Diamond Select Toys and Collectibles LLC v. BWI Domain Manager c/o Domain Manager
Claim Number: FA0904001256686
Complainant is Diamond Select Toys and Collectibles LLC (“Complainant”), represented by Robert
Yee, of Diamond Select Toys and Collectibles LLC.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <minimates.com>, registered with Rebel.com.
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 April 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2009.
On April 9, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <minimates.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 April 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 12, 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@minimates.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <minimates.com> domain name is identical to Complainant’s MINIMATES mark.
2. Respondent does not have any rights or legitimate interests in the <minimates.com> domain name.
3. Respondent registered and used the <minimates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diamond Select
Toys and Collectibles LLC, holds a registration of its MINIMATES mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,655,096 issued
November 26, 2002) for use in connection with collectible toy figures, dolls,
and doll accessories.
Respondent registered the <minimates.com> domain name on October 22, 2005. The disputed domain name resolves to a website that contains several hyperlinks to various third-party websites, some of which are related to 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.
The Panel finds that Complainant has sufficiently established rights in the MINIMATES mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <minimates.com> domain name contains Complainant’s entire mark and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of this gTLD does not distinguish the disputed domain name from Complainant’s mark, and therefore, the Panel finds that the <minimates.com> domain name is identical to Complainant’s MINIMATES mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
Respondent’s <minimates.com>
domain name resolves to a website that
displays several hyperlinks to various third-party websites, some of
which are related to Complainant. The
Panel infers that Respondent receives click through fees for these hyperlinks. The Panel finds that Respondent uses the
disputed domain name to divert Internet users to its website 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 Constellation Wines
Furthermore, Respondent is listed in the WHOIS information
as “BWI Domain Manager c/o Domain Manager,”
which does not indicate that Respondent is commonly known by the <minimates.com> domain name.
Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v.
Lee Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “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); see
also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
The Panel finds that Respondent has been the losing respondent in several previous UDRP proceedings. See, e.g., Det Berlingske Officin A/S v. BWI Domain Manager, D2007-1717 (WIPO Jan. 23, 2008); see also, e.g., Gene Kelly Image Trust v. BWI Domain Manager, D2008-0342 (WIPO Apr. 22, 2008). Accordingly, the Panel finds that this history is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent’s <minimates.com>
domain name resolves to a website that
contains several hyperlinks, some of which are related to Complainant, and some
which link to other third-party websites.
The Panel finds that this constitutes a disruption of Complainant’s
business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc.,
FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the complainant's marks suggests that the respondent,
the complainant’s competitor, registered the names primarily for the purpose of
disrupting the complainant's business); see
also Disney Enters., Inc.
v. Noel, FA 198805 (Nat. Arb. Forum Nov.
11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Finally, the Panel finds that Respondent use of the identical
<minimates.com> domain name to divert Internet users to its
website that contains the aforementioned hyperlinks creates a likelihood of
confusion as to Complainant’s affiliation with the disputed domain name, and
thus, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is trading off the goodwill
surrounding Complainant’s mark. See
Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be
For
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <minimates.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 2, 2009
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