TRU Kids Inc. v. Ramsey Jabbar / Ramsey Dean Mgmt.
Claim Number: FA2210002014681
Complainant is TRU Kids Inc. (“Complainant”), USA, represented by Eric Perrott of Gerben Perrott, PLLC, District of Columbia, USA. Respondent is Ramsey Jabbar / Ramsey Dean Mgmt. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <babiesaurus.com>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 4, 2022; Forum received payment on October 4, 2022.
On October 5, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <babiesaurus.com> 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 October 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2022 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@babiesaurus.com. Also on October 6, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant has used the BABIES “R” US mark in connection with the retail sale of baby, toddler, and kids’ products since 1960. Complainant claims rights in the BABIES “R” US mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2046673, registered March 18, 1997). The disputed domain name is confusingly similar to Complainant’s BABIES “R” US mark as it is simply a misspelling of Complainant’s BABIES R US and BABIESRUS.COM marks by adding two letters.
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BABIES “R” US mark in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent used the disputed domain name to pass itself off as Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith by attempting to confuse consumers as to the source of the disputed domain to capitalize on Complainant’s well-known BABIES “R” US mark. Respondent uses the disputed domain name to confuse consumers into believing that there exists some sort of affiliation between Respondent and Complainant. Respondent uses the disputed domain name to pass itself off as Complainant. Respondent had actual knowledge of Complainant’s rights in the BABIES “R” US mark before its registration of the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on December 29, 2021.
2. Complainant has established rights in the BABIES “R” US mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2046673, registered March 18, 1997).
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the BABIES “R” US mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2046673, registered March 18, 1997). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its trademark registration for the BABIES “R” US mark, the Panel finds Complainant has rights in the BABIES “R” US mark under Policy ¶ 4(a)(i).
Complainant next argues that the disputed domain name <babiesaurus.com> is confusingly similar to the BABIES “R” US mark as it is simply a misspelling of Complainant’s BABIES R US and BABIESRUS.COM marks by adding two letters “au.” The disputed domain name also sounds confusingly similar to Complainant’s website, creating a homophone for BABIES ARE US (Respondent spelling “are” as “aur” and Complainant using the letter “R”). The Panel notes that the disputed domain name consists of the BABIES “R” US mark in its entirety, although with a minor misspelling of BABIES R US, adding an extra “AU” between the “S” and the “R.” Adding a single letter or two letters is generally insufficient to distinguish a disputed domain name from the trademark it incorporates, particularly when that change does not alter the meaning or overall impression of the name. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BABIES “R” US mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200
(Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent has not been sponsored or endorsed by, or authorized or licensed to use its BABIES “R” US mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Ramsey Jabbar / Ramsey Dean Mgmt.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that Respondent’s website offers baby products and toys for sale that are highly similar to the goods sold on Complainant’s website and listed in its trademark registrations. Further, the confusingly similar BABY and “TOYSRUS” trademark is prominently displayed at the top of the disputed domain name’s resolving website. The Panel finds that the use of the disputed domain name to pass Respondent off as Complainant does not constitute a bona fide offering of goods or services, nor any legitimate non-commercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith by attempting to confuse consumers as to the source of the disputed domain to capitalize on Complainant’s well-known BABIES “R” US mark. Respondent uses the disputed domain name to confuse consumers into believing that there exists some sort of affiliation between Respondent and Complainant. Respondent uses the disputed domain name to pass itself off as Complainant.
The Panel observes that use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
The Panel recalls that Complainant has provided the Panel with screenshots of the disputed domain name’s resolving webpage which offers baby products and toys for sale that are highly similar to the goods sold on Complainant’s website and listed in its trademark registrations. Further, the confusingly similar BABY and “TOYSRUS” trademark is prominently displayed at the top of Respondent’s web page. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant further contends that that Respondent had knowledge of Complainant’s rights in BABIES “R” US mark at the time of registering the disputed domain name. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the BABIES “R” US mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <babiesaurus.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 9, 2022
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