babyrus.com

WIPO Arbitration and Mediation Center

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), Paragraph 3(b).

The Administrative Panel consisting of a single member was appointed on October 2, 2000 by WIPO.

The Complainant in this administrative proceeding is Geoffrey, Inc. (Geoffrey), a Delaware corporation having a place of business at 461 From Road, Paramus, New Jersey 07652, United States of America.

The Respondent in this Administrative Proceeding is Russian Baby, whose address is listed as Parkovaya Str. 12a-24, Moscow, RU 312022.

babyrus.com

Alabanza, Inc. d/b/a BulkRegister.com, Inc.
10 East Baltimore Street
Suite 1601
Baltimore, MD 21202, United States of America

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 10, 2000, by email and by August 15, 2000 in hard copy. An Acknowledgment of Receipt dated August 18, 2000, was sent by e-mail by the WIPO Center to the Complainant. The WIPO Center dispatched to the Registrar a Request for a Registrar Verification by email on August 18, 2000. The Registrar responded by e-mail to the WIPO Center on August 22, 2000. On the same day, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the Center formally commenced this proceeding and notified Respondent that its Response would be due by September 11, 2000. Respondent did not file a response by the due date.

5. Factual Background

The Complainant is a wholly owned subsidiary of Toys "R" Us, Inc. (Toys "R" Us); and Toysrus.com, LLC (Toysrus.com) is a related company to both the Complainant and Toys "R" Us.

The Complainant owns of a number of marks including BABIES "r" US, BABIESRUS.COM, TOYS "R" US, TOYSRUS.COM, "R" US and a family of "R US" marks including BABES "R" US. These marks are licensed to Toysrus.com, Toys "R" Us and other related companies.

Toys "R" Us is a Delaware corporation having a place of business at 461 From Road, Paramus, New Jersey 07652, United States of America.

Through its predecessors in interest, the Complainant began using the mark TOYS "R" US in connection with the retail sale of toys, sporting goods, and other items since at least as early as 1960. The use of the TOYS "R" US mark has expanded over time to include the promotion and sale of entertainment services and events, real estate leasing, insurance services, 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 of America and internationally.

Toysrus.com is a Delaware Limited Liability Company having a place of business at 155 Tice Boulevard, Woodcliff Lake, New Jersey 07654, United States of America. Toysrus.com uses the domain name TOYSRUS.COM as a mark and domain name in connection with the operation of a web site which provides on-line shopping and information services. The TOYSRUS.COM web site has been operational since at least as early as January 1, 1997.

The Complainant is the owner of TOYSRUS.COM and numerous other valid and subsisting TOYS "R" US United States Trademark and Service Mark Registrations.

It also is the owner of valid and subsisting BABIES "R" US, BABES "R" US and "R US" United States Service Mark Registrations.

The Complainant owns several European Union (CTM) Trademark and Service Mark Registrations, the dominant portion of which is the designation "R US".

The Complainant also is the owner of several valid and subsisting TOYS "R" US Russian Federation Trademark and Service Mark Registrations.

Companies affiliated with the Complainant also have registered and use the following Internet domain names: TOYSRUS.COM, TOYSRUS.NET, BABIESRUS.COM, and BABIESRUS.NET.

As of 1999, the Complainant’s related companies had more than 710 TOYS "R" US stores spread across the United States of America and more than 462 TOYS "R" US stores outside the United States.

The 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 TOYS "R" US, TOYSRUS.COM and other "R US" marks throughout the United States and internationally. Annual sales of goods sold under the TOYS "R" US, TOYSRUS.COM and family of other "R US" marks were in excess of $11 billion for the fiscal year ending January 29, 2000.

The TOYS "R" US mark also has been used in other areas, for example: the promotion and sale of automobiles; airline tickets; food; charity fundraising services; amusement park services; service station services and various other services. The Complainant’s related companies also have sponsored the Women’s World Cup Soccer Team, Major League Baseball, and a NASCAR racing team.

In March, 2000, the Complainant became aware that the BABYRUS.COM name was being used in connection with a series of gambling web sites. When an Internet user, attempting to access the BABIESRUS.COM web site, mistakenly enters BABYRUS.COM in the command line of a web browser (misspelling the domain name), the user is not taken to the web site for BABIESRUS.COM. Instead, the user is diverted to the "Best of the Web.Com" web page (which provides links to a variety of products and services, none of which are related to "babies from Russia" or to BABIES "R" US, BABIESRUS.COM, TOYS "R" US, or TOYSRUS.COM).

Upon reaching the "Best of the Web.Com" web site, the user, is immediately presented with a pop-up dialog box promoting gambling and encouraging the user to enter on-line casino gambling sites. The pop-up dialogue box reads: "CONGRATULATIONS!!! YOU’VE WON = FREE CASINO GAME = +20% Bonus for real money play!". After clicking "OK" within this dialogue box, the user is then taken to a series of gambling web pages: (1) Casino on Net, or (2) 20% Bonus (on your first deposit).

The contested domain name registration was in the name of "Private", with Mr. Alex Vorot listed as the administrative and technical contact. A copy of the printout of the WhoIs database search conducted on July 5, 2000 shows Mr. Alex Vorot as the administrative and technical contact.

According to the WhoIs search conducted on July 27, 2000, as of July 24, 2000, Mr. Alex Vorot changed the Registrant of BABYRUS.COM from Private to Russian Baby. The Registrant’s address remains the same at Parkovaya Str. 12a-24, Moscow, Russia. The administrative and technical contact was changed from Mr. Vorot to Mr. Uevgeniy Sleptcov of DomainHost. The change was made only after communications took place between the Complainant and Mr. Vorot.

On the same day that the change was made for BABYRUS.COM, namely July 24, 2000, Mr. Vorot also changed the WhoIs information for the domain name BABYSRUS.COM. The Registrant of BABYSRUS.COM changed from Eurostar to Babys Russian and the administrative and technical contact changed from Mr. Vorot to Mr. Victor Lashenko of Register Help Co. There still appears to be involvement by Mr. Vorot because he is the administrative contact for the domain name used by Mr. Lashenko for e-mail, namely RUSSA.COM.

Mr. Vorot appears to be the common link between the domain names BABYSRUS.COM, BABYRUS.COM, WWWTOYSRUS.COM and WWWTOYRUS.COM, the transfer of which has been requested by Complainant pursuant the administrative proceeding. These four domain names share the same web content. Records show that Mr. Vorot was the administrative and technical contact of all these domain names until July 24, 2000, and remains the administrative and technical contact for WWWTOYSRUS.COM and WWWTOYRUS.COM.

Furthermore, Private, the former Registrant of BABYRUS.COM, was also, at one time, the Registrant of WWWTOYSRUS.COM. The same address was used by Private for WWWTOYSRUS.COM and BABYRUS.COM, as well as by the new Registrant of BABYRUS.COM.

On May 17, 2000, the Complainant sent a cease-and-desist letter to Mr. Vorot by e-mail and by courier at the address then listed in the WhoIs database. As noted, this address and contact information changed.

On May 23, 2000, the Complainant received an e-mail response from Mr. Vorot. He stated that he was associated with the host and service company for the domain name, but that he did not own it. Mr. Vorot further stated that the babyrus.com domain name could be uses to "send traffic anywhere we want". The babyrus.com domain name continues to be used in connection with the above-referenced gambling web sites.

On July 5, 12, 13, and 14, 2000, further e-mail correspondence was exchanged between the Complainant and Mr. Vorot, who offered, on behalf of the domain name Registrant, to "sell/transfer" the WWWTOYSRUS.COM domain name to the Complainant. Within this e-mail correspondence, Mr. Vorot acknowledged that the WWWTOYSRUS.COM domain name looks similar to Geoffrey’s TOYS "R" US mark he continued to deny that the BABYRUS.COM domain name was similar to the Complainant’s TOYS "R" US and TOYSRUS.COM marks.

After the WhoIs information for BABYRUS.COM was altered on July 24, 2000, the domain name continues to be used in connection with the above-referenced gambling sites. There has been no change in content.

On August 3, 2000, the Complainant sent an e-mail to Mr. Uevgeniy Sleptcov, the new administrative and technical contact of BABYRUS.COM. As of this date, no response has been received.

A. Complainant

The Complainant relies on the registration and use of its various marks, says that the Respondent does not have a legitimate interest in the use of the domain name and registered or has used it in bad faith.

Pointing to the extensive goodwill that the Complainant has developed over many years in diverse commercial undertakings, the Complainant states that the Respondent’s use of the domain name is motivated merely by a desire to benefit from the notoriety of the Complainant’s intellectual property.

As to bad faith, the Complainant referred to the Respondent’s offer to sell other names to the Complainant for amounts well in excess of the Respondent’s reasonable costs associated with the names. The Complainant also relies on the conduct of the Respondent after it was informed of the Complainant’s position.

Considerable reference was made to and reliance place on United States jurisprudence which the Administrative Panel has reviewed.

B. Respondent

The Respondent did not file a response, but the Complainant included in the material made available to the Administrative Panel, communications from the Respondent which articulate positions it took.

Initially, the Respondent appeared to concur with the concerns of the Complainant and to agree that the subject domain name should be changed. It subsequently, contended that the name did not refer to the Complainant’s interests and that it could do as it saw fit.

7. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

a) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;

b) the Respondent has no legitimate interest in respect of the domain name; and

c) the domain name has been registered or is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith if, inter alia, there are circumstances indicating registration of a domain name for the purpose of selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs related directly to the domain name.

Although the jurisprudence of domestic courts is instructive and can provide guidance for the consideration of an Administrative Panel, it must be recognized that the mandate of an Administrative Panel is not to resolve substantive issues of intellectual property rights. The focus of the inquiry is narrow.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusing

The Complainant has rights to a number of marks, including BABIES "R" US and BABIESRUS.COM. The subject domain name, BABYRUS.COM, is virtually identical to the Complainant’s mark and clearly is confusingly similar.

B. Respondent’s Legitimate Interest

Ostensibly, the use of the subject domain name by the Respondent for the purpose of attracting customers for its gambling interests, is a legitimate use of the name. The difference in this case lays, in part, with the extent of the use by the Complainant world-wide, directly and through affiliates of its name and mark and the extent to which the Complainant and its affiliates engage in a diversity of products. The choice of the subject domain name, without explanation by the Respondent, is unlikely to have been by accident or without cognizance of the significance of its connection to the Complainant’s world-wide businesses.

The Respondent admitted that the names using the word "toys" were similar. The denial of similarity to other rights of the Complainant is inaccurate and inappropriate. It seeks to make a distinction without a difference. The conduct of the Respondent shows an integrated effort to benefit from using names the value of which has been established by the Complainant over many years at considerable costs.

The Panel finds that the Respondent does not have a legitimate interest in the subject domain name.

C. Bad Faith

Although the Respondent’s offer to sell did not directly concern the subject domain name, the offer must be considered in the overall context of the Respondent’s conduct.

When confronted with the Complainant’s position, the Respondent stated it would delete a related domain name, but did not do so. Its further response was to attempt to move away from detection. Although this decision does not decide the disputes concerning other names registered by the Respondent and contested by the Complainant, they all are connected to marks owned and used by the Complainant.

Taking the evidence as a whole, the panel finds that the Respondent registered and is using the subject domain name in bad faith.

In accordance with Paragraph 4(b)(i) of the Policy, the Complainant requests the Panel to issue a decision that the contested domain name, babyrus.com, be transferred to Complainant.

The Panel so orders.

Edward C. Chiasson, Q.C.
Panelist

Dated: October 14, 2000.