Ganz v.
Claim Number: FA0705000991778
PARTIES
Complainant is Ganz (“Complainant”), represented by Brandt
W. Gebhardt, of Baker & Hostetler LLP, 3200
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <webkinzz.com>, <webkniz.com> and <weblinz.com>, registered
with Compana,
LLC.
PANEL
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.
Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 21, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 22, 2007.
On May 31, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <webkinzz.com>, <webkniz.com> and <weblinz.com> domain
names are registered with Compana, LLC
and that the Respondent is the current registrant of the names. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 4, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 25, 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@webkinzz.com, postmaster@webkniz.com and
postmaster@weblinz.com by e-mail.
A timely Response was received and determined to be complete on June 25, 2007.
On July 2, 2007 an additional submission was timely filed by
Complainant in accordance with Supplemental Rule 7 and was duly forwarded to
the panel.
On July 5, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Darryl C. Wilson as Panelist.
On July 9, 2007, an additional submission was
timely filed by Respondent in accordance with Supplemental Rule 7 and was duly
forwarded to the panel.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant, Ganz, contends that it has rights in the mark WEBKINZ
which it states is famous and is used in connection with plush toy pets in both
real and virtual environments.
Complainant Ganz also asserts that it has used the mark since at least
as early as April, 2005 and continuously from that time, securing U.S. federal trademark
registrations for the mark and variations thereon along with registering the
domain name <webkinz.com>. Complainant argues that Respondent’s domain
names are identical or confusingly similar to its mark, that Respondent lacks
rights or legitimate interests in the disputed domain names, and that
Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent, Texas International Property Associates (TIPA) contends
that Complainant has not established or substantiated any right to the mark
WEBKINZ prior to the registration of Respondent’s disputed domain names. Thus, there is no need to compare
Complainant’s mark with Respondent’s domain names <webkinzz.com>, <webkniz.com>, and <weblinz.com>.
Respondent also contends that Complainant’s mark and the disputed domain
names consist of terms that are generic and/or common surnames and are thus unprotectable. Respondent, TIPA, further argues that it has
rights and a legitimate interest in the disputed domains by virtue of its use
of the generic terms to provide advertisers with targeted customer traffic and
thereby generate revenues through the free exchange of information and
opportunity. Respondent asserts that
based on the above contentions, Complainant has not demonstrated that the
domain names in question were registered and are being used in bad faith.
C. Additional Submissions
Complainant timely filed an additional submission wherein Complainant
reasserted its rights to its mark based on common law,
Respondent objected to Complainant’s additional submission and replied
that allowance of such a submission is beyond the scope of the UDRP rules and
NAF rules governing the instant proceedings.
FINDINGS
Complainant, Ganz, is the owner of the mark
WEBKINZ which it uses in connection with the sale of toys, including plush toy
pets, and an online environment where WEBKINZ pet owners interact with virtual
incarnations of their pets. WEBKINZ
launched its virtual world at the domain name <webkinz.com> at least as early as April 30, 2005. WEBKINZ had sold 1,000,000 plush toy pets by
2006, and from April 2006 to February 2007 the website had risen from 325,000
unique visitors to 2.8 million.
Complainant’s website and toys received a great deal of media attention
and WEBKINZ pets were named Specialty Toy of the Year by the Toy Industry
Association in 2007. On November 15,
2005, Ganz secured
Respondent registered the disputed domain names
<webkinzz.com> and <webkniz.com> on November 2, 2005
and the disputed domain <weblinz.com>
on November 8, 2005. Respondent states
that a search on the above dates would have shown no registered marks for
Complainant. Respondent contests the
establishment of any common law trademark rights in Complaint based on
Complainant’s failure to submit sufficient evidence of marketing efforts and
thus prove that Respondent knew or should have known about Complainant’s use of
the WEBKINZ mark. Respondent states that
it is in the business of providing locater services and is not attempting to
pass itself off as Complainant. Instead
it is providing a valuable service “to Internet users seeking to locate
providers of goods and services, through reference to common, well-known,
generic, descriptive, and geographically descriptive terms to which no party
has exclusive rights.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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
WEBKINZ mark in accordance with Policy ¶ 4(a)(i) by virtue of its
Respondent’s efforts to characterize Complainant’s WEBKINZ mark as generic words and/or common surnames is unpersuasive. Respondent’s argument is in contravention of the general trademark principle of anti-dissection, which frowns upon attempts to dispute trademark protection by selectively breaking a mark into fragments as opposed to evaluating it as a whole. Further, Respondent fails to explain why it felt the need to combine the allegedly generic, descriptive fragments in the manner that it did in order to come up with the disputed domain names. Respondent’s domain names <webkinzz.com>, <webkniz.com>, and <weblinz.com> are confusingly similar to Complainant’s WEBKINZ mark. The first disputed domain contains Complainant’s mark in its entirety, with the addition of an additional letter “z” to the end of Complainant’s mark, while the <webkniz.com> domain name inverts the letters “i” and “n” in Complainant’s mark, and the <weblinz.com> domain name replaces the letter “k” from Complainant’s mark with the letter “l.” All of these changes may be characterized as common typing errors that Internet users make. The addition of the generic top-level domain “.com” does not sufficiently distinguish the disputed domain names from Complainant’s mark, thus the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.”).
Complainant has
established this element.
Respondent bears the burden of showing that it has rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 argument seems to be that because Complainant does not have rights, that Respondent does. Instead of employing such faulty logic more attention should have been given to providing information that could lead to the conclusion that Respondent had actually done something to independently establish rights. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) as there is no evidence in the record, including the WHOIS information to indicate that Respondent is so known, nor has the Complainant authorized Respondent to use its WEBKINZ mark. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent admits that it is using the disputed domain names to provide locater services and generate advertising revenues. Complainant’s evidence indicates that Respondent’s websites and hyperlinks to third-party websites are in direct competition with Complainant. Such use of the <webkinzz.com>, <webkniz.com> and <weblinz.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The disputed domain names which are characterized by common typographical erroneous variations of Complainant’s WEBKINZ mark are typical of typosquatting and thus further support Respondent’s lack of rights and legitimate interests. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Complainant has established this element.
The disputed domain names <webkinzz.com>, <webkniz.com>, and <weblinz.com> are capable of creating a likelihood of confusion as to source, sponsorship, and affiliation with Complainant’s WEBKINZ mark. Respondent is commercially benefiting from the hyperlinks displayed on the websites that resolve from the disputed domain names and as such evidences bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Respondent’s registration of typosquatted versions of Complainant’s mark is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant has established this element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webkinzz.com>, <webkniz.com> and <weblinz.com>
domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 19, 2007
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