DECISION

Geoffrey, Inc. v. no aka Michele Dinoia

Claim Number: FA0201000104089

PARTIES

Complainant is Geoffrey, Inc. Paramus, NJ, USA (“Complainant”) represented by Roberta S. Bren, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C..  Respondent is Michele Dinoia, Pineto, ITALY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kidsrus.com>, registered with Tucows, Inc.

PANEL

On February 22, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 24, 2002; the Forum received a hard copy of the Complaint on January 25, 2002.

On January 24, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <kidsrus.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 January 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2002 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@kidsrus.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.

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 Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent's  <kidsrus.com> domain name is identical to Complainant's KIDS "R" US mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the KIDS "R" US mark in commerce since 1983 in relation to wearing apparel, retail department store services, entertainment and children's sports competitions.  Complainant registered the mark with the United States Patent and Trademark Office in 1994 (Registration No. 1,270,000). Complainant is also the owner of numerous other marks that incorporate "R" US.  Complainant and its affiliated companies have expended hundreds of millions of dollars annually to advertise, publicize and promote its "R US" family of marks. 

Complainant used the KIDS "R" US mark on the Internet as <kidsrus.com> from 1999 until October 2001.  The domain name was inadvertently allowed to lapse.

Respondent registered the disputed domain name on January 8, 2002.  Respondent is using the disputed domain name in order to divert Internet users to a website advertising for Nextcard Visa.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant, through continuous use and registration has established that it has rights in the KIDS "R" US mark.  Furthermore, Respondent's <kidsrus.com> domain name is confusingly similar to Complainant's mark because it merely deletes the quotation marks from the R.  This change is not significant enough to create a distinct mark capable of overcoming a claim of confusing similarity.  See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

Furthermore, the addition of a generic top-level domain name such as ".com" does not create a distinct mark, nor is it relevant when determining identical or confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  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).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Finally, based on the fame of Complainant's KIDS "R" US mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name.  Any use by Respondent of the <kidsrus.com> domain name, confusingly similar to Complainant's famous mark, would be an opportunistic attempt to attract customer's via Complainant's famous mark.  Furthermore, this type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Based on the fame of Complainant's mark, and the fact that Respondent has presented no evidence to prove that it is commonly known by the disputed domain name, it can be inferred that Respondent is not commonly known by <kidsrus.com> pursuant to Policy ¶ 4(c)(ii) and therefore, has no rights or legitimate interests in the disputed domain name.  See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

Registration and Use in Bad Faith

The <kidsrus.com> domain name is confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the confusingly similar <kidsrus.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Furthermore, because of the famous and distinctive nature of Complainant's KIDS "R" US mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <kidsrus.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain name <kidsrus.com> be transferred from Respondent to Complainant.

 James P. Buchele, Panelist

Dated: February 25, 2002

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