WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Cartoon Network, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Thomas T. Biggins, Tv Top Series

Case No. D2019-0458

1. The Parties

Complainant is The Cartoon Network, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Thomas T. Biggins of University Place, Washington, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <watchrickandmorty.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received email communications from the Respondent on March 4 and 5, 2019. Complainant filed an amended Complaint on March 5, 2019.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. The Center received additional email communications from Respondent on March 15 and 16, 2019. Accordingly, the Center notified the Parties about the commencement of panel appointment process on March 27, 2019.

The Center appointed Richard W. Page as the sole panelist in this matter on April 4, 2019. 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.

4. Factual Background

Complainant, Cartoon Network, Inc., is a cable television channel owned by Turner Broadcasting System, Inc., a subsidiary of WarnerMedia, based in the United States. The Cartoon Network channel was launched on October 1, 1992, and primarily broadcasts animated television series directed toward an audience of children and young adults. Complainant also directs certain programming to older teens and adults with mature content during the late-night daypart block, Adult Swim, which is treated as a separate entity for promotional purposes and as a separate channel by Nielsen for rating purposes. As of January 2016, Cartoon Network was available to approximately 94.0 million pay television households (80.7% of households with television) in the United States. In 2018, Cartoon Network was the 40th most watched and supported broadcast and cable network in the United States with an average of approximately 544,000 daily viewers, and Adult Swim was the 28th most watched such network with an average of approximately 845,000 daily viewers.

Carton Network owns and aired “Rick and Morty”, a popular entertainment series that premiered on December 2, 2013, and has received acclaim for its originality, creativity, and humor. The“Rick and Morty” series has grown into a valuable brand and media franchise, which now includes a wide variety of licensed consumer products, including comic books, graphic novels, video games, original music, apparel, jewelry, and household items.

Complainant provides online streaming video-on-demand content for the “Rick and Morty” series through the Adult Swim Website, specifically at “adultswim.com/video/rick-and-morty”. As well as through Complainant’s Adult Swim mobile app and officially-licensed third-party video-on-demand content partners, including Amazon Prime and Hulu, among others. Complainant and its licensed distribution partners also provide “Rick and Morty” series content in other media formats, such as DVD and Blu-Ray.

Complainant owns numerous trademark registrations for the RICK AND MORTY Mark in the United States and many jurisdictions throughout the world. Such trademark registrations include, but are not limited to, the following: United States Trademark No. 4653159, RICK AND MORTY, registered on December 9, 2014 (first use in commerce October 8, 2014) (class 9); United States Trademark No. 4552080, RICK AND MORTY, registered on June 17, 2014 (first use in commerce on December 2, 2013) (class 41); and United States Trademark No. 5023078, RICK AND MORTY, registered on August 16, 2016 (first use in commerce on October 31, 2014)(class 25).

Complainant, either directly or through its parent entity, Turner Broadcasting System, Inc. or other affiliated entities, also owns numerous domain names that include the RICK AND MORTY Mark (the “RICK AND MORTY Domains”). Many such RICK AND MORTY Domains resolve to the Adult Swim website’s dedicated post-domain URL for video-on-demand steaming for the series, namely “adultswim.com/

videos/rick-and-morty”, or other websites where official authorized “Rick and Morty” related content or products are available.

On July 1, 2017, Respondent registered the Disputed Domain Name <watchrickandmorty.net>.

The Disputed Domain Name resolved to a website providing unauthorized downloadable or streamable “Rick and Morty” video-on-demand content, including full episodes of the “Rick and Morty” series. When users click on the “Download” or “Watch Now” options at various locations throughout this website, they are redirected through <engaedo.com>, ultimately landing at another website on which website is presented a sign-up portal to create an account to “Stream or Download Rick and Morty”. After entering an email address and password, users are then directed to another page and instructed to enter a credit card number – purportedly users are not charged unless they “upgrade to monthly membership or select to make a purchase”. Respondent also operates a Twitter account under the handle @iwatchrickandmorty that provides a link to the Disputed Domain Name.

On or around December 25, 2018, Complainant, through one of its online intellectual property enforcement vendors, sent a notice and takedown letter by email to the web host associated with the website located at the Disputed Doman Name demanding that it immediately discontinue web hosting services for the website located at the Disputed Domain Name, on the basis that the website was providing unauthorized video content in violation of Complainant’s copyrights under the Digital Millennium Copyright Act (“DMCA”). As a result of this notice, the web host initially suspended web hosting services to the Disputed Domain Name.

On January 4, 2019, the web host responded to Complainant’s notice and take down letter, indicating that the owner of the website (a representative or affiliate of Respondent in this matter), had submitted a counter-notice pursuant to the DMCA, in which the individual asserted that “the complaint…of copyright violation is based on mistaken information, misidentification of the material in question, or deliberate misreading of the law…[and] that all material removed or disabled…as a result of the above reference DMCA Notice…be restored…”. As a result of this counter-notice, the web host reinstituted web hosting services associated with the Disputed Domain Name.

On January 16, 219, having ascertained the identity and contact information of the true beneficial registrant of the Disputed Domain Name, or its representative or affiliate, acting as the operator of the website located thereon, through the DMCA counter-notice, Complainant sent a letter to that individual by email demanding that the individual cease and desist from using the RICK AND MORTY Mark or designations similar thereto, including the Disputed Domain Name, and cease and desist from any further cyberpiracy involving the RICK AND MORTY Mark or any other copyright material owned by Complainant or its affiliates.

Respondent or its representative or affiliate failed to respond to Complainant’s letter.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of numerous worldwide registrations of the RICK AND MORTY Mark. Complainant further contends that its various media properties, including “Rick and Morty”, have developed considerable reputation and goodwill in the United States and worldwide and its trademarks are either well-known or famous throughout the world.

Complainant asserts that the Disputed Domain Name fully incorporates and is confusingly similar to the RICK AND MORTY Mark owned by Complainant, and in which Complainant has well-established rights. Complainant further asserts that the only difference between Complainant’s RICK AND MORTY Mark and the Disputed Domain Name is the addition of the generic dictionary term “watch” before the RICK AND MORTY Mark and the “.net” generic Top-Level Domain (“gTLD”) extension. Complainant further asserts that the term “watch” in the Disputed Domain Name only enhances confusing similarity, since at best it implies an authorized online source for Complainant’s services in relation to watching the “Rick and Morty” television series.

Complainant states that Respondent is not a licensee of Complainant nor is it authorized to use the RICK AND MORTY Mark or the RICK AND MORTY Domains.

Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant further argues that the Disputed Domain Name does not reflect Respondent’s common name, based on available WhoIs data.

Complainant avers that the Disputed Domain Name is being used to attract Internet users for commercial gain in connection with an illegal video streaming scam. Complainant further avers that Respondent’s use of the Disputed Domain Name is not a legitimate bona fide sale of goods or services. Rather it is a mere façade for an apparent illegal video content sharing scam which directly competes with Complainant’s television services under the RICK AND MORTY Mark and does not constitute a legitimate noncommercial or fair use.

Complainant alleges that Respondent registered and is using the Disputed Domain Name in bad faith with actual knowledge of Complainant’s rights in the RICK AND MORTY Mark, having registered the Disputed Domain Name long after Complainant had many registrations for the RICK AND MORTY Mark and the RICK AND MORTY Domains, monetizing the Disputed Domain Name through a fraudulent illegal content sharing scam and using the Disputed Domain Name in connection with a website that purports to provide content and services in direct competition to those provided by Complainant under its RICK AND MORTY Mark and RICK AND MORTY Domains.

Complainant further alleges that Respondent has registered and used the Disputed Domain Name in bad faith, pursuant to the elements of paragraph 4(b)(iv) of the Policy.

B. Respondent

Respondent did not provide a formal substantive response to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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”.

Respondent is not obliged to participate in this domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000‑0441.

Even though Respondent has failed to file a substantive Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the RICK AND MORTY Mark in which Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the RICK AND MORTY Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not responded or contested ownership of the RICK AND MORTY Mark.

Therefore, for purposes of this proceeding the Panel finds that Complainant has enforceable rights in the RICK AND MORTY Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the RICK AND MORTY Mark pursuant paragraph 4(a)(i) of the Policy.

Complainant asserts that the Disputed Domain Name fully incorporates and is confusingly similar to the RICK AND MORTY Mark owned by Complainant, and in which Complainant has well-established rights. Complainant further asserts that the only difference between Complainant’s RICK AND MORTY Mark and the Disputed Domain Name is the addition of the dictionary term “watch” before the RICK AND MORTY Mark and the “.net” gTLD extension. Complainant further asserts that the term “watch” in the Disputed Domain Name only enhances confusing similarity, since at best it implies an authorized online source for Complainant’s services in relation to watching the Rick and Morty television series.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is identical or confusingly similar to a registered trademark. The addition of dictionary terms or the “.net” gTLD extension do not prevent a finding of confusing similarity. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the RICK AND MORTY Mark.

Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the RICK AND MORTY Mark.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Complainant further argues that the Disputed Domain Name is being used to attract Internet users for commercial gain in connection with an illegal video streaming scam. Complainant further avers that Respondent’s use of the Disputed Domain Name is not a legitimate bona fide sale of goods or services. Rather it is a mere façade for an apparent illegal video content sharing scam which directly competes with Complainant’s television services under the RICK AND MORTY Mark and does not constitute a legitimate noncommercial or fair use.

Complainant argues that the Disputed Domain Name does not reflect Respondent’s common name, based on available WhoIs data.

The Panel finds that Complaint has made a prima facie case for the lack of Respondent’s rights and legitimate interests in the Disputed Domain Name.

Respondent has not contested the assertions by Complaint that it lacks rights and legitimate interests in the Disputed Domain Name.

Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the RICK AND MORTY Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the RICK AND MORTY Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the RICK AND MORTY Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The Panel finds that Respondent has violated paragraph 4(b)(iv) of the Policy. Therefore, Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <watchrickandmorty.net> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: April 14, 2019