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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol
Case No. D2001-0184
1. The Parties
The Complainants are: Time Warner Entertainment Company, L.P., a limited partnership organized under the laws of the state of Delaware, with its principal place of business in New York, New York, USA. and Hanna-Barbera Productions, Inc., a division of Time Warner Entertainment Company, L.P., incorporated in Delaware with its principal place of business at 15303 Ventura Boulevard, Suite 1400, Sherman Oaks, California 91403, USA. The Complainants are represented in this proceeding by Dennis L. Wilson, Esq., of Keats McFarland & Wilson LLP, 9720 Wilshire Boulevard, Penthouse Suite, Beverly Hills, California 90212, USA.
The Respondents are John Zuccarini, Cupcake Patrol and The Cupcake Patrol, whose address is 957 Bristol Pike, Suite D-6, Analusia, PA 19020, USA. The Respondents are represented by Christopher A. Grillo, Esq., Law Office of Christopher A. Grillo, 1 East Broward Blvd, 7th Floor, Fort Lauderdale, Florida 33304, USA.
2. The Domain Names and Registrar
The domain names in dispute are: "harypotter.com", "looneytoones.com", and "scobydoo.com".
The registrar for the disputed domain names is: Core Internet Council of Registrars (CORE), WTC ll, 29 route de Pre-Bois, CH-1215, Geneva, Switzerland 1215 CH.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on February 2, 2001. On February 5, 2001, the Center requested that the registrar CORE check and report back on the registrant for the domain names "harypotter.com", "looneytoones.com" and "scobydoo.com". On February 9, 2001, CORE reported to the Center that the registrants were the Respondents, i.e., John Zuccarini, Cupcake Patrol and The Cupcake Patrol.
On February 15, 2001, the Center pointed out to the Complainants that they had specified a three person panel while paying the fee for a single member panel and asked that the Complainants clarify their preference. On the same day the Complainants stated their preference for a single member panel.
On February 20, 2001, the Center forwarded a copy of the Complaint to the Respondents by registered mail and by e-mail and this proceeding officially began. Respondents' Response was filed with the Center on March 10, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on March 29, 2001, and the Center appointed the Panel on March 29, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by April 11, 2001.
4. Factual Background
The Complainants own the Looney Tunes family of cartoon characters that include Bugs Bunny, Wile E. Coyote and Daffy Duck. The Complainants have licensed the use of their Looney Tunes characters for the manufacture and sale of a variety of goods such as clothing and toys. The Respondents registered the disputed domain name "looneytoones.com" on February 18, 2000.
Scooby-Doo is the name of a cartoon great dane dog created by the Complainants' Hanna-Barbera division in 1969. Complainants state that as a TV show Scooby-Doo ran some eighteen years, and that it continues to be broadcast in syndication. The name has been licensed by the Complainants for a variety of merchandising. The Respondents registered the disputed domain name "scobydoo.com" on November 10, 1999.
Harry Potter is a central character in a series of books written by the Scottish writer J. K. Rowling. Ms. Rowling has licensed, inter alia, movie and merchandising rights to the Complainants, which is the Complainants' basis for contesting the "harypotter.com" (registered on April 13, 2000) domain name in this proceeding.
It does not appear from the record that the Complainants ever tried to convince the Respondents to turn the disputed domain names over to the Complainants. Instead, the Complainants have had recourse directly to this proceeding.
5. The Parties' Contentions
- The Looney Tunes characters are famous because they have appeared in over one hundred copyrighted cartoons, television specials, and animated motion pictures produced and distributed by the Complainants.
- The Complainants own many trademarks and other intellectual property based on the Looney Tunes characters.
- All legal rights in the Scooby-Doo character are owned by the Complainant Hanna-Barbera, which is in turn a division of the Complainant Time Warner Entertainment Company, L.P.
- The Complainants have registered trademarks for a number of articles based on the character Scooby-Doo. As a result of the commercial exploitation of the Scooby-Doo trademark, the Complainants have developed tremendous good will in the Scooby-Doo trademark, which has become famous among children and adults in the United States and internationally.
- Pursuant to the exercise of an option in an agreement dated June 1, 1998, the Complainants obtained all rights in all books of the Harry Potter series, including audio visual, copyright, trademark and related good will.
- The Harry Potter character and books are world famous.
- The Complainants have registered a number of trademarks based on the Harry Potter books and characters.
- The Respondents have never been licensed by Complainants to use the Complainants' trademarks, and the Respondents have no legitimate rights to Complainants' trademarks.
- The disputed domain names are identical to Complainants' trademarks Harry Potter, Looney Tunes and Scooby-Doo.
- The Respondents have engaged in a practice of registering misspellings of trademarks and famous domain names which has been labeled "typosquatting."
- All of Respondents' infringing domain names show the viewer additional pop-up windows containing websites and advertising for third parties selling various goods and services, including online games, credit card services, auction services and much more besides. The Respondents are trying to derive benefit from the public's being misled to believe the Complainants are connected with or are endorsing the Respondents' products.
- This proceeding violates the United States Constitution since it involves a taking of property without due process. Therefore, WIPO lacks the authority to hear or issue a ruling in this proceeding.
- What the Respondents did or did not do with respect to other cases is completely irrelevant.
- The Respondents use typosquatting as a form of free enterprise. Typosquatting is not cybersquatting and, in relation to the Internet, is not trademark infringement.
- The Complainants claim that a misspelling of a name is ipso facto confusingly similar to the correctly spelled name. Who is to say that was not the word the Respondents were trying to spell? The Panel should eschew the imbecility of outlawing sites that are spelled similarly to each other.
- U.S. trademark violations can only be brought for names that are identical to each other, not merely similar to each other.
- The Respondents do not compete with the Complainants' line of products and services, and therefore there is no possibility of confusion.
6. Discussion and Findings
In order for a Complainant to prevail and have a disputed domain name transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
Regarding the Looney Tunes mark, the Complainants have produced copies of United States federal principal register mark registrations that include no. 2419405 for "Looney Tunes WB" registered on January 9, 2001, for use in selling toys and sporting goods; also registration no. 2257588 for "Looney Tunes WB" dated June 29, 1999, for men's, women's and children's clothing (Complaint Exhibit C). The Respondents do not contest that the Looney Tunes cartoon characters were created some seventy years ago.
As to Complainants' trademark rights in the Scooby-Doo cartoon character, the Respondents do not contest that the cartoon character has been appearing on television since 1969. In addition, the Complainants offer other products using this mark and have a number of U.S. federal principal mark register registrations including: service mark registration no. 1579527 dated January 23, 1990 for offering entertainment services (Complaint Exhibit E).
As for the Harry Potter books, with which the Panel is quite familiar, the Complainants have shown at Exhibits H and I that the titles and characters of the Harry Potter books are being used to market a variety of merchandise. Complaint Exhibits F and G show the record-setting sales of the Harry Potter book series.
The Panel is quite convinced that the Complainants have rights in the marks Harry Potter, Looney Tunes and Scooby-Do. In registering the disputed domain names "harypotter.com", "looneytoones.com", and "scobydoo.com", the Respondents have deliberately misspelled the marks, but only slightly: the original mark remains almost intact, both visually, phonetically and orthographically. Thus the disputed domain names are confusingly similar to the Complainants' marks in violation of the Policy at 4a(i). The Respondents urge the Panel to consider only identical registrations as being proscribed by the Policy (the Response p. 6), but the Panel rejects this because it is incompatible with the plain language of the Policy at 4a(i): "your domain name is identical or confusingly similar (our emphasis) to a trademark or service mark in which the complainant has rights;…"
Legitimate Rights or Interests
The Complainants assert (Complaint p. 11) that the Respondents "have never been licensed by Complainants….to use the Complainants' trademarks, and Respondents have no legitimate rights to Complainants' trademarks."
The Respondents, Response p. 7, state: "Respondent does not compete with Complainant. It does not offer similar services or products." However, the Respondents never get around to telling the Panel just what their line of business or use of the disputed domain names is. And the Panel itself is able to see no legitimate right or interest on Respondent's behalf as called for under the Policy at 4a(ii). At one point the Respondents say they use "typosquatting as a form of free enterprise", but the Panel does not find this is a legitimate right or interest under the Policy.
Registered and Used in Bad Faith
Although the Panel finds the Complainants have proved beyond doubt that the Respondents make it a practice to register domain names that infringe famous trademarks, the Panel agrees with the Respondents this is not really pertinent here since it does not appear to the Panel the Respondents were attempting to register the disputed domain names to keep the Complainants from registering them (the Policy at 4b(ii).
However, as the Complaint shows (pp. 13-14), the Respondents are using the disputed domain names to show large volumes of advertising to the web traffic the disputed domain names attract. In the Panel's view, the disputed domain names attract traffic because they contain the good will of the Complainants' famous marks; as the Respondents intend, humans and search engines confuse the Respondents for the Complainants . This violates the Policy at 4b(iv) and leads the Panel to find the Respondents registered and were using the disputed domain names in bad faith (See Encyclopaedia Britannica, Inc. v. Zuccarini, ICANN/WIPO Case No. D2000-0330, June 7, 2000; and Yahoo!Inc. v. Cupcakes, ICANN/WIPO Case No. D2000-0777, October 2, 2000).
The Panel finds the disputed domain names are confusingly similar to the Complainants' marks and that the Respondents have no legitimate rights or interests in the disputed names. In addition, the Panel finds the Respondents registered and were using the disputed domain names in bad faith.
Therefore, per the Policy 4(i) and Rule (15), the Panel orders that the disputed domain names, "harypotter.com", "looneytoones.com" and "scobydoo.com" be transferred from the Respondents, John Zuccarini, Cupcake Patrol and The Cupcake Patrol to the Complainants, Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc.
Dennis A. Foster
Date: April 11, 2001