DECISION

Geoffrey, Inc. v. George Meyer

Claim Number:  FA0302000145964

PARTIES

Complainant is Geoffrey, Inc., Alexandria, VA (“Complainant”) represented by Roberta S. Bren, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. Respondent is George Meyer, Brooklyn, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kids-r-us.org>, registered with Enom.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 17, 2003; the Forum received a hard copy of the Complaint on February 17, 2003.

On February 17, 2003, Enom confirmed by e-mail to the Forum that the domain name <kids-r-us.org> is registered with Enom and that Respondent is the current registrant of the name.  Enom has verified that Respondent is bound by the Enom 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 February 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 2003 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@kids-r-us.org 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 March 18, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <kids-r-us.org> domain name is confusingly similar to Complainant’s KIDS “R” US mark.

2. Respondent does not have any rights or legitimate interests in the <kids-r-us.org> domain name.

3. Respondent registered and used the <kids-r-us.org> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds numerous trademark registrations for the family of “R” US marks with the United States Patent and Trademark Office (“USPTO”), including KIDS “R” US (Reg. No. 1,270,000, registered March 13, 1984).  Complainant has used the marks in relation to the retail sale of toys, sporting goods and other items since at least as early as 1960.  Complainant’s use of the marks has expanded to include promoting and providing entertainment services and events, real estate leasing, insurance services, and promoting and selling toys, games, novelties, party goods, costumes, furniture, books, bicycles, clothing, video tapes, video games, computers, clocks, electronic devices, cosmetics, candy, sundries, and numerous other products and services throughout the United States and internationally.  Complainant has maintained a website at <kidsrus.com> since November 1999 with the exception of a period of four months when the registration of the domain name was inadvertently allowed to lapse.

Complainant submits evidence that Respondent registered the <kids-r-us.org> domain name on May 18, 2000. Pursuant to the registration verification information provided by the registrar, Respondent registered the disputed domain name on July 25, 2001.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 established that it has rights in the KIDS “R” US mark through registration with the USPTO.

Respondent’s <kids-r-us.org> domain name is confusingly similar to Complainant’s KIDS “R” US mark because the disputed domain name incorporates Complainant’s entire mark, and merely deletes the quotation marks and adds hyphens on either side of the letter “r.”  The absence or use of punctuation marks such as quotation marks or hyphens does not alter the fact that the <kids-r-us.org> domain name is confusingly similar to Complainant’s KIDS “R” US mark. 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); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

The panel finds that Policy ¶ 4(a)(i) has been established.

Rights or Legitimate Interests

Respondent has not provided the Panel with a Response in this proceeding.  Therefore, the Panel is permitted to accept all reasonable inferences and allegations in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, the Panel is permitted to presume that Respondent lacks any rights or legitimate interests in the disputed domain name because of Respondent’s failure to submit a Response. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the <kids-r-us.org> domain name to direct Internet traffic to its website, which features products and services that are similar to those offered by Complainant.  The use of a confusingly similar domain name to sell goods or services in competition with a registered trademark holder is not a use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Respondent has offered no proof and there is no evidence in the record that shows that Respondent is commonly known by either KIDS R US or <kids-r-us.org>.  Therefore, Respondent has failed to demonstrate that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent is using the <kids-r-us.org> domain name to direct Internet traffic to a website that offers goods and services similar to those offered by Complainant.  The use of a confusingly similar domain name to draw Internet users to Respondent’s commercial website is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Furthermore, the Panel may infer that Respondent had actual and constructive knowledge of Complainant’s mark because of the widespread fame of Complainant’s mark.  When Respondent reasonably should have been aware of Complainant’s trademark, actually or constructively, there is a legal presumption of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Victoria's Secret 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 constituted bad faith); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

The panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

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

Accordingly, it is Ordered that the <kids-r-us.org> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 24, 2003

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