DECISION

The Cartoon Network LP, LLLP v. Lawrance Day

Claim Number:  FA0403000249358

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 Lawrance Day (“Respondent”), 2200 Trinity Day, Dallas, TX 75006.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <samuraijack.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 March 25, 2004; the Forum received a hard copy of the Complaint on March 29, 2004.

On March 26, 2004, Innerwise, Inc. d/b/a ItsYourDomain.com confirmed by e-mail to the Forum that the domain name <samuraijack.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 April 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 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.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 April 30, 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 <samuraijack.com> domain name is identical to Complainant’s SAMURAI JACK mark.

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

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

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

FINDINGS

Complainant, Cartoon Network, has operated a 24-hour cable and satellite television network since 1992.  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.  Complainant has acquired various trademark registrations for the SAMURAI JACK mark, including Reg. Nos. 2,576,706, 2,621,330, 2,697,377, registered with the U.S. Patent and Trademark Office (“USPTO”) on June 4, 2002, September 17, 2002, and March 18, 2003, respectively.  All of these registrations are registered to Complainant care of Turner Broadcasting Company—Complainant’s parent company.

In July of 2001, Complainant, through its parent company registered <samuraijack.com>.  That registration laped on July 26, 2002.  Complainant was unaware of the registration’s lapse.

Respondent registered the <samuraijack.com> domain name on August 29, 2002.  On December 3, 2003, Complainant sent a cease and desist letter to Respondent.  The disputed domain name resolves upon a website providing links to dating services, online casinos, debt consolidation services, ticket services, and numerous other services.

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 rights in the SAMURAI JACK domain name as evidenced in its registration with the USPTO.  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 <samuraijack.com> domain name is identical to Complainant’s SAMURAI JACK mark because the only difference is the omission of the space between the words, which does not significantly distinguish the domain name from the mark.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff’d 152 F3d 920 (2d Cir. 1998) cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical).

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

Rights or Legitimate Interests

Respondent has failed to file a Response.  Therefore, the Panel may accept any reasonable assertions by Complainant as true.  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is wholly appproriating Complainat’s mark to expose Internet users to advertisments for dating services, online casinos, debt consolidation services, ticket services, and numerous other services.  The Panel finds that this use of a domain name identical to Complainant’s mark is neither a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

There is nothing in the record, including the WHOIS domain name registration informaion, to indicate that Respondent is otherwise known by the domain name, pursuant to Polucy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

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

Registration and Use in Bad Faith

Respondent registered the <samuraijack.com> domain name a month after Complainant’s registration lapsed.  The Panel infers that Respondent had predatory intent and finds bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).  See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name).

Respondent is wholly appropriating Complainant’s mark to lead Complainant’s customers to advertisments for dating services, online casinos, debt consolidation services, ticket services, and numerous other services.  The Panel finds that Respondent is intentionally creating a likelihood of confusion to attract Internet users for commercial gain, pursuant to Policy ¶ 4(b)(iv).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website).

The Panel finds that Complainant has fulfilled 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 <samuraijack.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) , Panelist

Dated:  May 14, 2004

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