DECISION

Geoffrey, Inc. v. Maverick Multimedia

Claim Number: FA0112000102727

PARTIES

Complainant is Geoffrey, Inc. from Paramus, New Jersey (“Complainant”) represented by Roberta S. Bren, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C.  Respondent is Maverick Multimedia, St-Eustache, Quebec, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <sextoysrus.com>, <sextoysrus.info>, and <sextoysrus.biz>, registered with eNom, Inc.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 4, 2001; the Forum received a hard copy of the Complaint on December 4, 2001.

On December 6, 2001, eNom, Inc. confirmed by e-mail to the Forum that the domain names <sextoysrus.com>, <sextoysrus.info>, and <sextoysrus.biz> are registered with eNom, Inc. and that Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 December 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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@sextoysrus.com, postmaster@sextoysrus.info, and postmaster@sextoysrus.biz 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 January 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain names <sextoysrus.com>, <sextoysrus.info>, and <sextoysrus.biz> are confusingly similar to the TOYS “R” US and “R” US marks in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain names.

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

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant registered the TOYS “R” US trademark with the Canadian Registrar of Trade Marks as Registration No. 227,944 on May 19, 1978 and has continuously used the mark in Canadian commerce since April 1975 in association with the sale of toys and children’s products.  Complainant also holds several trademark registrations on the Principal Register of the United States Patent and Trademark Office in the TOYS “R” US mark dating back to 1970 as well as a service mark in “R” US registered on October 5, 1999.  By way of Complainant’s extensive advertising, promotion, and sale of products and services under the TOYS “R” US and “R” US marks, the marks have become famous and represent valuable goodwill for Complainant.

Respondent registered the <sextoysrus.com> domain name on February 14, 2001, the <sextoysrus.info> domain name on October 9, 2001, and the <sextoysrus.biz> domain name on November 7, 2001.  Respondent has used the <sextoysrus.com> to redirect users to another website, which sells pornographic videos and adult toys, as well as to solicit offers to buy the <sextoysrus.com> domain name and other adult-themed domain names.  The <sextoysrus.info> and <sextoysrus.biz> domain names direct users to <domainsold.com>, a website which offers the disputed domain names and other adult-themed domain names for sale.

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

Complainant has sufficiently established its rights in the TOYS “R” US and “R” US marks through registration with the Canadian and United States trademark registrars.

The disputed domain names are confusingly similar to Complainant’s marks.  The addition of the generic word “sex” to the TOYS “R” US mark does not significantly distinguish the disputed domain names from the mark.  See 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); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding <casinoyahoo.com> to be confusingly similar to Complainant’s YAHOO mark).  Similarly, the omission of the quotation marks from the TOYS “R” US mark is inconsequential, as quotation marks may not be used in domain names.  See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).

Finally, the use of the generic Top Level Domains “.com,” “.biz,” and “.info” do not defeat confusing similarity between Complainant’s mark and the disputed domain names as these are required of domain name registrants.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights to and legitimate interests in the TOYS “R” US and “R” US marks.  Because Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  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 use of the disputed domain names to offer them for sale cannot be deemed a bona fide offering of goods or services under the Policy ¶ 4(c)(i).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).  Further, Respondent’s use of the <sextoysrus.com> domain name to direct users to adult websites that will likely tarnish Complainant’s image does not qualify as a bona fide offering within the meaning of ¶ 4(c)(i).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).

There is no evidence in the record to suggest that Respondent is commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii) or that Respondent has made a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Registration and Use in Bad Faith

Complainant’s TOYS “R” US and “R” US marks are both famous and distinctive among the general public.  By registering and using confusingly similar domain names without regard for the marks, Respondent acted with “opportunistic bad faith.”  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names at issue were so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggested “opportunistic bad faith”).

Further, Respondent’s willingness to sell the domain names, albeit for an unnamed price, evinces bad faith registration and use under the Policy ¶ 4(b)(i).  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

By registering three nearly identical domain names that infringe upon Complainant’s marks, Respondent also demonstrated a pattern of behavior calculated to prevent Complainant from obtaining the domain names, in bad faith as defined by Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringed upon others’ famous and registered trademarks).

Finally, Respondent’s use of the <sextoysrus.com> domain name for commercial gain by promoting a commercial adult video site evinces bad faith under Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website).

Accordingly, 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 should be hereby granted.

Accordingly, it is Ordered that the <sextoysrus.com>, <sextoysrus.info>, and <sextoysrus.biz> domain names be transferred from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 14, 2002

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