Tomy Company, Ltd. v. Oleg Makov
Claim Number: FA0606000739413
Complainant is Tomy Company, Ltd. (“Complainant”), represented by Peter Holbrook, of McDermott, Will & Emery LLP, 18191 Von Karman Avenue, Suite 500, Irvine, CA 92612-7108. Respondent is Oleg Makov (“Respondent”), Sushkova 12-100, Moscow, RU 109383, RU.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <microidsworld.com>, registered with Network Solutions, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 5, 2006.
On June 27, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <microidsworld.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 July 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 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@microidsworld.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <microidsworld.com> domain name is confusingly similar to Complainant’s MICROIDS mark.
2. Respondent does not have any rights or legitimate interests in the <microidsworld.com> domain name.
3. Respondent registered and used the <microidsworld.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tomy Company, Ltd., is the second largest toy company in Japan and the fifth largest toy company in the world. As of 2006, Complainant has been in business for over eighty years. Complainant designs, manufactures, and markets a wide range of innovative, interactive and educational toys. Complainant holds a trademark registration with the European Union trademark authority for the MICROIDS mark (Reg. No. 3,695,285 issued July 27, 2005; filed March 4, 2004).
Respondent registered the <microidsworld.com> domain name on April 15, 2004. Respondent is using the <microidsworld.com> domain name to operate a website featuring adult-orientated content and links to other adult-orientated websites.
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 MICROIDS mark through registration of the mark with the European Union trademark authority. See 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); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <microidsworld.com> domain name is confusingly similar to Complainant’s MICROIDS mark pursuant to Policy ¶ 4(a)(i), because it contains Complainant’s entire mark and merely adds the generic term “world.” Panels have concluded that the addition of a generic term to a complainant’s mark in a domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s MICROIDS mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <microidsworld.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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”).
Respondent’s failure to answer the complaint raises a presumption that Respondent has no rights or legitimate interests in the <microidsworld.com> domain name. See Am. 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence in the record to suggest that Respondent has ever been commonly known by the disputed domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name when the respondent was not known by the mark. 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.”). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Moreover, Respondent is using the <microidsworld.com> domain name, which includes Complainant’s MICROIDS mark, in order to operate a website featuring adult-orientated content and links to other adult-orientated websites. In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a bona fide offering of goods or services or a noncommercial or fair use. See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”). Consequently, the Panel finds that the Respondent’s use of the disputed domain name to open a website featuring adult-orientated content with links to other adult-orientated websites does not establish rights or legitimate interests in the <microidsworld.com> domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to display
adult-orientated content as well as to display links to other adult-orientated
websites. Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for diverting Internet users to third-party websites. See Qwest Comm’ns
Int’l Inc. v. Ling Shun Shing, FA 187431
(Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to
commercially benefit from the misleading <qwestwirless.com> domain name
by linking the domain name to adult oriented websites, gambling websites, and
websites in competition with Complainant.
Respondent’s attempt to commercially benefit from the misleading domain
name is evidence of bad faith 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.’”). Therefore, the Panel infers that
Respondent’s use of the disputed domain name provides evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
The Panel also finds that
Respondent’s use of Complainant’s MICROIDS mark
in the disputed website creates a likelihood of confusion. Use of Complainant’s trademark is likely to
lead Internet users to associate the disputed domain name with the Complainant. The Panel finds that this likelihood of
confusion provides further evidence of bad faith registration and use under
Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously connected
with the complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see
also Anne of Green Gable
Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000)
(finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent
admittedly used the complainant’s well-known mark to attract users to the
respondent's website).
Furthermore, panels have found that use of domain names to display adult-orientated material and links to other adult-oriented sites constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). In Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003), the panel found that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name).
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 <microidsworld.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret)
Dated: August 17, 2006
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