DECISION

Hanna-Barbera Productions, Inc. v. Retroactive Media a/k/a Domains for Sale

Claim Number:  FA0312000220038

PARTIES

Complainant is Hanna-Barbera Productions, Inc., 4000 Warner Blvd., Burbank, CA 91522 (“Complainant”) represented by J. Andrew Coombs.  Respondent is Retroactive Media a/k/a Domains for Sale, 2218 Main St., Northampton, PA 18067 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <jetsonssex.com>, <jetsonshentai.com>, <flintstonesporn.com>, <flintstonessex.com>, and <flintstoneshentai.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his 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 December 16, 2003; the Forum received a hard copy of the Complaint on December 17, 2003.

On December 19, 2003, Enom, Inc. confirmed to the Forum that the domain names <jetsonssex.com>, <jetsonshentai.com>, <flintstonesporn.com>, <flintstonessex.com>, and <flintstoneshentai.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 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@jetsonssex.com, postmaster@jetsonshentai.com, postmaster@flintstonesporn.com, postmaster@flintstonessex.com, and postmaster@flintstoneshentai.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 , January 26, 2004, 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 <jetsonssex.com>, <jetsonshentai.com>, <flintstonesporn.com>, <flintstonessex.com>, and <flintstoneshentai.com> domain names are confusingly similar to Complainant’s FLINTSTONES and THE JETSONS trademarks.

2. Respondent does not have any rights or legitimate interests in the <jetsonssex.com>, <jetsonshentai.com>, <flintstonesporn.com>, <flintstonessex.com>, and <flintstoneshentai.com> domain names.

3. Respondent registered and used the <jetsonssex.com>, <jetsonshentai.com>, <flintstonesporn.com>, <flintstonessex.com>, <flintstoneshentai.com> domain names in bad faith.

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

FINDINGS

Complainant has numerous registrations for its FLINTSTONES mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. Nos. 936474, 1656968, 1909814) registered as early as June 27, 1972.  Complainant also owns the registration for the <flintstones.com> domain name.

Complainant also has numerous registrations for its THE JETSONS mark with the USPTO (e.g. Reg. Nos. 1561497, 2102952, 2073792, 2102954, 2122994, 2255830), registered as early as October 17, 1989.  Complainant also owns the registration for the <jetsons.com> domain name.

Complainant’s FLINTSTONES and THE JETSONS marks have attained goodwill and fame through continuous use.

Respondent registered the disputed domain names <jetsonssex.com>, <jetsonshentai.com>, <flintstonessex.com>, and <flintstoneshentai.com> on August 29, 2003.  Respondent registered <flintstonesporn.com> on April 5, 2002.  Respondent allegedly uses the names to promote the distribution of pornographic content.

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 federal trademark rights in the FLINTSTONES and THE JETSONS marks through registration with the USPTO and continuous use. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 disputed domain names, <flintstonesporn.com>, <flintstonessex.com>, and <flintstoneshentai.com >, each contain Complainant’s FLINSTONES mark in its entirety and merely adds a generic term and top-level domain names.  The word, “hentai,” is the Japanese word for perversion and is widely-used on the Internet to refer to sexually-explicit content.  The additions of such generic terms fail to create distincitions between the domain names and the famous FLINSTONE mark.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy”); 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); see also Arthur Guinness Son & Co. Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name” and thus Policy ¶ 4(a)(i) is satisfied).

Regarding the remaining domain names, <jetsonssex.com> and <jetsonshentai.com>, they have merely omitted the word, “the,” from Complainant’s famous THE JETSONS mark, and have added generic terms and top-level domain names to the remaining portion of Complainant’s mark.  Like the above domain names, distinctiveness has not been demonstrated by the minimal additions and subtractions to the famous THE JETSONS mark.  See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY SHOP trademark).

Complainant has successfully established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint, which allows the Panel to base its decision solely on the allegations set forth in the Complaint, and construe Respondent’s absence as evidence that it has no rights, nor legitimate interests in the disputed domain names.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

In addition, Complainant has asserted that Respondent is using the disputed domain names to direct Internet users to pornographic material, which manifests neither a bona fide offering under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” evidencing that Respondent had no rights or legitimate interests in the disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also McClatchy Mgmt. Servs., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (finding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

Furthermore, there is no evidence to suggest that Respondent has ever been commonly known by the disputed domain names.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant’s marks are famous and widely known in the public mind, providing confidence in the Panel’s belief that Respondent had knowledge of Complainant’s rights in the FLINTSTONES and THE JETSONS marks prior to registering the infringing domain names.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also 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 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").

Furthermore, Respondent has used the disputed domain names to host pornographic material, which can be evidence of bad faith in itself.  See Wells Fargo & Co. v. Party Night Inc. & 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); 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); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that the “association with a pornographic web site can itself constitute bad faith”).

Therefore, Complainant has also satisfied 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 <jetsonssex.com>, <jetsonshentai.com>, <flintstonesporn.com>, <flintstonessex.com>, and <flintstoneshentai.com > domain names be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  February 9, 2004

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