Toon Boom Animation Inc. v. DANNY HAYES
Claim Number: FA1205001445950
Complainant is Toon Boom Animation Inc. (“Complainant”), represented by Leon Moubayed of Davies Ward Phillips & Vineberg LLP, Canada. Respondent is DANNY HAYES (“Respondent”), Somalia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toonboomanimation.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2012; the National Arbitration Forum received payment on May 28, 2012.
On May 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <toonboomanimation.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@toonboomanimation.com. Also on May 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1) Complainant owns the TOON BOOM mark with several trademark authorities, including those with the:
i. Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA716,535 June 12, 2008); and
ii. United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,282,750 registered August 21, 2007).
2) Complainant uses the TOON BOOM mark in connection with its computer animation software consultation, computer animation software development, and sales of computer animation software and services.
3) Respondent’s <toonboomanimation.com> domain name is confusingly similar to the TOON BOOM mark because the domain name uses the entire mark, while merely adding the descriptive term “animation” and the generic top-level domain (“gTLD”) “.com.”
4) Respondent was attempting to pass itself off as Complainant, while advertising two dimensional animation software through the domain name.
5) Respondent’s Web site page “About Us” is copied entirely from a corresponding page on Complainant’s Web site.
6) Respondent registered and used the disputed domain name in bad faith by attempting to pass itself of as Complainant for commercial gain.
7) Since receiving the cease and desist letter, Respondent has removed all content from the resolving Web site and is not using the domain name actively.
B. Respondent
The Panel notes that Respondent registered the disputed domain name on September 16, 2011.
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."
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
Complainant has rights in the TOON BOOM mark through its trademark registrations of the mark with the CIPO (e.g., Reg. No. TMA716,535 June 12, 2008), and with the USPTO (e.g., Reg. No. 3,282,750 registered August 21, 2007). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Further, the <toonboomanimation.com> domain name is confusingly similar to the TOON BOOM mark because the domain name uses the entire mark, while merely adding the descriptive term “animation” and the generic top-level domain (“gTLD”) “.com.” See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts and this Panel accepts, that Respondent has not been granted any license, permission, or authorization to use the TOON BOOM mark in any way. Complainant submits the WHOIS information for the disputed domain name, which shows that the registrant of the <toonboomanimation.com> domain name is “Danny Hayes.” The Panel notes that Respondent has not come forward with any evidence of it being commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, and complainant did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues, and this Panel finds, that Respondent previously used the disputed domain name in a way that precludes a finding of rights and legitimate interests. Respondent apparently appropriated several sections of Complainant’s Web site, including substantial portions of the “about us” section, to attempt to trick Internet users into believing Respondent’s Web site is owned by Complainant. The evidence also shows that Respondent used the disputed domain name to promote its directly competing two dimensional animation software. The Panel finds that Respondent’s prior attempts to create confusion as to Complainant’s involvement with the resolving website, as well as Respondent’s marketing of a competing product and services, do not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <toonboomanimation.com> domain name under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Thus, Complainant has satisfied Policy ¶ 4(c)(ii).
Complainant’s registrations for the TOON BOOM mark existed well before the registration of the disputed domain name. The Panel infers that Respondent had knowledge of those rights, as it copied several sections of Complainant’s corresponding Web site. Thus, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Complainant has provided evidence that Respondent previously used the disputed domain name to promote Respondent’s competing two dimensional animation products and services, while creating confusion as to Complainant’s role with the resolving Web site. Complainant has also provided evidence that Respondent copied portions of its website to enhance Internet user confusion. It can be inferred that Respondent gained commercially from the domain name and resolving Web site through the promotion and sale of its products and services. Thus, this Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toonboomanimation.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 5, 2012
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