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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Those Characters From Cleveland Inc. v. User51235 (38so92lf@whois-privacy.net)

Case No. D2006-0950

 

1. The Parties

The Complainant is Those Characters From Cleveland Inc., One American Road, Cleveland, Ohio, United States of America represented by Michael Best & Friedrich, LLP, of Milwaukee, Wisconsin, United States of America.

The Respondent is User51235 (38so92lf@whois-privacy.net) New Delhi, Madhya Pradesh, India, represented by Naresh Malik.

 

2. The Domain Name and Registrar

The disputed domain name <carebears.com> is registered with Transecute (I) Pvt Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2006. On July 28, 2006, the Center transmitted by email to eNom.com a request for registrar verification in connection with the domain name at issue. On July 31, 2006, eNom.com replied advising the Center that the domain name at issue had been transferred on July 29, 2006, to Transecute (1) Pvt Ltd. as the new registrar. Accordingly, on August 7, 2006, the Center transmitted by email to Transecute (1) Pvt Ltd. a request for registrar verification in connection with the domain name at issue. On August 9, 2006, Transecute (I) Pvt Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 10, 2006. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2006. The Response was filed with the Center on September 4, 2006.

The Center appointed David Perkins as the sole panelist in this matter on September 22, 2006. 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.

On September 6, 2006, the Complainant requested leave to file a Reply to Respondent’s Response. On September 26, 2006, that request was forwarded to the Panel. On the same day, September 26, 2006, the Panel by Procedural Order No. 1 ruled that Complainant be entitled to submit a Supplementary Complaint limited to three issues, namely

(1) that the alter ego of the Respondent is only now known to be Naresh Malik;

(2) that the Respondent is only now known to be a general domain name seller; and

(3) that the Complaint should be rejected on the basis of laches, namely that the domain name in issue was registered in February 1996, that the Complainant knew of this when it registered its own domain name

<care-bears.com> in 2000 and that since that date the Complainant made no complaint in relation to the domain name in issue. The Complainant says that this defense could not have reasonably been anticipated.

By that Order the Panel directed that a unilateral Supplementary Submission made by the Complainant on September 23, 2006, stand as the Supplementary Complaint and that the Respondent should be entitled to file a Supplementary Response thereto by October 4, 2006.

In reply to Procedural Order No. 1 on September 28, 2006, the Complainant filed a Supplementary Complaint comprising (1) Complainant’s said submission dated September 23, 2006, and in addition, (2) an affidavit from Stephen Scharf, Assistant General Counsel of American Greetings Corporation, the parent company of the Complainant.

In the meantime, in response to the Complainant’s unilateral submission dated September 23, 2006, on September 25, 2006, the Respondent requested the right to reply in the event that the Panel should admit that submission. As noted, such right of reply was given in Procedural Order No. 1 of September 26, 2006. Subsequently, in the light of receipt of the Supplementary Complaint on September 28, 2006, the Panel extended Respondent’s time for reply from October 4 to October 6, 2006.

Respondent’s Reply to the Supplemental Complaint was filed on October 5, 2006.

 

4. Factual Background

4.1 The Complainant

4.1.1 The Complainant, Those Characters from Cleveland, Inc, is a wholly owned subsidiary of American Greetings Corporation of Ohio. The Complainant sells the children’s stuffed toy characters known as CARE BEARS and related products.

4.1.2 The CARE BEARS became very popular in the 1980’s and between 1983 and 1987 over 40 million CARE BEARS toys were sold worldwide. CARE BEARS characters featured in a television series, in a number of movies, children’s books, comic books, colouring and activity books, and in greetings cards.

4.1.3 A new line of updated CARE BEARS was launched in 2002, in addition to which the Complainant licensed the CARE BEARS trademark and related character properties for use with products ranging from adhesive bandages, to food products, to bedding. Sales of goods under the CARE BEARS trademark have to date totalled in excess of US8 billion [USD8,000,000,000.00] and almost US2 million has been spent on advertising and promoting the CARE BEARS brand.

4.1.4 In the United States the Complainant has the following application and registered trademarks for CARE BEARS

Number	Mark	Class(es)	Application / Registration
1,294,343	CARE BEARS	28	Filed: June 26, 1984 Registered: September 11, 1984
1,780,477	CARE BEARS	30	Filed: November 13, 1992 Registered: July 6, 1993
1,270,509	CARE BEARS	16	Filed: January 27, 1983 Registered: March 20, 1984
1,773,296	CARE BEARS	16 & 25	Filed: May 25, 1990 Registered: May 25, 1993
App. 78563875	CARE BEARS	9	Filed: February 9, 2002 Notice of Allowance: January 24, 2006

4.1.5 First use in commerce for the Class 28 toys US registration dates from September 9, 1982. The Complaint states that the Complainant is also the registered proprietor of CARE BEARS trademarks in over 30 countries internationally.

4.1.6 In addition, on March 28, 2000, Complainant registered <care-bears.com> as a domain name. Complainant says it was necessary to register in the hyphenated form by reason of the earlier (February 13, 1996) registered <carebears.com> domain name in dispute.

4.1.7 By way of additional background into the Complainant’s business, with the Supplemental Complaint an affidavit was submitted from Mr. Stephen Scharf. Mr. Scharf is Assistant General Counsel for the Complainant’s parent company, American Greetings Corporation. Mr. Scharf’s evidence is as follows.

4.1.8 Up to October 2001, the domain name in issue was owned and operated by the Complainant’s then-licensee, Promotion in Motion, Inc [“PIM”]. Under that License the Complainant authorized PIM to use the <carebears.com> website to sell officially licensed CARE BEARS products, including candy and gummy bears.

4.1.9 In the autumn of 2001, the Complainant unsuccessfully negotiated with PIM to purchase the <carebears.com> domain name. At that time, the Complainant advised PIM that it did not wish PIM to continue to use that domain name after termination of the License. It appears from redacted correspondence between American Greeting Corp. and PIM [exhibited to Mr. Scharf’s affidavit] that the License terminated in 2002.

4.1.10 At that time, Mr. Scharf explains the Complainant did not pursue PIM for assignment of the domain name since it appeared that PIM was no longer using it. It was only when the Complainant realised that the domain name was being used again, not by PIM but by the Respondent, that the Complainant took steps to obtain transfer of the domain name by this administrative proceeding.

4.2 The Respondent

4.2.1 Although the registrant of the domain name in issue is stated to be “User 51235 c/o whois-privacy.net, New Delhi, in the State of Madhya Pradesh India”, the Response is captioned “Alias-Naresh Malik” from an address in Mumbai and is signed by Mr. Malik.

4.2.2 The Respondent describes himself as “a general domain name seller” carrying on the business of buying and selling domain names. He explains that he registers various domain names for development of websites and until the websites are developed the domain names are directed to other pages from which click through revenue is apparently generated.

 

5. Parties Contentions

5.A Complainant

5.A.1 Confusingly Similar

5.A.1.1 The Complainant has registered trademark rights for CARE BEARS dating from the early 1980’s and, in the light of the extent of its business selling products under that mark since 1982, has developed that mark into a famous trademark

5.A.1.2 The domain name in issue is identical to Complainant’s CARE BEAR trademark.

5.A.2 Rights or Legitimate Interests

5.A.2.1 Complainant says the Respondent cannot bring himself within any of the circumstances demonstrating rights or legitimate interests in the domain name in issue set out in paragraph 4(c) of the Policy. Complainant points to use of the domain name in issue as a hyperlink to other websites, for example eBay.com: Yahoo.com: LiveDeal.com and a number of others. Complainant asserts that the Respondent is compensated for each person who clicks through the listed hyperlinks to visit the third party websites.

5.A.2.2 Complainant says that actual and potential customers and members of the trade seeking information about itself and its goods are likely to attempt to access the website “www.carebears.com”. They will then (as described above) be offered the products and services of competitors. This, the Complainant says, will have two consequences.

First, such persons will mistakenly believe that the third party services are endorsed by, sponsored by, approved by or in some other way associated with the Complainant. Second, this will confuse and frustrate those persons when they realise that the domain name in issue has not (as they had expected) directed them to the Complainant’s website.

5.A.2.3 These activities, says the Complainant, are not use of the domain name in issue in connection with a bona fide offering of goods or services, nor is this a fair use of that domain name.

5.A.3 Registration and Use in Bad Faith

5.A.3.1 Complainant’s case is that registration of its well-known CARE BEARS trademark is, in itself, evidence of bad faith. It is, Complainant says, bound to create confusion with that trademark and is conduct which falls fair and square within paragraph 4(b)(iv) of the Policy, Complainant cites Telstra .v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Advanced Micro Device, Inc. v. [No Name], WIPO Case No. D2000-0515; Encyclopedia Britannica, Inc .v. Zuccarini et al, WIPO Case No. D2000-0330, and Ellerman Investments Ltd. and Anor.v. Antonios Manessi, WIPO Case No. D2001-1461.

5.A.3.2 WIPO Case No. D2000-0515 involved the well known microprocessor manufacturer’s name and mark <advancedmicrodevices.com>. In Case WIPO Case No. D2000-0003 the domain name in issue was <telstra.org> and the complainant, Telstra Corporation Limited, was the largest company listed on the Australian Stock Exchange. The domain name in issue in WIPO Case No. D2000-0330 was <encyclopediabrittanica.com>, the complainant being the publisher of the world famous encyclopedia of that name since 1870 and registrant of the US trademark ENCYCLOPAEDIA BRITANNICA since 1950. Finally, WIPO Case No. D2001-1451 concerned the domain name <ritzclub.com>, the complainants being the owners of The Ritz Hotel in London and the licensee of a gaming club known as THE RITZ CLUB, which originally operated from the ballroom of the hotel but which later moved to its own premises in London.

5.A.3.3 In each of those cases, it was held – following the decision in Telstra – that passive holding of a domain name can give rise to a holding of bad faith. Among the circumstances in Telstra indicative of bad faith were where Complainant’s trademark has a strong reputation and is widely known.

5.A.3.4 Additionally, Complainant points to Respondent operating under an alias, which was a further circumstance identified in the Telstra and AMD cases as evidence of bad faith.

5.A.3.5 In the Supplementary Complaint, reference is made to a number of cases under the Policy involving as Respondent Mr. Naresh Malik, the Respondent in this case. These cases are;

La Quinta Worldwide LLC .v. Watch My Domain, WIPO Case No. D2006-0623.

The disputed domain name was <laquintainn.com> and the complainant’s trademark LA QUINTA, under which they operate some 500 hotels in Canada and the United States. The Response stated that the registrant of the domain name in issue was an alias for Mr. Malik. It was established in that case that Mr. Malik was using the disputed domain name as a “pay per click” service. On that basis and also because typo squatting is of itself evidence of bad faith, the Panel found for the complainant.

Hayward Industries Inc. and H-Tech Inc .v. Nick M, Watch My Domain, WIPO Case No. D2006-0173.

The domain names in issue were <haywardfilter.com> and <haywardpump.com>. The complainants were the registered proprietors of the trademark HAYWARD for, inter alia, pumps and filters. The domain names were being used by the respondent to generate click-through revenue. The identity of the registrant of the domain names in issue was the same as in the La Quinta case, namely Mr. Malik. The panel ordered transfer of the domain names, finding on the facts of that case bad faith under paragraph 4(b)(iv) of the Policy.

FTM Distribution Limited .v. Watch My Domain, WIPO Case No. D2005-0724.

The domain name in issue was <frankmuller.com>. The complainant owned the FRANK MULLER trademark in 81 countries worldwide, the earliest of which was registered in Switzerland in 1992. That trademark is used on watches. From the Response, Mr. Naresh Malik identified himself as the true registrant operating under the alias Watch My Domain, Mr. Nick M. The Panel ordered transfer of the domain name, finding this to a case of typo-cybersquatting.

5.A.3.6 From these Decisions, the Complainant concludes that the Respondent cannot credibly assert that he was unaware before registering the domain name in issue in this case in February 1996 of the well-known CARE BEARS trademark. The pattern of cybersquatting established by these cases justifies an inference that the Respondent must have been aware of the CARE BEARS marks.

5.A.3.7 Now that it is known that Mr. Malik is the alter ego of the registrant of the domain name in issue in this administrative proceeding and having regard to the above background of cases establishing Mr. Malik as a cybersquatter, the Complainant asserts that the Respondent cannot rely on the buying and selling of domain names to be a legitimate business under the Policy. In this respect, the Complainant refers to em@ilco International BV .v. Erik Krols, WIPO Case No. D2000-1416. The Complainant was the registered proprietor of Benelux trademarks EM@ILCO and EMAILCO. The Respondent was in the business of creating and maintaining websites. The Panel found in favour of the Complainant holding paragraph 4(b)(i) applicable on the facts of that case.

5.B Respondent

5.B.1 The Respondent’s bona fides

5.B.1.1 The Respondent says that he registered the domain name in issue in February 1996 and was not aware of Complainant’s CARE BEARS trademarks at that time.

5.B.1.2 The Respondent explains that his business involves the buying of domain names for use with websites. Until those websites are developed, the domain names are used to generate click-through revenue by directing Internet users to third party websites. The Respondent cites four decisions under the Policy where this has been held to be a legitimate activity. Those cases are;

Front Range Internet, Inc. v. David Murphy a/k/a This Domain for Sale, Claim No. FA0302000145231.

The domain name in issue was <frontrangeinternet.com> registered in September 2001. The complainant had applied to register FRONT RANGE INTERNET as a trademark in the State of Colorado in 1995. The complaint was rejected on the panel finding that the complainant had failed to establish trademark rights in that mark as required by paragraph 4(a)(i) of the Policy. In relation to paragraph 4(a)(ii) of the Policy the Panel stated:

“Respondent appears to be in the business of buying and selling generic domain name registrations. This fact, standing alone, is not enough to warrant a finding that Respondent has no rights or legitimate interests in the disputed domain name. In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”

Fifty Plus Media Corp. v. Digital Income, Inc., Claim No. FA94924.

The domain name in issue was <50plus.com> registered in July 1998. The complainant was in the business of offering goods, information, travel, leisure and financial services to senior citizens and had a number of registered US trademarks including “50+” in combination with other words. For example, “50+ MORGAN HALL”: “50+ DISCOUNT DIRECTORY” and “50+ BUYER DISCOUNT CARD”. Respondent, who was in the business of registering and selling descriptive and generic domain names, said that it had no prior knowledge of the “50+” trademarks. The complaint was rejected.

Telaxis Telecommunications Corp. .v. William E Minkle, WIPO Case No. D2000-0005.

The domain names in issue were <telaxis.com> and <telaxis.net>, the former registered in November 1998. Subsequently, in September 1999 the complainant applied to register TELAXIS COMMUNICATIONS with the US Patent and Trademark Office. The second domain name was registered the following month, October 1999. The complaint failed since the respondent was found to have made prior bona fide use of the domain name under paragraph 4(c)(i) of the Policy. Further, although registration by the respondent of the domain names were found to have been in good faith, respondent’s use of them to point to the websites of the complainant’s competitors or to pornographic websites amounted to bad faith.

John Fairfax Publications Pty Ltd. v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403.

The domain name in issue was <financialreview.com>. The complainant was the registered proprietor of the trademark THE FINANCIAL REVIEW in Australia (in Classes 16 and 38), the earliest dating from 1970. It was the publisher of a newspaper entitled “The Australian Financial Review”. The respondent was in the business of creating, buying and selling domain names. The panel found no evidence that the respondent – located in New Hampshire, United States – knew or ought to have known about a financial newspaper in Australia.

The panel rejected the complaint on the basis of both failure to show no rights or legitimate interests and of failing to show registration in bad faith. Quoting from the <manchesterairport.com> case [WIPO Case No. D2000-0638], the Decision reads:

“Selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest

Since registering generic names, even with intent to sell them, is a legitimate business activity, a majority of the Panel holds that the Respondents have a legitimate interest in the contested domain name.”

Since it appeared unlikely that, before the complaint was filed, the respondent knew of the complainant’s registered and common law rights in what would appear to be a generic term – namely. “financial review” – the panel found no registration in bad faith.

5.B.2 No likelihood of confusion

Given the acquired level of sophistication of Internet users nowadays, the Respondent does not believe that such a person is likely to make the mistake of logging onto his website when that person is looking for the Complainant’s products and services.

5.B.3 Laches

That the domain name has been registered for 10 years (i.e. since February 1996) without prior complaint by the Complainant evidences – says the Respondent – lack of bad faith registration. At that time, the pay per click business for which the domain name at issue is used did not exist. Nor could it, the Respondent says, have been foreseen. The Respondent cites in this respect the <financialreview.com> Decision (noted above).

5.B.4 The Policy does not apply

In a communication on September 25, 2006 – following the Complainant’s request to make Supplementary Submissions – the Respondent says that, because the domain name was registered (1996) before the Policy came into effect (1999), the Policy cannot be applied to this case.

5.B.5 Sub Judice

Finally, in the same communication of September 25, 2006, the Respondent stated that no comment can be made in this administrative proceeding in relation to the Decisions under the Policy cited by the Complainant in the Supplementary Complaint – see, paragraph 5.A.3.5 above – since they are presently the subject of proceedings before the Court in Mumbai. Accordingly, until judgment in those cases, it cannot be said that the Respondent is “a typosquatter.”

5.C Complainant’s Rebuttal of the Allegation of Laches

5.C.1 The sequence of events surrounding PIM’s former exclusive license to use the “www.carebears.com” website is explained in M. Scharf’s affidavit: see, paragraphs 4.1.7 and 4.1.10 above.

5.C.2 Complainant’s case is that laches is not a defense under the Policy. In that respect, the Complainant cites and relies upon three Decisions under the Policy. They are;

The E W Scripps Company .v. Sinologic Industries, WIPO Case No. D2003-0447.

The domain name in issue was <commercialappeal.com> registered in April 1999. The complainant had published a newspaper in the mid-south region of the United States under the name “The Commercial Appeal” since 1894. The respondent, who used the domain name in issue for a website containing links to specific news stories, asserted that it had used that website for almost 4 years, had removed links to the complainant’s website and had added disclaimers in 1999 and 2003 in response to complaints from the complainant. The complaint succeeded. As to the allegation of laches, the panellist said:

“This conclusion is not affected by the Complainant’s long delay in pursuing a complaint in relation to the domain name. If the requirements of a valid complaint under the Policy are established, the Policy does not provide any defence of laches. … Although a Panel is required by paragraph 15(a) of the Rules to decide the dispute in accordance with any rules and principles of law that it deems applicable, this would not justify the adoption of a substantive defence not provided in the Policy and running counter to its objectives. If a Respondent considers that the bringing of the complaint was inequitable because of delay, it can submit the matter to a court of competent jurisdiction.”

The Hebrew University of Jerusalem .v. Alberta Hot Rods, WIPO Case No. D2002-0616.

The domain name in issue was <alberteinstein.com> registered in September 1996. On his death in 1955, Dr Einstein bequeathed all rights “… of any and every kind of whatsoever nature” to the University. The University had registered trademarks in the United States, Australia, France and Germany for EINSTEIN [the US and Australia]: ALBERT EINSTEIN [France]; and EINSTEIN VERLAG [Germany]. The ALBERT EINSTEIN name and mark was licensed by an agent of the University to, inter alia, Apple Computer: Pepsi-Cola and Microsoft.

The respondent asserted that the claim under the Policy was barred by laches on account of the complainant’s failure to raise it until more than five years after the date of registration of the domain name (September 1996). The laches defense was rejected, stating:

“The Policy is part of the domain name registration agreement. The Administrative Proceeding is brought pursuant to that agreement, the issue for determination being whether the grounds set out in the Policy for transfer or cancellation have been established. There is no limitation period in the Policy. The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”

The complaint was, however, rejected on other grounds.

Tom Cruise .v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.

The domain name in issue was <tomcruise.com> was registered in November 1996. It directed users to the respondent’s “Celebrity 1000” website, which contained a biography of the actor. The Tom Cruise section of the Celebrity 1000 website had been active since 2001. The respondent raised, inter alia, complainant’s 10 year delay in initiating the complaint as indicative of complainant’s belief that he did not believe the respondent had been acting in bad faith. Citing the Hebrew University case (supra), the panel rejected the defense. However, the panel reserved its position had the delay been such as to indicate that the complainant had consented to respondent’s use of its trademark in the disputed domain name. In the Tom Cruise case, the panel held that there was no such evidence that he had approved or condoned respondent’s use of his mark.

5.D Respondent’s Rejoinder to the Supplementary Complaint

5.D.1 In his rejoinder, the Respondent reiterated two points made in his request of September 25, 2006, of a right to reply to Complainant’s unilateral submission dated September 23, 2006, and one additional point.

5.D.2 First, Respondent objects to Complainant making reference in the Supplementary Complaint to the three Decisions under the Policy summarized in paragraphs 5.A.3.5 above, which he says are under appeal before Courts in India. In the circumstances, he says they are sub judice and that reference to them by the Complainant is a contempt of court. Further, in his said communication of September 25, 2006 the Respondent says that, since those cases are under appeal, no inference can be made – as the Complainant does [see, paragraph 5.A.3.7 above] – that he is a cybersquatter and/or a typosquatter.

5.D.3 Second, the Respondent says that he purchased the domain name in issue from an entity which had gone out of business. If the Complainant had objected to registration of the domain name by that entity – presumably PIM [see, paragraphs 4.18 to 4.1.10 above] – then the Complainant should have taken appropriate steps to prevent their former Licensee from disposing of the domain name to the Respondent.

5.D.4 Third, it appears from Mr. Scharf’s evidence [paragraphs 4.1.7 – 4.1.10 above] that the only reason the Complainant did not purchase the domain name from PIM was because Mr. Rosenberg of PIM was asking a price which the Complainant was not prepared to pay. In the circumstances, waiting for over 5 years to assert its CARE BEARS trademark in respect of the domain name should disentitle the Complainant from now seeking to bring this administrative action under the Policy to have the domain name transferred to it.

 

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 Identical or Confusingly Similar

It is clear that the Complainant is the proprietor of the CARE BEARS registered trademark in the United States and in other countries and that CARE BEARS is a well known mark. The domain name in issue is identical to that trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

6.5 Rights or Legitimate Interests

6.5.1 The Respondent’s defense rests on paragraphs 4(c)(i) and (iii) of the Policy. Accordingly, the question arises as to whether his use of the domain name in issue to generate click-through revenue until he develops a website for that domain name can be said to amount to a bona fide offering of services.

6.5.2 Although going to the issue of registration in bad faith under paragraph 4(a)(iii) of the Policy, in this respect it is also relevant to examine the circumstances in which the Respondent became the registered proprietor of the domain name. In the Response Mr. Malik says that he registered the domain name in February 1996 and was not aware of the Complainant’s CARE BEARS trademarks at that time: [paragraph 5.B.1.1 above]. Then, following submission of Mr. Scharf’s affidavit [paragraphs 4.12.7 to 4.1.10 above], in his Rejoinder to the Supplementary Complaint Mr. Malik says that he purchased the domain name from an entity which had gone out of business over 5 years ago.

6.5.3 From Mr. Scharf’s evidence it would appear that the entity from whom Mr. Malik purchased the domain name was PIM at some time after PIM’s License to sell licensed CARE BEARS products had come to an end. This would seem to have occurred in 2002 [see, paragraph 4.1.9 above]. In the circumstances, Mr. Malik’s original version of events cannot be relied upon. Further, it is inconceivable that in 2002 or thereabouts when he acquired the domain name in issue he was unaware of the Complainant’s CARE BEARS products. By that time the Complainant’s CARE BEARS and other products bearing that trademark were clearly well-known internationally. Additionally, Mr. Malik bought the domain name from a former licensee of the Complainant.

6.5.4 Since, in the Panel’s view, the Respondent could not have been unaware of the Complainant and its CARE BEARS trademark when he bought the domain name in issue, it can hardly now be said that his subsequent use of that domain name without license or authorization from the trademark owner can be regarded as bona fide.

6.5.5 As to paragraph 4(c)(iii) of the Policy, the Complainant points to the fact that amongst the other websites to which the domain name clicks through are websites of their competitors, for example “www.playfulplushtoys.com”. It cannot, in the opinion of the Panel, be a fair use of the domain name in issue to mislead and divert consumers to the website of a competitor of the trademark owner. Further, if – as the Panel finds – the Respondent’s use under paragraph 4(c) (i) of the Policy has not been bona fide, it can hardly be a fair use under paragraph 4(c)(iii) of the Policy either.

6.5.6 In the circumstances, the Panel finds that the Respondent fails to show rights or legitimate interest in the domain name. Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.

6.6 Registered and Used in Bad Faith

6.6.1 The Complainant’s case rests on paragraphs 4(b)(ii) and (iv) of the Policy. The Panel has found that when he acquired the domain name in issue in 2002 (or thereabouts) the Respondent could not have been unaware of the Complainant’s CARE BEARS products and its CARE BEAR trademarks: [paragraphs 6.5.3 and 6.5.4 above].

6.6.2 In the light of the Panel’s finding that at the date when Mr. Malik acquired the trademark, the Complainant’s CARE BEARS trademark was well known [see, paragraphs 6.4 and 6.5.3 above], the cases relied upon in the Complaint [see, paragraphs 5.A.3.1 to 5.A.3.3] are in point. Further, when PIM registered the domain name in 1996 it did so as the Complainant’s then authorized licensee. Once PIM ceased to be a licensee, continued retention and ultimate sale of that domain name – contrary to the Complainant’s correspondence with Mr. Rosenberg of PIM [see, paragraph 4.1.9 above] – could not possibly continue to be bona fide. Hence registration in 1996 could only have been bona fide for so long as the registrant [PIM] continued to be authorized by its Licensor, the trademark owner [namely, the Complainant]. It was only by reason of that License that PIM could have bona fide registered the domain name in the first place.

Additionally, it is clear from the correspondence between the Complainant’s parent company and PIM that the price PIM wanted for sale of the domain name was considered by American Greetings Corporation to be excessive. It was only because on expiry of that License no further use of the domain name was being made that American Greetings Corporation decided to leave matters where they were, albeit with the warning to Mr. Rosenberg that they would object to any use of the domain name after such expiry.

6.6.3 Further, the Decisions under the Policy identified in paragraphs 5.A.3.5 to 5.A.3.7 above are also powerful evidence of Mr. Malik’s lack of bona fides, Mr. Malik was the alter ego of the Respondent in those cases. This pattern of cybersquatting indicates Mr. Malik must have been aware of the Complainant’s CARE BEARS trademarks from the outset and also that he cannot rely on those Decisions under the Policy which hold that the buying and selling of domain names is a legitimate business.

6.6.4 The latter is confirmed by the very Decisions upon which the Respondent relies. For example, as stated in the quoted extract from the <manchesterairport.com> case

“Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest”: [paragraph 5.B.1.2 above].

Here the domain name is identical to the Complainant’s CARE BEARS trademark, its use by the Respondent has not been authorized by the trademark owner – in fact, authority to make continued use ceased with the expiry of PIM’s license – and the Panel has found that the Respondent has no rights or legitimate interests in the domain name.

6.6.5 The Respondent says [in the Rejoinder – paragraph 5.D.2 above] that it is impermissible to refer to these Decisions since they are said to be the subject of court proceedings in India. However, no evidence has been brought by the Respondent to identify such cases. Further, until such Decisions are held to have been wrong, they stand as a matter of record to which it is entirely proper for the Complainant to refer.

6.6.6 Further, in three of the four cases cited in the Response, the domain names concerned were descriptive or generic words – namely, Cases FA030200014523.1 <frontrangeinternet.com>; FA94924 <50plus.com>; and WIPO Case No. D2000-1403 <financialreview.com>. By contrast, here the domain name is identical to Complainant’s well known CARE BEARS trademark. Registration of descriptive and generic names is permissible but unauthorized use of third party trademarks is not.

6.6.7 As regards the fourth case relied upon by the Respondent, <telaxis.com> and <telaxis.net>, the Respondent’s use of those domain names to point to websites of competitors of the Complainant was found to amount to bad faith. Here, the Respondent is using the domain name in precisely the same way; see, paragraph 6.5.5 above.

6.6.8 In the light of the forgoing, the Panel finds that there has been a pattern of conduct as required by paragraph 4(b)(ii) of the Policy. Further, that the Respondent’s use of the domain name in issue falls fair and square within paragraph 4(b)(iv) of the Policy. Still further, as noted in paragraph 6.3 above, the circumstances set out in paragraph 4(b) of the Policy are without limitation in the sense that they do not restrict the grounds upon which bad faith registration and use may be established under the Policy. As the Panel in the Telstra case [WIPO Case No. D2000-0003] said it is difficult to conceive of any use to which this domain name could legitimately be put by the Respondent. Other factors, for example, maintenance of the domain name under an alias, the pattern of conduct established in former cases under the Policy involving the Respondent and the well-known status of the CARE BEARS trademark all point to bad faith.

6.7 The Laches Defense

6.7.1 This is set out in paragraphs 5.B.3 and 5.D.4 above.

6.7.2 The Complainant cites a number of Decisions under the Policy in which Panels have held that the defense of laches has no application under the Policy: see, paragraph 5.C above.

6.7.3 The Panel agrees with those decisions and rejects the Respondent’s defense on this basis.

6.8 The Policy does not apply

6.8.1 The Respondent says that because the domain name in issue was registered (1996) before the Policy came into effect (1999), the Policy cannot be applied to this case: see, paragraph 5.B.4 above.

6.8.2 This submission has been considered and rejected in the first two WIPO Decisions under the Policy. The first was World Wrestling Federations Entertainment .v. Michael Bosman, WIPO Case D1999-0001. The domain name in dispute had been registered with Melbourne IT in October 1999. There it was held that effective December 1, 1999 Melbourne IT adopted the Policy and that, in the absence of a request by the Respondent that the domain name be deleted, he became bound by the provisions of the Policy.

6.8.3 The second Decision was Robert Ellenbogen .v. Mike Pearson, WIPO Case D2000-0001. In that case, the domain name in issue <musicweb.com> was registered in January 1995. As noted in that Decision, all gTLD names became subject to the Policy as of its adoption. Registrants of earlier registered domain names either accepted the Policy or forfeited their domain names.

6.8.4 The Panel considers that these Decisions were correctly made and accordingly, rejects the Respondent’s defense on this ground.

 

7. Decision

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

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David Perkins
Sole Panelist

Dated: October 10, 2006