The Complainant is Viacom International Inc. of New York, United States of America, represented by White O'Connor Fink & Brenner LLP, United States.
The Respondent is Mo-Team of London, Russian Federation.
The disputed domain name <nick-toons.net> is registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2009. On October 22, 2009, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On October 23, 2009, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 23, 2009.
The Center appointed John Katz QC as the sole panelist in this matter on December 1, 2009. 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.
The Complainant appears to have served the Complaint on the Respondent at the address it had then obtained for the Respondent. However, the Complainant has established to the Panel's satisfaction that the address was incorrect and having obtained from the Registrar Internet.bs Corp the correct address served the Complaint on the Respondent at its correct email address.
The Complainant is a United States corporation which offers under and by reference to a number of trade and service marks various goods and services which may loosely be called children's or primarily children's entertainment. It has done so since 1979. These range from the original Nickelodeon cable television channel to numerous derivatives which include the prefix or suffix “nick”, including Nick itself.
The Nickelodeon television channel is claimed to be one of the most watched television networks in the United States. It reaches some 287.6 million households in 162 territories worldwide.
Nickelodeon has a sister television channel which broadcasts animated television programmes under and by reference to the service mark NICKTOONS through the NICKTOONS network. This has been in use since 1991.
As part of its intellectual property portfolio the Complainant has registered trade and service marks for its various goods and services, most, if not all, of which carry the prefix or suffix “nick”.
The Complainant also has a domain name <nicktoons.com> that resolves to the web address “www.nicktoons.nick.com”.
The various trade and service marks are all in evidence. They demonstrate a wide ranging portfolio of registered and protected marks.
The website features many instances of the uses on line of these trade and service marks with drop down menus or click through features taking the viewer to other windows and associated sites.
What characterizes all of these is the animated or cartoon style of the features, no doubt derivative of the original Nickelodeon television channel. Many of the programmes appear to be cartoon style or animated whereas others are “live” or “real”.
As a brand the television channel appears to be commonly known in the children's vernacular as “Nick”. It is without doubt heavily oriented towards children and adolescents. Its reach worldwide extends to Europe, Russian Federation and Asia. Its name and reputation would, by now, have achieved widespread recognition.
It is clear that the Complainant has taken proper measures to protect and serve notice to the world of what it regards as its portfolio of trade and service marks.
The Respondent appears to be an entity located in the Russian Federation, although the contact details, address and international direct dialing prefix to the telephone number all suggest different countries of location.
The disputed domain name is associated with a website “www.nick-toons.net”. Screens from that website are in evidence. They are clearly, on any analysis, adult-oriented material. Moreover many of the offerings are cartoon or animated in style. They feature a number of well known cartoon characters including, inter alia, The Simpsons, presumably all without authorization or licence.
The Complainant has put in evidence a considerable amount of material which clearly demonstrates that the prefix or suffix “nick” when used in conjunction with television media or similar has come to be associated with it especially in the context of children's or adolescent's programmes and therefore as the proprietor of the various rights that flow from the trade and service mark registrations and at common law. This is especially so in relation to the children's and adolescent's markets which the Complainant exploits as it is entitled to do.
The Complainant contends that the Respondent, by adopting the same or similar mark, in its domain name, is using the Complainant's goodwill to attract business. Further, the Respondent is damaging the goodwill of the Complainant by eroding the value by dilution and also by unsavoury association.
Because the Respondent has defaulted it has not put before the Panel any evidence.
Nevertheless, the Respondent operates a live website associated with the disputed domain name and access to that website, a number of screens of which are in evidence, gives a clear indication of the activities of the Respondent. This enables the Panel to draw inferences and form a view as to the activities of the Respondent.
The website “www.nick-toons.net” proclaims that it is authored or created by Mr. Nick Meyers and features a number of cartoon characters engaging in adult activities. One could argue that the portmanteau word “nicktoons”, whether with or without a hyphen is intended as a play on the first name of Mr. Nick Meyers and the second syllable of the word “cartoon”.
There does not otherwise appear to be any evidence regarding the identity of the Respondent.
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of three elements must be established by a Complainant to warrant relief.
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to the relevant common law or registered trade marks or service marks.
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant has put on a wealth of evidence as to its trade and service marks and its website activities. A perusal of the website shows how extensive its promotional activities are and in conjunction with the trade marks NICKTOONS and NICK.
Further, a person who has or has had young children or adolescents would readily recognise the reputation and goodwill that has attached to any and all of the Complainant's marks. Then there are the films and television shows, all of which serve to enhance that reputation and resultant goodwill.
There can therefore be no room for argument but that the Complainant has established and continues to enjoy protectable goodwill in the trade and service marks including NICKTOONS.
The Respondent has registered as the disputed domain name effectively the same words save for a subtle and perhaps imperceptible difference. That is the insertion between the words “nick” and “toons” of a hyphen. The suffix identifier is <.net> but that is a matter of inconsequence as it is a distinction that relates to registration of domain names in relevant categories and would not be understood or focused upon by the vast majority of web users.
The inclusion of the hyphen is a matter of no consequence whatever. It may readily pass unnoticed by most people. It is not pronounced as a word and even if articulated when the disputed domain name is read out or spelled, it would not serve to operate to distinguish the disputed domain name as being other than likely to be associated with that of the Complainant.
The Complainant contends that the disputed domain name is identical with trade or service marks of its own, e.g.,NICKTOONS and NICKTOONS NETWORK (and its website “www.nicktoons.com”).
There is a considerable body of cases in relation to what constitutes the same or identical mark in disputes under the Policy, as well as in other systems1.
Applying established UDRP principles, if one looks at the disputed domain name from the viewpoint of whether or not when viewed as a whole it contains differences from the trademark so insignificant that they go unnoticed by the Internet users, it typically follows that the disputed domain name is identical or confusingly similar to the relevant mark to that for which the Complainant has protection.
Here it is readily apparent that the disputed domain name is confusingly similar. This must especially be so where the differences are of such a minor nature that to most people they would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
As to the second ground, as to whether there are rights or legitimate interests to the domain name possessed by the Respondent, the Respondent does not put forward in evidence of having any business or trading operation related to or that is commonly known as any of the trade marks in this case that might give rise to a right or legitimate interest.
Under paragraph 4(a)(ii) of the Policy a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
There is, however, no evidence on the record of any rights or legitimate interests that the Respondent may have.
It is difficult to comprehend in this Panel's view under the present circumstances what rights or legitimate interests the Respondent may pray in aid. Even if the argument were made by the Respondent (noting again the Respondent has defaulted in submitting a Response) that “nick-toons” may be a portmanteau word comprising “Nick” and “cartoons” there is no evidence that this fortuitous combination is just that rather than an attempt to trade off the Complainant's goodwill and seek to attract business by that means.
Additionally, the Respondent's website containing adult-oriented cartoon material also uses in some instances the same names as those of films or shows associated with the Complainant and to which the Complainant in its evidence has referred (e.g., Avatar).
As the Respondent has defaulted it has failed to put on any evidence, even if such did exist, to show that it has or can lay claim to a genuine interest or entitlement to use the particular word.
The Complainant has therefore made out its case under this heading. The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other panels' decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person who came across the disputed domain name may well assume that it was a domain name owned and operated by the Complainant, contrary to the fact. Alternatively any person would assume there was some link or association with the Complainant. The initial registration and use of the disputed domain name by the Respondent arose after the Complainant had secured its protection and served notice by its various trade and service mark registrations.
The Complainant also contends that it is active in protecting its rights from any third party which seeks not only to derive an unfair advantage by association (which may cause perhaps some damage by such association).
The actions of the Complainant to protect its marks have apparently helped in gaining wide recognition for its trademarks. The ineluctable conclusion to which this Panel is drawn on the present record is that the registration of the disputed domain name and its use by the Respondent has been and continues to be for the purposes of encroaching upon and benefiting from the Complainant's trademarks' clearly established goodwill. Moreover, the nature of the subject matter on the Respondent's website is such that the risk of harm to the Complainant is possible. This harm is exemplified in the case of websites that can be accessed by young children given the extent of computer literacy in the world today. Such accessing may result in harm to Complainant's trademark on the present record. The Complainant is entitled to prevent such activity in the present instance under the Policy.
There can therefore be but no argument persuasive to the Panel on the present record that this Respondent has registered and is using the disputed domain name in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
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 name <nick-toons.net> be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: December 3, 2009
1 In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant's mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.