Geoffrey, Inc. v. Innovative Network
Designs Corporation
Claim Number: FA0405000275926
PARTIES
Complainant
is Geoffrey, Inc. (“Complainant”),
represented by Lawrence W. Greene, of Geoffrey, Inc., One
Geoffrey Way, Wayne, NJ 07470-2030.
Respondent is Innovative Network
Designs Corporation (“Respondent”), 32 Broadway Ave., Florham Park, NJ
07932.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <gamesrus.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 25, 2004; the Forum received a hard copy of the Complaint
on May 27, 2004.
On
May 27, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the
domain name <gamesrus.com> is
registered with Network Solutions, Inc. and that the Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
June 2, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 22,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@gamesrus.com by e-mail.
A
timely Response was received and determined to be complete on June 21, 2004.
On June 25, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Bruce E.
Meyerson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that Respondent has not been commonly
known by the <gamesrus.com> domain
name, and has not acquired trademark or service mark rights therein. According to Complainant, Respondent has not
used, and is not using, the disputed domain name in connection with a bona fide
offering of goods or services. Thus,
Complainant contends that Respondent is not making a legitimate noncommercial
or fair use of the <gamesrus.com> domain
name.
Furthermore, according to Complainant, any use of the
disputed domain name by Respondent would dilute Complainant’s “famous” family
of “R US” marks by diminishing the capacity of the marks to identify and
distinguish Complainant’s goods or services.
Complainant contends that Respondent’s lack of action with respect to
the domain name constitutes bad faith and that bad faith can be inferred from
Respondent’s appropriation of the “R US” designation in light of the “coined
and famous” nature of Complainant’s family of “R US” marks.
B.
Respondent
Respondent
contends that the website <gamesrus.com>
was created as a non-profit electronic gaming review website and message board
for people to discuss various gaming topics.
Respondent points out that the site was created by volunteers and
updated by hobbyists, and that the website was created as early as 1998 and
grew in popularity as a respectable source of online gaming news and
information. According to Respondent,
the site was well-known as an electronic gaming review and industry news site
by other online news or review websites and also by electronic game developers
and industry leaders and many other organizations who frequently submitted news
and industry information to be considered for publication to the site. The site was used in this fashion, until a
demand was received from Complainant.
Due to the volunteer and non-commercial use of the website and in an
effort to comply with Complainant’s wishes, the site was put on hold.
Respondent
contends that it did not register the domain name to prevent Complainant from
reflecting a trademark or service mark in a corresponding domain name and that
Complainant does not own a trademark of “gamesrus.” Respondent contends that it does not have knowledge of
registering any names equivalent to Complainant’s trademarks or service marks.
Finally,
Respondent points out that it is in the business of registering and managing
domain names for third party companies as part of its service offerings. Moreover, Respondent states that it did not
register the domain name in question to disrupt any business or commercial activities;
the domain name was to be used specifically for the review and discussion of
electronic or online games.
FINDINGS
The
record reflects the following:
Complainant
Geoffrey, Inc. is a wholly owned subsidiary of Toys “R” Us, Inc. (“Toys “R”
Us”). Complainant is the owner of a
family of “R US” marks, including “R” US, TOYS “R” US, TOYSRUS.COM, BABIES “R”
US, KIDS “R” US, “R” US COLLECTION, BIKES “R” US, COMPUTERS “R” US, LIGHTS “R”
US, MATHEMATICS “R” US, PETS “R” US, PORTRAITS “R” US, SHOES “R” US, SNACKS “R”
US, STICKERS “R” US, SWEETS “R” US and numerous other “R US” marks. Complainant licenses these marks to
Toysrus.com, Toys “R” Us, and other related companies.
Complainant,
through its predecessors in interest, began using a family of “R US” marks in
connection with the retail sale of toys and games, sporting goods, and other
items in 1960. The use of the “R US”
marks has expanded over time to include the promotion, rendering and sale of
entertainment services and events, real estate leasing, insurance services,
truck hauling, car racing, credit card services, toy safety seminars, games,
arts and crafts products, construction kits, novelties, party goods, costumes,
furniture, books, bicycles, clothing, video tapes, video games, computers,
clocks, electronic devices, cosmetics, candy, sundries and numerous other
products and services throughout the United States and internationally.
The wide
variety of products and services promoted, sold, or offered for sale under the “R US” marks have been commercially promoted,
sold, and rendered throughout the United States and internationally. The family of “R US” marks is used on
labeling and/or packaging for products and in extensive advertising and
promotion of products, services, and businesses.
As of
February 2003, Complainant’s related and affiliated companies had more than 680
TOYS “R” US, 140 KIDS “R” US and 180 BABIES “R” US stores spread across the
United States of America and more than 540 TOYS “R” US stores outside the
United States. TOYS “R” US stores have
been in operation in the United States since at least as early as 1960. Complainant’s related companies now sell,
and for many years have sold, billions of dollars of products and have
similarly rendered retail department store services under the family of “R US”
marks throughout the United States and internationally. Annual sales of goods sold under the “R US” marks were over $13 billion dollars for the
fiscal year ending February 1, 2003 and $12.6 billion dollars for the fiscal
year ending February 2, 2002.
In April
1999, Complainant became aware that Respondent registered the <gamesrus.com> domain name. Immediately thereafter, Complainant sent a
letter to Respondent which informed Respondent of its alleged infringement of
Complainant’s rights and which further demanded that Respondent cease its use
of the domain name registration.
Thereafter, on or about May 17, 1999, Complainant sent a letter to
Respondent again demanding Respondent’s transfer of the disputed domain name to
Complainant. Respondent failed to
respond to Complainant’s letter.
According to Complainant, on May 17, 2004, its representative called the
identified administrative contact for Respondent, Douglas Rahn, and requested
transfer of the disputed domain name, pursuant to its earlier demand. Complainant states that Mr. Rahn responded
that he was proceeding with a sale of the disputed domain name to an Australian
corporation.
Respondent has not used, and is not
using, the disputed domain name in connection with a bona fide offering of
goods or services. Even though almost
six years have passed after Respondent’s registration of the domain name, it
does not resolve to a web page.
DISCUSSION
Paragraph 15(a) of the Rules for the Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant
is the owner of several valid trademarks incorporating the “R US”
designation. The record indicates that
the term “R US” was coined by Complainant’s predecessor over 40 years ago and
is registered as a mark by Complainant.
Although
Respondent correctly points out that Complainant does not own a trademark of
“gamesrus,” Complainant has established, however, that the “R US” family of
marks has not only been subject to specific trademark protection but also has
established sufficient distinctiveness to likewise give common law protection
under the UDRP. Indeed, in Geoffrey Inc. v. Stratton, 16 U.S.P.Q.2d
1691, 1694 (C.D. Cal. 1990), the court found that the “’R US’ designation was
coined by [Geoffrey] and, as a result of its extensive promotion and use, is
associated exclusively with plaintiff.”
Thus,
the addition of the generic word “games” to Complainant’s mark does not remove
the confusing similarity between the domain name at issue and Complainant’s
protected family of marks. In fact,
other ICANN panels have found that the use of a variety of words appended to
the “R US” mark demonstrated that the domain name in question was confusingly
similar to Complainant’s marks. E.g., Geoffrey, Inc. v. Alexandras, FA 99064 (Nat. Arb. Forum Oct. 2,
2001) (“sex-toysrus.com”); Geoffrey, Inc.
v. O’Hara, FA 97152 (NAF June 8, 2001) (“kinkytoysrus.com”).
Complainant contends that Respondent is
not commonly known by the domain name and has not acquired a service mark or
trademark to “gamesrus.” Further,
Complainant asserts that Respondent is not using the name in connection with a
bona fide offering of goods or services.
Respondent contends that at one time, the site was used as a “gaming fan
website to review electronic, gaming software, or online gaming titles.” According to Respondent, because the site
was operated by volunteers, after Complainant threatened litigation, the
operation of the site was “put on hold.”
It is Respondent’s burden to establish
rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000). Respondent chose
to discontinue the use of the domain name despite the registration of the name
six years ago. Under the circumstances,
and in the absence of any authority presented by Respondent to the contrary,
Respondent’s failure to actively use a disputed domain name demonstrates the
lack of a bona fide offering of goods or services by a Respondent pursuant to Policy
¶ 4(c)(i) or the failure to make a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See,
e.g., Bloomberg L.P. v. Sandhu, FA
96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate
interests can be found when respondent fails to use disputed domain names in
any way); Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) (finding that failure to provide a product or service or develop the site
demonstrates that respondent has not established any rights or legitimate
interests in the domain name); Flor-Jon
Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding
that respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name).
Complainant contends that bad faith is
shown by the lack of action with respect to the registered domain name, and the
“appropriation” of the “R US” designation despite the “extensive presence” of
Complainant’s “related companies on the Internet.” Respondent contends, among other things, that it did not
register the domain name to disrupt Complainant’s business, as the site was to
be used for the review and discussion of electronic or online games. Respondent also states that it is in the
business of registering and managing domain names for others and it has not
engaged in the inappropriate registration of domain names.
Not
only does Respondent’s failure to use its website demonstrate its lack of
legitimate interest in the domain name, but also such nonuse constitutes
evidence of bad faith on the part of Respondent. DCI S.A. v. Link Commercial
Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that respondent made no use of
the domain name or website that connects with the domain name, and that passive
holding of a domain name permits an inference of registration and use in bad
faith).
Furthermore,
the record reflects that the “R” US mark and its associated marks are well-
known throughout the United States and the world. Bad faith may also be inferred from the fact that Respondent’s
domain name incorporated Complainant’s well-known registered mark, deviating
only by the addition of a generic or descriptive term which describes
Complainant’s business. Surely,
Respondent knew, or should have known, of Complainant’s rights in the “R” US
mark. Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that respondent’s registration and use of an identical and/or
confusingly similar domain name was in bad faith where complainant’s BEANIE
BABIES mark was famous and respondent should have been aware of it); see
also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the
notoriety of complainants' famous marks, respondent had actual or constructive
knowledge of the BODY BY VICTORIA marks at the time she registered the disputed
domain name and such knowledge constituted bad faith).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gamesrus.com>
domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 19, 2004
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