Build-A-Bear Workshop, Inc. v. Domain Administrator
Claim Number: FA0606000736583
Complainant is Build-A-Bear Workshop, Inc. (“Complainant”), represented by Michelle W. Alvey, of Blackwell Sanders Peper Martin LLP, 720 Olive Street, Suite 2400, St. Louis, MO 63101. Respondent is Domain Administrator (“Respondent”), P.O. Box 533 WB, West Bay, KY 000000.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buildbear.com>, registered with Parava Networks Inc d/b/a Registrateya.Com Naame.Com.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2006.
On June 26, 2006, Parava Networks Inc d/b/a Registrateya.Com Naame.Com confirmed by e-mail to the National Arbitration Forum that the <buildbear.com> domain name is registered with Parava Networks Inc d/b/a Registrateya.Com Naame.Com and that Respondent is the current registrant of the name. Parava Networks Inc d/b/a Registrateya.Com Naame.Com has verified that Respondent is bound by the Parava Networks Inc d/b/a Registrateya.Com Naame.Com 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 June 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 2006 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@buildbear.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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." 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 <buildbear.com> domain name is confusingly similar to Complainant’s BUILDABEAR.COM mark.
2. Respondent does not have any rights or legitimate interests in the <buildbear.com> domain name.
3. Respondent registered and used the <buildbear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Build-A-Bear Workshop, Inc., has continuously used the BUILD-A-BEAR WORKSHOP and BUILDABEAR.COM marks in connection with stuffed animals since 1997. Complainant operates retail stores where consumers can create their own customized teddy bears or other stuffed animals. Complainant also operates a website at the <buildabear.com> domain name, where Internet users can create customized stuffed animals. Since 1997, Complainant has sold over 26 million stuffed animals worldwide.
Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): BUILD-A-BEAR WORKSHOP (Reg. No. 2,756,424 issued August 26, 2003; Reg. No. 2,553,748 issued March 26, 2002; Reg. No. 2,598,778 issued July 23, 2002; Reg. No. 2,633,892 issued October 15, 2002) and BUILD-A-BEAR.COM (Reg. No. 2,884,223 issued September 14, 2004). Complainant also holds valid trademark registrations with various governmental trademark authorities around the world, including Australia, China, Israel and the United Kingdom.
Respondent registered the <buildbear.com> domain name on June 1, 2006. Respondent’s domain name resolves to a web page that displays links to other entities that sell stuffed animals.
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.
Because Complainant has registered the BUILDABEAR.COM mark
with the USPTO and other governmental trademark authorities around the world,
Complainant has established its rights in the mark pursuant to Policy ¶
4(a)(i). See Miller Brewing Co. v.
The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that
the complainant had established rights to the MILLER TIME mark through its
federal trademark registrations); see also Microsoft Corp. v. Burkes, FA
652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in
the MICROSOFT mark through registration of the mark with the USPTO.”); see
also 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).
Respondent’s <buildbear.com> domain name is confusingly similar to Complainant’s registered BUILDABEAR.COM mark because the domain name contains the predominant portions of Complainant’s mark and merely eliminates the letter “a.” In Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), the respondent registered the <compq.com> domain name, and the panel found it to be confusingly similar to the complainant’s COMPAQ mark because a small change that resulted in a misspelling of the mark did not diminish the confusing similarity between the mark and the domain name. Likewise, the Panel in this case finds that the mere omission of one letter from Complainant’s BUILDABEAR.COM mark is insufficient for Respondent to differentiate the <buildbear.com> domain name from the mark and instead renders the disputed domain name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <buildbear.com> domain name. Complainant has the initial burden of making a prima facie case that Respondent has no rights or legitimate interests in the <buildbear.com> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain
name). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
The WHOIS information identifies
Respondent as “Domain Administrator,”
and there is no other evidence in the record indicating that Respondent
is commonly known by the <buildbear.com> domain name. Consequently, Respondent does not have
rights or legitimate interests in the <buildbear.com> domain name
under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Moreover,
Respondent is using the <buildbear.com> domain name to operate a
web page displaying links to other stuffed animal companies that compete with
Complainant. Respondent is likely
receiving click-through fees for diverting Internet users to third-party
competing websites. The Panel finds
that such use is not in connection with 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
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb.
Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where services
that compete with Complainant are advertised.”); see also Glaxo Group Ltd.
v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In addition, Respondent is attempting to attract, for commercial gain, Internet users seeking information on Complainant’s stuffed animal goods, to its own web page where Respondent displays links to Complainant’s competitors. The Panel infers that Respondent is receiving click-through fees for each consumer it diverts to other websites. Hence, Respondent is taking advantage of the confusing similarity between the <buildbear.com> domain name and Complainant’s mark in order to profit from the goodwill associated with the mark, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See BPI Commc’ns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buildbear.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 7, 2006
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