national arbitration forum

 

DECISION

 

Hasbro, Inc. v. mgaenterpriseslimited

Claim Number: FA0908001281068

 

PARTIES

Complainant is Hasbro, Inc. (“Complainant”), represented by Stephen J. Jeffries, of Holland & Knight LLP, Washington D.C., USA.  Respondent is mgaenterpriseslimited (“Respondent”), Zimbabwe.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nerfdarttag.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 25, 2009.

 

On August 25, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nerfdarttag.com> domain name is registered with Godaddy.com, Inc. and that 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 August 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 16, 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@nerfdarttag.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nerfdarttag.com> domain name is confusingly similar to Complainant’s NERF mark.

 

2.      Respondent does not have any rights or legitimate interests in the <nerfdarttag.com> domain name.

 

3.      Respondent registered and used the <nerfdarttag.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Hasbro, Inc., is one of the world’s largest toy makers.  Complainant is the owner of the NERF mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,044,295 issued July 20, 1976) and the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 956,354 issued March 9, 1970).  In 1970, Complainant popularized its NERF brand polyurethane foam balls in the United States and throughout the world.  In furtherance of its NERF business ventures, Complainant expanded its product range in early 2005 and began manufacturing toy foam balls and toy foam dart shooters under the “Nerf Dart Tag” name, a few months prior to Respondent’s registration of the <nerfdarttag.com> domain name.  Complainant does not specify the date in 2005 that the “Nerf Dart Tag” products were launched.      

 

Respondent registered the <nerfdarttag.com> domain name on December 3, 2005.  The disputed domain name resolves to a website featuring advertisement links relating to NERF products including, “Save 10% on Nerf Refills,” “Nerf Guns,” and “Ionizing Air Guns.”  It appears as if these click-through links further resolve to the websites of Complainant’s competitors in the toy industry. 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant has provided evidence of its registration of the NERF mark with the USPTO (Reg. No. 1,044,295 issued July 20, 1976) and the UKIPO (Reg. No. 956,354 issued March 9, 1970).  Thus, the Panel finds that Complainant has established sufficient rights in the NERF mark for the purposes of Policy ¶ 4(a)(i).  Furthermore, it is not necessary for Complainant to have registered its NERF mark in the country of Respondent’s residence.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). 

 

Complainant alleges that Respondent’s <nerfdarttag.com> domain name is confusingly similar to its NERF mark under Policy ¶ 4(a)(i).  The disputed domain name incorporates Complainant’s NERF mark in its entirety with the addition of the descriptive phrase “dart tag” and the affixation of the generic top-level domain (“gTLD”) “.com.”  The degree of confusing similarity between Respondent’s disputed domain name and Complainant’s NERF mark is heightened because the added phrase “dart tag” has an obvious relationship to Complainant’s product lines.  The Panel finds that these additions are insufficient to negate a finding of confusing similarity and thus, the Panel concludes that Respondent’s <nerfdarttag.com> domain name is confusingly similar to Complainant’s NERF mark under Policy ¶ 4(a)(i).  See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).    

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name.  Upon satisfaction of such a showing, 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.”).  Respondent has failed to respond to the allegations against it.  Thus, the Panel may presume that Respondent lacks rights and legitimate interests in the <nerfdarttag.com> domain name.  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).”).  However, the Panel will still examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). 

 

Respondent’s disputed domain name resolves to a website displaying a list of advertisement links, including “Save 10% on Nerf Refills,” “Nerf Guns,” and “Ionizing Air Guns.”  It appears as if these click-through links further resolve to the websites of Complainant’s competitors in the toy industry.  Furthermore, the Panel presumes that Respondent is collecting click-through fees each time that an Internet user clicks on the aforementioned advertisement links.  Thus, the Panel concludes that Respondent is not using the <nerfdarttag.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)). 

 

Moreover, the WHOIS information corresponding to the disputed domain name identifies the registrant as “mgaenterpriseslimited.”  There is no other information in the record to suggest that Respondent has any legitimate connection with the <nerfdarttag.com> domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). 

 

Complainant has satisfied Policy ¶ 4(a)(ii).   

 

Registration and Use in Bad Faith

Complainant contends that Respondent is using the <nerfdarttag.com> domain name, registered on December 3, 2005, to divert confused Internet to Respondent’s website resolving from the disputed domain name.  Complainant also contends that Respondent is intentionally disrupting Complainant’s business by presenting these diverted Internet users with advertisements for Complainant’s competitors in the toy industry.  Thus, the Panel finds that Respondent’s actions do disrupt Complainant’s business, and that therefore, Respondent has registered and is using the <nerfdarttag.com> domain name in bad faith 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

Complainant also contends that Respondent is commercially gaining from this diversion of Internet users, as Respondent is using the disputed domain name to profit through the receipt of click-through fees.  The Panel finds that Respondent is intentionally using the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s NERF mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s registration and use in bad faith.  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).  

Complainant has satisfied Policy ¶ 4(a)(iii). 

 

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 <nerfdarttag.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated: October 1, 2009

 

 

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