Treasure Studio, Inc. v. Juan Pablo Carrasco Plate / Mundoark
Claim Number: FA2006001902025
Complainant is Treasure Studio, Inc. (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, United States. Respondent is Juan Pablo Carrasco Plate / Mundoark (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cocomelonnurseryrhymes.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2020; the Forum received payment on June 29, 2020.
On June 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cocomelonnurseryrhymes.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 June 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2020 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@cocomelonnurseryrhymes.com. Also on June 30, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below. In response, Complainant also sent an email to the Forum, see below.
On July 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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" 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 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
Complainant states that it is engaged in the production of children’s education and entertainment content, distributed on its Cocomelon YouTube channel. Complainant’s content features 3D animation, a recurring cast of animated children, adults, and animals, and songs and nursery rhymes. Complainant’s mission is to engage families with entertaining and educational content that makes universally-relatable preschool moments fun. With a remarkable 2.5 billion views from around the world each month, Complainant’s YouTube channel the second-most watched YouTube channel in the world, and the first-most watched YouTube channel in the United States. Complainant has rights in the COCOMELON mark based upon its registration in the United States on Aug. 6, 2019.
Complainant alleges that the disputed domain name is confusingly similar to its COCOMELON mark because it wholly incorporates the mark, merely adding the generic words “nursery rhymes” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not authorized to use Complainant’s COCOMELON mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant and confuse unsuspecting Internet users. The resolving website offers videos to teach the alphabet; the titles of the videos include Complainant’s COCO MELON mark. The resolving web site has a tab titled “donations”.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COCOMELON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to the Forum Respondent states, in pertinent part:
… I bought an internet domain that is the name of a YouTube channel. I found that name because I saw that it was highly searched on google and I saw that it was available, nothing prevented me from buying it.
… I am not sure that a youtube channel can be considered a brand, since on youtube a name is like a nickname, the channels can have any name and they can change their name at any time, a name on a platform that gives so much freedom I do not know if it can be considered a brand. If I am wrong and if it can be considered a brand then I am sorry if this has affected you.
… my intention when buying [the disputed domain name] was not to sell it later, the name was I bought to use it, for that reason I did not try to contact anyone to sell it.
… I am willing to sell you the domain at a price of 1000 dollar
C. Additional Submissions
In its email to the Forum, Complainant alleges that Respondent’s offer to sell the disputed domain name is further evidence of bad faith.
Complainant has rights in the mark COCO MELON dating back to Aug, 6, 2019.
The disputed domain name was registered on June 9, 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website offers videos to teach the alphabet; the titles of the videos include Complainant’s COCO MELON mark. The resolving web site has a tab titled “donations”.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Respondent is not sure that a YouTube channel can be a brand. It is evident that a brand (trademark) can be used to name a YouTube channel, and such is the case here.
The disputed domain name wholly incorporates Complainant’s COCOMELON mark, simply adding the generic words “nursery rhymes” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark per ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i)”). The Panel therefore find that the <cocmelonnurseryrhymes.com> domain name is confusingly similar to Complainant’s COCOMELON mark under Policy ¶ 4(a)(i).
Respondent is not licensed or authorized to use Complainant’s COCOMELON mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Here, the WHOIS information of record notes “Juan Pablo Carrasco Plate / Mundoark”” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The resolving website offers videos to teach the alphabet; the titles of the videos include Complainant’s COCO MELON mark. This misleads consumers who may believe that the resolving website is affiliated with Complainant. Further, the resolving website has a tab titled “donations”, indicating that Respondent expects some commercial gain from its website. Use of a disputed domain name to pass off as a complainant and redirect Internet traffic does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Thus, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent offered to sell the disputed domain name for an amount in excess of out of pocket costs. This is normally sufficient to establish bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). However, this provision of the Policy applies when Respondent acquired the domain name primarily for the purpose of selling it for an amount in excess of out of pocket costs. See Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs). The Panel is not convinced that Respondent acquired the disputed domain name primarily in order to sell it. In any event, for the reasons given below, the Panel need not rule on this matter.
Respondent admits that it acquired the disputed domain name because of the popularity of Complainant’s YouTube channel. However, it has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent attempts to confuse Internet users as to the source of its offers and to attract users to its own website for commercial gain. Bad faith may be found under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cocomelonnurseryrhymes.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 23, 2020
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