DECISION

Geoffrey, Inc. v. Digital Wizardry Inc.

Claim Number:  FA0402000236513

PARTIES

Complainant is Geoffrey, Inc. (“Complainant”), Wayne, NJ, represented by Lawrence W. Greene, One Geoffrey Way, Wayne, NJ 07470-2030.  Respondent is Digital Wizardry Inc. (“Respondent”), 1562 Bluemont, Roanoke, VA 24015.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <boyz-r-us.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

PANEL

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

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 6, 2004; the Forum received a hard copy of the Complaint on February 9, 2004.

On February 6, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <boyz-r-us.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 2004 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@boyz-r-us.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 March 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 <boyz-r-us.com> domain name is confusingly similar to Complainant’s BOYS “R” US mark.

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

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

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

FINDINGS

Complainant is a wholly owned subsidiary of Toys “R” Us, Inc.  Complainant licenses a variety of marks to Toys “R” Us, Inc. and other related companies.

Complainant owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) for a variety of marks relating to Toys “R” Us.  The relevant mark for this administrative proceeding is BOYS “R” US, which was registered on August 27, 1996 (Reg. No. 1996839).  The BOYS “R” US mark has been used since 1984 in connection with Complainant’s retail department stores.

Respondent registered the disputed domain name on October 29, 1997.  Respondent uses the domain name to host sexually explicit material on an attached website. 

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

The registration of a mark with the USPTO confers rights in the registrant.  Therefore, since Complainant registered the BOYS “R” US mark with the USPTO in 1996, the Panel finds that Complainant has rights in the mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The omission of quotation marks from Complainant’s BOYS “R” US mark is insignificant under the Policy because quotations are incapable of being reproduced in domain names.  Likewise the addition of hyphens in domain names is irrelevant under the Policy. 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 Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (“[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

The disputed domain name <boyz-r-us.com> is confusingly similar to Complainant’s BOYS “R” US mark because Respondent has merely substituted the letter “s” in the word “boys” with the letter “z.” In any event, the disputed domain name is phonetically identical to Complainant’s mark. See 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); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).   

For the reasons stated, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

When a respondent fails to respond to a complaint a panel may infer that the respondent lacks rights to or legitimate interests in a disputed domain name.  The Panel finds such an approach persuasive. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Nothing in the record indicates that Respondent is commonly known by the disputed domain name <boyz-r-us.com>. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Furthermore, Respondent is using a domain name confusingly similar to Complainant’s mark to provide explicit pornographic material.  Such use tarnishes and dilutes Complainant’s mark and is not 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 McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” and is evidence that Respondent has no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (“Misdirecting Internet traffic by utilizing Complainant’s registered mark [in order to direct Internet users to an adult-oriented website] does not equate to a bona fide offering of goods or services . . . nor is it an example of legitimate noncommercial or fair use of a domain name . . . Respondent was merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant, presumably to gain revenue from each Internet user redirected to the pornographic website.”).

Therefore, Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

As previously stated, Respondent is using a disputed domain name confusingly similar to Complainant’s registered mark to present graphic pornographic material.  Not only does such use evidence that Respondent lacks rights and legitimate interests in the domain name, but also helps to establish bad faith registration and use of the name. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

Furthermore, it is likely that Respondent chose the disputed domain name as a play on Complainant’s famous Toys “R” Us stores and services.  The Panel finds that Respondent intentionally attempted to attract for commercial gain, Internet users to the disputed domain name’s attached website by creating a likelihood of confusion with Complainant’s mark.  Therefore, Respondent registered and used the disputed domain name in bad faith 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 used 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); see also Kmart v. Khan, 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)).

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 <boyz-r-us.com> domain name be TRANSFERRED from Respondent to Complainant.

__________________________________________________________________

Judge Harold Kalina (Ret.), Panelist

Dated:  March 25, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/270.html