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WIPO Domain Name Decision D2004-0946 for metoyou.com

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WIPO Domain Name Decision D2004-0946 for metoyou.com Powered By Docstoc
					                 WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

                         Carte Blanche Greetings Limited v. metoyou

                                   Case No. D2004-0946




1.    The Parties

     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

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     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 UK
     and 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

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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.

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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

                                       page 4
     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

                                           page 5
     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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