Spin Master Ltd. v. DCSTEAM INC.
Claim Number: FA0806001210515
Complainant is Spin Master Ltd. (“Complainant”), represented by Barry
Hutsel, of Macera & Jarzyna LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moonsandkits.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2008.
On June 19, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <moonsandkits.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 June 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 16, 2008.
Complainant submitted a timely Additional Submission on July 21, 2008 in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On July 22, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is a manufacturer and world wide distributor of toys.
It is present in 37 countries around the world, with its headquarters in
One of the products that the Complainant sells is MOON SAND, which is a
granular compound of various colors that can be molded into different shapes.
The Complainant first started selling this product in the
The Respondent registered the disputed domain name on July 10, 2007.
The disputed domain name leads Internet users to a website that looks almost identical to the website of the Complainant, and sells the same product as the Complainant, only in different packaging.
The Complainant maintains that it
has established rights in the MOON SAND mark through trademark registrations
and pending applications in numerous places throughout the world, including
Through the international trademark registrations and the high sales of MOON SAND worldwide, the Complainant’s MOON SAND mark has gained enough strength to be considered inherently distinct and well known around the world.
The Complainant argues that the Respondent’s use of the MOON SAND trademark as well as the striking similarity between the two party’s websites has lead to confusion among the Complainant’s customers, especially since both parties seemingly direct their products via advertisements through the same channels and to the same market.
The Complainant contends the following:
- That <moonsandkits.com> is confusingly similar to the Complainant’s trademark;
- That the Respondent does not have any rights or legitimate interests in the domain name;
- That the Respondent registered and uses the domain name in bad faith.
The Respondent acknowledges the strength and distinctiveness of the Complainant’s MOON SAND trademark. It admits that it is selling the same substance as the Complainant, and that it was aware of the Complainant’s trademark when it registered the disputed domain name. It contends however, that pursuant to certain provisions of the Complainants Licensing Agreement with Delta of Sweden, AB, the Respondent may sell the same products so long as it uses the trademark MOON SAND.
Specifically, the Respondent asserts that the word “kits” in the disputed domain name was meant to distinguish the products sold by the Complainant from those sold by the Respondent. It then goes on to state that it complied with the excluded channels requirement, by targeting a different audience than that of the Complainant. The Respondent contends that its target audience was not children, but rather sculptors, educational institutions and other customers of bulk shipments. It claims that it met that channel since its average sale this year was $60 per order.
The Respondent then goes on to state in his conclusion that there are a many factors stated in UDRP decisions that show that the Complainant has not satisfied its burden regarding Paragraph 4(a)(i) of the UDRP Policy but fails to cite any cases.
C. Additional Submissions
The Complainant contends that the Licensing Agreement relied on by the Respondent is not applicable because it is an agreement solely between the Complainant and its supplier. The Complainant clarifies that in order for the Respondent to sell MOON SAND, the Complainant would have to give permission to the Respondent as outlined in the Agreement.
Additionally, the Complainant states that even if the Respondent was a party to the Agreement, such Agreement does not apply to the conduct that the Respondent is engaged in, specifically, selling the same products via a website resembling that of the Complainant. And the Respondent is clearly marketing children through its website and other advertisements.
The Complainant also claims that it has tried to contact the Respondent but has had a tough time because the Respondent seemed to be going to great lengths to hide its identity. The Respondent also entered into a partnership with deal-z.com, a company which has engaged in a pattern of “passing off”.
Lastly, the Complainant reiterates that the Respondent’s efforts at distinguishing its domain name consist of adding the term “KITS” to the Complainant’s trademark. However, as “KITS” is merely a descriptive term and is insufficient and therefore, not permitted.
The Panel finds that the Complainant established rights in the
MOON SAND mark through international registration of the mark. Specifically, within
The Respondent registered the disputed domain name July 10, 2007.
The Respondent concedes that the Complainant has rights in the MOON SAND mark and that it knew of the Complainant’s use of the mark in commerce at the time the Respondent registered and planned a use for the domain name.
The Complainant denies giving the Respondent rights and the Respondent offered no proof of any grant of rights in the Complainant’s mark or of the products sold.
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.
The Complainant has sufficiently established rights in the MOON SAND mark through its numerous registrations around the world. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug 4, 2004) (finding that the Complainant had established rights in the GOOGLE trademark through its holding of numerous trademark registrations around the world); see also Mars, Incorporated v. JCCandy Store, FA 094379 (Nat. Arb. Forum April 6, 2000) (finding that the adoption of a designation with knowledge of its trademark status permits a presumption of an intent to deceive, which in turn is strong evidence of a likelihood of confusion).
The Complainant states that the disputed domain name is identical to its protected trademarks because it contains the MOON SAND mark in its entirety followed by the generic term “KITS”. The inclusion of a generic term does not sufficient distinguish the disputed domain name from the Complainant’s trademark, especially when the term is a description of what the Complainant sells.
Accordingly, the Panel finds that the Respondents domain name <moonsandkits.com> is confusingly similar to the Complainants MOON SAND trademark pursuant to Policy ¶4(a)(1) because “the mere addition of a generic word to a registered mark does not negate” a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA257901 (Nat. Arb. Forum June 7, 2004) (finding that the domain name <amextravel.com> is confusingly similar to the Complainants AMEX trademark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept 21, 2004) (finding that the addition of the generic term “collection” to the Complainant’s HARRY POTTER trademark failed to adequately distinguish the domain name from the trademark).
Lastly, the content of the two websites are
practically identical. The Respondent uses the Complainant’s trademarked logo
on its website, which misleads the consuming public as to the source and origin
of the products it’s buying and suggests affiliation with the Complainant that it
does not have. See
Notably, the Respondent only sells the MOON SAND product via Internet, even though, under the Agreement relied upon by the Respondent, it may only sell through excluded channels. Even if the Internet were to be a valid channel, the Respondent relies on the fact that the “average” order is for $60 and that it aims to sell to educational institutions, sculptors, and other bulk consumers. However, the content of its website proves otherwise. Most of the products are relatively cheap, and could not be considered “bulk”, and significantly, the one package advertised three times on the front page is the cheapest product, costing only $4.99.
The Panel concludes that the Complainant has satisfied Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations that the Respondent has no rights to or legitimate interests in the disputed domain name that contains in its entirety the Complainant’s protected mark, the burden shifts to the Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug 18, 2006).
The Complainant first argues that the Respondent is not known by the disputed domain name, and there is nothing on the record that proves otherwise. Consequently, the Panel finds that the Respondent is not commonly known by the disputed domain name pursuant to ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb 10, 2003) (stating that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Additionally, the Complainant did not license or otherwise grant the Respondent the right to use its trademark.
The Complainant next contends that the Respondent is using the disputed domain name to sell products in direct competition with the Complainant. This action by the Respondent does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). It also does not constitute a legitimate noncommercial or fair use as pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (stating that the Respondents use of the Complainant’s trademark for purposes of marketing competing products than those of the Complainants does not constitute a bona fide offering of goods and services); see also M. Shanken Commnc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug 3, 2006) (finding that the Respondent was not commonly known by the domain name <cigaraficionada.com> under the Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Respondent concedes that it is selling the Complainant’s products. On its own, selling the Complainant’s products on a nearly identical website to that of the Complainant’s is insufficient to establish rights or legitimate interests in a disputed domain name without a specific agreement between the parties permitting the Respondent to sell such goods. See Nat’l Westminster Bank plc v. Blues William, FA 731824 (Nat. Arb. Forum Aug. 7, 2006) (stating that Respondent’s use of the disputed domain name to divert Internet users attempting to locate Complainant’s website to a website that is a fraudulent imitation of Complainant’s website constitutes an attempt by Respondent to pass itself off as Complainant, and is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Respondent claims that it is a licensed reseller of the Complainant’s goods. However, the Complainant has never granted the Respondent authority to sell the Complainant’s products as required by the License Agreement to which the Respondent relies in his argument. The Respondent has nothing to do with the Agreement and in order to sell the Complainant’s products; it must get approval by the Complainant, which it has not done.
Since the agreement cited is not between the Complainant and the Respondent, and the Complainant did not authorize the Respondent to use its trademark, the Panel finds that the agreement is not relevant for establishing the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Respondent lacks rights in <moonsandkits.com> pursuant to Policy ¶ 4(a)(ii). See Heel Quik! Inc. v. Michael H. Goldman., FA 92527 (Nat. Arb. Forum March 1, 2000)(finding that the Respondent used, and made preparations to use, the domain name in connection with an offering of its goods and services, which had been subject to the terms of a License Agreement and any use in violation of the License Agreement could not be a bona fide use within the meaning of the Policy); see also Vapor Blast Mfg. Co. v. R & S Techs., Inc., FA 96577 (Nat. Arb. Forum Feb 27, 2001) (finding that the Respondent, an unauthorized seller of the Complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to the Complainant’s mark).
The Panel concludes that the Complainant has satisfied Policy ¶ 4(a)(ii).
The Respondent argues that it has permission to use the Complainant’s MOON SAND trademark through a distributorship agreement between the Complainant and the third-party from whom the Respondent purchases and resells the Complainant’s products. However, Complainant states that there is no agreement between the parties and the Respondent has offered no proof of any such agreement. Rather, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy 4(a)(iii). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (finding that the Respondent’s use of the Complainant’s trademark within its domain name without express authorization from the Complainant evidenced bad faith use of the domain name); see also Associated Materials, Inc. v. Perma Wells, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that the Respondent’s knowledge of the Complainant’s trademark rights evidenced that the disputed domain name was registered in bad faith).
Further, the Respondent has been hard to contact. When the Complainant ordered a product from the Respondent in order to find out the contact information, it received an invoice with the name “deal-z.com” on it. When it attempted to contact the Respondent by the telephone number listed on the invoice, the Complainant reached an air-conditioning company that had previously rented out space to the deal-z.com. However, “deal-z.com” had moved and failed to provide a forwarding address.
Notably, the Respondent had originally registered <moonsandkits.com> under the name “Domains By Proxy, Inc.,” a company which provides the services of concealing registrant information. The Respondent had clearly gone to great lengths to hide its identity. The Panel therefore finds that this concealment of the Respondent’s true identity was indicative of bad faith registration and use of the disputed domain name pursuant to Policy 4(a)(ii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith).
The Panel also makes note of the fact that two of the three other products listed on deal-z.com are products that are trademarked and owned by parties other than the Respondent. However, without doing a trademark search, one would not be able to tell that the Respondent and the trademark owners are not one in the same because the Respondent uses the trademarked designs and names and uses confusingly similar domain names as well.
Lastly, absent a reseller’s agreement with the Complainant, the Respondent admits to selling the Complainant’s goods via the disputed domain name. Such a commercial benefit without the Complainant’s authorization confirms that the Respondent engaged in bad faith registration and use when it registered the disputed domain name, pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the Respondent’s use of the disputed domain name to offer goods competing with those of the Complainant’s illustrates the Respondent’s bad faith registration and use of the domain name); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the disputed domain name <fossilwatch.com> and using it to sell various watch brands where the Respondent was not authorized to sell the Complainant’s goods).
The Panel finds that the Complainant satisfied ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moonsandkits.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 5, 2008