DECISION

Geoffrey, Inc. v. Innovative Network Designs Corporation

Claim Number: FA0405000275926

PARTIES

Complainant is Geoffrey, Inc. (“Complainant”), represented by Lawrence W. Greene, of Geoffrey, Inc., One Geoffrey Way, Wayne, NJ 07470-2030.  Respondent is Innovative Network Designs Corporation (“Respondent”), 32 Broadway Ave., Florham Park, NJ 07932.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gamesrus.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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 25, 2004; the Forum received a hard copy of the Complaint on May 27, 2004.

On May 27, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <gamesrus.com> is registered with Network Solutions, Inc. and that the 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 June 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 22, 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@gamesrus.com by e-mail.

A timely Response was received and determined to be complete on June 21, 2004.

On June 25, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent has not been commonly known by the <gamesrus.com> domain name, and has not acquired trademark or service mark rights therein.  According to Complainant, Respondent has not used, and is not using, the disputed domain name in connection with a bona fide offering of goods or services.  Thus, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the <gamesrus.com> domain name. 

Furthermore, according to Complainant, any use of the disputed domain name by Respondent would dilute Complainant’s “famous” family of “R US” marks by diminishing the capacity of the marks to identify and distinguish Complainant’s goods or services.  Complainant contends that Respondent’s lack of action with respect to the domain name constitutes bad faith and that bad faith can be inferred from Respondent’s appropriation of the “R US” designation in light of the “coined and famous” nature of Complainant’s family of “R US” marks.  

B. Respondent

Respondent contends that the website <gamesrus.com> was created as a non-profit electronic gaming review website and message board for people to discuss various gaming topics.  Respondent points out that the site was created by volunteers and updated by hobbyists, and that the website was created as early as 1998 and grew in popularity as a respectable source of online gaming news and information.  According to Respondent, the site was well-known as an electronic gaming review and industry news site by other online news or review websites and also by electronic game developers and industry leaders and many other organizations who frequently submitted news and industry information to be considered for publication to the site.  The site was used in this fashion, until a demand was received from Complainant.  Due to the volunteer and non-commercial use of the website and in an effort to comply with Complainant’s wishes, the site was put on hold.

Respondent contends that it did not register the domain name to prevent Complainant from reflecting a trademark or service mark in a corresponding domain name and that Complainant does not own a trademark of “gamesrus.”  Respondent contends that it does not have knowledge of registering any names equivalent to Complainant’s trademarks or service marks.

Finally, Respondent points out that it is in the business of registering and managing domain names for third party companies as part of its service offerings.  Moreover, Respondent states that it did not register the domain name in question to disrupt any business or commercial activities; the domain name was to be used specifically for the review and discussion of electronic or online games.

FINDINGS

The record reflects the following:

Complainant Geoffrey, Inc. is a wholly owned subsidiary of Toys “R” Us, Inc. (“Toys “R” Us”).  Complainant is the owner of a family of “R US” marks, including “R” US, TOYS “R” US, TOYSRUS.COM, BABIES “R” US, KIDS “R” US, “R” US COLLECTION, BIKES “R” US, COMPUTERS “R” US, LIGHTS “R” US, MATHEMATICS “R” US, PETS “R” US, PORTRAITS “R” US, SHOES “R” US, SNACKS “R” US, STICKERS “R” US, SWEETS “R” US and numerous other “R US” marks.  Complainant licenses these marks to Toysrus.com, Toys “R” Us, and other related companies.

Complainant, through its predecessors in interest, began using a family of “R US” marks in connection with the retail sale of toys and games, sporting goods, and other items in 1960.  The use of the “R US” marks has expanded over time to include the promotion, rendering and sale of entertainment services and events, real estate leasing, insurance services, truck hauling, car racing, credit card services, toy safety seminars, games, arts and crafts products, construction kits, 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.

The wide variety of products and services promoted, sold, or offered for sale under the “R US” marks have been commercially promoted, sold, and rendered throughout the United States and internationally.  The family of “R US” marks is used on labeling and/or packaging for products and in extensive advertising and promotion of products, services, and businesses. 

As of February 2003, Complainant’s related and affiliated companies had more than 680 TOYS “R” US, 140 KIDS “R” US and 180 BABIES “R” US stores spread across the United States of America and more than 540 TOYS “R” US stores outside the United States.  TOYS “R” US stores have been in operation in the United States since at least as early as 1960.  Complainant’s related companies now sell, and for many years have sold, billions of dollars of products and have similarly rendered retail department store services under the family of “R US” marks throughout the United States and internationally.  Annual sales of goods sold under the “R US” marks were over $13 billion dollars for the fiscal year ending February 1, 2003 and $12.6 billion dollars for the fiscal year ending February 2, 2002. 

In April 1999, Complainant became aware that Respondent registered the <gamesrus.com> domain name.  Immediately thereafter, Complainant sent a letter to Respondent which informed Respondent of its alleged infringement of Complainant’s rights and which further demanded that Respondent cease its use of the domain name registration.  Thereafter, on or about May 17, 1999, Complainant sent a letter to Respondent again demanding Respondent’s transfer of the disputed domain name to Complainant.  Respondent failed to respond to Complainant’s letter.  According to Complainant, on May 17, 2004, its representative called the identified administrative contact for Respondent, Douglas Rahn, and requested transfer of the disputed domain name, pursuant to its earlier demand.  Complainant states that Mr. Rahn responded that he was proceeding with a sale of the disputed domain name to an Australian corporation.   

Respondent has not used, and is not using, the disputed domain name in connection with a bona fide offering of goods or services.  Even though almost six years have passed after Respondent’s registration of the domain name, it does not resolve to a web page. 

DISCUSSION

Paragraph 15(a) of the Rules for the Uniform Domain Name Dispute Resolution Policy (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.”

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 is the owner of several valid trademarks incorporating the “R US” designation.  The record indicates that the term “R US” was coined by Complainant’s predecessor over 40 years ago and is registered as a mark by Complainant. 

Although Respondent correctly points out that Complainant does not own a trademark of “gamesrus,” Complainant has established, however, that the “R US” family of marks has not only been subject to specific trademark protection but also has established sufficient distinctiveness to likewise give common law protection under the UDRP.   Indeed, in Geoffrey Inc. v. Stratton, 16 U.S.P.Q.2d 1691, 1694 (C.D. Cal. 1990), the court found that the “’R US’ designation was coined by [Geoffrey] and, as a result of its extensive promotion and use, is associated exclusively with plaintiff.”

Thus, the addition of the generic word “games” to Complainant’s mark does not remove the confusing similarity between the domain name at issue and Complainant’s protected family of marks.  In fact, other ICANN panels have found that the use of a variety of words appended to the “R US” mark demonstrated that the domain name in question was confusingly similar to Complainant’s marks.  E.g., Geoffrey, Inc. v. Alexandras, FA 99064 (Nat. Arb. Forum Oct. 2, 2001) (“sex-toysrus.com”); Geoffrey, Inc. v. O’Hara, FA 97152 (NAF June 8, 2001) (“kinkytoysrus.com”).

Rights or Legitimate Interests

Complainant contends that Respondent is not commonly known by the domain name and has not acquired a service mark or trademark to “gamesrus.”  Further, Complainant asserts that Respondent is not using the name in connection with a bona fide offering of goods or services.  Respondent contends that at one time, the site was used as a “gaming fan website to review electronic, gaming software, or online gaming titles.”  According to Respondent, because the site was operated by volunteers, after Complainant threatened litigation, the operation of the site was “put on hold.” 

It is Respondent’s burden to establish rights or legitimate interests in the domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).  Respondent chose to discontinue the use of the domain name despite the registration of the name six years ago.  Under the circumstances, and in the absence of any authority presented by Respondent to the contrary, Respondent’s failure to actively use a disputed domain name demonstrates the lack of a bona fide offering of goods or services by a Respondent pursuant to Policy ¶ 4(c)(i) or the failure to make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See, e.g., Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when respondent fails to use disputed domain names in any way);  Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that respondent has not established any rights or legitimate interests in the domain name); Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Registration and Use in Bad Faith

Complainant contends that bad faith is shown by the lack of action with respect to the registered domain name, and the “appropriation” of the “R US” designation despite the “extensive presence” of Complainant’s “related companies on the Internet.”    Respondent contends, among other things, that it did not register the domain name to disrupt Complainant’s business, as the site was to be used for the review and discussion of electronic or online games.  Respondent also states that it is in the business of registering and managing domain names for others and it has not engaged in the inappropriate registration of domain names.

Not only does Respondent’s failure to use its website demonstrate its lack of legitimate interest in the domain name, but also such nonuse constitutes evidence of bad faith on the part of Respondent.  DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith). 

Furthermore, the record reflects that the “R” US mark and its associated marks are well- known throughout the United States and the world.   Bad faith may also be inferred from the fact that Respondent’s domain name incorporated Complainant’s well-known registered mark, deviating only by the addition of a generic or descriptive term which describes Complainant’s business.   Surely, Respondent knew, or should have known, of Complainant’s rights in the “R” US mark.  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); Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where complainant’s BEANIE BABIES mark was famous and respondent should have been aware of it); see also 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).

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 <gamesrus.com> domain name be TRANSFERRED from Respondent to Complainant.

Bruce E. Meyerson, Panelist
Dated: July 19, 2004

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