Build-A-Bear Workshop, Inc. v. Sumirah
Ahmad
Claim
Number: FA0505000479417
Complainant is Build-A-Bear Workshop, Inc. (“Complainant”),
represented by Michelle W. Alvey, of Blackwell Sanders Peper Martin LLP, 720 Olive Street, Suite 2400, St. Louis, MO 63101. Respondent is Sumirah Ahmad (“Respondent”), PO Box 1211, Kuala Lumpur, 56100,
Malaysia.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bildabear.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
17, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 20, 2005.
On
May 23, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the National Arbitration Forum that the domain name <bildabear.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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
May 31, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 20, 2005 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@bildabear.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 28, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bildabear.com>
domain name is confusingly similar to Complainant’s BUILD-A-BEAR WORKSHOP mark.
2. Respondent does not have any rights or
legitimate interests in the <bildabear.com> domain name.
3. Respondent registered and used the <bildabear.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Build-A-Bear Workshop, Inc., is the industry leader for providing an
interactive make-your-own stuffed animal retail experience. Complainant holds a trademark registration
with the United States Patent and Trademark Office (“USPTO”) for the BUILD-A-BEAR WORKSHOP mark (Reg. No.
2,884,223).
Respondent registered the <bildabear.com> domain name on January 30, 2002. Respondent is using the <bildabear.com>
domain name to redirect Internet users to a website featuring a pop-up
advertisement for a “Virtual Reality Casino,” which ultimately redirects
Internet users to another website containing links to both online casinos and
various children’s toys and games in direct competition with Complainant’s toy
business.
Paragraph 15(a)
of 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."
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 it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to accept all reasonable allegations and
inferences set forth in the Complaint as true unless the evidence is clearly
contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent's failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.").
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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 has established rights in the BUILD-A-BEAR WORKSHOP mark
through registration with the USPTO and through continuous use of the mark in
commerce since as early as 1997. The
Panel presumes that Complainant’s trademark registration predates Respondent’s
registration of the <bildabear.com> domain
name. See
Am. Online, Inc. v. Thomas P. Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the USPTO creates a presumption of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
The Panel finds that Respondent’s <bildabear.com> domain name is
confusingly similar to Complainant’s BUILD-A-BEAR WORKSHOP because the domain
name contains the dominant features of Complainant’s mark and merely omits the
letter “u” from the word “build,” the hyphens between the words “build,” “a,”
and “bear,” and the word “workshop” from the mark. Furthermore, Respondent’s domain name is phonetically identical
to the dominant features of Complainant’s mark. Such minor alterations to Complainant’s registered mark are
insufficient to negate the confusingly similar aspects of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See
Victoria’s
Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also State Farm Mut.
Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15,
2000) (finding that the domain name <statfarm.com> is confusingly similar
to the complainant’s STATE FARM mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000)
(“[T]he use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark."); see also Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to the complainant’s mark, where the
complainant holds the WEST JET AIR CENTER mark); see also Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the
Policy); see also YAHOO! Inc. v.
Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the <yawho.com>
domain name is confusingly similar to the complainant’s YAHOO mark).
Furthermore, the addition of the generic top-level domain “.com” is
insufficient to negate the confusingly similar aspects of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See
Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Interstellar Starship Services Ltd. v. EPIX,
Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (holding that <epix.com>
"is the same mark" as EPIX).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does
not have rights or legitimate interests in the <bildabear.com> domain
name that contains the dominant features of Complainant’s BUILD-A-BEAR WORKSHOP mark. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii).
Due to Respondent’s failure to respond to the Complaint, the Panel
assumes that Respondent does not have rights or legitimate interests in the
disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that where the complainant has asserted that the respondent does not have
rights or legitimate interests with respect to the domain name it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once the complainant asserts that the
respondent does not have rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that
under certain circumstances the mere assertion by the complainant that the
respondent does not have right or legitimate interest is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Respondent is using the <bildabear.com> domain name to redirect Internet users to a
website featuring a pop-up advertisement for a “Virtual Reality Casino,” which
ultimately redirects Internet users to another website containing links to both
online casinos and various children’s toys and games in direct competition with
Complainant’s toy business. The Panel
finds that Respondent’s use of a domain name confusingly similar to
Complainant’s BUILD-A-BEAR WORKSHOP to redirect Internet users to a website
featuring an online casino and products in direct competition with
Complainant’s business is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Société des
Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no
rights or legitimate interests where the respondent used the
<casinomontecarlo.com> and <montecarlocasinos.com> domain names in
connection with an online gambling website); see also Imation Corp. v.
Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or
legitimate interest where the respondent used the disputed domain name to
redirect Internet users to an online casino); see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
the respondent’s appropriation of the complainant’s mark to market products
that compete with the complainant’s goods does not constitute a bona fide
offering of goods and services); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the
respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with the complainant, was not a bona
fide offering of goods or services).
Moreover, Respondent is neither commonly
known by the <bildabear.com> domain name nor authorized to
register a domain name featuring any version of Complainant’s BUILD-A-BEAR WORKSHOP mark. Thus, Respondent has not established rights
or legitimate interests in the <bildabear.com> domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in the respondent’s WHOIS information implies that the
respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent earns click-through fees for diverting Internet users to the
competing website. Respondent’s domain
name is confusingly similar to Complainant’s BUILD-A-BEAR WORKSHOP mark. Thus, Internet users accessing the domain
name may become confused as to Complainant’s affiliation with the resulting
website. Therefore, the Panel finds
that Respondent’s commercial use of the <bildabear.com> domain
name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant’s mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Qwest Commc’ns Int’l
Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, the Panel finds that Respondent registered the <bildabear.com> domain name with actual or constructive knowledge of
Complainant’s rights in the BUILD-A-BEAR WORKSHOP mark due to Complainant’s
registration of the mark with the USPTO.
Moreover, Respondent registered the domain name with actual knowledge of
Complainant’s rights in the mark due to the connection between the content
featured on Respondent’s domain name and Complainant’s business. Registration of a domain name that is confusingly
similar to another’s mark despite actual or constructive knowledge of the mark
holder’s rights constitutes bad faith registration and use pursuant to Policy ¶
4(a)(iii). See 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about Complainant’s mark when it registered the subject domain
name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bildabear.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
July 8, 2005
National Arbitration Forum