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Generic Top Level Domain Name (gTLD) Decisions |
Geoffrey, Inc. v. Wayne O'Hara
Claim Number: FA0105000097152
PARTIES
Complainant is
Geoffrey, Inc., New Jersey, USA (“Complainant”) represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. Respondent is Wayne O'Hara, Northants, UK (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <kinkytoysrus.com> registered with Tucows, Inc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on May 7, 2001; the Forum
received
a hard copy of the Complaint on May 8, 2001.
On May 7, 2001, Tucows, Inc. confirmed by e-mail to
the Forum that the domain name <kinkytoysrus.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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 May 8, 2001, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting
a deadline of May 29, 2001 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@kinkytoysrus.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 June 1, 2001, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the Forum appointed John
J. Upchurch 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 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
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 the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The <kinkytoysrus.com> is confusingly similar to Complainant’s registered trademarks.
Respondent has no rights or legitimate interests in the <kinkytoysrus.com> domain name.
Respondent registered and used the <kinkytoysrus.com> domain name in bad faith.
B. Respondent
No response was received from Respondent.
FINDINGS
Since 1960, Complainant
(Geoffrey, Inc.) has used its TOYS “R” US family of marks in connection with
the sale of toys, novelties,
and other related goods and services. Complainant is the owner of a number of
famous marks including TOYSRUS.COM, TOYS “R” US, TOYSRUS.CO.UK, “R” US, and a
family of numerous
other “R US” marks.
Complainant licenses these marks to Toysrus.com, Toys “R” Us, Toys “R”
Us (Ltd.), and other related companies.
Complainant is also the owner of United States Service Mark Registration
No. 2,370,396 for TOYSRUS.COM for on-line retail department
store
services. Furthermore, Complainant also
owns numerous valid and subsisting TOYS “R” US United States Trademark and
Service Mark Registrations
for a wide variety of goods and services.
Complainant is the owner of several valid and subsisting “R US” United Kingdom Trademark and Service Mark Registrations. Complainant also owns a European Union (CTM) Service Mark Registration for TOYSRUS.COM (for providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information).
As of 1999, Complainant’s related companies had more than 710 TOYS “R” US stores spread across the United States of America and more than 462 TOYS “R” US stores outside the United States, which includes 63 TOYS “R” US stores in the United Kingdom. TOYS “R” US stores have been operating in the United States since at least as early as 1960, and in the United Kingdom at least as early as 1985.
Complainant’s related companies now sell, and for many years have sold, billions of dollars of products and have similarly rendered retail department store services under the TOYS “R” US, TOYSRUS.COM, TOYSRUS.CO.UK and other “R US” marks throughout the United States, the United Kingdom, and internationally. Annual sales of goods sold under the TOYS “R” US, TOYSRUS.COM, TOYSRUS.CO.UK and family of other “R US” marks worldwide were in excess of $11 billion dollars for the fiscal year ending January 29, 2000, and in excess of $12.5 billion dollars for the fiscal year ending February 3, 2001. Sales in the United States under the TOYS “R” US mark for 1999 were in excess of $6.5 billion dollars, and for 2000 were in excess of $7 billion dollars. Sales in the United Kingdom under the TOYS “R” US mark for 1999 were in excess of $550 million dollars, and for 2000 were in excess of $600 million dollars.
Hundreds of millions of dollars each year have been expended to maintain the wholesome and family oriented high quality of the products and services through the careful selection and methods used in the commercial promotion and sale of products and services under the TOYS “R” US and “R US” family of marks. As a result, the sales of goods and services under the TOYS “R” US, TOYSRUS.COM, and TOYSRUS.CO.UK, and “R US” marks have grown tremendously. These marks have acquired substantial goodwill in connection with a wholesome family image
Respondent registered the <kinkytoysrus.com> domain name on June 9, 2000. Respondent operates a website at the disputed domain name selling adult sex products.
DISCUSSION
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the 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.
Identical and/or Confusingly
Similar
The <kinkytoysrus.com> website is confusingly similar to
Complainant’s famous TOYS “R” US family of marks. The addition of the generic word “kinky” to the Complainant’s
famous mark does not take the disputed domain name out of the realm
of
confusing similarity. See Yahoo!
Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the
domain name <casinoyahoo.com> confusingly similar to Complainant’s mark);
see also 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).
The Panel therefore finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to
come forward to demonstrate any rights or legitimate interests in the <kinkytoysrus.com> domain
name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(stating that “In the absence of a response, it is appropriate to accept as
true all allegations
of the Complaint”); see
also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding
that absent any evidence of preparation to use the domain name for any
legitimate purpose,
the burden of proof lies with the Respondent to demonstrate
that he has rights or legitimate interests).
Furthermore, there is a presumption that Respondent has no rights or
legitimate interests with respect to the domain name in dispute
where
Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the Domain Names”).
Respondent’s registration
and use of the <kinkytoysrus.com>
domain name fails to demonstrate use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i). Respondent’s use of the disputed domain name to sell adult sex
products is dillutive of Complainant’s well-known family of marks. See
Toys “R” Us, Inc. v. Akkaoui, 40 USPQ2d 1836 (N.D. Cal. 1996) (holding that
registration and use of the <adultsrus.com> domain name as an adult
oriented website tarnishes
the family of “R” US marks).
The Panel therefore
concludes that Respondent does not have any rights or legitimate interests in
the <kinkytoysrus.com> domain
name and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad
Faith
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three
of the elements under the ICANN Policy, the Panel concludes that the requested
relief should be hereby
granted.
Accordingly, it is Ordered
that the <kinkytoysrus.com>
domain name be transferred from Respondent to Complainant.
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URL: http://www.worldlii.org/int/other/GENDND/2001/1124.html