DECISION

J.W. Spear & Sons PLC v. Michael Byrne

Claim Number: FA0311000212650

PARTIES

Complainants are J.W. Spear & Sons PLC (“Complainant”) represented by William Dunnegan of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111. Respondent is Michael Byrne, 2107 N. 14 Ct., Hollywood, FL 33020 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scrabbleboard.com> registered with Network Solutions, Inc.

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 November 19, 2003; the Forum received a hard copy of the Complaint on November 20, 2003.

On November 25, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <scrabbleboard.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@scrabbleboard.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 December 29, 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 J.W. Spear & Sons PLC.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <scrabbleboard.com> domain name is confusingly similar to Complainant’s SCRABBLE mark.

2. Respondent does not have any rights or legitimate interests in the <scrabbleboard.com> domain name.

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

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

FINDINGS

Complainant J.W. Spear & Sons PLC is a wholly owned subsidiary of Complainant Mattel, Inc.  Complainant owns the trademark for SCRABBLE in every country, other than the United States and Canada.  In Mattel, Inc. and J.W. Spear & Sons, PLC v. Hasbro, Inc., Hasbro Interactive Worldwide, Inc., Milton Bradley Company, Network Solutions, Inc. and Does 1-20, United States District Court for the Central District of California, Case No. 96-7635 IH (RCx), the Court decreed: 

“Mattel owns all right, title and interest in and to SCRABBLE products and services for every market in the world except for the United States, Canada and their respective territories.”

“Hasbro owns all right, title and interest in and to SCRABBLE products and services in the United States, Canada and their respective territories.” 

The Judgment also created a mechanism for Mattel and Hasbro to share registration of domain names incorporating SCRABBLE. 

Respondent registered the <scrabbleboard.com> domain name on July 14, 1998. Respondent is using the disputed domain name to offer an imitation Scrabble board 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 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 demonstrated that it has rights in the SCRABBLE mark through its trademark registrations in a number of countries. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether Complainant’s mark is registered in a country other than that of Respondent’s place of business).

Complainant argues that Respondent’s <scrabbleboard.com> domain name is confusingly similar to Complainant’s SCRABBLE mark because the disputed domain name incorporates Complainant’s mark and adds the generic or descriptive term “board” to the end of the mark. The addition of a generic or descriptive term does not significantly distinguish a domain name from a mark under Policy ¶ 4(a)(i) because the term has a direct relationship to Complainant’s business of selling board games of various kinds. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., t/a Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with Complainant’s business).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward with a Response. Therefore, the Panel is permitted to make reasonable inferences from the Complaint and accept Complainant’s allegations as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); 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).

Furthermore, based on Respondent’s failure to respond, the Panel presumes that Respondent lacks all rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). 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); see also 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).

Respondent is using the <scrabbleboard.com> domain name to offer an imitation Scrabble board for sale. Respondent’s use of a domain name confusingly similar to Complainant’s mark to offer goods in direct competition with Complainant manifests neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (finding Respondent’s use of the confusingly similar domain name <hpmilenium.com> to sell counterfeit versions of Complainant’s HP products was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).

Moreover, Respondent has proffered no proof and there is no indication in the record that Respondent is commonly known by either SCRABBLE BOARD or <scrabbleboard.com>. Accordingly, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name with regard 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’s use of the <scrabbleboard.com> domain name—a domain name confusingly similar to Complainant’s SCRABBLE mark—to sell an imitation version of a SCRABBLE board demonstrates that Respondent has attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark, which evidences registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between Respondent and Complainant).

Furthermore, based on the worldwide fame of Complainant’s SCRABBLE mark and Respondent’s apparent knowledge of Complainant’s rights in its mark, the Panel presumes Respondent had actual or constructive knowledge of Complainant’s rights in the SCRABBLE mark. The registration and use of a domain name confusingly similar to a trademark, despite actual or constructive knowledge of the mark holder’s rights, is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <scrabbleboard.com> domain name be TRANSFERRED from Respondent to Complainant J.W. Spear & Sons PLC, subject however, to the provisions of the Judgment in Mattel, Inc. and J.W. Spear & Sons, PLC v. Hasbro, Inc., Hasbro Interactive Worldwide, Inc., Milton Bradley Company, Network Solutions, Inc. and Does 1-20, USDC, CDC, Case No. 96-7635 IH (RCx).

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

Dated:  January 9, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/104.html