DECISION

 

Geoffrey, Inc. v. Greg Gaskell

Claim Number: FA0112000103188

 

PARTIES

Complainant is Geoffrey, Inc., Arlington, VA (“Complainant”) represented by Roberta S. Bren, of Oblon, Spivak, McClelland, Maier & Neustadt.  Respondent is Greg Gaskell, Castlebar, County Mayo, Ireland (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <schoolgirlsrus.com>, registered with Network Solutions.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 20, 2001; the Forum received a hard copy of the Complaint on December 26, 2001.

 

On December 27, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <schoolgirlsrus.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 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 January 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 22, 2002 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 postmaster@schoolgirlsrus.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 February 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody 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. 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant has established its rights with the family of marks “R US” and Respondent’s <schoolgirlsrus.com> is confusingly similar.

 

Respondent’s use of <schoolgirlsrus.com> is not in connection with a bona fide offering of goods or services.  Respondent is not commonly known by <schoolgirlsrus.com> and Respondent is not making a legitimate noncommercial or fair use of <schoolgirlsrus.com>.  Therefore, Respondent has not demonstrated a right or legitimate interest in the domain name.

 

By using the domain name in dispute, Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s GIRLS “R” US, GALS “R” US, and “R US” family of marks.  Further, since Respondent’s domain name promotes pornographic material and is confusingly similar to Complainant’s marks, Respondent has registered and used the domain name in bad faith.

 

B. Respondent

No Response was received from Respondent.

 

FINDINGS

Since 1960, Complainant has used the family of “R US” marks in connection with the retail sale of toys, sporting goods, and related items.  Complainant is the owner of famous marks such as: TOYS “R” US, GIRLS “R” US, BABIES “R” US, GALS “R” US, BOYS “R” US, and KIDS “R” US.  Complainant first used GIRLS “R” US on August 1, 1984 and registered the mark on August 20, 1996, Registration Number 1,995,301.  Complainant first used GALS “R” US on August 1, 1984 and registered the mark on August 27, 1996, Registration Number 1,996,837. 

 

Complainant is also owner of a valid and subsisting Trademark and Service Mark Registrations in the Republic of Ireland of which reflect “R US.”  Complainant is also the owner of a valid and subsisting “R US” United Kingdom Trademark and Service Mark Registration.

 

Complainant has registered and used the domain names <toysrus.com>, <kidsrus.com>, <babiesrus.com>, <toysrus.co.uk>, and <babiesrus.co.uk> in connection with its various goods and services.

 

As of February 2001, Complainant had operated more than 700 TOYS “R” US, 190 KIDS “R” US and 140 BABIES “R” US stores across the United States and 490 TOYS “R” US stores outside of the United States.  Of the 63 TOYS “R” US stores in the United Kingdom, one is located in Manchester, near Respondent‘s U.K. address.  The stores in the United Kingdom have been operating since 1985.

 

Through its long use and advertising of its “R US” family of marks, Complainant has attained great commercial success with its family of marks and have become famous both in the United States and in the United Kingdom.

 

According to WhoIs records, the owner of <schoolgirlsrus.com> is Greg Gaskell at 38 Reedly Drive, Worsley, Manchester, Lancs, M28 7XR, U.K.  Respondent registered  <schoolgirlsrus.com> on January 3, 2000.  Respondent has used the domain name in dispute as a pornographic website.  The website offers pornographic goods and services for a fee quoted in U.S. dollars.

 

On September 7, 2000, Complainant’s sent a “cease and desist” letter to Respondent via courier and e-mail.  The hard copy was sent back as not deliverable and Respondent did not respond to the e-mail.  On December 11, 2000, Complainant sent another “cease and desist” e-mail to Respondent and received an Auto Response message, showing that the e-mail was received by the destination server.  However, Complainant again did not receive a response from Respondent.    

 

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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 domain name <schoolgirlsrus.com> is confusingly similar to Complainant’s “R US” family of marks.  The addition of the words “schoolgirls” to Complainant’s family of marks does not dispel the confusingly similarity between the domain name and famous marks.   See The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to the Complainant’s family of marks). 

 

The domain name in dispute is also confusingly similar to Complainant’s trademark GIRLS “R” US.  The only difference between Respondent’s domain name and Complainant’s trademark is that Respondent adds the word “school.”  The addition of a generic noun does not diffuse the confusingly similarity between the domain name and Complainant’s famous trademark.  See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant has established it rights to its respective family of marks “R US” and mark GIRLS “R” US.  Respondent offers no evidence that it has a legitimate interest in <schoolgirlsrus.com>.   Accordingly, the Panel will presume 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).

 

Respondent’s use of a domain name that is confusingly similar to Complainant’s famous mark in connection with a pornographic website is not a bona fide offering of goods and services and Respondent fails to satisfy Policy ¶ 4(c)(i).  See Geoffrey, Inc. v. Alexandras, FA 99064 (Nat. Arb. Forum Oct. 2, 2001) (finding that Respondent’s use <sex-toysrus.com> to sell adult sex products serves only to tarnish Complainant’s well-known family of marks and is therefore not a bona fide use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website is not a bona fide offering of goods or services).

 

There is no evidence presented that Respondent is common known as <schoolgirlsrus.com> therefore, Respondent cannot satisfy Policy ¶ 4(c)(ii).  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).

 

The only evidence provided demonstrates that Respondent’s use of <schoolgirlsrus.com> is for providing pornographic goods and services and is not a legitimate noncommercial or fair use of the domain name and therefore Respondent’s use does not satisfy Policy ¶ 4(c)(iii).  See Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that use of a domain name to attract/redirect to another pornographic site is not a legitimate use).   

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Because of the fame attained by Complainant’s family of marks, it can be presumed that Respondent was aware of “R US” and GIRLS “R” US before registering <schoolgirlsrus.com>.  By using a domain name that is confusingly similar to Complainant’s family of marks, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and has created a confusion with the endorsement of Respondent’s website.  Therefore, Respondent has registered and used the domain name in dispute in bad faith as outlined in Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s goodwill and attract Internet users to the Respondent’s website).

 

Furthermore, Respondent’s use of <schoolgirlsrus.com>, a domain name confusingly similar to and dilutive of Complainant’s famous marks in connection with pornographic material is additional evidence of Respondent’s bad faith regsitration and use.  See Geoffrey, Inc. v. Alexandras, FA 99064 (Nat. Arb. Forum Oct. 2, 2001) (finding Respondent’s use of <sex-toysrus.com> is “a confusingly similar domain name to offer and promote various adult sex products supports a finding of bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.

 

Accordingly, it is Ordered that the domain name < schoolgirlsrus.com > be transferred from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

 

Dated: February 6, 2002