Geoffrey,
Inc. v. George Meyer
Claim
Number: FA0302000145964
Complainant
is Geoffrey, Inc., Alexandria, VA (“Complainant”) represented
by Roberta S. Bren, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C. Respondent is George Meyer, Brooklyn, NY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kids-r-us.org>,
registered with Enom.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration
Forum (the "Forum") electronically on February 17, 2003; the Forum
received a hard copy of the Complaint on February 17, 2003.
On February 17, 2003, Enom confirmed by e-mail to the Forum that
the domain name <kids-r-us.org> is registered with Enom and that
Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 February 19, 2003, a Notification of Complaint and Commencement
of Administrative Proceeding (the "Commencement Notification"),
setting a deadline of March 11, 2003 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@kids-r-us.org by e-mail.
Having received no Response from Respondent, using the same
contact details and methods as were used for the Commencement Notification, the
Forum transmitted to the parties a Notification of Respondent Default.
On March 18, 2003, pursuant to Complainant's request to have the
dispute decided by a single-member Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative
Panel (the "Panel") finds that the 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 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
<kids-r-us.org> domain name is confusingly similar to
Complainant’s KIDS “R” US mark.
2.
Respondent
does not have any rights or legitimate interests in the <kids-r-us.org>
domain name.
3.
Respondent
registered and used the <kids-r-us.org> domain name in bad faith.
B. Respondent failed to
submit a Response in this proceeding.
Complainant
holds numerous trademark registrations for the family of “R” US marks with the
United States Patent and Trademark Office (“USPTO”), including KIDS “R” US
(Reg. No. 1,270,000, registered March 13, 1984). Complainant has used the marks in relation to the retail sale of
toys, sporting goods and other items since at least as early as 1960. Complainant’s use of the marks has expanded
to include promoting and providing entertainment services and events, real
estate leasing, insurance services, and promoting and selling toys, games,
novelties, party goods, costumes, furniture, books, bicycles, clothing, video
tapes, video games, computers, clocks, electronic devices, cosmetics, candy,
sundries, and numerous other products and services throughout the United States
and internationally. Complainant has
maintained a website at <kidsrus.com> since November 1999 with the
exception of a period of four months when the registration of the domain name
was inadvertently allowed to lapse.
Complainant
submits evidence that Respondent registered the <kids-r-us.org>
domain name on May 18, 2000. Pursuant to the registration verification
information provided by the registrar, Respondent registered the disputed
domain name on July 25, 2001.
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.
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 established that it has rights in the KIDS “R” US mark through registration
with the USPTO.
Respondent’s
<kids-r-us.org> domain name is confusingly similar to
Complainant’s KIDS “R” US mark because the disputed domain name incorporates
Complainant’s entire mark, and merely deletes the quotation marks and adds
hyphens on either side of the letter “r.”
The absence or use of punctuation marks such as quotation marks or
hyphens does not alter the fact that the <kids-r-us.org> domain
name is confusingly similar to Complainant’s KIDS “R” US mark. See Mrs. World Pageants, Inc. v. Crown
Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that
punctuation is not significant in determining the similarity of a domain name
and mark); see also InfoSpace.com
v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he
domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark.
The addition of a hyphen and .com are not distinguishing features”).
The
panel finds that Policy ¶ 4(a)(i) has been established.
Respondent
has not provided the Panel with a Response in this proceeding. Therefore, the Panel is permitted to accept
all reasonable inferences and allegations in the Complaint as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless clearly contradicted by the evidence).
Moreover,
the Panel is permitted to presume that Respondent lacks any rights or
legitimate interests in the disputed domain name because of Respondent’s
failure to submit a Response. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent
has no rights or legitimate interests in the domain name because the Respondent
never submitted a response nor provided the Panel with evidence to suggest
otherwise).
Respondent
is using the <kids-r-us.org> domain name to direct Internet
traffic to its website, which features products and services that are similar
to those offered by Complainant. The
use of a confusingly similar domain name to sell goods or services in
competition with a registered trademark holder is not a use in connection with
a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website).
Respondent
has offered no proof and there is no evidence in the record that shows that
Respondent is commonly known by either KIDS R US or <kids-r-us.org>. Therefore, Respondent has failed to
demonstrate that it has rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The
panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent
is using the <kids-r-us.org> domain name to direct Internet
traffic to a website that offers goods and services similar to those offered by
Complainant. The use of a confusingly
similar domain name to draw Internet users to Respondent’s commercial website
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent).
Furthermore,
the Panel may infer that Respondent had actual and constructive knowledge of
Complainant’s mark because of the widespread fame of Complainant’s mark. When Respondent reasonably should have been
aware of Complainant’s trademark, actually or constructively, there is a legal
presumption of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted bad faith); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith).
The
panel finds that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <kids-r-us.org> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K.
McCotter, Jr. (Ret.), Panelist
Dated: March 24, 2003
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