Generic Top Level Domain Name (gTLD) Decisions

The Complainant is F.A.O. Schwarz , New York, NY, USA ("Complainant") represented by Barry Werbin, Herrick, Feinstein LLP. The Respondent is John Zuccarini, Anadalusia, PA, USA ("Respondent").

The domain names at issue are "faoscwartz.com","foaschwartz.com","faoshwartz.com","faoswartz.com" registered with CORE.

The Panelist certifies that he has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 17, 2000; The Forum received a hard copy of the Complaint on October 17, 2000.

On 11/3/00, CORE confirmed by e-mail to the Forum that the domain names "faoscwartz.com","faoschwartz.com","faoshwartz.com","faoswartz.com" are registered with CORE and that the Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 3, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 2000 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@"faoscwartz.com","faoschwartz.com","faoshwartz.com","faoswartz.com" by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 1, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent failed to submit a response in this matter.

Complainant, F.A.O. Schwarz, is a New York Corporation founded in 1862. It has a 138-year history of providing toys and children’s merchandise to its customers. Complainant is the exclusive owner in the United States and elsewhere of the "FAO SCHWARZ" and "FAO SCHWEETZ" trademarks and service marks. Complainant currently operates 42 stores across the United States in 41 cities and is known as one of the most famous toy companies in the world. In addition, Complainant has two websites at fao.com and faoschwarz.com, which were launched in 1995. The websites offer a vast selection of toys, collectibles and novelty items.

Respondent registered the four domain names at issue between December 8 and December 15, 1999. Respondent has registered thousands of other domain names that are confusingly similar to other famous marks or personal names.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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’s rights are evidenced by its famous trademark FAO SCHWARZ.

Respondent has registered four domain names, all of which are virtually identical or confusingly similar to the Complainant’s famous mark. Policy ¶ 4.a.(i). Each of the domain names registered by Respondent has a slight misspelling and appears to be intentionally similar to the Complainant’s mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 6, 2000) (finding that adding the letter "s" to the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark).

Under the UDRP, Respondent bears the burden of proving that he has rights or a legitimate interest in domain names in question. In this case, there is no evidence to support the Respondent has any such rights or a legitimate interest in the domain names in question. Policy 4.a.(ii). Accordingly, the evidence submitted by Complainant supports that Respondent is not commonly known by the Complainant’s famous mark, or any variation of which, that forms the Respondent’s domain names. Policy ¶ 4.c.(ii). Therefore, since the Respondent has made no showing with respect to any of the above considerations, the panel must find that Respondent has no rights or legitimate interests in the domain names in question.

The Respondent registration and use of the domain names at issue constitutes bad faith because he uses the obvious similarity (to the Complainant’s mark) for commercial gain by using the domain names to hyperlink Internet users to his advertisement web page. Consequently, Respondent’s use creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website. Policy ¶ 4.b.(iv). See also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Having established all three elements required under the ICANN Policy, the panel concludes that the requested relief shall be granted.

Accordingly, it is ordered that the domain names faoscwartz.com, foaschwartz.com, faoshwartz.com, and faoswartz.com be transferred from Respondent to Complainant.