Tru Kids Inc. v. Tashfeen Jamil
Claim Number: FA2102001930765
Complainant is Tru Kids Inc. (“Complainant”), represented by Megan E. Spitz of Blank Rome LLP, Pennsylvania, USA. Respondent is Tashfeen Jamil (“Respondent”), Scotland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toysrurs.com> (the “disputed domain name”), registered with 1&1 IONOS SE (the “Registrar”).
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Adam Taylor, Michael A. Albert, and Lynda M. Braun (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 3, 2021; the Forum received payment on February 3, 2021.
On February 4, 2021, 1&1 IONOS SE confirmed by e-mail to the Forum that the <toysrurs.com> disputed domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the 1&1 IONOS SE 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 February 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2021 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@toysrurs.com. Also, on February 5, 2021, 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.
On March 4, 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Adam Taylor, Michael A. Albert, and Lynda M Braun (Chair).
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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading global retailer of toys and related products and owns hundreds of well-known trademarks that are registered in the United States and in more than 118 other jurisdictions worldwide. Complainant’s trademarks have been continuously and extensively used in commerce for more than 60 years. In particular, Complainant has rights in the TOYS “R” US trademark through its registration with, among others, the United States Patent and Trademark Office (“USPTO”) (e.g., United States Reg. No. 2,019,153, registered on November 26, 1996; and TOYSRUS.COM, United States Reg. No. 2,370,396, registered on July 25, 2000) (hereinafter collectively referred to as the “TOYS R US Mark”).
Complainant contends that Respondent’s disputed domain name is confusingly similar to Complainant’s TOYS R US Mark, since it incorporates a misspelling of Complainant’s Mark in its entirety, merely adding the letter “r”, and is followed by the generic Top-Level Domain (“gTLD”) “.com”.
Complainant further claims that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has never been commonly known by the disputed domain name or Complainant’s TOYS R US Mark, Respondent is not using the disputed domain name for a legitimate noncommercial or fair use, nor is it using it for a bona fide offering of goods or services through its efforts to divert customers away from Complainant’s official website.
Finally, the Complainant claims that Respondent registered and is using the disputed domain name in bad faith because Respondent attempted to attract Internet users to its website for commercial gain by redirecting users to Respondent’s website, where competing toy products and services are offered for sale.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant owns the TOYS R US Mark in the United States and other jurisdictions worldwide, that the disputed domain name is confusingly similar to Complainant’s TOYS R US Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel concludes that, as set forth above, Complainant has shown that it has rights in the TOYS R US Mark based upon registration of the trademark in the United States and numerous other jurisdictions worldwide. Registration of a mark with the USPTO, as well as with other trademark offices globally, confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel also concludes that the <toysrurs.com> disputed domain name is confusingly similar to Complainant’s TOYS R US Mark under the Policy ¶ 4(a)(i). The disputed domain name consists of the TOYS R US Mark in its entirety, although with a minor misspelling[i] of TOYS R US, adding an extra “r” between the “u” and the “s”, and followed by the “.com” gTLD. Adding a single letter along with a gTLD is generally insufficient to distinguish a disputed domain name from the trademark it incorporates, particularly when that change does not alter the meaning or overall impression of the name. See ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”); see also See also Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”). Here, the one-letter change does not alter the overall meaning, sound, or appearance of the name but appears intended rather to capture business from Internet users who make a typographical error. Thus. the Panel concludes that the Complainant’s disputed domain name is confusingly similar to the TOYS R US Marks.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
In this case, Complainant has made such a prima facie case, yet Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint. Indeed, even if it had responded, given the facts of record, it seems implausible that Respondent would have been able to furnish availing arguments.
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the TOYS R US Mark, and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolved to a website that offered competing toy products and services. Complainant provides screenshots of the disputed domain name’s resolving website, which featured children’s toys and related goods for sale and a trademark arguably similar to Complainant’s TOYS R US Mark.
Finally, with the exception of the additional “r” between the “u” and the “s”, the composition of the disputed domain name is identical to the Complainant’s Mark, carrying a high risk of implied affiliation with the Complainant, which cannot constitute fair use as it effectively impersonates or suggests sponsorship by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 3.0, section 2.5.1. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and used the disputed domain name in bad faith.
First, Respondent initially used the disputed domain name to resolve to a competing website for commercial gain. The website, belonging to Respondent, offered toys and other products for sale that competed with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website and to disrupt Complainant’s business demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that respondent’s use of the disputed domain name to offer competing loan services disrupts complainant’s business under Policy ¶ 4(b)(iii)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that respondent’s use of the disputed domain name to direct Internet users to a website which competed with complainant was evidence of bad faith).
Second, bad faith under Policy ¶4(b)(iv) can be found 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)). Here, Respondent created a likelihood of confusion with Complainant and its TOYS R US Mark by registering a disputed domain name that incorporates in its entirety Complainant’s TOYS R US Mark, with the exception of an additional letter “r”. Respondent’s use of typosquatting when registering and using the disputed domain name is another example of Respondent’s bad faith registration and use. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”).
Third, the Disputed Domain Name was registered on September 19, 2020, decades after Complainant first began using the TOYS R US Mark. Further, Complainant’s decades of prior use of the trademark in commerce render it wholly implausible that Respondent created the disputed domain name independently. Complainant and its TOYS R US Mark are extremely well known globally. It therefore strains credulity to believe that Respondent had not known of the Complainant or its TOYS R US Mark when registering the disputed domain name and chose to misspell it to deceive Internet users. The Panel therefore finds it likely that the Respondent (a competitor) had the Complainant’s Mark in mind when registering the disputed domain name. Respondent’s prior knowledge of Complainant’s trademarks when registering the disputed domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toysrurs.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Adam Taylor, Michael A. Albert, and Lynda M. Braun (Chair), Panelists
Dated: March 16, 2021
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled registered trademark.
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