Geoffrey, Inc. v. Peter Ioannou
Claim Number: FA0111000102481
Complainant is Geoffrey, Inc., Arlington, VA (“Complainant”) represented by Roberta S. Bren, of Oblon, Spivak, McClelland, Maier & Neustadt PC. Respondent is Peter Ioannou, Larnaca, CYPRUS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gaysextoysareus.com>, registered with Network Solutions.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 16, 2001; the Forum received a hard copy of the Complaint on November 19, 2001.
On November 21, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <gaysextoysareus.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 November 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 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.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
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.” 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 domain name be transferred from the Respondent to the Complainant.
The <gaysextoysareus.com> domain name is confusingly similar to Complainant's TOYS "R" US mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name in bad faith.
Respondent failed to submit a Response.
Since 1960, Complainant has used the TOYS "R" US mark in commerce in relation to childrens' toys, and other items. Complainant is also the owner of a whole family of "R" US marks. The marks are related to a variety of goods and services such as entertainment events, real estate leasing, insurance services, novelties, party goods, costumes, furniture, books, bicycles, video tapes, computers, clocks, electronic devices and numerous other products.
Complainant is the owner of United States Service Mark Registration No. 2,370,396 for TOYSRUS.COM as well as other TOYS "R" US and "R US" United States Trademark and Service mark Registrations for a wide variety of goods and services. Complainant is also the owner of several United Kingdom trademark and service marks. Complainant is also the owner of a European Union Service Mark Registration for TOYSRUS.COM.
Since September 2000, Complainant has used the TOYSRUS.COM as a mark and domain name that links to a website jointly sponsored by Complainant and Amazon.com. This web site provides a large spectrum of family, children's and infant's products. Hundreds of millions of dollars each year have been expended to maintain the wholesome and family-oriented high quality of the products and services through the careful selection and careful methods used in the commercial promotion and sale of products and services under the TOYS "R" US marks. Complainant has acquired substantial goodwill in connection with a wholesome family image. Complainant and its related companies have tried very hard to ensure that its TOYS "R" US marks are not associated with pornography, sexually-oriented themes or activities, or adult sex toys.
Respondent's domain name was registered on June 24, 1999. The title of the website at the disputed domain name is "Hardcore sex website superstore and Viagra Online." Respondent appears to obtain revenue from visits by and or sales from Internet users who visit pornography sites linked from the disputed domain name. The disputed domain name includes links to fee-based pornography sites such as <space-amazones.com>, and <tempted.com>. Respondent also appears to earn revenue from sales of Viagra to Internet users who click on the Viagra link that appears on numerous pages at the disputed domain name. The Viagra link brings users to a page that encourages users to provide possibly false medical information in order to qualify for the prescription drug. This increases the number of applications for Viagra and Respondent's revenue.
In April 2001, Respondent's <gaysextoysareus.com> and two other websites were offered for sale for $15,000. Complainant offered to buy them at the price of Respondent's out-of-pocket costs, but no response was received.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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
Complainant, through registration and use, has demonstrated that it has rights in the TOYS "R" US mark. Furthermore, Respondent's <gaysextoysareus.com> domain name incorporates Complainant's mark in its entirety with the addition "gay" and "sex" to the beginning. The dominant part of the disputed domain name is Complainant's famous mark and therefore the addition of the terms "gay" and "sex" do not defeat a claim of confusing similarity. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy 4(a)(i) is satisfied). Furthermore, the different spelling of the "R" as "are" in the disputed domain name is not enough to create a distinctive mark. See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding confusing similarity between the Respondent’s domain name, <budgetsaver.com> and the Complainant’s mark, Budget$aver).
The Panel finds that Policy ¶ 4 (a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent's use of a confusingly similar domain name for sexually explicit material is not considered a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <gaysextoysareus.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Respondent has linked the disputed domain name to pornographic websites. It has been found that this type of use does not create rights or legitimate interests. See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has linked the confusingly similar <gaysextoysareus.com> domain name to an adult content website for commercial gain. This conduct is evidence of bad faith under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).
Furthermore, because of the famous and distinctive nature of Complainant's TOYS "R" US marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <gaysextoysareus.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <gaysextoysareus.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 31, 2001
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