Geoffrey, LLC v. Joseph Cillo

NATIONAL ARBITRATION FORUM
URS DEFAULT DETERMINATION

Geoffrey, LLC v. Joseph Cillo
Claim Number: FA1412001595126

DOMAIN NAME

<toysrus.nyc>

PARTIES

	Complainant: Geoffrey, LLC of Wayne, NJ, United States of America
	Complainant Representative: Blank Rome LLP Megan E Spitz of Philadelphia, PA, United States of America

	Respondent: Joseph Cillo of bronx, NY, United States

REGISTRIES and REGISTRARS

	Registries: The City of New York by and through the New York City Department of Information Technology & Telecommunications
	Registrars: GoDaddy.com, Inc.

EXAMINER

	The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
	Ahmet Akguloglu, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: December 12, 2014
	Commencement: December 15, 2014
	Default Date: December 30, 2014
	Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

	Procedural Findings:
		Multiple Complainants: The Complaint does not allege multiple Complainants.
		Multiple Respondents: The Complaint does not allege multiple Respondents.

Findings of Fact: The Complainant claimed to be a subsidiary of Toys “R” Us Inc., headquartered in NYC suburb Wayne, NJ and a leading worldwide retailer of toys, games and numerous other consumer goods, with its flagship store located in NYC’s Time Square. The Complainant has also claimed that it is the exclusive owner of the "TOYSRUS" marks, which are used and registered in United States and throughout the world for such goods and services and which are amongst the most recognizable and valuable brands worldwide. The Complainant also asserted that it holds numerous valid national and regional registrations worldwide and that are currently in use. The complainant claimed that the respondent has no legitimate right or interest on the domain name and the domain name was registered and is being used in bad faith. Respondent provided no response to the complaint.

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

It is clear that the Complainant has met its burden by clear and convincing evidence that the domain name is identical to the word mark “TOYSRUS” for which the Complainant holds valid national and regional registrations and that are in current use.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

The Complainant did not authorize the Respondent for use of the “TOYSRUS” trademark. The Respondent did not submit any response or evidence to the contrary that it has legitimate interest for usage of the “TOYSRUS” trademark. Therefore, it is understood that the Respondent does not have any right or legitimate interest over the disputed domain name.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

Given the well-known status of the Complainant’s trademark, the Respondent was clearly well aware of the Complainant and of its rights on the trademark when it registered the domain name. Besides, the Respondent has proceeded to register and use the domain name in order to attract intentional commercial gain from internet users by way of parking the page in order to gain pay-per-click revenue. Moreover, as far as understood from the who.is records, the Respondent registered several well-known brands as a domain name, namely; <bacardi.nyc>, <barnesandnoble.nyc>, <budlight.nyc>, <drpepper.nyc>, <freddiemac.nyc>, <generalmotors.nyc>, <hrblock.nyc>, <kraft.nyc>, <radioshack.nyc> and <waltdisney.nyc>. Accordingly, the Examiner finds that the Respondent registered and used the disputed domain name in bad faith.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

toysrus.nyc

Ahmet Akguloglu
Examiner
Dated: January 8, 2015

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page