Geoffrey, Inc. v. Toyrus.com
Claim
Number: FA0303000150406
Complainant is
Geoffrey, Inc., Paramus, NJ, USA (“Complainant”) represented
by Roberta S. Bren of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C. Respondent is Toyrus.com, Gdynsk, POLAND (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <toyrus.com>, registered with Tucows,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 17, 2003; the Forum received a hard copy of the
Complaint on March 18, 2003.
On
March 18, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <toyrus.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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
March 19, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 8, 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@toyrus.com 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
April 16, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent,
<toyrus.com>, is confusingly similar to Complainant’s TOYS “R” US
mark.
2. Respondent has no rights or legitimate
interests in the <toyrus.com> domain name.
3. Respondent registered and used the <toyrus.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the owner of numerous marks registered with the U.S. Patent and Trademark Office
including TOYS “R” US (Reg. No. 902,125) and TOYSRUS.COM (Reg. No.
2,370,396). Since 2000, Complainant has
used the <toysrus.com> domain name as the home of a website jointly
sponsored by Complainant and Amazon.com, providing on-line shopping and information
services for children’s, infant’s and family products. Complainant’s website averaged more than
four million visitors per month from 2001 through 2002. Complainant’s sales for the fiscal year were
over $12 billion dollars.
Complainant
spends hundreds of millions of dollars each year to maintain and commercially
promote its wholesome and family-oriented products and services under the TOYS
“R” US mark.
Respondent
actually registered the <toyrus.com> domain name September 25,
1998, and has used the domain name in connection with <megago.com>, an
Internet directory website that features numerous pop-up advertisements. The pop-up advertisements are for commercial
goods and sexually explicit websites.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
demonstrated that it has rights in the TOYS “R” US mark through registration
with the U.S. Patent and Trademark Office as well as by substantial use in
connection with its line of children’s and family products.
The domain name
registered by Respondent, <toyrus.com>, is confusingly similar to
Complainant’s TOYS “R” US mark because it merely omits the “s” at the end of
“toys” and the quotation marks around the “r.”
These omissions from a famous mark within a domain name do not create a
distinct mark capable of overcoming a claim of confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO
Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s
UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark
and thus made the disputed domain name confusingly similar to it); see also
Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive). Furthermore, the omission of punctuation,
such as quotation marks, does not create a domain name capable of overcoming a
Policy ¶ 4(a)(i) analysis because quotation marks cannot be represented in
domain names. Thus, the inclusion of
this punctuation is not relevant when deciding if a mark is identical or
confusingly similar. 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant 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”).
Respondent did
not invoke any circumstances to demonstrate rights and legitimate interests in
the domain name. When Complainant
asserts a prima facie case against Respondent, the burden of proof
shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the Respondent failed to invoke any
circumstance that could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
using the <toyrus.com> domain name to divert Internet users to a
website that features pop-up advertisements and an Internet directory at
<megago.com>. The misspelling of
a well-known mark in a domain name to divert Internet users to a website
sponsored by Respondent 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 pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site.”).
Based on the
fame of Complainant’s TOYS “R” US mark, Respondent would be hard-pressed to
establish that it is commonly known as TOY R US or <toyrus.com>. Respondent failed to come forward with any
evidence and the Panel finds that Respondent is not commonly known as <toyrus.com>
and has no rights or legitimate interests in the domain name pursuant to Policy
¶ 4(c)(ii). See Foot Locker
Retail, Inc. v. Bruce Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating
that “[d]ue to
the fame of Complainant’s FOOT LOCKER family of mark . . . and the fact that
Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel
infers that Respondent was not “commonly known by” any of the disputed domain
names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does
not apply to Respondent”); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on the
fame of Complainant’s mark, the Panel infers that Respondent was on notice of
Complainant’s rights in the TOYS “R” US mark when it registered the <toyrus.com>
domain name. Registration of an
infringing domain name, despite actual or constructive knowledge of
Complainant’s rights, is evidence of bad faith pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
Respondent is
using a domain name that is a misspelling of Complainant’s famous TOYS “R” US
mark to divert Internet traffic to a website that features adult entertainment
pop-up advertisements. The association
of Complainant’s mark with pornographic material tarnishes Complainant’s
goodwill. This type of behavior is evidence
of bad faith use pursuant to Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC
Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a
confusingly similar domain name with a pornographic website can constitute bad
faith); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the
Respondent linked the domain name in question to websites displaying banner
advertisements and pornographic material).
Respondent is
diverting Internet traffic to <megago.com> and an Internet directory
website that features pop-up advertisements.
The Panel infers that Respondent is making a profit from the Internet
traffic that is diverted to the website and click-on advertisements or
links. Thus, Respondent is using a
confusingly similar domain name to create a likelihood of confusion for its own
commercial gain. This behavior is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also State Farm Mut. Auto. Ins. Co.
v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the
Respondent registered the domain name <statefarmnews.com> in bad faith
because Respondent intended to use Complainant’s marks to attract the public to
the website without permission from Complainant).
Having established
all three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it
is Ordered that the <toyrus.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 25, 2003.
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page