WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marcus Wolschon v. Whois Privacy Protection Service, Inc., Ken Duberson

Case No. D2009-0549

1. The Parties

The Complainant is Marcus Wolschon, of Freiburg, Germany.

The Respondent are Whois Privacy Protection Service, Inc., of Washington, United States of America and Ken Duberson, of North Carolina, United States of America (hereinafter the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <yiffytoys.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2009. On April 27, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 28, 2009, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 5, 2009, adding Ken Duberson as a co-Respondent. 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” or “UDRP”), 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 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2009. The Response was filed with the Center on May 13, 2009.

The Center appointed John Swinson as the sole panelist in this matter on May 28, 2009. 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. Supplemental Filings

Both parties submitted Supplemental Filings in these proceedings.

The Complainant filed a Supplemental Filing in response to the Respondent's Response on May 14, 2009. On May 18, 2009, the Complainant also made a minor amendment to this Supplemental Filing.

On May 15, 2009, the Respondent sent an email to the Center advising that it would submit an amendment to its Response, in light of the Complainant's Supplemental Filing. On May 18, 2009, a further filing was submitted by the Respondent. This was in the form of specific comments responding to certain paragraphs of the Complainant's Supplemental Filing.

The Panel notes that it has a discretion whether to accept any or all Supplemental Filings in this case. As both parties have availed themselves of the opportunity to provide further submissions, and certain information in the Supplemental Filings provides the Panel with a clearer understanding of the case, the Panel has decided to take all Supplemental Filings into account.

5. Factual Background

The Complainant is based in Germany, and operates a website at “www.yiffytoys.de” which sells adult sexual toys. The Complainant has a registered trade mark for YIFFYTOYS in the United States (Registration No. 3539801) which was filed on March 6, 2008 and registered on December 2, 2008 (although first use in commerce is said to be February 2006). The Complainant also has a German trade mark registration for YIFFYTOYS

The Respondent is based in North Carolina, and operates an online store for adult sex toys located at “www.fetishzone.net”. The Respondent registered the disputed domain name on November 2, 2007.

The Panel was unable to view the website resolving from the disputed domain name, as it required login details. However the site still appeared to be operational.

“Yiff” and “Yiffy” are not defined in standard dictionaries. However, the Urban Dictionary provides the following definition of “Yiffy”:

“Sexy, particularly as relates to sex with anthropomorphised animals, cartoon animals, or sentient animals, any of which may be known as a furry.”

The same dictionary provides the following definitions of “Yiff”:

“Commonly used by furries, usually denotes standard intercourse but may denote any kind of sexual behaviour between any type and number of parties (imaginary anthro creatures, humans, animals, even inanimate objects like plushies)

The Furry Fandom's word for Sexual Intercourse, where two furs have a sexual affair. The word originates from the noise a fox creates when it mates. The phrase is used for sexual acts universally involving furries, not just specific acts.”

6. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant owns the Wolschon Importe business in Germany. In May 2006, the Complainant commenced work as the European distributor of “Furry Style”.

The disputed domain name is identical to trade marks owned by the Complainant, being United States trade mark registration no. 3539801 for YIFFYTOYS (first used in February 2006) and Germany registration number 302008009407.9. The Complainant has also registered the <yiffytoys.de>, <yiffytoys.us>, <yiffy-toys.com>, <yiffytoys.org> and <yiffytoys.net> domain names.

“Yiffy Toys” is a term invented by the Complainant to combine the two common words “yiff” and “toy”. The mark has been in international use since February 2006, and commenced before registration of the disputed domain name. The Respondent was likely to have become aware of the Complainant's trade mark in September 2007 during the Eurofurence event. The Respondent registered the disputed domain name in November 2007, and started its business in December 2007.

The Complainant has not licensed or permitted the Respondent to use its trade marks, and has not allowed the Respondent to apply for or use the disputed domain name.

An application by the Respondent to register “Yiffy Toys” as a trade mark in the United States was denied in December 2008 due to a likelihood of confusion with the Complainant's mark (see United States Serial no 77400748).

The shop that the Respondent started under the disputed domain name was later renamed as <fetishzone.net>. The website stated “We have moved!” and “We are now known as “Fetish Zone”. Therefore, any legitimate interests claimed in the disputed domain name have vanished. The Respondent refused to transfer the disputed domain name after the change in name of its business.

The disputed domain name was offered for sale to the Complainant in May 2008. The Complainant made a last honest attempt to resolve the dispute, by offering a generous compensation for the out of pocket expenses however this was not accepted by the Respondent.

The Respondent has provided only anonymous contact information, with a constantly changing email address. This has been done to slow down legal action against it. The Respondent also removed content from the disputed domain name website in the period before these proceedings were commenced.

The Respondent operated an online shop from the disputed domain name, with similar and identical products to the Complainant, and a confusingly similar logo. The Respondent's shop was clearly targeted at the minority group of the furry fandom and Internet users typing the name “yiffytoys” would be redirected to the Respondent's website, due to the popularity of “.com” domains. The Respondent is a direct competitor of the Complainant.

The Respondent conducts business in the same industry of the Complainant, targeting the same minority customer group. The Complainant's business operating under the name YiffyToys is and was already widely known within the small customer base. The Respondent is aware of the Complainant as a competitor and is disrupting that business, as customers are being redirected to the disputed domain name. Due to the reputation of the Complainant's shop, members of the limited customer base of both shops would believe that the entity owning the disputed domain name was the Complainant or associated with the Complainant.

The Respondent also attempted to use the domain name <Yiffy-Toys.de> but later transferred it to the Complainant.

B. Respondent

The Respondent makes the following contentions:

The Respondent Ken Duberson registered the disputed domain name on November 2, 2007. At this time, there were no trade marks relating to usage of “Yiffy Toys”, and the domain names <yiffytoys.net >, <yiffytoys.org> and <yiffytoys.us> were all available.

On February 13, 2008, the Complainant filed a German trade mark application for “YiffyToys”. On February 19, 2008, Douglas Bachtler filed a United States trade mark application for “Yiffy Toys”, at the request of Ken Duberson (the Respondent was later advised that this trade mark application was denied). On March 26, 2008, Mr. Duberson and Mr. Bachtler became business partners in the creation of <FetishZone.net>, in an attempt to expand its customer base. From this date, all e-commerce from the disputed domain name ceased. On April 25, 2008, “FetishZone” was registered in New Hampshire as a registered trade name.

On August 29, 2008, the Complainant acquired the YIFFYTOYS trade mark in Germany, and shortly after expanded to the United States in an attempt to reverse hijack the disputed domain name from Mr. Duberson. The logo used by the Respondent did not violate any trade marks. The disputed domain name has not been active in e-commerce since March 2008, and this date falls well before the date on which the Complainant acquired a trade mark.

The disputed domain name is currently being used for artists and manufacturers to provide images and contact information for their commissions or products, free of charge. A small amount of advertising may be necessary to help pay hosting charges, but the website will be a non-profit site.

The word combination of “Yiffy Toys” is taken from a product manufacturer known as “Furry Style”, which has been in business since April 2004, and uses the term “Yiffy Toys” on their website. The term was not created by the Complainant. The Respondent is a worldwide distributor for Furry Style.

Mr. Bachtler has no involvement with the disputed domain name, except for his filing of the YIFFYTOYS trade mark. Mr. Duberson did not travel overseas in 2007, at the time the Complainant alleges he saw the Complainant using the YIFFYTOYS trade mark.

The attempted sale of the disputed domain name in May 2008 is irrelevant, as it was prior to the Complainant's trademark application. On March 16, 2009, the Complainant attempted to purchase the disputed domain name for an unreasonable amount, and sent the request to the wrong person.

The Respondent chose a privacy service to avoid spammers and telemarketers, as well as identity theft and fraud. The Respondent contends is being harassed and stalked by the Complainant, and the Complainant is intending to do harm to Mr. Duberson and Mr. Bachtler. The Complainant has already posted personal information on publicly viewable websites without the Respondent's permission. The Respondent has also received an enormous amount of spam to the disputed domain name email account, which is in German. This, says the Respondent, indicates the Complainant is already abusing the personal information he has acquired.

The Complaint contains an image (purportedly from the disputed domain name website) showing items that were not in fact available on the website (Bad Dragon items). These items became available on the “www.fetishzone.net” website from October 2008. This, contends the Respondent, constitutes a fraudulent document from the Complainant. The use of this in the Complaint shows that the Complainant is copying the items and prices of the Respondent.

7. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in Paragraph 4(a) of the Policy):

(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

The onus of proving these elements is that of the Complainant.

A. Identical or Confusingly Similar

The Complainant has a registered trade mark in the United States for the word mark YIFFYTOYS (registration no. 3539801). This trade mark was filed on March 6, 2008, and registered on December 2, 2008. The Complainant also has a registered trade mark in Germany for the word mark YIFFYTOYS (registration no. 302008009407.9). This application was filed on February 13, 2008 and registration was published on August 29, 2008.

(Douglas Bachtler (who appears to be a business partner of the Respondent) also has a pending trade mark application in the United States for the word mark YIFFYTOYS (Serial number 77400748). This trade mark was filed on February 19, 2008. While this is not relevant to the first element, the Panel mentions it here for completeness.)

The Panel finds that the Complainant has trade mark rights in YIFFYTOYS, as required by the first element. The Panel also finds that the disputed domain name is identical to this registered trade mark (as the .com suffix is ignored).

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

As a starting point, the Panel notes that both the Complaint and Response (even with all supplemental filings) were confusing and difficult to understand.

It appears that the Respondent claims that it has rights or legitimate interests as it was using the “YiffyToys” name first (prior to the Complainant's trade mark rights arising), and that it is the Complainant who is copying the Respondent's website content.

As mentioned above, an agent of the Respondent filed a United States trade mark application for “Yiffy Toys” several weeks before the Complainant filed its United States trade mark application. However, the Respondent's United States trade mark application was made several days after the Complainant's German trade mark application was made.

The disputed domain name was registered by the Respondent on November 2, 2007, before any trade mark applications were filed by the Complainant. However, the <yiffytoys.de> domain name appears to have been registered by the Complainant since February 2, 2006, which is over a year and half before the disputed domain name was registered. This is also when the Complainant alleges its YIFFYTOYS mark was first used in commerce.

On this timeline, it appears that the Complainant (as between the Complainant and Respondent) was the first person to have rights in “Yiffy Toys”, as it was operating a business from that domain, using the YIFFYTOYS trade mark, a significant time before the Respondent registered the disputed domain name.

Both parties mention an entity called “Furry Style”, who appears to have coined the term “Yiffy Toys” (although the Panel notes the Urban Dictionary does not ascribe such meaning to Furry Style). Both parties claim that they are the distributor for “Furry Style” (the Respondent a worldwide distributor, the Complainant a European distributor). It is not clear from the evidence whether this is correct, as neither party has provided evidence of a distribution agreement. It is also not evident from the Complainant's or Respondent's websites, or the “Furry Style” website itself. Information from Furry Style would have been useful in this regard, however none was provided by either party. It is perhaps possible that the Respondent chose the disputed domain name because of Furry Style's use of the term, and without reference to the Complainant's trade mark. However the Respondent does not make this contention in its Response, and accordingly the Panel cannot in these circumstances make such a finding.

Otherwise, the Respondent is apparently not commonly known by the term “Yiffy Toys”, and by its own admission is trading under the new name of “FetishZone”. The Respondent also admits that it is not making a bona fide offering of goods and services from the website at the disputed domain name, as it has moved its e-commerce activities to its “FetishZone” website and has not offered a commercial service there since March 2008.

The Respondent alleges that the website is currently being used for a non-profit purpose, namely for artists and manufacturers to use free of charge. As the Panel could not enter the website without providing login details, the accuracy of the Respondent's contentions could not be verified. Further, no evidence of the Respondent's purported use as a non-profit site was included in the Response.

On balance, the Panel cannot, on the evidence before it, make a finding that the Respondent had rights or legitimate interests in the disputed domain name. The Complainant has presented a prima facie case that the Respondent had no such rights or legitimate interests, and the Respondent has failed to rebut that presumption.

Accordingly, the second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

One of those circumstances is registering the domain name for the primary purpose of selling it for more than reasonable out-of-pocket expenses. While the Complainant makes a small reference to the Respondent offering to sell the disputed domain name, the only documentary evidence provided suggests that it was the Complainant who attempted to purchase the name. Accordingly, bad faith cannot be found under this ground.

However, the Panel is satisfied that bad faith on the part of the Respondent can be inferred from the following:

- the Respondent's choice of domain name, which is identical to the Complainant's domain name; and

- the Respondent's actions in ceasing commercial use of the disputed domain name, and moving to a new brand (FetishZone); and

- the Respondent's use of a privacy service in relation to the disputed domain name; and

- the Respondent's registration and subsequent transfer of the <yiffy-toys.de> to the Complainant. (The Respondent does not deny this transfer occurred, but merely states that it is irrelevant to these proceedings. The Panel disagrees.)

In light of the above circumstances, the Panel considers that the Respondent has 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 the Complainant's website (see paragraph 4(b)(iv) of the Policy).

As the Respondent sells very similar items to the Complainant (which are not everyday items and are directed towards a small market segment), and the two entities are clearly competitors in the adult sex toy industry, the Panel can infer that the Respondent was or should have been aware of the Complainant and its brand at the time it registered the disputed domain name. It therefore appears that the Respondent registered the name for the primary purpose of disrupting the business of the Complainant (see paragraph 4(b)(iii) of the Policy).

The third element has been met.

8. 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 <yiffytoys.com> be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: June 5, 2009