International Playthings Inc v. Groupo4 a/k/a Larry Byrne
Claim Number: FA0110000100178
The Complainant is International Playthings, Inc., Parsippany, NJ (“Complainant”) represented by Michael T. Stewart, of Peri & Stewart, L.L.C. The Respondent is Groupo4 a/k/a Larry Byrne, Chicago, IL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <internationalplaythings.com>, registered with Register.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Panelist is Judge Karl V. Fink (Retired).
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 28, 2001; the Forum received a hard copy of the Complaint on October 2, 2001.
On October 4, 2001, Register.com confirmed by e-mail to the Forum that the domain name <internationalplaythings.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 25, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely response was received and determined to be complete on October 25, 2001.
Each of the parties made a proper, timely additional submission which were both considered by the panel.
On November 2, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
For approximately three decades, International Playthings, Inc. has produced and distributed toys and games of high educational and developmental value for infants and preschool children. Complainant has used the trade name “International Playthings, Inc.” and “International Playthings” for approximately thirty years. The Complainant has federally registered design trademarks containing the words “International Playthings.” Complainant has common law rights to the trade names/trademark “International Playthings.”
Complainant’s mark and name “International Playthings, Inc.” is printed on the Complainant’s catalogs, letterheads, packaging, advertisements, trade journals, and other items, such as its own website (currently located at www.intplay.com). Complainant expends significant financial resources in promotion and advertisement of its name and services.
On or around February 1, 2000, Respondent, which has never been affiliated with Complainant, and which has never been licensed or permitted to do so by Complainant, registered the domain name <internationalplaythings.com>. This domain name is identical or confusingly similar to Complainant’s trade name (“International Playthings, Inc.” or “International Playthings”). Respondent has no rights or legitimate interest in the domain name.
Respondent is not, and never has been, known by a name similar to “International Playthings.” Upon information and belief, Groupo4 is neither a legal entity nor authorized to do business in any state.
Respondent’s lack of legitimate interest in the domain name is further evidenced by the fact that Respondent, which registered the domain name on February 1, 2000 (more than a year and a half ago) has not even constructed a website at the domain name at issue. This lack of bona fide use of the domain name is indicative of Respondent’s bad faith.
Respondent refuses to transfer the domain name to Complainant, and instead has offered to sell the domain name to Complainant for approximately $20,000.
In December of 1999, Groupo4 was formed with a mission to develop a website as a private business venture. The partnership consists of four equal partners; Larry Byrne, Michael Johnson, Jason Schettler and Steve Spremo.
The idea for the site is that it would be a resource, providing information on goods and services that would be of interest to our target market, men ages 18-35, as well as being a portal to sites of similar interest. The site will provide sales links, commentary, and advertising on famous brands and areas of interest such as cars, electronics, and high tech gadgets with information on the latest developments.
Register.com provided a list of approximately 20 suggestions for a website name using the word “playthings”. International Playthings was among the suggestions that we received. No one in our group had ever heard of a company named International Playthings before.
We received a phone call from Michael Stewart, who identified himself as an attorney representing International Playthings, Inc. He made an offer of between $6,000 and $8,000 to purchase the name pending a final discussion with his client.
In both of the trademarks on file the Complainant has specifically disclaimed exclusive rights to use “International Playthings” expect as shown in their trademark filings.
The drawing shown in registration number 2,461,558 shows the phrase “International Playthings” in type 10% of the size of “early years”. Clearly they do not feel that the value of “International Playthings” is paramount to their business. This trademark was filed for in May, 2000, months after they learned of our ownership of the domain name. The earlier trademark was filed for in July, 1997. They took no action to protect their rights for 27 years.
Complainant has exaggerated the value of their corporate name in consumer retail operations in order to bolster its claim. Complainant has introduced no evidence that we have interfered with their business operation or use of the phrase “International Playthings”.
C. Additional Submissions
Complainant’s Additional Response
Not discussed by the Respondent is the clear governing principle that even if Complainant’s registered marks do not give Complainant rights to the domain name <internationalplaythings.com>, the Complainant still has rights to the domain name by
virtue of its common law rights to the mark “International Playthings”. Complainant’s common law rights alone are sufficient for purposes of protecting its rights to the domain name.
Respondent attempts to avoid directly addressing its probable use of the domain name website as a pornography site. They fail to rebut directly that they will not utilize the domain name to host pornography.
Respondent does not dispute that it is not, and has never been, known by a name similar to “International Playthings.” Respondent has failed to produce anything remotely suggesting that it was, is or will be known by that name.
Respondent has failed to produce anything to demonstrate any legitimate interest in the domain name. It has failed to date to construct anything at the domain name. This lack of bona fide use of the domain name is indicative of Respondent’s bad faith.
After a review of Respondent’s reply, it should be plain that it registered the domain name primarily with the purpose of selling the domain name for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.
Respondent’s Additional Response
Mr. Stewart has never denied that he contacted us initially with an offer to purchase our domain name on his client’s behalf. We have never made an offer to sell our domain name to International Playthings, Inc.
Regarding Complainant’s assertion of common law rights to the phrase “International Playthings”, clearly no such broad-based right exists or the trademark office would not have compelled them to disclaim exclusive use of the phrase on multiple occasions. Complainant may have rights within categories of toys to use of this phrase, but there is no foundation for extending this protection into all areas of commerce.
Our original response to the Complaint clearly states our intended use of the domain name. We do not know how Complainant concluded the domain name would be used in connection with pornography.
We advised Mr. Stewart and Mr. Varda at every turn that we were not interested in selling our domain name.
For the reason set forth below the Panel finds that Complainant has not met its burden of proof to have the name transferred.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that Respondent's <internationalplaythings.com> domain name is identical to Complainant's INTERNATIONAL PLAYTHINGS mark because the domain name incorporates the entirety of Complainant's mark and merely adds a ".com". The addition of a top level indicator such as "com" or "org" does not defeat a claim of identical or confusing similarity. See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Even if the Complainant's registered mark INTERNATIONAL PLAYTHINGS does not give rise to exclusive rights in the domain name <internationalplaythings.com> the common law rights Complainant has in the mark establish that it has rights to the disputed domain name. Complainant has been using the mark for thirty continuous years, and therefore has accrued undisputed rights in the mark INTERNATIONAL PLAYTHINGS. As a result of these rights Complainant has rights to the domain name <internationalplaythings.com>. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [“keppelbank.com”] in connection with its banking business, it has acquired rights under the common law); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place).
Complainant has proven this element.
Rights or Legitimate Interests
The Panel finds the Respondent is not known by <internationalplaythings.com> and therefore has no rights or legitimate interests in the domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Since Respondent is passively holding the domain name it has no rights or legitimate interests in the name. Respondent has been in possession of the domain name for almost two years and has not developed a website. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).
Complainant has proven this element.
Registration and Use in Bad Faith
Complainant asserts that the Respondent registered the disputed domain name in bad faith because Respondent is passively holding it. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).
Complainant further asserts that the Respondent's offer to sell the <internationalplaythings.com> domain name for $20,000 is evidence of bad faith. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).
Respondent claims that it did not register the domain name in bad faith, and the Panel finds Complainant has failed to produce facts that show otherwise. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith and that Complainant produced no credible evidence of bad faith on the part of Respondent).
The Panel finds that bad faith has not been proven because there is no evidence Respondent had knowledge that the Complainant existed before it received a letter from Complainant’s attorney. Furthermore, Complainant has failed to produce evidence to establish that INTERNATIONAL PLAYTHINGS is so famous that consumers are likely to associate <internationalplaythings.com> only with Complainant. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).
It has not been proven that Respondent offered to sell the domain name to Complainant in bad faith. There is a factual dispute about alleged offers. See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase the name from Respondent); see also Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of trademark for an amount in excess of out-of-pocket expenses).
Complainant has not proven this element.
The Panel directs that the domain name <internationalplaythings.com> be retained by Respondent.
Judge Karl V. Fink (Retired), Panelist
November 13, 2001
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