DRS 03264 toys-r-us

Document Sample
DRS 03264 toys-r-us Powered By Docstoc
					Nominet UK Dispute Resolution Service


DRS 03264


Geoffrey, Inc v Richard Mawdsley


Decision of Independent Expert
1. Parties

Complainant:            Geoffrey, Inc
Address:                One Geoffrey Way
                        Wayne
                        New Jersey
Postcode:               07470
Country:                US


Respondent:             Richard Mawdsley
Address:                The Old Bank
                        The Old Quadrant
                        Hoylake
                        Wirral
Postcode:               CH47 7EE
Country:                Great Britain

2. Domain Name

toys-r-us.co.uk ("the Domain Name")

3. Procedural Background

The Complaint was lodged with Nominet on 10 January 2006.               Nominet validated the
Complaint and informed the Respondent on 13 January 2006 that the Dispute Resolution
Service (“DRS”) had been invoked and that the Respondent had 15 working days (until 7
February 2006) to submit a Response. The Respondent did not file a Response. On 20
February 2006 the Complainant paid Nominet the appropriate fee for a decision of an expert
pursuant to paragraph 7 of the Nominet DRS Policy Version 2 (“the Policy”).

On 27 February 2006 Nominet appointed Andrew Clinton (“the Expert”). The Expert has
confirmed to Nominet that he knows of no reason why he could not properly accept the
invitation to act as expert in this case, and further confirmed that he knows of no matters
which ought to be drawn to the attention of the parties, which might appear to call into
question his independence and/or impartiality.

4. Outstanding Formal/Procedural Issues (if any)

Under paragraph 15c of the DRS Procedure Version 2 (“the Procedure”) if, in the absence of
exceptional circumstances, a party does not comply with any provision in the Policy or



                                                             File DOC NAME: 1203183413.DOC PAGE: 1 OF 6
                                   CLIENT NO: 354336 MATTER NO: 16Ref: 00354336\00000016\toys-r-us
                                                                                               1
Procedure (in this case by declining to file a Response) the Expert will draw such inferences
as he considers appropriate.

5. The Facts

The Domain Name was registered in the name of the Respondent on 22 February 2004.

6. The Parties’ Contentions

Complainant

The Complaint, so far as is relevant, is as follows:


The Complainant has rights in the abovementioned domain name as the Registered
Proprietor of the following UK and Community Trade Mark Registrations for the mark TOYS
“R” US: UK Trade Mark No. 1289890 UK Trade Mark No. 1337015 UK Trade Mark No.
1495962 UK Trade Mark No. 2000499A UK Trade Mark No. 2000499B UK Trade Mark No.
2158489 UK Trade Mark No. 2257543 Community Trade Mark No. 400929 Community Trade
Mark No. 1398361 Community Trade Mark No. 1786862 Database print outs of these
registrations are attached hereto at Annex 1. The Complainant has built up massive
reputation in the name ‘Toys-R-Us’ throughout the UK by virtue of its use of the mark over the
years since 1985 and the ‘Toys R Us’ brand has become well known for the sale and
manufacture of toys and goods for children. A substantial part of the Complainant’s business
is conducted via the Internet through its website www.toysrus.co.uk. A print out from this
website is attached hereto at Annex 2.
The abovementioned domain name in the hands of the Respondent is abusive for the
following reasons: The domain consists entirely of the name ‘Toys-R-Us’ being a name in
which the Complainant has registered protection rights via its UK and Community Trade Mark
Registrations. The holding of this domain by the Respondent unfairly takes advantage of the
Complainant’s trade mark rights and reputation in the name ‘TOYS R US’. The domain could
easily be construed as being controlled by the Complainant or operated with the
Complainant’s authorisation resulting in customer confusion. Indeed, the Respondent is
operating a website under the domain name which sells toys and children’s items. A print out
from the Respondent’s website is attached at Annex 3. We submit that this domain was
acquired primarily for the purpose of unfairly disrupting the business of the Complainant. The
Respondent is trading off the reputation that the Complainant has in its trade marks listed in
Annex 1. Disruption is caused to the Complainant’s business when customers wishing to
access the Toys R Us official site search for a domain name under the term ‘Toys R Us’ and
find the Respondent’s site. Such customers will be confused into believing that the
Respondent’s site is associated with the Toys R Us site as it is common for companies to
register domain names incorporating hyphens as a means of separating the words comprising
the company name. This confusion will lead customers to purchase goods from the




                                                              File DOC NAME: 1203183413.DOC PAGE: 2 OF 6
                                    CLIENT NO: 354336 MATTER NO: 16Ref: 00354336\00000016\toys-r-us
                                                                                                2
Respondent’s site, rather than continuing to search for the Complainant’s official site, thus
diverting business away from the Complainant.
The Complainant has attempted to contact the Respondent to inform him of its rights in the
‘Toys R Us’ name and to demand the immediate transfer of the domain but our letters have
been returned to us and therefore it would seem that the Respondent has also provided
Nominet with incorrect address details. We attach hereto at Annex 4, letters sent to the
Respondent and returned to us, as proof that the address provided is invalid. We understand
that registering a domain name with incorrect name or address details in itself constitutes an
abusive registration. As a result of these submissions, the Complainant requests that the
domain name ‘toys-r-us.co.uk’ be transferred into its name due to the existence of its trade
mark rights and to avoid the confusion and association of the user and the damage to the
Respondent’s business which would result were the domain to remain in the hands of the
Respondent.


Remedies Requested


Transfer


Respondent


The Respondent did not file a Response.

1. Discussion and Findings:

General

Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities;
firstly, that it has Rights in respect of a name or mark which is identical or similar to the
Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an
Abusive Registration.

Complainant’s Rights

Rights are defined in the Policy as including, but not limited to, rights enforceable under
English law.   This is usually demonstrated by reference to a trade mark registration or
evidence of active trading using the name or mark in question. The Complainant is a retailer
of toys and children’s goods and the TOYS R US brand is well-known. The Complainant has
a number of trade mark registrations for the mark TOYS “R” US. The Domain Name and the
brand name are not completely identical as the inclusion of the hyphens in TOYS-R-US sets
the Domain Name and the brand name apart. However, in terms of aural impact “TOYS R
US” and “TOYS-R-US” sound exactly the same and from a visual perspective the differences
are insignificant. The Expert is satisfied that the Complainant has Rights in respect of a name




                                                             File DOC NAME: 1203183413.DOC PAGE: 3 OF 6
                                   CLIENT NO: 354336 MATTER NO: 16Ref: 00354336\00000016\toys-r-us
                                                                                               3
which can be deemed to be identical, or is very similar, to the Domain Name (disregarding, for
these purposes, the generic domain suffix).



Abusive Registration


Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which
either:


          (i)      was registered or otherwise acquired in a manner which, at the time when
                   the registration or acquisition took place, took unfair advantage of or was
                   unfairly detrimental to the Complainant’s Rights; or


          (ii)     has been used in a manner which took unfair advantage of or was unfairly
                   detrimental to the Complainant's Rights.



Non-exhaustive factors – paragraph 3 of Policy


A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out
in paragraph 3a of the Policy as follows:


          (i)     Circumstances indicating that the Respondent has registered or otherwise
                  acquired the Domain Name primarily:


                   A. for the purposes of selling, renting or otherwise transferring the
                       Domain Name to the Complainant or to a competitor of the
                       Complainant, for valuable consideration in excess of the Respondent’s
                       documented out-of-pocket costs directly associated with acquiring or
                       using the Domain Name;


                   B. as a blocking registration against a name or mark in which the
                       Complainant has Rights; or


                   C. for the purpose of unfairly disrupting the business of the Complainant;


          (ii)    Circumstances indicating that the Respondent is using the Domain Name in
                  a way which has confused people or businesses into believing that the
                  Domain Name is registered to, operated or authorised by, or otherwise
                  connected with the Complainant;




                                                              File DOC NAME: 1203183413.DOC PAGE: 4 OF 6
                                    CLIENT NO: 354336 MATTER NO: 16Ref: 00354336\00000016\toys-r-us
                                                                                                4
         (iii)       The Complainant can demonstrate that the Respondent is engaged in a
                     pattern of registrations where the Respondent is the registrant of domain
                     names (under .uk or otherwise) which correspond to well known names or
                     trade marks in which the Respondent has no apparent rights, and the
                     Domain Name is part of that pattern;


         (iv)        It is independently verified that the Respondent has given false contact
                     details to Nominet; or


         (v)         The domain name was registered as a result of a relationship between the
                     Complainant and the Respondent, and the Complainant:


                     (A)     has been using the domain name registration exclusively; and
                     (B)     paid for the registration and/or renewal of the domain name
                             registration.


The list of factors at paragraph 3 of the Policy is non-exhaustive and a Complainant can
succeed in proving Abusive Registration without the need to prove any of those factors.
However, in order to do so it is necessary to prove that the definition of Abusive Registration,
as set out in paragraph 1 of the Policy, has been satisfied.


The Complainant argues that the Domain Name was acquired primarily for the purpose of
unfairly disrupting the business of the Complainant. The Complainant points out that:-


    •   The Domain Name consists entirely of the mark “Toys-R-Us” being a mark it has
        rights in.
    •   The Respondent is operating a website which markets toys and children’s items, ie in
        direct competition with the Complainant’s business.
    •   There is a risk that customers will be confused and believe that the Respondent’s
        website is associated with the Complainant and may purchase goods from the
        Respondent’s website.


The Respondent has chosen to register a domain name that incorporates a very well known
mark and is using the Domain Name to sell products in competition with the Complainant.
The Respondent has declined to file a Response and there is nothing to rebut the
Complainant’s assertions that the Domain Name should be considered an Abusive
Registration in the hands of the Respondent. In the absence of a Response it is difficult to
think of a reason why the Respondent would register and use the Domain Name if it were not
with the object of trading on the back of the Complainant’s reputation and thereby taking
unfair advantage of the Complainant’s Rights.            The Expert is satisfied that there are



                                                                 File DOC NAME: 1203183413.DOC PAGE: 5 OF 6
                                       CLIENT NO: 354336 MATTER NO: 16Ref: 00354336\00000016\toys-r-us
                                                                                                   5
circumstances indicating that the Respondent has registered or otherwise acquired the
Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
The Expert also finds that the second part of the definition of Abusive Registration is made
out in that the Domain Name has been used in a manner which took unfair advantage of or
was unfairly detrimental to the Complainant’s Rights.


The Complainant refers to the fact that its letters to the Respondent have been returned and it
therefore would seem that the Respondent has provided Nominet with incorrect address
details. In light of the conclusion reached above it is not necessary for the Expert to make a
finding on whether paragraph 3(a)(iv) of the Policy is made out.


Non-exhaustive factors – paragraph 4 of Policy


There is a list of non-exhaustive factors which may be evidence that the Domain Name is not
an Abusive Registration at paragraph 4 of the Policy. However, there was no Response to
the Complaint.


2. Decision

The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name
which is identical or similar to the Domain Name and that the Domain Name, in the hands of
the Respondent, is an Abusive Registration. The Expert directs that the Domain Name be
transferred to the Complainant.




Andrew Clinton

13 March 2006




                                                             File DOC NAME: 1203183413.DOC PAGE: 6 OF 6
                                   CLIENT NO: 354336 MATTER NO: 16Ref: 00354336\00000016\toys-r-us
                                                                                               6