DECISION

Geoffrey, Inc. v. Toyrus.com

Claim Number:  FA0303000150406

PARTIES

Complainant is Geoffrey, Inc., Paramus, NJ, USA (“Complainant”) represented by Roberta S. Bren of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. Respondent is Toyrus.com, Gdynsk, POLAND  (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 17, 2003; the Forum received a hard copy of the Complaint on March 18, 2003.

On March 18, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <toyrus.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 March 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 8, 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@toyrus.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 April 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent, <toyrus.com>, is confusingly similar to Complainant’s TOYS “R” US mark.

2. Respondent has no rights or legitimate interests in the <toyrus.com> domain name.

3. Respondent registered and used the <toyrus.com> domain name in bad faith.

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

FINDINGS

Complainant is the owner of numerous marks registered with the U.S. Patent and Trademark Office including TOYS “R” US (Reg. No. 902,125) and TOYSRUS.COM (Reg. No. 2,370,396).  Since 2000, Complainant has used the <toysrus.com> domain name as the home of a website jointly sponsored by Complainant and Amazon.com, providing on-line shopping and information services for children’s, infant’s and family products.  Complainant’s website averaged more than four million visitors per month from 2001 through 2002.  Complainant’s sales for the fiscal year were over $12 billion dollars.

Complainant spends hundreds of millions of dollars each year to maintain and commercially promote its wholesome and family-oriented products and services under the TOYS “R” US mark. 

Respondent actually registered the <toyrus.com> domain name September 25, 1998, and has used the domain name in connection with <megago.com>, an Internet directory website that features numerous pop-up advertisements.  The pop-up advertisements are for commercial goods and sexually explicit websites.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant demonstrated that it has rights in the TOYS “R” US mark through registration with the U.S. Patent and Trademark Office as well as by substantial use in connection with its line of children’s and family products.

The domain name registered by Respondent, <toyrus.com>, is confusingly similar to Complainant’s TOYS “R” US mark because it merely omits the “s” at the end of “toys” and the quotation marks around the “r.”  These omissions from a famous mark within a domain name do not create a distinct mark capable of overcoming a claim of confusing similarity.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).  Furthermore, the omission of punctuation, such as quotation marks, does not create a domain name capable of overcoming a Policy ¶ 4(a)(i) analysis because quotation marks cannot be represented in domain names.  Thus, the inclusion of this punctuation is not relevant when deciding if a mark is identical or confusingly similar.  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).

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

Rights to or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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”).

Respondent did not invoke any circumstances to demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <toyrus.com> domain name to divert Internet users to a website that features pop-up advertisements and an Internet directory at <megago.com>.  The misspelling of a well-known mark in a domain name to divert Internet users to a website sponsored by Respondent is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).

Based on the fame of Complainant’s TOYS “R” US mark, Respondent would be hard-pressed to establish that it is commonly known as TOY R US or <toyrus.com>.  Respondent failed to come forward with any evidence and the Panel finds that Respondent is not commonly known as <toyrus.com> and has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Foot Locker Retail, Inc. v. Bruce Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating that “[d]ue to the fame of Complainant’s FOOT LOCKER family of mark . . . and the fact that Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by” any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see also Victoria’s Secret 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).

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

Registration and Use in Bad Faith

Based on the fame of Complainant’s mark, the Panel infers that Respondent was on notice of Complainant’s rights in the TOYS “R” US mark when it registered the <toyrus.com> domain name.  Registration of an infringing domain name, despite actual or constructive knowledge of Complainant’s rights, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent is using a domain name that is a misspelling of Complainant’s famous TOYS “R” US mark to divert Internet traffic to a website that features adult entertainment pop-up advertisements.  The association of Complainant’s mark with pornographic material tarnishes Complainant’s goodwill.  This type of behavior is evidence of bad faith use pursuant to Policy ¶ 4(a)(iii).  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also 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).

Respondent is diverting Internet traffic to <megago.com> and an Internet directory website that features pop-up advertisements.  The Panel infers that Respondent is making a profit from the Internet traffic that is diverted to the website and click-on advertisements or links.  Thus, Respondent is using a confusingly similar domain name to create a likelihood of confusion for its own commercial gain.  This behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: April 25, 2003.

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