DECISION

The Cartoon Network LP, LLLP v. Mattias Larsson

Claim Number:  FA0407000298309

PARTIES

Complainant is The Cartoon Network LP, LLLP (“Complainant”), represented by Andrew J. Wilson, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309.  Respondent is Mattias Larsson (“Respondent”), Jullevagen 45, Gilbraltar 34578, GI.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <samuraijack.tv>, registered with Network Solutions, 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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 20, 2004; the Forum received a hard copy of the Complaint on July 22, 2004.

On July 21, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <samuraijack.tv> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 July 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 12, 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@samuraijack.tv 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 17, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <samuraijack.tv> domain name is identical to Complainant’s SAMURAI JACK mark.

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

3. Respondent registered and used the <samuraijack.tv> domain name in bad faith.

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

FINDINGS

Complainant, The Cartoon Network, LP, LLLP, has operated a 24-hour cable and satellite television network featuring original and classic animated cartoon series from Warner Bros., MGM and Hanna Barbera since 1992.  Complainant delivers its telecast to nearly 155 million households in more than ninety different countries around the world. 

One of Complainant’s most popular original animated series is SAMURAI JACK, which follows the adventures of a samurai warrior flung into the future to defend mankind from an evil wizard.  The series is broadcast in at least 89 different countries throughout the world.  Complainant has continuously and exclusively used the SAMURAI JACK trademark since at least as early as 2001 to identify its SAMURAI JACK television series and SAMURAI JACK branded merchandise.  Complainant thus owns valid and enforceable service mark and trademark rights in its SAMURAI JACK mark.  In recognition of these rights the United States Patent and Trademark office has issued Complainant nine registrations for marks that consist in whole or in part of the SAMURAI JACK mark (U.S. Reg. No. 2,576,706, issued June 4, 2002, Reg. No. 2,621,330, issued September 17, 2002, Reg. No. 2,697,377, issued March 18, 2003, Reg. No. 2,607,590, issued August 13, 2002, Reg. No. 2,800,964, issued December 30, 2003, Reg. No. 2,727,864, issued June 17, 2003, Reg. No. 2,764,988, issued September 16, 2003, Reg. No. 2,759,692, issued September 2, 2003, Reg. No. 2,743,623, issued July 29, 2003, Reg. No. 2,576,706, issued June 4, 2002).  Complainant also holds registration rights for its SAMURAI JACK mark in more than forty other countries, including the United Kingdom, France, Germany, Spain and Italy. 

Additionally, Complainant owns rights to the <samuraijack.com> domain name, which automatically redirects visitors to Complainant’s main website at <cartoonnetwork.com>.  Complainant also typically registers and uses domain names in the .tv top-level domain comprised of its television program titles and properties.

Respondent registered the <samuraijack.tv> domain name on August 11, 2003 and is currently using the domain name to host links and pop-up advertisements resolving to various pornographic sites.

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 that it has rights in the SAMURAI JACK mark through registration with the United States Patent and Trademark Office (U.S. Reg. No. 2,576,706, issued June 4, 2002, Reg. No. 2,621,330, issued September 17, 2002, Reg. No. 2,697,377, issued March 18, 2003, Reg. No. 2,607,590, issued August 13, 2002, Reg. No. 2,800,964, issued December 30, 2003, Reg. No. 2,727,864, issued June 17, 2003, Reg. No. 2,764,988, issued September 16, 2003, Reg. No. 2,759,692, issued September 2, 2003, Reg. No. 2,743,623, issued July 29, 2003, Reg. No. 2,576,706, issued June 4, 2002) and through continued use of its mark in commerce for the last 12 years.  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 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.

The domain name registered by Respondent, <samuraijack.tv>, is identical to Complainant’s SAMUARAI JACK mark because the only difference between the two is the addition of the top-level domain “.tv.”  See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks.

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

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain name that contains in its entirety the Complainant’s mark.  Due to Respondent’s failure to respond to Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name.

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”; see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)(holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is wholly appropriating Complainant’s mark to redirect Internet users to its own website advertising links to pornographic websites.  The Panel finds this use of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Wells Fargo & Co. v. Party Night Inc. and Peter Carrington, FA 144647 (Nat. Arb. Forum March 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; see also Microsoft Corp. v. Paul Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name; see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”.

Moreover, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <samuraijack.tv> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to 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 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.

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

Registration and Use in Bad Faith

Respondent is using the <samuraijack.tv> domain name to advertise links to pornographic websites.  The Panel finds Respondent’s appropriation of the disputed domain for purposes of advertising adult-related websites is evidence of bad faith registration and use.  See Wells Fargo & Co. v. Party Night Inc., 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; see also Microsoft Corp. v. Paul, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name; see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (“whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also 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.

Respondent’s domain name diverts Internet users wishing to search under Complainant’s well-known mark to Respondent’s commercial website through the use of a domain name identical to Complainant’s mark.  Respondent’s practice of diversion, through the use of an identical domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent.

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 <samuraijack.tv> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  August 30, 2004

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