Jellycat Ltd. v. thanapat kaisi
Claim Number: FA1309001517936
Complainant is Jellycat Ltd. (“Complainant”), represented by Matthew J. Goggin of Carlson Caspers, Minnesota, USA. Respondent is thanapat kaisi (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jellycatstuffedanimals.info>, registered with GoDaddy.com, LLC.
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 August 12, 2013; the National Arbitration Forum received payment on September 5, 2013.
On September 5, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jellycatstuffedanimals.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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.info. Also on September 11, 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 October 2, 2013, 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" 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.
A. Complainant makes the following assertions:
1. Respondent’s <jellycatstuffedanimals.info> domain name, the domain name at issue, is confusingly similar to Complainant’s JELLYCAT mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jellycat Ltd., uses the JELLYCAT trademark for the following goods: plush toys, stuffed toy animals, dolls, and puppets.
Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the JELLYCAT mark (Reg. No. 75,665,052, registered December 30, 2003). The domain name <jellycatstuffedanimals.info> combines Complainant’s JELLYCAT mark with “stuffed animals.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its trademarks for this or any other site. There is no website currently established using this domain. Apparently, Respondent chose the domain name <jellycatstuffedanimals.info> in an effort to confuse and mislead consumers by falsely implying that it was affiliated with or authorized by Complainant, thereby unfairly trading on the goodwill associated with Complainant’s registered trademark. Respondent registered the <jellycatstuffedanimals.info> domain name on June 2, 2013.
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 uses the JELLYCAT trademark for the following goods: plush toys, stuffed toy animals, dolls, and puppet and is the owner of a trademark registration with the USPTO for the JELLYCAT mark (Reg. No. 75,665,052, registered December 30, 2003). Respondent appears to reside and operate in Thailand. However, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides and operates, so long as it establishes rights in the mark in some jurisdiction. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, Complainant’s registration of the JELLYCAT mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The domain name <jellycatstuffedanimals.info> combines Complainant’s JELLYCAT mark with the descriptive term “stuffed animals,” which is one of the uses explicitly covered by Complainant’s U.S. trademark registration for JELLYCAT. Respondent’s addition of a generic term or phrase does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). 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). Respondent adds the generic top-level domain (“gTLD”) “.info” to the disputed domain name, but this addition of a gTLD to Complainant’s mark is inconsequential a Policy ¶ 4(a)(i) determination. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Consequently, Respondent’s <jellycatstuffedanimals.info> domain name is confusingly similar to Complainant’s JELLYCAT mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 has not authorized Respondent to use its trademarks for this or any other site and asserts that Respondent has no relationship whatsoever with Complainant. The WHOIS information for the <jellycatstuffedanimals.info> domain name lists “thanapat kaisi” as the registrant. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
There is no website currently established using the <jellycatstuffedanimals.info> domain name. Although Complainant provides no evidence showing Respondent’s use of the disputed domain name, the Panel agrees with Complainant that Respondent is failing to make an active use of the disputed domain name and finds that Respondent is not using the <jellycatstuffedanimals.info> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
While Policy ¶4(b) outlines four factors to be considered when making a determination of bad faith, previous panels have consistently found that this list is not exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel will consider the totality of the circumstances when making a determination regarding bad faith.
Apparently, Respondent chose the domain name <jellycatstuffedanimals.info> in an effort to confuse and mislead consumers by falsely implying that it was affiliated with or authorized by Complainant, thereby unfairly trading on the goodwill associated with Complainant’s registered trademark. While Complainant does not provide evidence of Respondent’s use of the disputed domain name, it is clear that there is no website currently established using the <jellycatstuffedanimals.info> domain name. In Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) even though respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” Accordingly, Respondent’s non-use of the domain name is irrelevant, and the Panel finds that Respondent is using the domain name to attract consumers to its own website for commercial gain, proving bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
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.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 12, 2013
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