, 2004

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