The Complainant is Carte Blanche Greetings Limited of Tangmere, Chichester, West Sussex, United Kingdom of Great Britain and Northern Ireland, represented by Ashurst of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is metoyou of Administrator Domain, General Delivery, George
Town, Grand Cayman GT, Cayman Islands, United Kingdom of Great Britain and Northern
Ireland.
2. The Domain Name and Registrar
The disputed domain name <metoyou.com> (the “Domain Name”)
is registered with Address Creation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2004. On November 11, 2004, the Center transmitted by email to Address Creation a request for registrar verification in connection with the Domain Name. On November 15, 2004, Address Creation transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2004.
The Center appointed Ian Lowe as the sole panelist
in this matter on December 17, 2004. The Panel finds that it was properly constituted.
The Panel has submitted the Statement of Acceptance and Declaration of Impartiality
and Independence, as required by the Center to ensure compliance with the Rules,
paragraph 7.
4. Factual Background
The Complainant markets, distributes and sells, all around the world, a range of greeting cards, soft toys and other gift items featuring a fictional grey teddy bear character known as “Tatty Teddy” (the “Me to You Range”). The Complainant has various registrations, and applications to register, the trademark ME TO YOU in relation to greetings cards, plush and other gift items, in a number of countries.
The Domain Name resolves to a web page at “www.oingo.com”
which provides the Google AdSense service for parked domains. The web page lists
various links to a range of websites featuring in particular teddy bears, soft
toys and similar items.
5. Parties’ Contentions
A. Complainant
A summary of the Complainant’s contentions is as follows:
ME TO YOU is a famous trademark under which the Complainant has sold its well known Me to You Range since 1995. Tatty Teddy was created for use as an illustrative character for a new range of greetings cards produced by the Complainant. In 2000, following enormous worldwide success, the Me to You Range was expanded to include other items such as soft toys (which are manufactured and sold in a variety of sizes, poses and clothing), stationery and other gift items such as key rings, photo frames, mugs, and many others. All of these products feature, and/or are, representations of Tatty Teddy, and are sold under the ME TO YOU trademark. The popularity of the Me To You Range is still increasing rapidly and the Complainant continues to expand the Me to You Range through the production of further gifts and stationery items, such as figurines, cross-stitch kits, candles, jewellery and cakes, all of which are marketed, promoted and sold under the ME TO YOU trademark.
The Complainant recorded UK sales figures of £2,972,000 in 1999 rising to £33,021,500 in 2003. The Complainant’s success is due to the Me to You Range, its principal product range, which is distributed on behalf of the Complainant in around 70 countries worldwide.
In the UK, the Complainant’s principal retailer is Clinton Cards, a highly successful chain of greeting cards and gift shops. There are currently around 750 stores in the UKand each one stocks the Me to You Range as one of Clinton’s best selling range of products. Tatty Teddy (as marketed under the ME TO YOU trademark) figures prominently on the home page of Clinton Cards’ website. The Complainant also supplies its Me to You Range to other famous High Street stores in the UK such as WH Smiths, Woolworths and H Samuels. In addition, the Complainant licences the rights in the Me to You Range to various companies to manufacture other goods featuring Tatty Teddy to be sold under the ME TO YOU mark.
The Complainant has sponsored certain charity and other events which has also contributed to the reputation and success of the ME TO YOU brand. For example, the Complainant sponsored the Lord Taverners, Cricket’s Official Charity, U.K. in 2003. In addition, the Complainant is sponsoring one of the yachts in the Global Challenge round the world yacht race.
The Complainant is also the proprietor of the following domain names incorporating the ME TO YOU mark: <metoyou.co.uk>; <metoyougreetings.com>; <personalisedmetoyou.co.uk> and <personalisedmetoyou.com>. The Complainant’s principal, official, website is at “www.metoyou.co.uk”. This website was launched in December 2002. During the course of 2003 it received 7,359,756 hits. As at the date of the Complaint, it had received 11,000,000 hits since the beginning of 2004. There are currently 83,000 fans registered to the site from all around the world.
The Complainant has various registrations, and applications to register, the trademark ME TO YOU in relation to greetings cards, plush and other gift items, in various countries around the world including in particular United Kingdom and Community (“CTM”) trademarks. The first UK registration is dated August 17, 2001, and the first CTM registration is dated January 28, 2002. In addition, the Complainant has filed applications to register the ME TO YOU mark in China, Hong Kong SAR of China, Russia, Republic of Korea, Japan and USA. These are all expected to proceed to registration. Details of the various registrations and applications were annexed to the Complaint.
It is therefore clear that the Complainant has substantial rights in the ME TO YOU name. The Domain Name is identical to both the unregistered and registered trademarks ME TO YOU, the rights in which belong exclusively to the Complainant.
When the Complainant attempted to register the Domain Name in April 2004, it discovered that it was already registered by Modern Limited – Cayman Web Development of George Town, Grand Cayman. Subsequent inquiries revealed that the address listed for Modern Limited was care of Walkers, a substantial firm of lawyers in Grand Cayman. The contact details for Modern Limited then cited on the WHOIS database were the same as the physical address, telephone and fax numbers for Walkers at that time.
On May 10, 2004, the Domain Name registration was renewed and the WHOIS database now shows the registrant as “metoyou, Administrator Domain, Grand Cayman”. The indications are, however, that the Domain Name is still owned by Modern Limited in that the fax number for the registrant remains the same, the address is a very similar address in Grand Cayman and the Domain Name continues to resolve to the same web page.
The Respondent is not affiliated to the Complainant in any way and the Complainant has not granted any licence, consent or other right by which the Respondent would have a legitimate right to use the ME TO YOU mark. The Respondent therefore does not have any rights or legitimate interests in respect of the Domain name.
Despite extensive searches, there is no evidence that the Respondent or Modern Limited has been commonly known by the Domain Name or that it has obtained any rights in the mark ME TO YOU.
According to the WHOIS database, the Domain Name was first registered by Modern Limited on May 17, 2002. An Internet archive search indicates that on September 23, 2002, the Domain Name resolved to a website listing various links to other websites covering everything from gambling, travel, personal relationships and business, to education, careers and sports.
Furthermore, the Respondent has not made any use of, or demonstrable preparations to use, the Domain Name, or a name corresponding to the Domain Name, in connection with a bona fide offering of goods or services. Visitors to “www.metoyou.com” are taken to a site containing links to many different websites which sell teddy bears and other plush toys. These are obviously competitors of the Complainant. Since the Complainant is so well known for the Me to You Range, it is clear that the Respondent is aware of the Complainant's goodwill and reputation in the ME TO YOU name and of the fame of the ME TO YOU brand in connection with teddy bears, in particular the world famous Tatty Teddy, and is not making fair use of the Domain Name. Instead, the Respondent is using the Complainant's worldwide rights to exploit the reputation and goodwill the Complainant owns in the ME TO YOU name illegitimately for its own commercial gain, and to mislead consumers, creating confusion in the minds of internet users as to the source of the Respondent’s website thereby damaging the reputation of the ME TO YOU name.
The Respondent intends to attract Internet users to the website at the Domain Name by creating confusion with the Complainant’s trademark ME TO YOU. As is well known it is common for an Internet user to search for a particular site by using the “.com” (or “.net” or “.org”) suffix. The most popular of these Top Level Domains is the “.com” variation. There is also evidence that some Me to You fans are confused into naming “www.metoyou.com” as the official website of the Complainant when they clearly intend to refer to “www.metoyou.co.uk”.
The Respondent must have been fully aware of the ME TO YOU trademark in relation to teddy bears and other gift items and deliberately intended to create a likelihood of confusion with the Complainant’s registered trademarks in relation to the range of gift items featuring Tatty Teddy. As a number of UDRP panelists have found in the past, where a respondent knows or should have known of the complainant’s use and registration of the trademark before registering the domain name, this constitutes bad faith.
The Respondent registered the Domain Name in order to prevent the Complainant from using the Domain Name and has engaged in a pattern of such conduct. Modern Limited (which the Complainant believes is still the true Registrant of the Domain Name, despite the steps it has taken to conceal its identity) appears to have an extensive track record of registering domain names in which other parties would be expected to have stronger rights. According to investigations made on behalf of the Complainant, Modern Limited is the registered proprietor of at least 3,882 domain names including, by way of example: <usnationalbank.com>, <toyotaprius.com>, <southparkepisodes.com>, <toshibalaptop.com>, <landroverdiscovery.com> and <harrypottermovie.com>.
Modern Limited has been the subject of at least 18 UDRP proceedings, in which Modern Limited generally provided no Response, and all of which were decided against Modern Limited. It is clear that Modern Limited is heavily involved in cybersquatting activities in relation to many domain names relating to well known names and trademarks. Modern Limited’s behaviour corresponds to a pattern to register domain names identical to, or confusingly similar with, famous names and trademarks. This constitutes bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy.
Additionally, the Complainant believes that the Respondent’s failure to supply full contract details in the WHOIS report and thereby to attempt to conceal its true identity is further evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has adduced uncontroverted evidence of its various registrations in respect of the trademark ME TO YOU in a number of countries; of its widespread use of the mark around the world and of its very substantial sales of goods under the mark over a number of years. The Panel finds that the Complainant has clearly established rights in the mark ME TO YOU and that the Domain Name is therefore identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests in the Domain Name. There is no suggestion that the Respondent has ever been properly known by the name METOYOU. It is not using the Domain Name in connection with a bona fide offering of goods or services. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The current details of the registrant of the Domain Name do not properly identify the Respondent or give any proper information as to the legal persona of the Repondent. This appears to be a breach of the terms of the Domain Registration Agreement with the registrar, Address Creation. They require a registrant to submit, and keep current, complete and accurate information as to the registrant’s name and postal address.
The Panel considers that there is persuasive (albeit not conclusive) evidence that the Respondent is in reality the alter ego of Modern Limited which first registered the Domain Name to operate a website identical to that to which the Domain Name continues to resolve. Modern Limited has been engaged in a pattern of registering domain names confusingly similar to well known marks and on a number of occasions has been the subject of adverse findings in relation to such domain names in complaints under the UDRP.
The Domain Name has been used by Modern Limited and/or by the Respondent to generate links to other websites offering goods identical to those for which the Complainant’s trademarks are registered. The Panel understands that this may be achieved through the Google AdSense service that uses semantic technology to analyse a domain name dynamically and match its meaning with ads and related searches that are related to the domain name subject. In any event, the fact that the linked websites feature teddy bears and similar soft toys when a fictional teddy bear is the core character of the Complainant’s Me to You Range points inexorably to the conclusion that the Respondent (and Modern Limited) has used the Domain Name and its association with the Complainant’s well known marks to create a likelihood of confusion between the trademarks and the Domain Name. The Panel accepts that the Respondent has intentionally attracted Internet users to its website or other on-line location for commercial gain through such confusion as to the source, affiliation or endorsement of the website or location (Paragraph 4(b)(iv) of the Policy).
Accordingly, the Panel finds that the Respondent has registered and used the
Domain Name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <metoyou.com> be transferred to the Complainant.
Ian Lowe
Sole Panelist
Date: December 22, 2004
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