Build-A-Bear Workshop, Inc. v. Whois ID Theft Protection c/o Domain Admin
Claim Number: FA0703000952171
Complainant is Build-A-Bear Workshop, Inc. (“Complainant”), represented by Michelle
W. Alvey, of Blackwell Sanders Peper Martin LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buildabare.com>, registered with Rebel.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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 30, 2007.
On April 2, 2007, Rebel.Com confirmed by e-mail to the National Arbitration Forum that the <buildabare.com> domain name is registered with Rebel.Com and that Respondent is the current registrant of the name. Rebel.Com has verified that Respondent is bound by the Rebel.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 April 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 2007 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@buildabare.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <buildabare.com> domain name is confusingly similar to Complainant’s BUILD-A-BEAR.COM mark.
2. Respondent does not have any rights or legitimate interests in the <buildabare.com> domain name.
3. Respondent registered and used the <buildabare.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Build-A-Bear
Workshop, Inc., is the industry leader of the customized teddy bear business
and provides an interactive make-your-own stuffed animal experience. Complainant owns and operates over 190 retail
stores throughout the world and has sold over 26 million stuffed animals since
1997. In connection with its stuffed
animal goods and services, Complainant has registered numerous marks with the
United States Patent and Trademark Office (“USPTO”), including BUILD-A-BEAR
WORKSHOP (Reg. No. 2,756,424 issued
Respondent registered the <buildabare.com>
domain name on
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.
Complainant has established rights in the BUILD-A-BEAR.COM mark pursuant to Policy ¶ 4(a)(i) through its
registration of the mark with the USPTO.
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent’s <buildabare.com>
domain name is phonetically equivalent to Complainant’s entire mark and merely
omits the hyphens between the words. The
omission of hyphens is irrelevant to a Policy ¶ 4(a)(i) analysis. See
Health Devices Corp. v.
Respondent’s <buildabare.com>
domain name is confusingly similar to Complainant’s BUILD-A-BEAR.COM mark pursuant to Policy ¶ 4(a)(i) because the phonetically
identical domain name is not adequately distinguished from the mark under
Policy ¶ 4(a)(i). See Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the <buildabare.com> domain name. Because Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information, as well as other information
in the record, does not suggest that Respondent is commonly known by the <buildabare.com> domain name. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See
Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent is using the <buildabare.com> domain name, which is
confusingly similar to Complainant’s BUILD-A-BEAR.COM
mark, to operate a
website which displays a directory of links to websites that sell stuffed
animals and other products that compete with Complainant. The Panel finds that such use of the disputed
domain name does not constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of
the domain name 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum
Dec. 5, 2003) (finding that the respondent was not using the domain names for a
bona fide offering of goods or services nor a legitimate noncommercial
or fair use because the respondent used the names to divert Internet users to a
website that offered services that competed with those offered by the
complainant under its marks).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using a domain name confusingly similar to
Complainant’s BUILD-A-BEAR.COM mark to
operate a website featuring links to other companies providing products that
compete with Complainant. The Panel
finds such use indicates bad faith according to Policy ¶ 4(b)(iii), because it
appears that Respondent has registered and is using the <buildabare.com> domain name for the
primary purpose of disrupting Complainant’s business. See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Respondent is using the <buildabare.com> domain name to display a directory of links to third-party websites, including websites that sell stuffed animals. The Panel infers that Respondent earns click-through fees for diverting Internet users to these third-party websites. Therefore, Respondent is taking commercial advantage of the confusing similarity between Respondent’s domain name and Complainant’s mark, and profiting from the goodwill associated with the mark. The Panel finds this use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buildabare.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 17, 2007
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