Sanrio Company, Ltd. and Sanrio, Inc. v. Protected Domain Services - Customer ID: NCR-3370576 and Customer ID: NCR-3370573
Claim Number: FA1207001454798
Complainant is Sanrio Company, Ltd. and Sanrio, Inc. (“Complainant”), represented by Linda Joy Kattwinkel of Owen, Wickersham & Erickson, P.C., California, USA. Respondent is Protected Domain Services - Customer ID: NCR-3370576 and Customer ID: NCR-3370573 (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hellokittysell.com> and <hellokittyshoponline.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2012; the National Arbitration Forum received payment on July 23, 2012.
On July 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hellokittysell.com> and <hellokittyshoponline.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@hellokittysell.com and postmaster@hellokittyshoponline.com. Also on July 25, 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 August 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Since 1960, Complainant Sanrio Company, Ltd. has been engaged in the business of manufacturing, distributing and selling products for use by children and young adults. Since 1976, Sanrio, Inc. has been the exclusive United States distributor of the products of Sanrio Company, Ltd. and is currently the exclusive United States master licensee of the rights in and to Sanrio Company, Ltd.'s trademarks and copyrights
Complainant owns numerous trademark registrations for the HELLO KITTY mark, including United States Patent and Trademark Office ("USPTO") (Reg. No. 1,279,486 registered May 29, 2004); and Canadian Intellectual Property Organization (“CIPO”) (Reg. No. TMA335052 registered December 11, 2002).
The <hellokittysell.com> and <hellokittyshoponline.com> domain names are confusingly similar to the HELLO KITTY mark.
The disputed domain names contain the entire HELLO KITTY mark. The domain names merely add the generic terms “sell,” “shop,” and/or “online,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has not been commonly known by the disputed domain names.
Respondent is using the disputed domain names to sell counterfeit goods of Complainant.
Respondent registered and is using the disputed domain name in bad faith.
Respondent registered the <hellokittysell.com> and <hellokittyshoponline.com> domain names on July 30, 2009 and September 30, 2010, respectively and had actual and constructive knowledge of Complainant’s rights in the disputed domain names.
Respondent is using the disputed domain name to sell counterfeit goods, thereby disrupting Complainant’s legitimate business.
Respondent’s use of the HELLO KITTY mark in the sale of counterfeit goods is likely to confuse consumers into believing that they are dealing with Complainant’s legitimate company when they are not, thus resulting in commercial gain for Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has and had trademark rights in HELLO KITTY at all times relevant to this proceeding by virtue of its registration of such mark with a national trademark authority and otherwise.
Respondent is not commonly known by either of the at-issue domain names.
Respondent was aware of Complainant and the HELLO KITTY trademark at the time it registered the at-issue domain names.
Respondent is not authorized to use Complainant’s HELLO KITTY trademark.
The at‑issue domain names reference websites which market, promote, and/or sell counterfeit goods which are either copies of goods offered by Complainant or goods containing Complainant trademarked and copyrighted intellectual property.
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.”).
As a preliminary matter, the Panel finds that the same real-party-in-interest registered each of the two at‑issue domain names. Therefore, including the at‑issue two domain names in a single UDRP proceeding is proper pursuant to Rule 3(c).
Each of the at‑issue domain names is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes that it has rights in the HELLO KITTY mark for the purposes of Policy ¶4(a)(i) by showing that it has registered the mark with several trademark authorities, including the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Both domain names contain the HELLO KITTY mark, absent the space between the terms, while adding the generic terms “sell,” “shop,” and/or “online” and appending the top level domain name, “.com.” These alterations of Complainant’s mark are insufficient to remove the disputed domain names from the realm of confusing similarity. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain names are confusingly similar to the HELLO KITTY mark under Policy ¶ 4(a)(i).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) et seq. circumstances present indicating that Respondent has rights or interests in either of the at‑issue domain names.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
There is no evidence that Respondent has ever been legitimately known by the disputed domain names or the HELLO KITTY mark; WHOIS information for the disputed domain names identifies the registrant as “Protected Domain Services - Customer ID: NCR-3370576 and Customer ID: NCR-3370573” respectively. Therefore, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Respondent is using the disputed domain names to sell counterfeit versions of Complainant’s goods. Respondent operates an online storefront referenced by the at‑issue domain names that markets and sells unauthorized and/or counterfeit goods under the HELLO KITTY trademark. Using a domain name to sell counterfeit goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
Respondent registered and uses each of the at-issue domain names in bad faith.
As mentioned above with regard to rights or interests, Respondent is using the disputed domain name to sell counterfeit goods. Using the domain name in this manner disrupts Complainant’s legitimate business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Furthermore, Respondent’s blatant creation of consumer confusion as to the source of the goods offered on its websites by marketing and selling counterfeit goods bearing the HELLO KITTY trademark and copyrighted intellectual property, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Finally, Respondent registered the <hellokittysell.com> and <hellokittyshoponline.com> domain names on July 30, 2009 and September 30, 2010 respectively, well after Complainant established rights in its HELLO KITTY trademark. In light of the fact that Respondent uses the domain names to trade on Complainant’s goodwill by marketing counterfeit goods on the at‑issue domain names’ affiliate websites, there can be no doubt that Respondent had actual knowledge of Complainant’s rights in the disputed domain names. Those rights are clearly what motivated Respondent to register and use the at-issue domain names. Therefore, Respondent’s knowledge of Complainant and its HELLO KITTY mark at the time it registered the domain names additionally urges that Respondent registered and is using the disputed domain names 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hellokittysell.com> and <hellokittyshoponline.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 19, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page