The Complainant is Gund, Inc., Edison, New Jersey 08818, United States of America, represented by Gottlieb, Rackman & Reisman, PC, United States of America.
The Respondent is CPIC NET, / Domain Management, Closter, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gundgifts.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2008. On February 7, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 8, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 12, 2008. The Center verified that the Complaint together with the amendment to 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 February 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2008.
The Center appointed Richard Hill as the sole panelist in this matter on March 13, 2008. 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 is a well-known marketer of plush toys. It has registered the mark GUND in numerous countries and uses that mark extensively to market its products.
The Respondent made two offers to sell the disputed domain name to the Complainant, first for US $1250, subsequently for US $750.
The Respondent has used the disputed domain name to point to a website offering links to a variety of products, including competitors of the Complainant, and subsequently to point to a generic directory-type page provided by an organization that specializes in selling domain names by online auction.
5. Parties’ Contentions
A. Complainant
The Complainant states that it is a well-known marketer of high-quality plush stuffed toys and that it has been using the GUND mark in connection with its toy line for over 100 years. Further, they are well-known throughout the United States of America and Canada.
According to the Complainant, it has registered approximately 141 domain names in at least six different top level domains, including the domain names <gund.com>, <gottagettagund.com>, <gund.net>, and <babygund.com>, and it owns numerous registrations throughout the world for the GUND, GOTTA GETTA GUND and BABYGUND trademarks. All of these registrations issued prior to the Respondent’s registering the disputed domain name.
The Complainant alleges that, in July of 2006, the Respondent registered the disputed domain name. Since this had not been authorized by the Complainant, it properly sent the Respondent a notice letter in August 2006, demanding that the Respondent cease and desist from using the disputed domain name. The Respondent replied requesting an offer to purchase the domain name and indicating a price of $1,250. Counsel for the Complainant responded with an offer of $250 to which the Respondent replied with a “bottom line offering price” of $750. There has been no further correspondence between the parties.
The Complainant states (and provides evidence to that effect) that on October 25, 2007 the website at the disputed domain name included links to websites selling competing plush toy products, including plush toys from “Big Bear”, “Boyds Bear”, “Build a Bear” and “Webkinz”. The website at the disputed domain name was subsequently changed.
According to the Complainant, the disputed domain name is confusingly similar to its mark GUND because it incorporates the distinctive mark in its entirety and combines that mark with the ordinary descriptive word “gifts”. Moreover, the fact that the GUND mark and the disputed domain name have both been used in connection with plush toys, increases the likelihood of confusion among consumers who access the disputed domain name.
The Complainant alleges that the Respondent does not have rights or legitimate interests in the disputed domain name because the domain name is likely to misleadingly divert, for commercial gain, consumers searching for the Complainant’s Internet presence.
Further, says the Complainant, the Respondent also lacks rights or a legitimate interest because there is no evidence that the Respondent, before any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services. Under the Policy, a use is only bona fide if it is a non-infringing use - since trademark law prevents the use of a mark in conjunction with goods or services similar to those for which the mark was registered any use of a mark in violation of trademark law, as here, is not a bona fide use. And, where a party has registered and used a domain name in bad faith, that party cannot be found to have made a bona fide offering of goods and services. As set forth below, the Respondent registered and used the domain name in bad faith, and thus has not made a bona fide offering of goods or services.
The Complainant alleges that the Respondent registered the disputed domain name in bad faith and has used that domain name in bad faith. It provides several arguments to that effect. The Panel summarizes here only those arguments that it considered sufficient to dispose of the case.
According to the Complainant, the Respondent registered and used the disputed domain name in bad faith because the Respondent is intentionally using the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s GUND mark as to the sponsorship, affiliation or endorsement of its website and the products and services on the websites to which it links and has linked. Internet users searching for the Complainant’s Internet presence have been and may in the future be connected to the Respondent’s website, which contained links to websites offering products and services from competitors of the Complainant offering plush toys and related products over the Internet. Accordingly, the Respondent has attempted to increase its business by attracting Internet users familiar with the Complainant who could be confused into thinking that the Complainant is affiliated with or endorses these products and services.
Further, says the Complainant, the Respondent replied to a cease and desist letter sent by it on August 24, 2006 with a request for the Complainant to submit an offer to purchase the disputed domain name. The two offers requested by the Respondent were originally $1,250 and subsequently $750. Both of these offers were far in excess of the out-of-pocket costs associated with registering a domain name. Such offers for sale are indicative of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel will first address the procedural issues related to the fact that the Respondent has defaulted and then analyse the evidence to determine whether the Complainant has proven, in accordance with paragraph 4(a) of the Policy that:
(i) The contested domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Since the Respondent has defaulted, this Panel must first determine what the procedural implications are of a default. Should the Complainant automatically prevail, or should the Panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?
While the Policy, the Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, paragraph 4(a) of the Policy states:
“In the administrative proceeding, the Complainant must prove that each of these three elements are present.” [emphasis added]
This Panel therefore holds that it cannot grant the Complainant’s request automatically, but that it must instead examine the evidence presented to determine whether or not the Complainant has proven its case as required by the Policy.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The addition of the common word “gifts” does not sufficiently distinguish the disputed domain name from the Complainant’s mark for the purposes of Policy paragraph 4(a)(i). See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil,
WIPO Case No. D2000-1409 (Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Homer TLC Inc. v. Kevin Daste, NAF Case No. FA0604000675788 (May 24, 2006) (“the addition of a generic term to Complainant’s mark, especially one that bears an obvious relation to Complainant’s business, does not adequately distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i)”).
B. Rights or Legitimate Interests
The Respondent has used the disputed domain name to point to a website that contained links to competitors of the Complainant. Given the confusing similarity in the names, and the fact that the disputed domain name is not a common, generic term, such use does not constitute a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, FA 0701000888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii)); see also Martin H. Meyerson v. Speedy Web, FA 0704000960409 (Nat. Arb. Forum May 5, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii)).
Further, as the Complainant correctly states, where a party has registered and used a domain name in bad faith, that party cannot be found to have made a bona fide offering of goods and services, see PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,
WIPO Case No. D2002-0701 (Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian,
WIPO Case No. D2000-0937 (October 13, 2000). Thus, it cannot be said that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel holds that the Complainant has established its burden of proving this element of the Policy.
C. Registered and Used in Bad Faith
The Respondent has not provided any plausible explanation for its choice of the disputed domain name. The Respondent has made two offers to sell the disputed domain name for a price that would appear to exceed its cost in acquiring and using the disputed domain name. Thus the facts of this case indicate that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for a price well in excess of its out-of-pocket costs. This is a clear violation of Policy, paragraph 4(b)(i)). See Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim,
WIPO Case No. D2002-0403 (June 27, 2002) (finding a request for a settlement offer to be a “clear indication that the Respondent was willing to sell the registration in exchange for money - more than likely in excess of his out-of-pocket costs”).
Furthermore, it is established that the Respondent used the disputed domain name to point to a website containing links to competitors of the Complainant. Such use interferes with the Complainant’s business and is therefore evidence of bad faith registration and use. See EBAY, Inc. v. MEOdesigns and Matt Oettinger,
WIPO Case No. D2000-1368 (December 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel holds that the Complainant has established its burden of proving this element of the Policy.
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, <gundgifts.com> be transferred to the Complainant.
Richard Hill Sole Panelist
Dated: March 27, 2008
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