Ganz v. Schuessler
Enterprises, Inc.
Claim Number: FA0810001230809
PARTIES
Complainant is Ganz (“Complainant”), represented by Brandt W. Gebhardt, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <getwebkinz.com>,
<webkinzcollection.com>, <webkinzcollection.net>, <webkinzcollection.org>, <shopwebkinz.com>, <webkinzforum.com>, <webkinspetstore.com>, <webkinztradingcard.com>, <webkinzbodyspritz.com>, <webkinzcharms.com>, <webkinznews.com>, <webkinznewz.com>, <webkinzonlinestore.com>, <webkinzpetshop.com> <webkinzpetstore.com>, <webkinzraccoon.com>, <webkinzlipgloss.com>, <webkinzmousepads.com>, <buykins.com>, <googkinz.com>, <kinztv.com>, <lilkinzstore.com>, <lilkinzstore.net>, <lilkinzstore.org>, <shopkinz.com>, <webkinzbookmark.com>, <webkinzchocolatelab.com>, <webkinzcloths.com>, <webkinzclothstore.com>, <webkinzduck.com>, <webkinzferiesian.com>, <webkinzgermansheppard.com>, <webkinzpenguin.com>, <webkinzschoolsupplies.com>, <webkinzseal.com>, <webkinzturtle.com>, <webkinzworldstore.com> and <webkinzworldtoys.com> (hereafter
the “Domain Names”), registered with Godaddy.com,
Inc.
PANEL
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.
David Bernstein and Joel Grossman as Panelists and Christopher Gibson as
the Panel’s Chairman.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 24, 2008; the National Arbitration Forum received a
hard copy of the Complaint on October 24, 2008.
On October 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <getwebkinz.com>,
<webkinzcollection.com>, <webkinzcollection.net>, <webkinzcollection.org>, <shopwebkinz.com>, <webkinzforum.com>, <webkinspetstore.com>, <webkinztradingcard.com>, <webkinzbodyspritz.com>, <webkinzcharms.com>, <webkinznews.com>, <webkinznewz.com>, <webkinzonlinestore.com>, <webkinzpetshop.com> <webkinzpetstore.com>, <webkinzraccoon.com>, <webkinzlipgloss.com>, <webkinzmousepads.com>, <buykins.com>, <googkinz.com>, <kinztv.com>, <lilkinzstore.com>, <lilkinzstore.net>, <lilkinzstore.org>, <shopkinz.com>, <webkinzbookmark.com>, <webkinzchocolatelab.com>, <webkinzcloths.com>, <webkinzclothstore.com>, <webkinzduck.com>, <webkinzferiesian.com>, <webkinzgermansheppard.com>, <webkinzpenguin.com>, <webkinzschoolsupplies.com>, <webkinzseal.com>, <webkinzturtle.com>, <webkinzworldstore.com> and <webkinzworldtoys.com> Domain Names
are registered with Godaddy.com, Inc. and that the Respondent is the current
registrant. 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 October 27, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 17, 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 postmaster@getwebkinz.com,
postmaster@webkinzcollection.com, postmaster@webkinzcollection.net, postmaster@webkinzcollection.org,
postmaster@shopwebkinz.com, postmaster@webkinzforum.com, postmaster@webkinspetstore.com,
postmaster@webkinztradingcard.com, postmaster@webkinzbodyspritz.com,
postmaster@webkinzcharms.com, postmaster@webkinznews.com, postmaster@webkinznewz.com,
postmaster@webkinzonlinestore.com, postmaster@webkinzpetshop.com, postmaster@webkinzpetstore.com,
postmaster@webkinzraccoon.com, postmaster@webkinzlipgloss.com, postmaster@webkinzmousepads.com,
postmaster@buykins.com, postmaster@googkinz.com, postmaster@kinztv.com,
postmaster@lilkinzstore.com, postmaster@lilkinzstore.net, postmaster@lilkinzstore.org,
postmaster@shopkinz.com, postmaster@webkinzbookmark.com, postmaster@webkinzchocolatelab.com,
postmaster@webkinzcloths.com, postmaster@webkinzclothstore.com, postmaster@webkinzduck.com,
postmaster@webkinzferiesian.com, postmaster@webkinzgermansheppard.com,
postmaster@webkinzpenguin.com, postmaster@webkinzschoolsupplies.com,
postmaster@webkinzseal.com, postmaster@webkinzturtle.com, postmaster@webkinzworldstore.com
and postmaster@webkinzworldtoys.com by e-mail.
A timely Response was received and determined to be complete on
November 17, 2008.
An Additional Submission was received from Complainant on November 24,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
Paragraph 12 of the UDRP Rules does not contemplate unsolicited
submissions after the Complaint and Response have been received, and gives the
Panel the "sole discretion" as to acceptance and consideration of
Additional Submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See Darice,
Inc. v.
On November 26, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David Bernstein and Joel Grossman as
Panelists and Christopher Gibson as the Panel’s Chair.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is Ganz, a company located in
Complainant states that Respondent, Schuessler Enterprises, Inc., is
the owner of “Lindz’s
Complainant asserts that Respondent registered the Domain Names from
mid-August 2006 until late-April 2008. Complainant
has submitted evidence to show that two of the Domain Names, <webkinzpetstore.com> and <webkinzpetshop.com>, host
websites that advertise the sale of WEBKINZ and LIL’KINZ merchandise along with
directly competitive products. The
remaining Domain Names re-direct users to one of the following: (i) the <webkinzpetstore.com> or <webkinzpetshop.com> sites, (ii)
Respondent’s <lindzs.com> site, or (iii) landing pages hosting
pay-per-click portals.
Confusingly similar: Complainant contends the Domain Names are
confusingly similar to Complainant’s KINZ family trademarks, being nearly
identical except for the addition of non-distinctive matter – e.g., COLLECTION
or PETSTORE or PETSHOP – and/or substitution of an “s” for the “z.” Complainant argues that the addition of such non-distinctive
matter and the misspellings do nothing to reduce the confusing similarity to
Complainant’s trademarks.
No rights or legitimate interests: Complainant contends that
Respondent has no rights or legitimate interests in the Domain Names. Respondent is known as “Lindz’s A Place of
Christmas” or Schuessler Enterprises, Inc.
Respondent is not affiliated with Complainant or authorized to use Complainant’s
trademarks, and has never been known by any of the Domain Names. Respondent has used the Domain Names
commercially but not as part of a bona
fide offering of goods or services.
Complainant contends that Respondent’s use of the Names to host or to
redirect to websites that sell both Complainant’s products and competitive
products is illegitimate. Complainant
refers to several UDRP cases holding that the collateral trademark use
necessary to permit a reseller to sell a trademark owner’s products is not
sufficient to confer rights on the reseller to register and use the relevant
trademarks as domain names. As regards to
the Domain Names that deliver pay-per-click advertising, Complainant maintains
that use of the Domain Names for this purpose does not constitute a bona fide offering of goods or services.
Bad faith: Complainant asserts that Respondent
registered and is using the Domain Names in bad faith, and that the evidence in
this regard is ample. It is evident that
Respondent had actual notice of Complainant’s KINZ family trademarks given that
Respondent ordered merchandise from Complainant. Complainant has submitted
evidence to show that Respondent engaged in a pattern of domain name
registration in order to prevent Complainant and other owners of well-known
trademarks (such as BEANIEBABIES or SEAPALSTORE or SHININGSTARPETSTORE) from
reflecting their marks in corresponding domain names. Respondent’s registration
of domain names using a STORE/SHOP theme runs across other toy brands such as
<barbiegirlstore.com>, <beaniebaby2petstore.com>,
<beaniebaby2shop.com>, <bratzonlinestore.com>,
<kookeypetsshop.com>, <littlestpetshopstore.com>,
<shiningstarpetstore> and <tygirlzstore.com>. Complainant argues the Respondent registered
and used the Domain Names incorporating its trademarks to “bait and switch”
Internet users into buying other products.
B. Respondent
Respondent states that it is the
owner of “Lindz’s
Respondent contends that, while Complainant claims that its marks WEBKINZ and LIL’ KINZ are famous marks, it has failed to prove this fame. Regarding the LIL’ KINZ mark, in particular, it was not registered with the United States Trademark Office until February 13, 2007, very close to the time that Respondent began the activities of which Complainant complains.
No confusingly similarity: Although Complainant alleges that the Domain Names are
confusingly similar to its trademarks, Respondent contends that Complainant has
failed to prove that Respondent was attempting to attract users to its website
by exploiting this so-called confusion. Respondent
claims that Complainant has a web presence but does not sell directly to
consumers. Rather, Complainant’s primary
distribution channels are gift, specialty, and department stores throughout the
Rights and Legitimate Interests and No Bad Faith: Respondent argues that it has used the Domain Names legitimately and there is no proof of bad faith. Although Complainant alleges that it has not authorized the use of its trademarks “in any manner,” Respondent asserts that this statement makes no sense in the context of this case. Respondent is a retailer of WEBKINZ and LIL’ KINZ plush toys and it stands to reason that a retailer may use the trademarks to sell these toys. Respondent asks rhetorically, “[i]f Respondent were not permitted to advertise that it was selling Webkinz and Lil’Kinz toys, what use is there in having a trademark?” Respondent claims that Complainant has not only permitted the use of the marks but has encouraged their use: it has provided a website to allow the download of graphics. Respondent states that prior to registering the disputed Domain Names, it had no notice that Complainant would be unhappy with these registrations. Only recently did Complainant attempt to impose new use terms and conditions that include limits on use of the WEBKINZ mark in domain names.
Regarding Complainant’s contention that Respondent has not used the Domain Names as part of a bona fide offering of goods or services but rather to host or redirect to websites that sell competing products, Respondent claims there is no proof of this allegation. The sites at <webkinzpetstore.com> and <webkinzpetshop.com> sell genuine WEBKNIZ and LIL’ KINZ products. The remaining Domain Names are used to direct or redirect potential customers to the <webkinzpetstore.com> and <webkinzpetshop.com> sites in an effort to sell the genuine toys. Respondent bought a large number of WEBKINZ and LIL’ KINZ toys from Complainant and wants to market them. Respondent rejects Complainant’s contention that, because other competing products are available on the sites, the availability of such competing products amounts to a bait and switch scheme. According to Respondent, bait advertising is an alluring but insincere offer to sell a product or service which the advertiser in truth does not intend to sell. Its purpose is to switch consumers from buying the advertised merchandise in order to sell something else, usually at a higher price or on a basis more advantageous to the advertiser. Nothing that Complainant has put forth in its Complaint suggests or proves that Respondent was involved in this type of scheme. Respondent had a large inventory of WEBKINZ and LIL’KINZ toys that it wanted to sell.
Regarding the contention that
Respondent has offered competing products on its website, although it may
appear that Respondent has used its sites to sell such products (e.g., Shining
Stars,
Complainant argues that
Respondent’s prior sale or current sale of merchandise in connection with the Domain
Names does not legitimize the Respondent’s registration. However, the Respondent refers to several
cases, asserting that Oki Data Americas,
Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) reflects the majority
view. In Oki Data, there was a dispute between a
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Respondent contends that it meets these factors: it is actually offering the goods at issue; it is not using the site to bait and switch potential customers to other goods; Respondent’s site discloses that Complainant is the owner of the WEBKINZ and LIL’ KINZ marks; and, although it has registered a number of Domain Names, Complainant has its own domain name, <webkinz.com>, proving that Respondent has not cornered the market in all domain names.
Complainant relies on the number of Domain Names registered
to demonstrate a pattern to prevent Complainant from registering Domain Names
reflecting its mark. According to
Respondent, however, in an effort to increase sales of the WEBKINZ products, it
began experimenting to see what terms or website URLs (domain names) would draw
the most Internet traffic. Mr.
Schuessler registered a number of the Domain Names to see which would draw
inquiries and which would not. The idea
was to see what “bots” picked up the sites and how they might be listed on a
search page. Complainant registered its
<webkinz.com> domain name in 2003 and had opportunity to register other
domain names. Respondent is allowing the
domain name registrations to expire except as to <webkinzpetstore.com> and
<webkinzpetshop.com>. In the
interest of trying to resolve this matter, Respondent is willing to transfer
the registrations on all “webkinz” Domain Names to Complainant with the exception
of <webkinzpetstore.com>.
With respect to the Domain Names that link to pay-per-click sites, Respondent states that these sites are parked with GoDaddy.com. GoDaddy.com automatically posts parking pages that contain click through ads, and Respondent is not responsible. Rather, the reason for registering the Domain Names name was to increase traffic to Respondent’s sites to increase sales of WEBKINZ and LIL’ KINZ products. In summary, Complainant has failed to prove bad faith and the Complaint should be dismissed.
C. Complainant’s Additional
Submission
Complainant responds to a number of
the factual assertions and arguments in the Response. Complainant states that it does, in fact,
sell directly to consumers in the
Complainant states that whether or
not its trademarks are famous within the meaning of
With respect to rights and legitimate interests, Complainant does not prevent retailers from selling WEBKINZ and LIL’KINZ merchandise from websites associated with their brick and mortar stores, and Complainant does not object to the Respondent’s sale of Complainant’s merchandise at <lindzs.com>. Indeed, Complainant itself advertises that the Respondent sells these products. However, Complainant has a strong interest in maintaining control over retailers’ use of its marks. It is facile to suggest that in transferring the Domain Names at issue here to Complainant, Respondent would be prevented from promoting in numerous ways that it sells Complainant’s WEBKINZ merchandise.
As for the Oki Data case, Respondent, by selling WEBKINZ merchandise through the <webkinzpetstore.com> and <webkinzpetshop.com> sites, has been doing so in violation of Complainant’s terms and conditions, which prohibit sale of Complainant’s merchandise except through a retailer’s brick and mortar store and website associated exclusively with that store. In addition, Respondent has not been using its website to sell only the trademarked goods. With respect to Respondent’s explanation that the directly competitive merchandise was sold only with the purchase of WEBKINZ products, there is no mention of this condition on the Respondent’s website. Second, Respondent’s site creates the impression of operation, endorsement or sponsorship by the Complainant, yet Respondent never requested the authorization to display Complainant’s trademarks and copyright images or WEBKINZ logo, which Complainant would have never authorized. The unauthorized use of images under a domain name that is confusingly similar to the Complainant’s mark suggests affiliation or approval by Complainant. The disclaimer language on Respondent’s <webkinzpetstore.com> site is insufficient and was absent from web pages captured by Complainant prior to October 1, 2008, when Complainant sent Respondent the first demand letter. Third, Respondent has registered many variations of Complainant’s trademarks across the gTLDs .com, .net and .org and, by doing so, has tried to corner the market in WEBKINZ and LIL’KINZ domain names to block Complainant from reflecting desirable variations of its marks in corresponding domain names.
Respondent’s principal, by his own admission, is a computer programmer sophisticated with respect to search engine optimization. Respondent clearly knew of the immense popularity of the WEBKINZ brand, particularly on the Internet, and sought to exploit Complainant’s goodwill through the Domain Names. Registration and use of domain names for the purpose of increasing traffic to websites is in bad faith when it creates a likelihood of confusion for commercial gain.
FINDINGS
Complainant is Ganz, a Canadian company that
has established common law and registered trademark rights in the marks
WEBKINZ, LIL’KINZ, WEBKINZ WORLD and certain other KINZ family marks. These marks have been used in relation to
plush toy pets and in the on-line environment where owners interact in a
virtual world at Complainant’s primary website at <webkinz.com>.
Respondent is the
owner of “Lindz’s
DISCUSSION
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.
Complainant has demonstrated rights in its WEBKINZ and
LIL’ KINZ trademarks, which are well-known within the toy industry. The consensus view in the vast majority of
UDRP decisions is that, when a complainant owns rights in a registered
trademark, this satisfies the threshold requirement of having trademark rights. While Respondent asserts that Complainant’s marks are not famous, the Panel need
not to address this issue because, for the purposes of Policy ¶ 4(a)(i), a
trademark does not need to be famous.
Respondent has registered thirty-eight (38) Domain Names using several basic variations. First, many of Respondent’s Domain Names contain Complainant’s entire WEBKINZ mark and merely add generic words including animal names and merchandising or advertising terms: <getwebkinz.com>, <webkinzcollection.com>, <webkinzcollection.net>, <webkinzcollection.org>, <shopwebkinz.com>, <webkinzforum.com>, <webkinztradingcard.com>, <webkinzbodyspritz.com>, <webkinzcharms.com>, <webkinznews.com>, <webkinznewz.com>, <webkinzonlinestore.com>, <webkinzpetshop.com>, <webkinzpetstore.com>, <webkinzraccoon.com>, <webkinzlipgloss.com>, <webkinzmousepads.com>, <webkinzbookmark.com>, <webkinzchocolatelab.com>, <webkinzcloths.com>, <webkinzclothstore.com>, <webkinzduck.com>, <webkinzferiesian.com>, <webkinzgermansheppard.com>, <webkinzpenguin.com>, <webkinzschoolsupplies.com>, <webkinzseal.com>, <webkinzturtle.com>, <webkinzworldstore.com> and <webkinzworldtoys.com>. The Panel finds that such additions do little or nothing to diminish the confusing similarity of the Domain Names to Complainant’s marks. The Panel finds that these Domain Names are confusingly similar to Complainant’s WEBKINZ mark under the Policy ¶ 4(a)(i). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (by adding the term “security” to complainant’s VANCE mark, which described the complainant’s business, respondent very significantly increased the likelihood of confusion with the complainant’s mark).
Similarly, Respondent’s <lilkinzstore.com>,
<lilkinzstore.net> and <lilkinzstore.org> Domain Names
contain Complainant’s LIL’ KINZ mark.
The Panel finds that the addition of the generic word “store” and
the omission of punctuation, such as
the apostrophe, do not render these Domain Names sufficiently
distinct. See Warner Bros. Entm’t Inc. v. Sadler,
FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of
generic terms to Complainant’s HARRY POTTER mark in respondent’s
<shop4harrypotter.com> and <shopforharrypotter.com> domain names
failed to alleviate the confusing similarity between the mark and the domain
names); see also LOreal USA Creative Inc
v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum
Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly
distinguish the domain name from the mark). The Panel finds that these Domain Names are
confusingly similar to Complainant’s LIL’ KINZ mark under Policy ¶
4(a)(i).
Finally, Respondent’s <buykins.com>,
<webkinspetstore.com>, <googkinz.com>, <kinztv.com>
and <shopkinz.com> Domain Names
contain only the KINZ portion of either the WEBKINZ or LIL’ KINZ marks, and two
of these Domain Names alter KINZ to “kins.”
These Domain Names also contain various added words or strings of
letters. The Panel finds that, although
a somewhat closer call, in this case, where these Domain Names are used to
resolve to websites offering the Complainant’s goods, the omission or
alteration of part of the trademark and
the additions of generic words or letters, are insufficient to render the Domain
Names sufficiently distinct.
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names by alleging in detail that Respondent has never been known by the Domain Names, was not authorized to register the Domain Names incorporating Complainant’s marks or confusingly similar variations, and is not using the Domain Names in connection with the bona fide offering of goods and services. Once Complainant has made this prima facie showing, the burden of production shifts to Respondent to come forward with proof of its legitimate interests in the Domain Names.
In this case, there is no dispute that Respondent is
not commonly known by the Domain Names; that Respondent was aware of
Complainant and targeted Complainant’s trademarks when it registered the thirty-eight
confusingly similar Domain Names; and that Respondent has used the Domain Names
for commercial purposes. Nonetheless,
Respondent contends it has legitimate interests with respect to the Domain
Names because, in accordance with Paragraph 4(c)(i) of the Policy, prior to
commencement of the dispute, Respondent used them in connection with the bona fide offering of goods or
services. The Panel is confronted with the question – which has been addressed in previous
UDRP cases – of whether Respondent as a retailer of WEBKINZ merchandise is using
the Domain Names in connection with a bona fide offering of goods or services.
In previous cases, such as Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) and Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), UDRP panels have surveyed cases in this area and refined a standard for determining whether such activities constitute a bona fide offering of goods and services. Both Complainant and Respondent have presented their arguments in relation to this standard:
(1) The respondent must actually be offering the goods or services at issue;
(2) The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(3) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and
(4) The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In the current case, Respondent’s conduct fails the second, third and fourth elements of the above test. With regard to the second element, while Complainant states that it does not object to Respondent’s sale of WEBKINZ merchandise on Respondent’s website at <lindzs.com>, Complainant has provided evidence that Respondent used the Domain Names incorporating Complainant’s marks in order to sell competing merchandise. Respondent contradicted itself in its submission on this point, in one place asserting that Complainant had submitted “no proof” that Respondent was selling such competing goods, but then later admitting that it did sell competing products as “special promotional items” that required first the purchase of genuine WEBKINZ goods. Complainant submitted copies of web pages from Respondent’s site listing the sale of competing merchandise and highlighted that there is no mention of this pre-condition. The fact that Respondent states it has now removed all listings of competitive goods does not cure its conduct prior to the dispute. Moreover, the Panel viewed Respondent’s sites at <webkinzpetstore.com> and <webkinzpetshop.com> and found that links to competing merchandise (e.g., SeaPals) remain.
With regard to the third element, Respondent asserts that Complainant permitted the use of Complainant’s trademarks and the download of graphics and copyright images, and that its websites accurately disclose Respondent’s relationship with Complainant. Complainant, on the other hand, maintains that it never authorized Respondent to register the Domain Names incorporating Complainant’s marks, nor did it authorize use of the WEBKINZ logo, and the copyright images should have been obtained through proper channels. In addition, Complainant claims that Respondent’s sites create the impression of operation, endorsement or sponsorship by Complainant, and the disclaimer language on Respondent’s <webkinzpetstore.com> site is insufficient and was absent from web pages captured by Complainant prior to October 1, 2008, when Complainant sent Respondent the first demand letter.
The Panel has reviewed the parties’ submissions and Respondent’s websites and finds that Respondent has not sufficiently and consistently disclosed Respondent’s relationship with Complainant. For example, on the website that currently looks most similar to the Complainant’s site, at <webkinzpetshop.com>, the Panel could find no disclaimer at all. The site’s home page makes no reference to Complainant but instead provides at the bottom: “Copyright © 2008 Webkinz Pet Shop. All rights reserved.” The “About Us” link on the home page takes a user to a blank screen with no explanation.
Finally, Respondent’s conduct also fails under the fourth element of the test. By registering thirty-eight Domain Names across three of the principal gTLDs (but mostly in “.com”), Respondent has gone well beyond potential legitimate use and instead has cornered the market for domain names related to Complainant’s KINZ family trademarks. Respondent has candidly stated that Mr. Schuessler, applying his background studies in how to attract potential customers to Internet sites, was experimenting to see which Domain Names would attract the most traffic, draw inquiries, and improve listings on Internet search engines. However, this experimentation with variations of Complainant’s trademarks as Domain Names was unauthorized.
In cases such as this, the Panel finds that the required declaration, which is part of every domain name registration contract (see below for the current text of GoDaddy’s Domain Name Registration Agreement) and intended to have a self-policing function, should have given the Respondent pause and persuaded it to contact Complainant to seek permission in the first place:
“to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
Paragraph 4(b) of the Policy states that any
of the following circumstances, in particular but without limitation, shall be
considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the
Respondent has registered or acquired the domain name primarily for the purpose
of selling, renting, or otherwise transferring the domain name registration to
the Complainant who is the owner of the trademark or service mark or to a
competitor of that Complainant, for valuable consideration in excess of
documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain
name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that it has
engaged in a pattern of such conduct; or
(iii) the Respondent has registered the
domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, the Respondent
has intentionally attempted to attract, for commercial gain, Internet users to
its web site or other on-line location, by creating a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of the Respondent’s web site or location or of a product or service
on its web site or location.
Complainant contends that Respondent’s registration and use of the Domain Names runs afoul of the second and fourth elements, arguing that Respondent had actual notice of Complainant’s marks when it registered the Domain Names and that Respondent has engaged in a pattern of registrations in order to prevent Complainant (and owners of other well-known trademarks) from reflecting its marks in corresponding domain names. Further, registration and use of the Domain Names was for the purpose of increasing traffic to Respondent’s websites while creating a likelihood of confusion for commercial gain.
Respondent does not contest that it knew of Complainant and its marks and, in fact, admits to registering the Domain Names to advance retail sales. As discussed above, however, Respondent’s view is that it had no notice that Complainant would be unhappy with the Domain Name registrations and that as a retailer of WEBKINZ merchandise it was entitled to use Complainant’s trademarks to sell these toys.
The Panel agrees with Complainant that Respondent’s conduct has crossed the line. Respondent is intentionally diverting Internet users to its websites by exploiting the confusing similarity between the Domain Names and Complainant’s marks. Respondent has engaged in a pattern of registrations that block the Complainant from registering its marks in corresponding domain names. If Respondent was uncertain about its entitlement to use Complainant’s marks, as discussed above it should have contacted the Complainant. The Panel finds that any misapprehension by Respondent about its entitlement to use the Domain Names cannot absolve bad faith conduct, even though Respondent has now offered to let many of the Domain Names expire and to transfer certain other Domain Names to Complainant, with the exception of <webkinzpetstore.com>.
Finally, with
respect to the Domain Names that resolve to pay-per-click landing pages,
Complainant has established that Respondent’s use of these domain names is in
bad faith. The Domain Names appear
designed to attract Internet users who are looking for Complainant’s WEBKINZ merchandise
and to cause confusion with Complainant’s marks and websites. The fact that GoDaddy may post these pages
does not relieve Respondent of its responsibility. See
Serta Inc. v.
In conclusion, the Panel’s finds bad faith conduct by the Respondent under the Policy, Paragraphs 4(b)(ii) and (iv).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <getwebkinz.com>, <webkinzcollection.com>, <webkinzcollection.net>, <webkinzcollection.org>, <shopwebkinz.com>, <webkinzforum.com>, <webkinspetstore.com>, <webkinztradingcard.com>, <webkinzbodyspritz.com>, <webkinzcharms.com>, <webkinznews.com>, <webkinznewz.com>, <webkinzonlinestore.com>, <webkinzpetshop.com> <webkinzpetstore.com>, <webkinzraccoon.com>, <webkinzlipgloss.com>, <webkinzmousepads.com>, <buykins.com>, <googkinz.com>, <kinztv.com>, <lilkinzstore.com>, <lilkinzstore.net>, <lilkinzstore.org>, <shopkinz.com>, <webkinzbookmark.com>, <webkinzchocolatelab.com>, <webkinzcloths.com>, <webkinzclothstore.com>, <webkinzduck.com>, <webkinzferiesian.com>, <webkinzgermansheppard.com>, <webkinzpenguin.com>, <webkinzschoolsupplies.com>, <webkinzseal.com>, <webkinzturtle.com>, <webkinzworldstore.com> and <webkinzworldtoys.com> Domain Names
be TRANSFERRED from Respondent to Complainant.
David Bernstein and Joel Grossman, Panelists
Christopher Gibson, Chair
Dated: December 10, 2008
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