beaniecanada.com

WIPO Arbitration and Mediation Center

The Complainants in this administrative proceeding is Roberto Tomassini, Ty Canada Inc. and Ty Inc., of 230 Earl Stewart Drive, Aurora, Ontario, Canada.

The Respondent in this administrative proceeding is Mike Chan at Beanie Canada, P.O. Box 101, Station B, Hull, QC, Canada.

The disputed domain name is <beaniecanada.com>. The Registrar of the domain name is Network Solutions (a VeriSign company) of Herndon, Virginia, USA.

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, 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").

By registering the subject domain name with an ICANN accredited Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.

The Administrative Panel consisting of one member was appointed on January 21, 2002, by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center").

Complainants filed their Complaint with the Center on November 16, 2001. The Center dispatched to the Registrar a Request for Registrar Verification on November 20, 2001. On November 30, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On January 4, 2002, the Center issued a Notification of Respondent Default.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

The following information is derived from the Complainants’ material.

The Complainants registered the domain name <beanies-online.com> on May 22, 2000, and have used the website to which it resolves as a vehicle for the commercial sale of its products and services since that time.

The Canadian trademarks on which the complaint is based on are: BEANIE BABIES (SN 1,003,896) for plush toys; BEANIE BABIES OFFICIAL CLUB (SN 891,592) for plush toys, club membership kit comprising of a poster, a sticker sheet, a membership card, a card carrier, and a sticker cover sheet; BEANIE BUDDIES (SN 1,031,569) for plush toys; BEANIE KIDS (SN 1,027,566) for plush toys; BEANIES (SN 1,003,892) for plush toys; E-BEANIES (SN 1,056,230) for plush toys, other toys, dolls; THE BEANIE BABIES COLLECTION (SN 1,003,895) for plush toys; TY BEANIE KIDS & Design (SN 1,042,478) for plush toys and dolls; TY BEANIE ORIGINAL BUDDY & Design (SN 1,042,480) for plush toys and dolls.

The Respondent is not an authorized dealer of the Complainants’ products and is not authorized to use any of the Complainants’ trademarks to offer the Complainants’ wares to the public.

The Respondent is not a licensed user of the Complainants’ trademarks and has never been given any right to the Complainants’ "beanie" marks.

The Complainants’ mark BEANIE BABIES has been used since 1994, E-BEANIES since 1994, and BEANIES since 1995.

The subject domain name was registered with the Registrar on October 5, 1998.

The Respondent made no submission in this proceeding.

The Complainants rely on their registered marks and their use and say that the subject domain name is confusingly similar "…with the [Complainants'] domain name".

They assert that "…the Respondent has no legal rights or legitimate interests in respect of the domain name that is the subject of this complaint in that the name is being used to attract purchasers that are interested in the [Complainants’] products…."

As to bad faith, the Complainants state that the Respondent has intentionally attempted to attract customers by creating a likelihood of confusion with the "beanie" marks. They assert that this is particularly so because the Respondent knew or should have known of the reputation of the Complainants’ marks. Referring to the registrations in 1994 and 1995, of the Complainants’ marks, they assert that the registration of the subject domain name by the Respondent "…more than 7 years after the [Complainants] established [their] highly successful "BEANIES" business is a blatant attempt to confuse potential customers and to misappropriate the goodwill built up by the [Complainants] over the years".

The Respondent made no submission in this proceeding.

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

(i) the domain name is identical or confusingly similar to a service mark in which the Complainants has rights;

(ii) the Respondent has no legitimate interest in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants who is the owner of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

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

It is clear that the Complainants have rights to marks that incorporate the word "beanie".

The Complainants do not address specifically the requirement that they establish that the subject domain name is identical or confusingly similar to the their marks, but state that it is confusingly similar to their domain name. That is not the issue.

The only distinguishing feature of the subject domain name is the addition of the word "canada". The use of a country name in association with a mark that describes a product leads to a clear inference that the domain name is associated with the mark and product. It is confusingly similar.

The Administrative Panel is satisfied that the Complainants has met the requirements of paragraph 4(a)(i).

A respondent has no obligation to participate in a domain name dispute, but if it were not to do so, it would be vulnerable to the legitimate inferences that flow from information presented to an Administrative Panel by a complainant.

In this case, when referring to the Respondent, the Complainants state: "No evidence has been advanced to suggest any legitimate rights in the trademarks." Unfortunately, this is true for both parties. The burden is on the Complainants to establish that the Respondent has no legitimate right or interest in the subject domain name.

The basis on which the Complainants asserts that the Respondent has no legitimate interest is the fact that the Respondent uses the subject domain name "…to attract purchasers that are interested in the [Complainants’] products…." An examination of the web-site to which the subject domain name resolves, which is information in the public domain to which the Administrative Panel is entitled to refer, confirms that this is so. The site also contains a detailed disclaimer acknowledging the interests and rights of the Complainants.

The Policy provides that a respondent’s rights or legitimate interests in a domain name can be demonstrated by showing that "…before notice to the Respondent of the dispute, the Respondent has used or made demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services…." Although this is the reverse side of the proof obligation, it does reflect the need of a complainant to do more than simply point to a respondent’s use of a mark in support of its contention that the respondent does not have a legitimate interest in a domain name in circumstances where the domain name is being used for a commercial purpose.

The Administrative Panel has been given no information concerning the commercial activities of the Respondent. It does not know whether the products being sold are "pirate" copies of the Complainants’ products or items made available for re-sale. All that is known is that the Respondent sells products, including those bearing the Complainants’ marks. To do so, it uses the subject domain name. Per se the activity is legitimate and the Complainants have not established that the Respondent does not have a legitimate interest in the subject domain name.

In other decisions the Administrative Panel in this case has concluded that using a mark with no descriptive qualification in a domain name contrary to the expressed wishes of the owner is not a legitimate use. In this case, the use of the mark is qualified by the word "canada". Although there is no evidence that the Complainants took exception to the use prior to the initiation of this proceeding, apparently the Complainants do object to it, but standing alone, that is not enough.

The subject domain name was registered in 1998. The Complainants state that this was seven years after they established their successful business, but there is no information when this occurred. The marks in issue were registered in 1994 and 1995. The Complainants did not register their domain name until 2000. The Administrative Panel does not know when the Complainants learned of the subject domain name and there is no indication that they communicated with the Respondent concerning it. The Complaint was brought in 2001. This is the context in which the Complainants assert that the Respondent does not have a legitimate interest in the subject domain name.

The context and the information provided to the Administrative Panel do not allow it to conclude that the Respondent does not have legitimate interest in the subject domain name.

It may be that the Respondent is violating common-law or statutory rights of the Complainants, but it is not the function of a domain name dispute to resolve disputes concerning such matters.

The Administrative Panel is not satisfied that the Complainants have met the requirements of paragraph 4(a)(ii).

The Complainants’ case on bad faith also is deficient.

The fact that a respondent is using a domain name that is confusingly similar to a complainant’s mark does not of itself establish that the domain name has been registered and is being used in bad faith. Indeed, even if this were so and the respondent did not have a legitimate interest in the domain name, bad faith would not be presumed, although the facts that led to those conclusions might also lead to a conclusion of bad faith.

Attempting to "…attract customers by creating a likelihood of confusion with the "beanie" marks" is a fact that could support an allegation of bad faith, but standing alone does not do so. It is apparent that the Respondent knew of the Complainants’ interests. Its web-site disclaimer shows that this is so, but marketing a product while acknowledging the interests and rights of the owner of a mark associated with the product does not per se constitute bad faith.

It is usual for a complainant to advise a potential respondent of the complainant’s interests and rights and to demand that the respondent cease and desist its activity and surrender the offending domain name. Failure to do so without an explanation, failure to respond or a response seeking compensation beyond the respondent’s legitimate costs of establishing the domain name, can be evidence that supports an inference of bad faith. There is none of this in the present case.

On the information provided to it, the Administrative Panel cannot conclude that the subject domain name was registered and is being used in bad faith.

The Administrative Panel is not satisfied that the Complainants have met the requirements of paragraph 4(a)(iii).

Based on the information provided to it and on its findings of fact the Administrative Panel concludes that the Complainants have not established their case and it is dismissed.

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: January 26, 2002