The Complainant is Rainbow Play Systems, Inc., Kevin M. Jones, Brookings, South Dakota, United States of America, represented by Neal & McDevitt, United States of America.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <rainbowplaygroundequipment.com>
is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2006. On May 8, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 8, 2006 Intercosmos Media Group d/b/a directNIC.com 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 May 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2006.
The Center appointed Jonas Gulliksson as the sole
panelist in this matter on June 6, 2006. 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
Complainant is the sole and exclusive owner of the trademark RAINBOW, United States Registration No. 1,700,667, issued on July 14, 1992, and U.S. Registration No. 3,022,491, issued on December 6, 2005.
Complainant is also the owner of U.S. Registration
No. 1,669,578 for the mark RAINBOW PLAY SYSTEMS. for playground equipment; namely,
jungle gyms, playhouses, climbing structures, slides, climbing ladders, and
chin up bars, which has been in exclusive and continuous use since at least
as early as 1985, said registration having issued on December 24, 1991 and U.S.
Registration No. 2,130,097 for the mark RAINBOW PLAYGROUND WAREHOUSE for wholesale
and retail store services featuring playground equipment, namely, play structures
comprised of climbing units, platforms, sandboxes, swingsets, jungle gyms, playhouses,
gymnastics apparatus and slides, said registration having issued on January
of 1994.
5. Parties’ Contentions
A. Complainant
The domain name is identical and/or confusingly similar to trademarks and/or service marks owned by Complainant.
The RAINBOW marks, as evidenced by the registrations
owned by Complainant and also evidenced by the number of years of use, are distinctive
and well known in the playground equipment industry and marketplace. Moreover,
Complainant operates its corporate web site at the address “www.rainbowplay.com”.
Respondent’s domain name is confusingly similar to the RAINBOW registrations and the RAINBOW marks and to the Complainant’s domain name registration <rainbowplay.com>, because it incorporates the RAINBOW marks.
The addition of the term “groundequipment”
has no bearing on the likelihood of confusion. Indeed, WIPO panelists have held
that “...[g]enerally, a user of a mark ‘may not avoid likely confusion
by appropriating another’s entire mark and adding descriptive or non-distinctive
matter to it.’ J. Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition § 23:50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy
Ltd., WIPO Case No. D2001-0446. See
also Telstra Corporation v. Barry Cheng Kwok Chu, WIPO
Case No. D2000-0423, E. I. du Pont de Nemours and Company v. Richi Industry
S. r. l., WIPO Case No. D2001-1206,
and Utensilerie Associate S. p. A. v. C & M, WIPO
Case No. D2003-0159, where the panelist specifically held the addition of
the term “shop” to be non-distinctive. The addition of “.com”
to Complainant’s marks does not change the likelihood of confusion. In
fact, it has been held that the addition of “.com” is an irrelevant
distinction that does not change the likelihood for confusion. See Microsoft
Corporation v. Amit Mehrotra, WIPO Case
No. D2000-0053.
Thus it is clear from the record that Respondent’s domain name is identical and/or confusingly similar to the RAINBOW registrations and the RAINBOW marks.
The Respondent has no rights or legitimate interests in the domain names.
(paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules)
Respondent has no right or legitimate interest with respect to its use of the domain name in question for the following reasons.
First, Respondent is not the owner of any trademark in the United States, whether registered or at common law, containing the term RAINBOW.
There is also no evidence that Respondent (as an individual, business, or other organization) has been commonly known by the domain name in question, even if the Respondent has acquired no trademark or service mark rights.
Moreover, there is no evidence of Respondent’s 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. Respondent is not making a legitimate non-commercial or fair use of the domain name. Rather, Respondent is blatantly using the domain name in question with the intent for commercial gain and to misleadingly divert consumers from Complainant’s web site.
On its website, Respondent has hypertext links that divert the consumer to non-Rainbow owned or authorized websites (i.e., websites owned and/or operated by competitors of Complainant who offer competing products and/or services). Moreover, Respondent, on its web site, states that the web sites listed are “Sponsored Links.” Copies of some of the sample non-Rainbow linked web site pages are attached to the Complaint.
Thus it is clear from the record that Respondent has no rights or legitimate interest in using the RAINBOW marks or any formative thereof in connection with its domain name registration for “www.rainbowplaygroundequipment.com” and/or the products and services associated therewith.
The domain names were registered and are being used in bad faith.
Under ICANN, a domain name registrant has acted in bad faith where:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Complainant’s RAINBOW marks are well-known worldwide in connection with children’s playground equipment due to the millions of dollars Complainant has expended promoting, selling and advertising RAINBOW branded products throughout the United States and elsewhere. By using the domain name “www.rainbowplaygroundequipment.com”, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s RAINBOW marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s web site and/or of a product or service on Respondent’s website.
Respondent has no affiliation with Complainant nor is Respondent authorized to use any of Complainant’s RAINBOW marks. Despite this fact, Respondent uses the RAINBOW marks in connection with its domain name and utilizes hypertext links to attract traffic to web sites owned and operated by competitors of Complainant. Moreover, the offending website contains no statement that makes it explicitly clear that Respondent and the linked web sites are not associated with Complainant. Thus Respondent is using Complainant’s RAINBOW marks in an unauthorized manner.
The Respondent, as stated above, is using the domain name at issue, which is identical and/or confusingly similar to Complainant’s RAINBOW marks. Respondent uses Complainant’s RAINBOW marks on its web site in connection with the advertisement and sale of playground equipment and related products. Said web site appears to be designed to present Internet users with search engine results for various play ground equipment dealers and manufacturers other than Complainant. Thus, the website potentially derives revenue from “click throughs” from confused web users who are looking for Complainant’s web site or for information about Complainant. Consequently, Respondent’s use of the domain name is a clear attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s RAINBOW marks.
The fact that the Respondent has no legitimate interest in the domain names, combined with Respondent’s clear goal of diverting traffic away from Complainant’s website to those of the websites of competitors of the Complainant unequivocally constitutes bad faith.
For the foregoing reasons, Complainant respectfully submits that Respondent’s domain name registration for “www.rainbowplaygroundequipment.com” is confusingly similar to the RAINBOW trademark registrations and the RAINBOW marks, that Respondent has no rights or legitimate interest in the domain name, and that Respondent has registered and used the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respect of the domain names; and
3) that the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations comprising the word RAINBOW.
Regarding the question of likelihood of confusion between RAINBOW and the domain name at issue the Panel is of the opinion that the addition of the words “playground” and “equipment” in this case would not avoid likelihood of confusion and confusing similarity respectively since these words as a designation for a commercial origin are generic or at least descriptive.
The domain name at issue incorporates the dominating term RAINBOW. Therefore, the domain name must be considered as confusingly similar to the Complainant’s trademarks.
The “.com” suffix denoting second-level domain status in Respondent’s domain name does not affect the fact that the name is confusingly similar to Complainant’s mark pursuant to paragraph4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain name. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities.
Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the domain name, the Panel finds that the prerequisites of paragraph 4(a)(ii) of the Policy are fulfilled.
C. Registered and Used in Bad Faith
Given the Respondent’s failure to file a Response, the Panel accepts
as true all credible allegations of the Complaint. See Talk City, Inc. v.
Michael Robertson, WIPO Case No. D2000-0009.
The Respondent’s default does not, however, translate into an automatic
ruling for the Complainant. To the contrary, the Complainant still must establish
a prima facie showing that, under the Policy, it is entitled to transfer of
the domain name.
The circumstances mentioned in paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.
The Respondent is using the Complainant’s trademark RAINBOW on its website in connection with the advertisement and sale of playground equipment. Said website appears to be designed to present internet users with search engine results for various play ground equipment dealers and manufacturer others than the Complainant.
This conduct would correspond to the circumstances set out in paragraph 4(b)(iv) of the Policy. In order for this paragraph to be applicable the Respondent must have intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site.
The Panel finds that it is difficult to see what the purpose of the Respondent’s registration and use of the domain name would be in this case other than being for commercial gain.
Further, the fact that Respondent has referred to the term “playground equipment”, which is covered by the Complainant’s trademark registrations, and the fact that there is no natural connection between the designation RAINBOW and “playground equipment” indicates that the domain name has been registered and used in bad faith.
Consequently, the Panelist concludes that the contested domain name has been
registered and used in bad faith in accordance with paragraph 4(a)(iii) of the
Policy. Therefore, all the prerequisites for cancellation or transfer of the
domain name of paragraph 4(i) of the Policy are fulfilled.
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 <rainbowplaygroundequipment> be transferred to the Complainant.
Jonas Gulliksson
Sole Panelist
Dated: June 20, 2006
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