Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Wee Ones, Inc., St. Peters, MO, USA ("Complainant") represented by Daniel Woodruff, Armstrong Teasdale LLP. The Respondent is Imagine That Creation Company, Lubbock, TX, USA ("Respondent").

The domain name at issue is "weeones.com" registered with Network Solutions.

The Panelist 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 the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 2, 2000; The Forum received a hard copy of the Complaint on November 3, 2000.

On November 3, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "weeones.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Re spondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 6, 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 Res pondent 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@weeones.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 the Hon. James A. Carmody 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 notic e 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, withou t the benefit of any Response from the Respondent.

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

A. Complainant

The Complainant’s contentions are as follows:

B. Respondent

The Respondent has submitted no response.

Complainant owns the following U.S. registered trademarks for the mark "Wee Ones":

Complainant’s core business includes the sale of various items of clothing, hair accessories and shoe accessories to children. Complainant has invested a substantial effort over a long period of time, including the expenditure of substantial dollars, t o develop good will in trade names and trademarks to cause consumers throughout the United States to recognize the "Wee Ones" marks as distinctly designating Wee Ones products and services with the Complainant.

The Complainant contacted the Respondent on or about September 8, 1999. In return correspondence, Respondent claimed that it intended to use the domain name for niche markets specifically including "children’s items".

As detailed in the September 8, 1999 and October 11, 1999 correspondences between the parties, Respondent at the time of its domain name registration was aware of the problems and risks associated with the registering of a domain name which consisted o f another’s registered trademark. Respondent claims to have conducted a search of the availability of the proposed name "WEE ONES" through the United States Patent and Trademark Office database prior to its registration of the corresponding domain name. A pparently, the Respondent’s search failed to find the Complainant’s mark, which had been registered with the PTO for thirteen years.

After being presented with documentation proving Complainant’s ownership of the Wee Ones marks, Respondent rejected an offer by Complainant to pay Respondent for its reasonable costs in registering the domain name. In fact, Respondent offered Complaina nt the right to lease the domain name, consisting of Wee Ones marks for one percent (1%) of Complainant’s revenues, provided also that Complainant would also provide financial documentation and a monthly payment.

Complainant rejected Respondent’s offer to lease the domain name to Complainant and again requested transfer of the domain name and offered to reimburse Respondent for reasonable costs associated with the registration. Respondent replied to the second offer by demanding that Complainant pay in excess of $4,200 to obtain the domain dame which represents Wee Ones marks.

Respondent is currently maintaining an active registration of the domain name, but does not currently have a site located at the URL and has not used the site since its registration in April of 1999.

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.

Respondent’s failure to respond to the complaint does not relieve the Complainant of its burden to prove the elements set forth in the ICANN Policy. However, Respondent’s failure to deny any of the Complainant’s averments permits this Panel to take the Complainant’s averments as true and to draw appropriate inferences.

Any use of the domain name by Respondent for "children’s items" would constitute a false designation of origin, as well as a false description or representation that is likely to cause confusion, mistake or deception (a) as to the characteristics, qualities or origin of Respondent’s products; (b) as to the affiliation, connection or association between Complainant and Respondent; and (c) as to sponsorship or approval of Respondent’s products by Complainant and would infringe upon Complainant’s trad emark rights. Internet users looking for the Complainant’s products on the Internet would be confronted with Respondent’s site, tarnishing the "Wee Ones" marks in violation of 15 U.S.C. § 1125(c).

The domain name is identical in its substantive part to the "Wee Ones" marks in which Complainant has rights. The domain name is merely a combination of the Complainant’s mark, "Wee Ones" and the most common commercial URL suffix, ".com." See Sulzer Vasutek Ltd. v. Adam Power/Mantis Surgical Ltd., AF 271 (eResolution Sept. 28, 2000) (finding that the domain names <vasutek.com>, <vasutek.net>, and <vasutek.org> are identical to the Complainant's trademark VASUTEK).

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name based on the Respondent’s failure to use the domain name since registration in April 1999. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0 039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the Respondents have not established any rights or legitimate interests in the said domain name). The Respondent’s stated intentions to us e the domain name for "children’s items" is unpersuasive because the Respondent has indicated no demonstrable preparations to use the domain name for any purpose. Policy ¶ 4.c.(i). See Melbourne IT Limited v. Grant Matthew Sta fford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods a nd services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

The Panel concludes that the Respondent registered and is using the domain name in bad faith under ¶ 4.a.(iii) of the ICANN Policy due to (1) the fact that Respondent registered the domain name primarily for the purpose of selling, or otherwise transferring the domain name to Complainant for valuable consideration in excess of Respondent’s costs, Policy ¶ 4.b.(i), and (2) the fact that the Respondent’s stated future use of the domain name will cre ate a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliations or endorsement of Respondent’s web site or of a product or service on Respondent’s web site or location, Policy ¶ 4.b.(iv).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "weeones.com" be transferred from the Respondent to the Complainant.