Jellycat Ltd. v. Joshua Parry
Claim Number: FA1308001514604
Complainant is Jellycat Ltd. (“Complainant”), represented by Matthew J. Goggin of Carlson Caspers, Minnesota, USA. Respondent is Joshua Parry (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jellycatstuffedanimals.com>, registered with 1&1 Internet AG.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2013; the National Arbitration Forum received payment on August 14, 2013.
On August 14, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <jellycatstuffedanimals.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jellycatstuffedanimals.com. Also on August 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered <jellycatstuffedanimals.com> on December 14, 2009.
Respondent Contentions
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant states that it has registered the JELLYCAT mark and uses the mark in connection with plush toys and stuffed animal products. See USPTO Reg. No. 2,800,566 registered on Dec. 30, 2003. In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) determined that a USPTO registration was a satisfactory showing of rights under Policy ¶ 4(a)(i). The Panel finds that Complainant’s registration of JELLYCAT established Policy ¶ 4(a)(i) rights in the mark.
Complainant next argues that Respondent has registered the <jellycatstuffedanimals.com> domain name, which merely adds the descriptive terms “stuffed” and “animals” to Complainant’s mark. The Panel notes the addition of the generic top-level domain (“gTLD”) “.com,” and finds this addition to be irrelevant. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel agrees that the descriptive terms “stuffed” and “animals” are not sufficient additions so as to defeat confusing similarity, as Complainant’s business model involves the sale of plush toys and stuffed animals. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel concludes that the <jellycatstuffedanimals.com> domain name is confusingly similar to the JELLYCAT mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that it has not authorized Respondent to use the JELLYCAT mark in any way. The Panel notes that the WHOIS information lists “Joshua Parry” as the registrant of this domain name. Previous panels have concluded that a respondent is not commonly known as a disputed domain name when there is no evidence to support such a finding. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel agrees that Respondent is not commonly known as the <jellycatstuffedanimals.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is using the <jellycatstuffedanimals.com> domain name to host images of Complainant’s JELLYCAT products in connection with the promotion of hyperlink advertisements. The Panel notes that the <jellycatstuffedanimals.com> domain name resolves to a website that includes various hyperlinks, along with images of Complainant’s goods and hyperlinks to Amazon.com websites that sell Complainant’s goods. In Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002), the panel did not find an unauthorized website that promoted a complainant’s own goods to constitute a Policy ¶ 4(c)(i) bona fide offering. The Panel agrees that Respondent cannot claim a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, upon the use of the confusingly similar <jellycatstuffedanimals.com> domain name to promote Complainant’s own goods without authorization.
Complaint has proven this element.
Complainant argues that Respondent seeks to create the false impression that Complainant is the source or origin of the content and hyperlinks accessible through the <jellycatstuffedanimals.com> domain name’s resolving website. Complainant argues that it is clear from a comparison of Complainant’s website at the <jellycat.com> domain name with the website at the <jellycatstuffedanimals.com> domain name that Respondent lifted various images of Complainant’s products in order to give the impression that Respondent and its <jellycatstuffedanimals.com> domain name are affiliated with Complainant. Complainant concludes that if one were to compare Complainant’s various products as seen on the <jellycatstuffedanimals.com> domain name), with the images of Complainant’s goods as seen through <jellycat.com>, it is clear the images are identical or at the very least nearly identical. The Panel acknowledges the similarities between the JELLYCAT goods promoted through Complainant’s website and the goods described and outlined by Respondent through the <jellycatstuffedanimals.com> domain name. In Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000), the panel concluded that the use of a complainant’s own goods in the promotion of respondent’s own endeavor through a confusingly similar domain name was significant evidence of a Policy ¶ 4(b)(iv) bad faith attempt to create a likelihood of confusion regarding the source or origin of respondent’s business. The Panel agrees and holds that Respondent registered and uses the <jellycatstuffedanimals.com> domain name in bad faith under Policy ¶ 4(b)(iv) on this basis.
Complainant alternatively argues that Respondent’s hyperlinks send Internet users to competing businesses. The Panel notes that one of the hyperlinks on the disputed domain name’s website takes Internet users to the FAO Schwarz website. Previous panels have found Policy ¶ 4(b)(iv) bad faith when an Internet user finds competing content through a confusingly similar domain name’s website. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds evidence of Policy ¶ 4(b)(iv) bad faith through Respondent’s promotion of competing commercial hyperlinks on the <jellycatstuffedanimals.com> domain name’s websites.
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <jellycatstuffedanimals.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 12, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page