Ganz v. New Realities, Inc. a/k/a Cindy Beck
Claim Number: FA0901001243370
Complainant is Ganz (“Complainant”), represented by Brandt W. Gebhardt, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <webkinzwiz.com>, <webkinzcat.com>, <webkinzdog.com>, <webkinzsnake.com>, <webkinznetwork.com>, and <ganzstore.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 electronically on January 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2009.
On January 21, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <webkinzwiz.com>, <webkinzcat.com>, <webkinzdog.com>, <webkinzsnake.com>, <webkinznetwork.com>, and <ganzstore.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2009 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@webkinzwiz.com, postmaster@webkinzcat.com, postmaster@webkinzdog.com, postmaster@webkinzsnake.com, postmaster@webkinznetwork.com, and postmaster@ganzstore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <webkinzwiz.com>, <webkinzcat.com>, <webkinzdog.com>, <webkinzsnake.com>, and <webkinznetwork.com> domain names are confusingly similar to Complainant’s WEBKINZ mark. Also, Respondent’s <ganzstore.com> domain name is confusingly similar to Complainant’s GANZ mark.
2. Respondent does not have any rights or legitimate interests in the <webkinzwiz.com>, <webkinzcat.com>, <webkinzdog.com>, <webkinzsnake.com>, <webkinznetwork.com>, and <ganzstore.com> domain names.
3. Respondent registered and used the <webkinzwiz.com>, <webkinzcat.com>, <webkinzdog.com>, <webkinzsnake.com>, <webkinznetwork.com>, and <ganzstore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ganz, operates a toy business under its GANZ mark. Complainant first registered its GANZ mark with the United States Patent and Trademark Office (“USPTO”) on September 27, 2005 (Reg. No. 2,999,968). Complainant markets toy pets under its WEBKINZ mark, which was first registered with the USPTO on November 15, 2005 (Reg. No. 3,015,923). In addition to several additional USPTO registration for each mark, Complainant has provided evidence of the registration of its GANZ and WEBKINZ mark with multiple other governmental trademark authorities.
Respondent registered the disputed domain names starting on May 20, 2007. Respondent’s <webkinzwiz.com>, <webkinzcat.com>, <webkinzdog.com>, <webkinzsnake.com>, and <webkinznetwork.com> domain names resolve to websites that market Complainant’s products, as well as the products of Complainant’s competitors. Respondent’s <ganzstore.com> domain name resolves to a website that states it is “Under construction,” and provides sponsored links to products that compete with Complainant.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 provided evidence of the registrations of
its WEBKINZ and GANZ marks with the USPTO and other governmental trademark
authorities. The Panel finds this
evidence is sufficient to establish Complainant’s rights in these marks under
Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)); see also
Complainant contends the <<webkinzwiz.com>, <webkinzcat.com>,
<webkinzdog.com>, <webkinzsnake.com>, <webkinznetwork.com>,
and <ganzstore.com> domain names contain its WEBKINZ or GANZ marks in their entirety,
with the additions of generic or descriptive terms, and the generic top-level
domain “.com.” The Panel finds Respondent’s
disputed domain names each contain one of Complainant’s marks as a prominent
feature, and thus finds the disputed domain names are confusingly similar to
Complainant’s marks under Policy ¶ 4(a)(i).
See Am. Express
Co. v. MustNeed.com, FA 257901 (Nat.
Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com>
domain name confusingly similar to the complainant’s AMEX mark because the
“mere addition of a generic or descriptive word to a registered mark does not
negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see
also Disney Enter. v.
Kudrna, FA 686103 (Nat.
Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s
DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are
insufficient to differentiate the domain name from the mark pursuant to Policy
¶ 4(a)(i)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain names. Complainant is required to produce a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove otherwise. The Panel finds Complainant has adequately
established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain names. The Panel, however, will examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Complainant contends Respondent is
not commonly known by the disputed domain names because the WHOIS information
lists Respondent as “New Realities, Inc. a/k/a Cindy Beck,” and Complainant has
not authorized Respondent to use its marks.
The Panel, absent any other evidence in the record to the contrary, agrees
and finds Respondent is not commonly known by the disputed domain names under
Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name); see also
Each of Respondent’s disputed
domain names resolve to websites displaying links to third-party websites that
compete with Complainant. The Panel
finds Respondent’s use of the disputed domain names is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Vance Int’l, Inc.
v. Abend, FA 970871 (Nat. Arb.
Forum June 8, 2007) (concluding that the operation of a pay-per-click website
at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate
noncommercial or fair use, regardless of whether or not the links resolve to
competing or unrelated websites or if the respondent is itself commercially
profiting from the click-through fees); see also Meyerson v. Speedy
Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a
respondent has failed to offer any goods or services on its website other than
links to a variety of third-party websites, it was not using a domain name in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii)).
Furthermore, Complainant contends
Respondent’s <ganzstore.com>
domain name resolves to a website that states it is “Under Construction.” The Panel finds Respondent has not made an
active use of this disputed domain name, which is evidence Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's [failure to make an active use] of the domain name
does not establish rights or legitimate interests pursuant to Policy ¶
4(a)(ii).”); see also Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is using the disputed domain names to resolve to
websites that link to competing third-party websites. The Panel finds this use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also
Respondent presumably receives compensation in the form of
click-through fees for its use of the confusingly similar disputed domain
names. This is evidence Respondent is
attempting to commercially gain from the goodwill Complainant has established
in its WEBKINZ and GANZ marks. The Panel
finds Respondent’s actions are evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Respondent has failed to make an active use of the <ganzstore.com> domain name, which the Panel finds is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webkinzwiz.com>, <webkinzcat.com>, <webkinzdog.com>, <webkinzsnake.com>, <webkinznetwork.com>, and <ganzstore.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 27, 2009
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