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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pusher Corporation v. Scorpio Development; Registration Private, Domains By Proxy, LLC / Anh Duong

Case No. D2019-1260

1. The Parties

Complainant is Pusheen Corporation, United States of America (“United States”), represented by Focal PLLC, United States of America.

Respondent is Scorpio Development, United States; Registration Private, Domains By Proxy, LLC, United States / Anh Duong, United States.

2. The Domain Names and Registrar

The disputed domain names <ilovepusheen.com> and <pusheencafe.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 3, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 1, 2019.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 11, 2019. 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

Complainant is the owner of all rights, including copyrights and trademarks, in the name and character “Pusheen the Cat”. Pusheen was originally created as a character in a webcomic in 2010 and has since become an Internet celebrity with a significant following. In addition to a website dedicated to Pusheen at “www.pusheen.com”, Pusheen has a Facebook page with more than 9.1 million followers, a Twitter account with nearly 175,000 followers and an Instagram page with approximately 1.5 million followers.

Pusheen has also received substantial media coverage. Examples include “What’s Right Meou: Meet the Internet’s Most Famous Kitty, Pusheen the Cat,” Instyle Magazine, “Pusheen Launches New Collection Just for Women,” Forbes, “World’s first Pusheen café opening in Singapore,” CNN travel, and “Care Bears x Pusheen Collaboration Achieves Peak Cuteness,” Nerdist.

Pusheen is the subject of a book, “I Am Pusheen the Cat” published in 2013 and multiple Pusheen calendars. Pusheen also sells a wide variety of PUSHEEN-branded merchandise through licensees located in the United States and other countries, as well as through its own website, “shop.pusheen.com”.

Pusheen opened the first “Pusheen café” in Singapore to significant media attention, including from Business Insider.

Complainant owns Pusheen-related trademarks or service marks in several jurisdictions, including Australia, Canada, Mexico, the Russian Federation, Japan and the European Union. Additionally, Pusheen owns several trademark registrations for Pusheen-related marks in the United States, including:

United States Registration No. 4,439, 324 for PUSHEEN, registered November 26, 2013; and

United States Registration No. 5,143,331 for PUSHEEN, registered February 14, 2017.

The disputed domain names <pusheencafe.com> and <ilovepusheen.com> were registered on February 19, 2018 and July 1, 2017, respectively. Currently, the disputed domain names do not resolve to active websites.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names are confusingly similar to Complainant’s trademark, that Respondents have no rights or legitimate interest in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondents have no rights or legitimate interests with respect to the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Complainant requests the consolidation of the Complaint filed against multiple Respondents.

Complainant asserts, among other things, that the disputed domain names are under the common control and/or ownership of Respondents, as the Respondents appear to be related persons or to share a common control over the disputed domain names. According to the evidence provided by Complainant, Respondent Anh Duong referred to the intention to use “both of those pages” as a Complainant’s fan page. The Panel also notes that in the previous communications between the Parties, an individual related with the Respondent Scorpio Development mentioned that Respondent Anh Duong forwarded the email to its attention.

The Panel is satisfied by Complainant’s evidence that there are sufficient links between the Respondents to find that there is a common control for the purposes of the Policy, and that the consolidation would be fair and equitable to all Parties.

A. Identical or Confusingly Similar

Complainant contends that the disputed domain names incorporate the PUSHEEN mark in its entirety. The addition of the terms “ilove” and “cafe” do not prevent a finding of confusing similarity between the PUSHEEN mark and the disputed domain names.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Complainant contends that Respondents were undoubtedly aware of Complainant’s PUSHEEN mark when the disputed domain names were registered. Respondents registered the disputed domain names on February 19, 2018 (<pusheencafe.com>) and July 1, 2017 (<ilovepusheen.com>). Given Complainant’s use of the mark PUSHEEN since May 2010, the record indicates that Respondents were well aware of Complainant’s PUSHEEN mark when they registered the disputed domain names.

There is no evidence to support an argument that Respondents are commonly known by the disputed domain names. Complainant has never licensed or otherwise authorized Respondents’ use of the PUSHEEN mark in any domain names. Complainant notified Respondents that it objected to Respondents’ use of the PUSHEEN mark in the disputed domain names as well as the multiple social media accounts Respondents registered that use Complainant’s PUSHEEN mark.

There is no evidence in the record to support an allegation from Respondents that the disputed domain names are used in connection with Pusheen fan sites. The disputed domain names do not resolve to active websites. In fact, for a time the disputed domain name <ilovepusheen.com> redirected to Respondents’ commercial site at <meowsquishies.com> that sold Pusheen merchandise and therefore competed with Complainant’s own online store.

Accordingly, the panel finds that Complainant has shown Respondents have no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Respondents were clearly aware of Complainant’s PUSHEEN mark when they registered the disputed domain names. Respondents have not made use of the disputed domain names in connection with a bona fide business. In fact, Respondents redirected one of the disputed domain names to their own commercial website that offered Pusheen merchandize in competition with Complainant’s own online store. Currently, the disputed domain names do not resolve to any active websites. Respondents refused Complainant’s request that they transfer the disputed domain names to Complainant in return for reimbursement of their registration costs and transfer costs.

The Panel finds that the disputed domain names were registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <ilovepusheen.com> and <pusheencafe.com>, be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: July 31, 2019

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