The Cartoon Network LP, LLLP v. Mike Morgan Case No. D2005 1132
1. The Parties The Complainant is The Cartoon Network LP, LLLP of Atlanta, Georgia, United States of America, represented by Alston & Bird, LLP of United States of America.
The Respondent is Mike Morgan of Topsail, Newfoundland, Canada.
2. The Domain Names and Registrars The disputed domain names , , , , , , ,
, , , , , and are registered with eNom. The disputed domain name is registered with Domainsite.com.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2005. On November 2 and November 11, 2005, the Center transmitted by email to eNom and Domainsite.com a request for registrar verification in connection with the domain names at issue. On November 4 and 15, 2005, eNom transmitted to the Center its verification response referring to the current contact information at which confirmed that: (i) the registrant for is ‘Jan Wong Pakinski’; (ii) the registrant for , , , is ‘Wen Jung Chen’; (iii) the registrant for is Web Management S.A.; (iv) the registrant for , , , ,
, and is ‘M. Morgan’; and (v) the registrant for is ‘Ed Cabby’; and in each case provided the contact details for the administrative, billing and technical contact. On November 8, 2005, Domainsite.com transmitted to the Center its verification response confirming the registrant of is ‘mik mor’ and providing the details for the administrative, billing and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 18, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 22, 2005. The Respondent filed a response with the Center in the form of an email dated December 2, 2005. The Center informed the Complainant of its right to seek a suspension of the proceeding, and on receiving no answer from the Complainant so advised the Respondent and asked for confirmation that the Respondent had nothing to add to his communication of December 2, 2005. The Respondent replied in a further email dated December 16, 2005.
The Center appointed David J.A. Cairns as the Sole Panelist in this matter on December 22, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background The Complainant operates a 24-hour cable and satellite television network under the CARTOON NETWORK trademark that features original animated series and other programmes (hereafter “Cartoon Network”). The animated programming and programming blocks featured on the Cartoon Network include the television series ‘Hi Hi Puffy Amiyumi’, ‘The Life and Times of Juniper Lee’, ‘Megas XLR’, ‘The Venture Bros.’, ‘IGPX: Immortal Grand Prix’ and the programming block ‘Miguzi’.
The Complainant is the owner of trademark registrations with the United States Patent and Trademark Office for the following service marks:
(i) Registration No. 2,554,469 and No. 2,176,023 (and the Complainant also claims to own registrations No. 1,819,542 and No. 1,798,899 presently appearing in the name of Turner Broadcasting System, Inc) for the service mark CARTOON NETWORK (in three cases with a design feature, and subject to disclaimers) and recording a first use of the service mark in commerce on October 1, 1992.
(ii) Registration No. 2,889,277 for the service mark IGPX and recording a first use in commerce on August 4, 2003.
(iii) Registration No. 2,977,411 for the service mark VENTURE BROS. and recording a first use in commerce on August 22, 2004.
The Complainant has also filed numerous applications for further trademarks with the United States Patent and Trademark Office including further applications for CARTOON NETWORK, IGPX, VENTURE BROS., CN CARTOON NETWORK, HI HI PUFFY AMIYUMI, THE LIFE AND TIMES OF JUNIPER LEE, MEGAS XLR, and MIGUZI.
The Complainant operates an interactive website under the domain name which features a number of interactive games, programme schedules, downloadable artwork, video clips, and allows access to an on line store for the purchase of merchandise. The Complainant also owns the domain name which hosts a Spanish language version of the Cartoon Network website.
Further, the Complainant registers and uses domain names comprising its television programme titles. It owns the following domain names: , , , , , , ,
, , , , , , , , , , and , among others. Viewers accessing these domain names are automatically redirected to the particular portion of the Cartoon Network website where information, games, and merchandise relating to each particular programme are available.
The Complainant sent the Respondent demand letters dated June 17, 2005 and July 25, 2005 asserting its trademark rights and demanding, inter alia, the transfer of various domain names (including all the disputed domain names except
and ) from the Respondent to the Complainant.
The Respondent has been the owner of all of the disputed domain names. At the time of the commencement of this administrative proceeding the Respondent denies current ownership of , , , , , and .
5. Parties’ Contentions A. The Complainant The Complainant states that the Cartoon Network is currently seen in 88 million homes within the United States, and in 160 countries around the world. The Cartoon Network website averages more than 460 million hits per month, making it one of the Internet sites with the most traffic, particularly amongst children aged six to 14 years.
The Complainant states that the Respondent intentionally registered and used the disputed domain names comprising part of or a spelling variation of the names of the Complainant’s programmes.
The Complainant states that all the disputed domain names are still owned by the Respondent, notwithstanding the recent changes to registration records. It refers in this regard to the continued association of the Respondent with the new registration details for one of the disputed domain names, and also to the fact that neither the content of the websites nor the associated registrars have changed since the purported transfers. It concludes that the Respondent’s purported transfers of certain of the disputed domain names are merely an attempt to evade the enforcement of the Complainant’s rights under the Policy.
The Complainant states that it owns valid and enforceable rights in its registered trademarks and pending registered applications, which it acquired well before the dates that the Respondent registered and began to use the disputed domain names. It acknowledges that it does not yet own trademark registrations for every trademark relied upon, but states that registration is not a prerequisite to bring a claim under the Policy. The Complainant states that where it relies on unregistered trademarks, then it has used those trademarks in commerce for substantial periods of time, as evidenced by its pending applications for registrations of those trademarks, and by the other advertising and promotional material submitted with the Complaint. Further, the Complainant’s trademarks are highly distinctive and are connected with the Complainant by the viewing public. The Complainant states that the disputed domain names are nearly identical to and are obvious misspellings of the Complainant’s trademarks or portions thereof, and will be associated by consumers with the Complainant. Therefore, the first element of the Policy is satisfied.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names. It states that the Respondent is not affiliated with the Complainant, nor has the Respondent ever been authorised, licensed, or permitted to use the Complainant’s trademarks in connection with a domain name or otherwise. It also refers as evidence of lack of rights or legitimate interests in the disputed domain names to the following facts: (i) the Respondent’s registration of spelling variations of the Complainant’s trademarks; (ii) the content of the Respondent’s websites and the WHOIS registration records from which it is apparent the Respondent is not generally known by these names; (iii) the use of the disputed domain names to direct Internet users to servers which bear no relationship to the Complainant’s trademarks; and (iv) the Respondent is using the disputed domain names exclusively for commercial purposes in that the Respondent generates commission revenue by redirecting Internet users to the various sites linked to the Respondent’s websites through ‘affiliated programs’ offered by the linked sites.
The Complainant also states that the Respondent registered and is using the disputed domain names in bad faith. The Complainant in this regard refers to the following circumstances: (i) the Respondent was aware of the Complainant’s trademarks at the time of registration of the disputed domain names because of the Complainant’s extensive promotion of and the widespread recognition of its trademarks and the Complainant refers to various facts confirming the Respondent’s knowledge; (ii) the Respondent is using the goodwill associated with the Complainant’s trademarks to divert users looking for the Complainant’s website for commercial gain via referral fees; (iii) the Respondent uses the disputed domain names to link to adult orientated material, including gambling and on line dating sites, which is particularly injurious because the Complainant’s target audience consists primarily of children; (iv) on receiving demand letters from the Complainant, the Respondent attempted to evade responsibility by conducting sham transfers of several of the disputed domain names to purported third parties in order to prevent previous adverse decisions against the Respondent from being used in this proceeding. It states that the Respondent has in fact engaged in a pattern of registering domain names derived from the trademarks of others, and then changing the WHOIS information associated with those names to avoid responsibility for his actions.
The Complainant refers to numerous previous UDRP decisions in support of its contentions.
B. The Respondent The Respondent’s Response took the form of two emails. An email of December 2, 2005, reads as follows:
I am no longer in possession of them and have not been for some time.
Please note I have no interest in disputing the complaint.
However, I can only agree to transfer names to complainant that I am actually in possession of:
puffyamiyummi.com (in redemption)
I believe the above 8 names are registered at Enom/domainsite and will request they be transferred to the complainant.
At no time, have I received a letter from the complainant requesting I transfer the names to them.
I hope the complainant will agree to this and have any proceedings against me terminated. I am willing to cooperate with the complainant the best I can and if so wishes can contact me at this email address or by telephone… or by mail…
The Respondent’s email of December 16, 2005, reads as follows:
“I have already indicated I am willing to hand over names that are in my control and request no judgement be made as have agreed to transfer names to complainant.
I have already indicated I am not the owner of the following names and request my name be removed in any judgement deemed.
6. Discussion and Findings The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate. In particular, paragraph 4(a) of the Policy sets out three elements to be proved by the Complainant to be entitled to the transfer of the disputed domain names.
As a preliminary point, the Panel notes that the Center advised the Respondent in an email of December 13, 2005, that his email of December 2, 2005, would be treated as his Response unless a further communication was received by December 16, 2005. There was a further communication on December 16, 2005, but as this confirms the substance of the earlier email, the Panel proposes to consider the Respondent’s emails of December 2, 2005 and December 16, 2005 collectively as his Response in accordance with the Rules (while noting that the Response does not provide the information required by paragraph 5(b) of the Rules, and particularly the certification required by paragraph 5(b)(viii)).
This proceeding relates to multiple domain name registrations. The Rules (paragraph 3(c)) provide, “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Respondent is defined (paragraph 1) as meaning “the holder of a domain name registration against which a Complaint is initiated”. Accordingly, there is a preliminary question of whether the Respondent is currently the holder of all of the disputed domain names.
The Respondent acknowledges that he is the holder of eight of the disputed domain names, namely: ,
, , , , , and (hereafter the “Eight Acknowledged Domain Names”). However, the Respondent denies that he currently holds the registrations of six of the disputed domain names, namely: , , , , , (hereafter the “Six Denied Domain Names”). The registration records for the Six Denied Domain Names state that they are presently held by Wen Jung Chen with contact details in Taiwan (four domains), and Jan Wang Polanski with contact details in Hong Kong and Web Management S.A. with contact details in Panama (one domain each). The Complainant asserts that the Six Denied Domain Names are still owned by the Respondent, and that these transfers were fictitious and done “in an effort to avoid liability for his action and to impede [the Complainant’s] ability to recover the Disputed Domain Names”.
The evidence in favour of the Complainant’s contention in respect of the Six Denied Domain Names can be summarised as follows: (i) the Respondent used to own the Six Denied Domain Names; (ii) the transfer of the Six Denied Domain Names occurred after the Complainant sent demand letters to the Respondent; (iii) the content of the websites and the associated registrars did not change with the purported transfers (although there had been some changes by the date the Panel viewed the Six Denied Domain Names); (iv) virtually all of the disputed domain names (including those purportedly transferred and those that still list the Respondent as registrant) resolve to Web pages using the same colour schemes and page layouts for the search engines offering identical or substantially similar links; and (v) one of the purported transfers (that of to Ed Cabby) includes an email address clearly associated with the Respondent.
Against the Complainant’s contention are: (i) the actual registrations identifying third parties as the holders of the Six Denied Domain Names; (ii) the registrations for the Six Denied Domain Names disclose no apparent association with the Respondent (the Respondent acknowledges he still owns notwithstanding the purported transfer); and (iii) the Respondent’s express statement that he is no longer the owner of the Six Denied Domain Names.
The burden of proof is on the Complainant to demonstrate that the Respondent is the holder of all domain names included in the Complainant. The Panel finds that the evidence in this case establishes that the Respondent attempted to frustrate the Complainant’s rights under the Policy by the registration of transfers, but cannot conclude that these transfers are merely fictitious and not to genuine persons. The absence of significant changes in the content of the websites is consistent with a new owner taking the sites over as ‘going concerns’, in order to use and profit from the sites in the same manner as the Respondent did previously. Accordingly, the Complaint is dismissed in respect of , , , , , and .
The Panel notes that the Complainant could have prevented the transfer of the Six Denied Domain Names by the Respondent by immediately commencing an administrative proceeding in order to lock the domain name registrations (paragraph 8 of the Policy). It is common practice for complainants to make a demand for transfer before commencing an administrative proceeding, but the risk in this course where the respondent is the holder of multiple domain names is that the respondent might, as here, dispose of the domain names on receipt of the complainant’s notice and put the complainant to the cost and inconvenience of having to pursue individually the multiple new owners.
The requirement in paragraph 3(c) of the Rules that a complaint involving multiple domain names is only possible where the domain names are registered to a single respondent is not a mere formality and is essential to the fairness and integrity of the administrative proceeding. The Panel has an obligation to ensure that each Party “is given a fair opportunity to present its case” (paragraph 10(b) of the Rules). It would be a grave breach of this duty to make an order for the transfer of a domain name in a proceeding where the registered owner, although notified of the proceeding, has not been named as a respondent and therefore does not submit any response.
The Response concedes ownership of the remaining Eight Acknowledged Domain Names, registered in the names of ‘M. Morgan’, ‘mik mor’ and ‘Ed Cabby’. The Response also states that the Respondent does not wish to contest the Complaint (“I have no interest in disputing the complaint”), consents to their transfer (“I am willing to hand over the names that are in my control”) and also requests that “no judgment be made as have agreed to transfer names to complainant”.
The Complainant has not accepted the Respondent’s implicit offer of a settlement. Accordingly, there is no settlement agreement, and termination of the proceeding on the grounds of settlement pursuant to paragraph 17 of the Rules has no application.
A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams Sonoma, Inc. v. EZ Port, WIPO Case No. D2000 0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000 0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003 0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000 1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke PhilipsElectronics N.V. v. Manageware, WIPO Case No. D2001 0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone SFR v. Karen, WIPO Case No. D2004 0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003 0745).
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems’ proved the three elements of paragraph 4(a) of the Policy.
However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams Sonoma, Inc. v. EZ Port, WIPO Case No. D2000 0207).
The final question is whether the Respondent in this case has consented to transfer the Eight Acknowledged Domain Names, or whether the Response amounts to no more than an offer to settle under paragraph 17 of the Policy conditional on the Complainant’s acceptance and the consequent termination without a Panel decision. The Respondent states: “I hope the complainant will agree to this [transfer of the disputed domain names] and have any proceedings against me terminated”, and “I request no judgment be made as have agreed to transfer names to Complainant”. The Panel finds that the Respondent in his statements was merely indicating a preference for a settlement in accordance with paragraph 17 of the Rules, but the consent to transfer was not made conditional on the Complainant’s agreement to this course.
Accordingly, on the basis of the Respondent’s consent to transfer and the reasons already explained, the Panel orders the transfer of the Eight Acknowledged Domain Names to the Complainant.
7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names ,
, , , , , and be transferred to the Complainant.
For all the foregoing reasons, the Complaint is denied in respect of the disputed domain names , , , , , and .