DECISION

 

Ty, Inc. v. Dynadot Privacy Service

Claim Number: FA2606002229983

 

PARTIES

Complainant is Ty, Inc. ("Complainant"), represented by Jocelyn C. Smith of UB Greensfelder, LLP, Ohio, USA. Respondent is Dynadot Privacy Service ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ittybittybeanies.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nick J. Gardner as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 29, 2026; Forum received payment on June 29, 2026.

 

On July 2, 2026, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <ittybittybeanies.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 July 2, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2026 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@ittybittybeanies.com. Also on July 2, 2026, 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 July 23, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nick J. Gardner as Panelist.

 

On August 4, 2026, exercising his authority under Rule 10 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel issued a Procedural Order to both parties. The Procedural Order recorded that the Panel had, in the exercise of its discretion, undertaken limited independent factual research and had found that the word "beanie" ordinarily denotes a small, close-fitting knitted cap, that the expression "itty bitty" is a common informal adjective meaning "very small," and that the composite phrase "itty bitty beanie" is used by a number of third parties online to refer generically to a small beanie-style hat, unconnected with Complainant. The Procedural Order further noted that Complainant's reliance on the passive-holding doctrine of Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, rested on that panel's inability to conceive of any plausible good-faith use of the domain name at issue there, and questioned whether that reasoning applies given the descriptive meaning identified above. The Panel invited the parties to file further submissions addressed solely to that material, setting a deadline of August 12, 2026 for Complainant and August 19, 2026 for Respondent, and extended the due date for the Panel's decision to August 26, 2026.

 

Neither party filed any further submission in response to the Procedural Order. In particular, Complainant did not respond to the Procedural Order or otherwise address the matters raised in it.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Ty, Inc., has been engaged in the business of manufacturing and selling plush toys and related retail services since at least 1986, and has continuously used its BEANIES, BEANIE BABY, and BEANIE BABIES trademarks (collectively, the "BEANIES Marks") since at least 1993–1998. Complainant owns multiple USPTO registrations for the BEANIES Marks, including Registration No. 3,451,670 for BEANIES (registered June 24, 2008), Registration No. 2,703,368 for BEANIE BABY (registered April 8, 2003), Registration No. 2,049,196 for BEANIE BABIES (registered April 1, 1997), Registration No. 3,073,540 for BASKET BEANIES (registered March 28, 2006), and Registration No. 7,082,147 for SQUISHY BEANIES (registered June 13, 2023). Complainant also asserts common law rights in the BEANIES Marks arising from its long-standing and continuous use.

 

Complainant contends that the domain name is confusingly similar to the BEANIES Marks because it wholly incorporates the BEANIES mark and merely adds the descriptive/generic terms "itty" and "bitty" together with the ".com" gTLD, neither of which avoids confusing similarity under Policy ¶ 4(a)(i).

 

Complainant contends that Respondent has no rights or legitimate interests in the domain name because Respondent has not been licensed or authorized to use the BEANIES Marks, is not commonly known by the domain name, has made no active use of the domain name (passive holding), and instead made a general offer to sell the domain name for USD $1,999.00, an amount Complainant characterizes as in excess of Respondent's likely out-of-pocket costs.

 

Complainant contends that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(i) and ¶ 4(b)(iv), relying on Respondent's offer to sell the domain name, Respondent's passive holding of the Domain (applying the doctrine in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and Complainant's assertion that Respondent had actual or constructive knowledge of the BEANIES Marks by virtue of their registration and renown.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds the following facts established by the record:

1. Complainant owns valid and subsisting USPTO trademark registrations for the BEANIES Marks, including Registration No. 3,451,670 for BEANIES, registered June 24, 2008, and has used the BEANIES Marks in commerce since at least 1998.

2. The domain name <ittybittybeanies.com> wholly incorporates the BEANIES mark together with the additional terms "itty" and "bitty" and the ".com" gTLD. The registration date of the domain name is not established on the present record.

3. Respondent has not filed a Response, is not authorized by Complainant to use the BEANIES Marks, and is not shown by the WHOIS record to be commonly known by the domain name.

4. Complainant alleges, and the record does not contradict, that the Domain is passively held and that Respondent made a general offer to sell the Domain for USD $1,999.00. The record does not include evidence of the content of that sale listing, evidence that the offer referenced Complainant or the BEANIES Marks, evidence of any content historically resolved from the domain name, or evidence of any communication between Respondent and Complainant.

5. The word "beanie" ordinarily refers to a small knitted cap, the phrase "itty bitty" is a common informal expression meaning "very small," and various third parties use the composite phrase "itty bitty beanie" online, in contexts unconnected to Complainant, to describe a small beanie-style hat.

6. There is no evidence on the record that Complainant, or any other person, has ever used the phrase "itty bitty" in relation to Complainant's products.

7. Neither party responded to the Panel's Procedural Order inviting submissions on the matters set out at paragraph 4 above.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 3.1 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").

 

Identical and/or Confusingly Similar

Complainant has established rights in the BEANIES mark through its USPTO registrations, including Registration No. 3,451,670. The Domain wholly incorporates the BEANIES mark and adds only the terms "itty" and "bitty" and the ".com" gTLD. The addition of descriptive or generic terms, and of a gTLD, does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding confusing similarity where a domain name contains the complainant's entire mark and differs only by the addition of a generic or descriptive phrase); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (TLD disregarded under a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant bears the initial burden of making a prima facie case that Respondent lacks rights or legitimate interests in the Domain; the burden then shifts to Respondent to come forward with evidence of such rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Complainant has shown that it has not authorized Respondent to use the BEANIES Marks and that Respondent is not shown by the WHOIS record to be commonly known by the Domain, which would ordinarily be sufficient to shift the burden to Respondent.

 

However, this is not an ordinary case, because the Domain is composed of a phrase — "itty bitty beanie" — that the Panel's own research, communicated to the parties and left unanswered, shows to carry an established generic and descriptive meaning independent of Complainant's mark, namely a small beanie-style hat. WIPO Overview 3.0, ¶ 2.10.1 recognizes that use of a domain name corresponding to a genuinely generic or descriptive term may support a claim to a legitimate interest. Where, as here, a mark is coextensive with a common descriptive phrase, the Panel must apply heightened scrutiny before concluding that Respondent lacks any legitimate interest, and a bare default is not by itself sufficient to overcome the plausibility of a legitimate descriptive use, particularly where the Panel has specifically invited Complainant to address that possibility and Complainant elected not to do so.

 

The record contains no evidence of what the Domain has actually been used for that would affirmatively negate a legitimate descriptive use — for example, no evidence that the Domain resolved to content targeting Complainant, offering competing goods, or otherwise trading on the BEANIES Marks specifically, as opposed to using the descriptive phrase in its ordinary sense. On this record, the Panel is not persuaded that Complainant has carried its burden of showing that Respondent lacks rights or legitimate interests in the Domain. The Panel therefore finds that Complainant has failed to establish Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Although the Panel's finding on Policy ¶ 4(a)(ii) is sufficient to dispose of the Complaint, the Panel also addresses bad faith, as the two issues are closely related on this record.

 

Complainant's bad faith case rests principally on the passive-holding doctrine of Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and on Respondent's general offer to sell the Domain for USD $1,999.00. The finding of bad faith in Telstra turned on the panel's conclusion in that case that it was "not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate." That reasoning does not translate to the present facts. Given the established generic meaning of "itty bitty beanie," and the multiple examples of unrelated third-party use of that phrase in its ordinary descriptive sense, the Panel is able to conceive of plausible good-faith uses of the domain name. The passive-holding doctrine therefore does not, without more, support a finding of bad faith here.

 

As to the offer to sell, a general offer to sell a domain name for an amount in excess of a registrant's documented out-of-pocket costs may support bad faith under Policy ¶ 4(b)(i), but only where the evidence shows that Respondent targeted Complainant's mark in registering the domain name. Complainant has not placed before the Panel the substance of the sale listing, has not shown that the listing referenced Complainant, the BEANIES Marks, or plush toys, and has not shown any content historically hosted at the domain name or any communication by Respondent directed at Complainant. Where, as here, the domain name also corresponds to a common descriptive phrase, an unadorned offer to sell at a price consistent with the ordinary secondary market for descriptive domain names does not, by itself, establish that Respondent registered or is using the Domain because of its correspondence to Complainant's mark, as opposed to its descriptive value.

Complainant's remaining bad faith argument — that Respondent had constructive or actual notice of the BEANIES Marks by virtue of their registration and renown — establishes, at most, that Respondent may have been aware the term was also used as a trademark; it does not, without evidence of targeting, establish that Respondent registered or used the domain name because of that mark rather than because of its ordinary descriptive meaning. On the present record, the Panel finds that Complainant has not established that Respondent registered and is using the domain name in bad faith. The Panel therefore finds that Complainant has failed to establish Policy ¶ 4(a)(iii).

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <ittybittybeanies.com> domain name REMAIN WITH Respondent.

 

 

 

Nick J. Gardner Panelist

Dated: August 25, 2026