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Ty Inc. v. The Webshop Company [2001] GENDND 925 (10 May 2001)

The Complainant in this administrative proceeding is Ty Inc., a corporation under the laws of the State of Delaware, with its principal place of business in Oak Brook, Illinois, USA.

The Respondent in this Administrative Proceeding is The Webshop Company, a United Kingdom entity with its principal place of business in Dorchester, United Kingdom.

The disputed domain name is <beanie-babies.com>. The Registrar of this domain name is CORE Internet Council of Registrars, of Geneva, Switzerland.

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of dispute pursuant to the Policy and Rules.

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of three members was appointed on May 2, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 2, 2001, by hardcopy and on March 12, 2001, by email. The Center dispatched to the Registrar a Request for Registrar Verification on March 12, 2001. An Amendment to the Complaint was received on March 13 and 15, 2001. The Respondent did not file a response by the due date. On March 19, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

The following information is derived from the Complainant’s material.

The Complainant is the owner of rights in and to the trademarks BEANIE BABIES, BEANIE BABY, THE BEANIE BABIES COLLECTION, BEANIE BUDDIES, BEANIE BUDDY, THE BEANIE BUDDIES COLLECTION, BEANIE BABIES OFFICIAL CLUB, TEENIE BEANIE BABIES, TEENIE BEANIE BABY, TEENIE BEANIES, TEENIE BEANIE, BEANIES, BEANIE and BEANI ("the BEANIE BABY marks"), and has obtained the multiple registrations worldwide, including the following:

These registrations are valid, subsisting and in full force and effect.

The Complainant is the creator of numerous successful lines of plush toy products. It markets these plush toy products in the United Kingdom and throughout the world and sells them through authorized dealers. Since their introduction in 1994, the Complainant’s plush toy products have proven to be enormously popular with children throughout the world.

The Complainant has sold tens of millions of dollars of its BEANIE BABY products in Europe, including in the United Kingdom, and in excess of two billion dollars of these products worldwide.

The Complainant has spent millions of dollars marketing its plush toy products worldwide under its marks, including hundreds of thousands of dollars developing and maintaining the integrity of its web site and thousands of dollars and much effort promoting its product at United Kingdom trade shows. In addition to its worldwide marketing efforts, the Complainant has marketed two products exclusively in the United Kingdom, the BRITANNIA BEANIE BABY and the BRITANNIA BEANIE BUDDY.

As a result of its extensive marketing and product sales, the Complainant’s plush toys have become famous and the Complainant has created a strong market identity in the United Kingdom and worldwide.

The Complainant also has developed a presence on the Internet, including its web site accessible through the address <beaniebabies.com>. Tens of thousands of the site’s registered users are European and many are from the United Kingdom. These users are active members of the Complainant’s online community and are frequent participants in the chat feature of the Complainant’s web site.

The Respondent registered the subject domain name in December 1997. It has registered other domain names containing the trademarks of third parties, including <ourpokemon.com>, <pokemonwebstore.com> and <forpokemon.com>.

The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s BEANIE BABY marks for any purposes.

The Complainant has established its rights in its BEANIE BABIES mark through prior ICANN proceedings. For example, in WIPO Case No. D2000-0370, the Complainant succeeded against the registrant of the domain names <beaniesbabies.com>, <beanybabies.com>, and <beanybaby.com>. In its ruling, the administrative panel found that these domain names "are all confusingly similar to trademarks registered and used by the Complainant."

The Complainant also succeeded in its WIPO Case No. D2000-0688 complaint against the registration and use of the domain names <ebeaniebaby.com>, <ebeaniebabies.com>, <ebeanies.com>, and <e-beanies.com>. In its ruling, the administrative panel found that these domain names "are confusingly similar to the trademarks in which the Complainant has rights".

At the web site located through the subject domain name, the Respondent has offered to sell the domain name to the highest bidder. The Respondent also has attempted to sell the <beanie-babies.com> domain name to private individuals, including to one person for £8,000.

The Respondent has attempted to profit from the subject domain name by attempting to conduct business and generate Internet traffic. It has used the subject domain name at various times to link Internet users to its commercial web sites.

As of February 27, 2001, the Respondent was using the subject domain name to link to a third party web site and using the Complainant’s trademark to advertise an online travel accommodation reservation management system.

The Respondent used the Complainant’s BEANIE BABIES trademark in the hidden source code of the Respondent’s web site, in order to lure Internet users entering that term into search engines.

The Complainant relies on the registration and use of its marks and asserts that the subject domain name is identical to its marks. It relies in part on previous ICANN administrative panel decisions to support its contention.

The Complainant says that the subject domain name is not the name of the Respondent and it cannot be considered its business name or common trade name. On this basis the Respondent does not have a legitimate interest in the subject domain name.

As to bad faith, the Complainant relies on the efforts of the Respondent to sell the subject domain name, its use of the name for its own commercial interests and on other similar conduct by the Respondent.

The Respondent has asserted no position in this proceeding.

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’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 the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant relies on factual determination by other ICANN administrative panels. The decisions of other administrative panels are neither binding on this administrative panel nor determinative of the factual issues that it must decide, but reference to them can be of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

The subject domain name essentially is identical to one or more of the Complainant’s marks.

The administrative panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

The subject domain name does not identify any business or interest of the Respondent. It has offered no information to support a legitimate interest in the subject domain name and has offered it for sale.

The administrative panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

The Respondent offered the subject domain name for sale, but there is no evidence that it did so to the Complainant. It is usual in an ICANN domain name dispute proceeding to have evidence of a request by a complainant that the respondent cease and desist using the domain name in issue and often of a demand by a respondent for payment from a complainant, but, as noted, the examples given in the policy of conduct from which bad faith can be inferred are not exhaustive. In this case, the conduct of the Respondent supports an inference that it registered and used the subject domain name in bad faith.

Evidence of similar conduct must be approached with caution, but it can support an inference of bad faith, particularly in the absence of any explanation of the conduct by a Respondent.

The administrative panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

Based on the evidence and its findings of fact, the administrative panel concludes that the Complainant has established its case. It asked that the subject domain name be transferred to it.

The administrative panel so orders.

Edward C. Chiasson, Q.C.
Presiding Panelist

Sally M. Abel
Panelist

Dawn Osborne
Panelist

Dated: May 10, 2001