Country	Number	Trademark	Class(es)	Date of Application and Registration
United States of America	3,044,795	NICK	41	Filed: May 10, 2004 Registered; January, 17, 2006 First Issued: December 31, 1983
United States of America	1,452,553	NICK AT NITE	41	Filed: July 3, 1985 Registered: August 11, 1987 First Used: June 1, 1984
United States of America	1,578,189	NICK JR	41	Filed: February 27, 1989 Registered: January 16, 1990 First Used: October 1, 1987
United States of America	1,875,735	NICK TOONS	16, 21, 24, 25, 28 and 41	Filed: May 8, 1992 Registered: January 24, 1995 First Used: August 1991
United States of America	2,222,947	NICKELODEON	38	Filed: April 13, 1998 Registered: February 9, 1999 First Used: March 25, 1979
United States of America	1,907,159	NICKELODEON	9,14,16,24,25 and 38	Filed: April 6, 1994 Registered: July 15, 1995 First Used: June 1992
United States of America	2,028,590	NICKELODEON	42	Filed: November 17, 1995 Registered: January 7,. 1997 First Used: October 23, 1995
United States of America	3,026,958	NICKELODEON	41	Filed: April 15, 2004 Registered: December 13, 2005 First Used: December 1, 1991
United States of America	2,146,514	NICKELODEON RUGRATS	28	Filed: June 2, 1997 Registered: March 24, 1998 First Used: June 1994
United States of America	2,155,268	NICK JR.com	41	Filed: December 4, 1995 Registered: May 5, 1998 First Used: June 2, 1997
United States of America	2,616,566	NICKELODEON GaS Games and Sports for Kids (and device)	41	Filed: June 22, 2000 Registered: September 10, 2002 First Used: March 1, 1999
United States of America	2,592,465	NICKELODEON ROCKET POWER	9	Filed: June 2, 1999 Registered: July 9, 2002 First Used: March 21, 2001
European Community	000180976	NICKELODEON	9,16,25, 28, 38, 41 and 42	Filed: April 1, 1996 Registered: October 13, 2004
European Community	000180992	NICK JR	9,16,25, 28, 38, 41 and 42	Filed: April 1, 1996 Registered: July 18, 2002
European Community	000180661	NICK AT NITE	9,16,25, 28, 38, 41 and 42	Filed: April 1, 1996 Registered: October 26, 1998
European Community	00154017	NICKELODEON ROCKET POWER	9,16,25, 28, 38, 41 and 42	Filed: February 17, 2000 Registered: March 29, 2001
European Community	001292432	NICKELODEON REPLAY	38 and 41	Filed: August 39, 1999 Registered: October 27, 2000

4.1.5 The US registered trademarks for NICKELODEON, NICKELODEON RUGRATS and NICK JR.COM have been acknowledged as incontestable under ss. 8 and 15 of the Lanham Act by the US Patent and Trademark Office, respectively on July 26, 2005, June 5, 2004 and October 7, 2004.

The Complainant’s Nick domain names

4.1.6 The Complainant launched its “www.nick.com” website in December 1996 which offers video games through links to Nick Arcade: Nick.Com New Game Of The Week: Free Games: Nick.Com’s Video Game Insider: Nicktropolis; and a link to over 500 free games.

4.1.7 The “www.nick.com” website also links to “www.shop.nick jr.com”, through which a variety of toys and games can be purchased, including a wide variety of video games in the major gaming formats supported by Sony, Microsoft and Nintendo, as well as its other formats.

4.2 The Respondent

4.2.1. In the absence of Response all that is known of the Respondent, whose address is in Moscow, Russian Federation, is what is set out in the Complaint.

4.2.2 The Respondent has been a respondent in two proceedings brought under the Policy. The first is Smith and Hawken, Ltd. v. Bladimir Boyiko, NAF Case No. FA755733. There the complainant’s trademark was SMITH & HAWKEN and the disputed domain name<smithandhawkin.com>. The complainant is one of the most popular home and garden retail businesses in the United States of America.

4.2.3 The second is American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252. There the complainant’s trademark was AAA and the disputed domain name was <wwwaaa.com>. The complainant is one of the world’s foremost automobile clubs, which was founded over 100 years ago, has over 47 million members, is commonly known by the acronym AAA and has owned US trademarks for AAA dating from 1965.

4.2.4 In neither case was a response filed. In both the disputed domain names were ordered to be transferred to the complainant.

4.2.5 The Respondent’s disputed domain name – which was registered on February 22, 2000 – redirects to “www.usseek.com”, which in turn provides links to other websites promoting the sale of toys, games, hobbies, interactive educational devices and “cheat codes” for video games. None of the goods and services offered through those links are sponsored by the Complainant but they do compete with those offered under the Complainant’s Nick website.

5. Parties’ Contentions

5.A Complainant

5.A.1 Identical or Confusingly Similar

5.A.1.1 The disputed domain name is identical to the Complainant’s NICK registered trademark, differing only by addition of the descriptive suffix “games”. The Complainant cites a number of cases under the Policy where it has been held that the addition of a common more generic suffix cannot avoid a finding of confusing similarity. These cases include Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net Inc., f/k/a Affinity Multimedia, WIPO Case No. D2000-1253. There the Complainant’s trademarks were, inter alia, VIACOM and NICK and the disputed domain names included <viacomtv.net> and <nickkidstv.net>. The respondent asserted that it owned over 900 domain names containing the suffix “tv.net”. Notwithstanding, the three member panel held that addition of “tv” to each of the Complainant’s trademarks could not avoid a finding of confusing similarity. The panel ordered that all 6 of the disputed domain names be transferred to the Complainant.

5.A.1.2 The Complainant also relies upon the so-called DuPont factors which set out a test for assessing likelihood of confusion in trademark infringement cases, The thirteen factors set out in the DuPont are summarized by the Complainant in the following way:

– the salient portion of the marks are identical in appearance;

– the goods and services at issue are identical;

– the trade channels of both parties’ goods and services are identical;

– the conditions under which buyers to whom sales are made are likely to be identical;

– the NICK and NICKELODEON trademarks are unquestionably famous;

– the Respondent has no license, permission or other authorization from the Complainant to use those trademarks; and

– the extent of potential confusion is enormous, given that the Respondent is using a mark which, not coincidentally, offers nearly identical services (albeit in a sham fashion) as those offered at the “www.nick.com” website and the links provided from that website.

[In re E. I. DuPont de Nemours & Co 476 F.2d 1357, 1361 177 USPQ 563 (C.C.P.A. 1973)]

5.A.2 Rights or Legitimate Interests

5.A.2.1 The Complainant’s case is that none of the circumstances provided for in paragraph 4(c) of the Policy are present in this case. As to paragraph 4(c)(ii), by reference to the Respondent’s website (see, paragraph 4.2.5 above) the Complainant asserts that the Respondent is making an illegitimate, commercial and non-fair use of the disputed domain name, to misleadingly divert consumers away from the legal and legitimate purchase of goods and services associated with the Complainant’s NICK and NICKELODEON trademarks.

5.A.2.2 As to paragraph 4(c)(i) nor is such activity by the Respondent using the disputed domain name a bona fide offering of goods and services. The Complainant cites decisions under the Policy where such use has been held to be evidence of bad faith. They are:

– Caesars Entertainment, Inc. v. Infoma Ltd., WIPO Case No. D2005-0032, where the complainant’s trademarks included PARIS CASINO RESORT, the disputed domain name was <paris-casinos.com> and that domain name pointed to an online gaming portal with a homepage headed “Paris Casinos” containing links to various online casinos.

– Humana Inc. v. Henry Tsung, WIPO Case No. D2005-0221, where the complainant’s trademark was HUMANA, the disputed domain name was <humanamedicare.com> and that domain name pointed to a variety of websites, some with emphasis on healthcare, including sites of competitors of the complainant.

– Humana Inc. v Domain Deluxe, WIPO Case No. D2005-0231, where the disputed domain name <humanahealthcare.com> again pointed to a website containing links to various healthcare sites, including sites of competitors of the complainant.

5.A.3 Registered and Used in Bad Faith

5.A.3.1 The Complainant asserts that each of the 4 circumstances set out in paragraph 4(b) of the Policy are present on the facts of this case.

5.A.3.2 The Complainant relies upon the facts set out in paragraph 4.2.5 above as providing evidence of the circumstances prescribed by paragraph 4(b)(iii) and (iv) of the Policy. In that respect, the Complainant cites two decisions under the Policy. They are:

– Wal-Mart Stores, Inc. v. Modern Limited-Cayman Web Development, Domain Administrator, WIPO Case No. D2005-0322. There the complainant’s registered trademark was WAL-MART and the disputed domain name <wamart.com>. Bad faith registration and use was found under paragraphs 4(b)(iii) and (iv) of the Policy by reason of the fact that the disputed domain name linked to companies offering goods and services similar to those offered by the complainant, Wal-Mart, and that the respondent derived click-through revenue from such use.

– Société Air France v. FP Transitions Pty Ltd, WIPO Case No. D2007-0988. There the complainant’s registered trademark was AIR FRANCE and the disputed domain name was <airfranceonline.com>. Bad faith registration and use was found under paragraphs 4(b)(iii) and (iv) by reason of the fact that the disputed domain name was said by the respondent to link to competing websites in the field of tourism and that the respondent derived click-through revenues from such use.

5.A.3.3 As to registration in bad faith, the Complainant asserts that, by reason of the well-known status of the NICK and NICKELODEON trademarks, the Respondent could not have been in ignorance of them when registering the disputed domain name.

5.A.3.4 The Complainant asserts that the Respondent’s bad faith demonstrated by reference to the use to which the disputed domain is put paragraph 4.2.5 above is compounded by the pattern of conduct established by the cases where the Respondent has already been ordered to transfer disputed domain names (see, paragraph 4.2.2 to 4.2.4 above). Consequently, the respondent is – according to the Complainant – a “serial cybersquatter”. In that respect, the Complainant cites two decisions under the Policy where, on similar facts, the respondents were found to have registered and used the disputed domain names in bad faith, and to have had an existing record as a “cybersquatter”. They are The Travelers Companies, Inc., Travelers Insurance Group Holdings, Inc., The St. Paul Travelers Companies, Inc., Travelers Property Casualty Corp. v. Whois Protection, WIPO Case No. D2007-0846 and Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136.

5.B Respondent

As already noted, no Response has been filed.

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:

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

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

(iii) 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 interest 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 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has established that it has extensive rights in the trademark NICKELODEON dating from 1979 and also in the derivative trademark NICK dating from 1983, together with a series of trademarks where NICK is the prefix and dominant feature of the mark, for example NICK JR, NICK TOONS and NICK AT NITE.

6.6. Addition of the descriptive word “games” as a suffix to the Complainant’s NICK trademark does not avoid confusing similarity. Accordingly, the Complaint satisfies the first requirement of paragraph 4(a) of the Policy.

Rights or Legitimate Interests

6.7 In the absence of a Response, there is no evidence that the Respondent can establish circumstances falling within paragraph 4(c) of the Policy, or otherwise demonstrate rights or legitimate interest in the disputed domain name.

6.8 On the evidence (see, paragraph 4.2.5 above) it is clear that there has been no bone fide use of the disputed domain name by the Respondent. Nor, given the Complainant’s long established use of the NICK trademark (1983) and registration of the majority of its NICK trademarks (the earliest dating from 1984), can the Respondent’s use of the disputed domain name be a legitimate or fair use of the domain name.

6.9 Accordingly, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.10 Typically where a respondent fails to establish rights or a legitimate interest in the disputed domain name, the same facts also lead to a finding of bad faith registration and use. This is a case in point.

6.11 The facts set out in paragraph 4.2.5 above support a finding that the circumstances set out in paragraph 4(b)(iv) of the Policy are present here. The earlier cases under the Policy involving the Respondent (see, paragraphs 4.2.2 to 4.2.4 above) further support such a finding.

6.12 As to paragraph 4(b)(iii) of the Policy, the facts also indicate that the disputed domain name was registered primarily to disrupt the Complainant’s business in the sense that the sites to which the disputed domain name links offer products and services which compete with those offered by the Complainant.

6.13 Accordingly, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy.

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, <nickgames.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Date: August 4, 2008

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0867.html

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