Complainant is Gund Inc., Edison, New Jersey, United States of America, represented by Gottlieb, Rackman & Reisman, P.C., New York, New York, United States of America.
Respondent is Dean Gagnon, Calgary, Canada.
2. The Domain Name and Registrar
The disputed domain name <about-gund.info> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on February 6, 2008 and in hardcopy on February 11, 2008. On February 7, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 8, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 4, 2008.
The Center appointed Erica Aoki as the sole panelist in this matter on March 11, 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.
The language of the administrative proceeding is English, the language of the registration agreement.
4. Factual Background
Complainant Gund Inc. (referred as to “Complainant” or “Gund”) is a United States corporation, having its principal place of business in Edison, New Jersey. Gund is a well-known marketer of high quality plush stuffed toys. Gund is the owner of the trademark GUND used in connection with its toy line over 100 years.
Gund is very active in promoting its marks by affixing hang tags in all its products, producing annual catalogs, participating in trade shows for gift, toy and baby product throughout the United States of America and selling its products in well-known stores such as F.A.O. Schwartz, Hallmark stores, Bloomingdales, Borders, Macy’s, Neiman Marcus, Nordstrom’s, Lord & Taylor and Sacks Fifth Avenue. Gund has invested considerable time and effort in advertising and promoting its trademark GUND.
GUND has also won awards including recognition as being as one of “America’s Greatest Brands”.
Gund has been making a serious effort to register its GUND, GOTTA GETTA GUND and BABYGUND marks globally, including in Canada where the Respondent is located. Also, GUND 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>.
Complainant has presented records of the United States Patent and Trademark Office’s registration of its trademark, in many instances prior to Respondent’s registration of the disputed domain name.
On June 15, 2007, Respondent registered the disputed domain name <about-gund.info>. On July 25, 2007 Counsel for Complainant sent Respondent a notice letter demanding the transfer of the disputed domain name. At that time, Respondent apparently was willing to transfer the domain name immediately. The domain name was not transferred allegedly due to a registration restriction which requires a lapse of six months from its registration for any transfer of the domain name.
Respondent has not effectively transferred the disputed domain name to Complainant as agreed, and now with the domain name is used for a “pay-per-click” site.
5. Parties’ Contentions
A. Complainant
1. The disputed domain name <about-gund.info> is virtually identical and confusingly similar to Complainant’s trademarks GUND, GOTTA GETTA GUND and BABYGUND. The disputed domain name merely adds generic descriptive words to Complainant’s trademark.
2. Respondent does not have any rights or legitimate interests in the disputed domain name.
3. Respondent registered and uses the disputed domain name in bad faith to disrupt Complainant’s business.
4. Respondent has never been known by the domain name in dispute.
5. Respondent is misleadingly diverting consumers for commercial gain.
B. Respondent
Respondent failed to submit any formal response to Complainant’s contentions. However, Respondent, on February 8, 2008, sent an email communication to Complainant copying the Center stating that he would ensure that the domain name would be transferred immediately.
6. Discussion and Findings
Complainant must show the requirements specified under paragraph 4(a) of the Policy, in particular that:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Based on the facts presented by Complainant, this Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights under Policy paragraph 4(a)(i). The disputed domain name merely adds the generic word “about” as a prefix to the GUND trademark. The addition of the word “about” to Complainant’s trademark does not distract from confusing similarity, nor does, under established UDRP precedent the gTLD, which in this case is “.info”. In conclusion, there is no doubt that the disputed domain name is confusingly similar to Complainant’s registered trademark.
B. Rights or Legitimate Interests
It is well established that once Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests the burden of rebuttal shifts to Respondent.
Respondent is in default and thus has made no affirmative attempt to show rights and legitimate interests in the disputed domain name.
There is no evidence that Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.
Respondent appears on the present record to be in no way connected with Complainant and has not obtained any authorization to use any of Complainant’s trademarks GUND, GOTTA GETTA GUND and BABYGUND.
Apparently the sole use of the disputed domain name by Respondent was to divert Internet traffic to gain revenue. In the circumstances, this does not constitute a bonafide offering of goods or services. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Taking into account the undisputed allegations of Complainant, the Panel finds that Respondent most likely was aware of Complainant’s rights to the GUND trademark, and that the registration of the disputed domain name was made in bad faith. The disputed domain name is currently being used to host what appears to be a fairly typical “link farm” from which revenue is presumably derived.
The Panel is in the circumstances satisfied that Respondent’s probable intent, regarding the registration and use of the disputed domain name is to attract and divert Internet users seeking information about Complainant for gain.
The Panel further notes that Respondent has been engaged in several UDRP proceedings in the past: see F. Hoffmann La-Roche AG v. Dean Gagnon,
WIPO Case No. D2007-1009; Sanofi-Aventis v. Dean Gagnon,
WIPO Case No. D2007-1682, and Hoffmann-La Roche Inc. v. Dean Gagnon,
WIPO Case No. D2007-1832.
Accordingly, the Panel finds that Respondent has registered and is using the disputed 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 <about-gund.info> be transferred to Complainant.
Erica Aoki Sole Panelist
Dated: March 24, 2008
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