Build-A-Bear Workshop, Inc. v. Imagine the Possibilities
Claim Number: FA0608000783232
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 Imagine the Possibilities (“Respondent”), 7710 T Cherry Park Dr #604, Houston, TX 77095.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <buildabearclothes.com>, <buildabearclothing.com> and <buildabearaccessories.com>, registered with Go Daddy Software, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2006.
On August 23, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <buildabearaccessories.com>, <buildabearclothes.com> and <buildabearclothing.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 19, 2006 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@buildabearaccessories.com, postmaster@buildabearclothes.com and postmaster@buildabearclothing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a leading retailer in the customized teddy bear business.
Since 1997, Complainant has continuously used the BUILD-A-BEAR WORKSHOP mark in connection with teddy bears and other stuffed animals, selling more than 26 million units around the world.
Complainant holds numerous trademark registrations for the BUILD-A-BEAR WORKSHOP mark around the world, including in Australia, China, Israel and the United Kingdom.
In the United States, Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,756,424, issued August 26, 2003; Reg. No. 2,553,748, issued March 26, 2002; Reg. No. 2,598,778 issued July 23, 2002; Reg. No. 2,633,892, issued October 15, 2002).
Complainant has also registered the BUILD-A-BEAR.COM mark with the USPTO (Reg. No. 2,884,223, issued September 14, 2004).
Respondent registered the disputed domain names on November 2, 2005.
Respondent maintains a commercial web directory at the disputed domain names that contains links to various third-party websites, some of which offer stuffed animal products competing with Complainant’s business.
In e-mail correspondence with Complainant dated July 26, 2006,, Respondent has offered to sell the disputed domain name registrations, and specifically requested $8,779 for the <buildabearaccessories.com> domain name, $14,104 for the <buildabearclothes.com> domain name and $12,282 for the <buildabearclothing.com> domain name.
On August 21, 2006, Respondent lowered his demand to $2,000 per domain name, stating that it would sell the disputed domain name registrations to other interested parties if Complainant did not agree to its demand.
Respondent’s <buildabearaccessories.com>, <buildabearclothes.com> and <buildabearclothing.com> domain names are confusingly similar to Complainant’s BUILD-A-BEAR WORKSHOP mark.
Respondent does not have any rights or legitimate interests in these domain names.
Respondent registered and uses the domain names <buildabearaccessories.com>, <buildabearclothes.com> and <buildabearclothing.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has registered the BUILD-A-BEAR WORKSHOP and BUILD-A-BEAR.COM marks with the USPTO and numerous other national trademark authorities. Therefore, Complainant has rights in the marks for purposes of Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005): “Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”. See also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that a complainant had demonstrated its rights in the SPORTSCENTER mark through its trademark registrations with the USPTO and similar authorities around the world).
Respondent’s domain names, <buildabearaccessories.com>,
<buildabearclothes.com> and <buildabearclothing.com>,
each contain the predominant portion of Complainant’s BUILD-A-BEAR WORKSHOP and
BUILD-A-BEAR.COM marks, merely eliminating the hyphens and the term “workshop”
or “.COM” and adding terms commonly used to describe Complainant’s
business. None of these alterations
creates a distinguishing difference between the mark and domain names. The disputed domain names are therefore
confusingly similar to Complainant’s BUILD-A-BEAR WORKSHOP and BUILD-A-BEAR.COM
marks pursuant to Policy ¶
4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat.
Arb. Forum June 22, 2005) (finding the domain name
<americaneaglestores.com> to be confusingly similar to a complainant’s
AMERICAN EAGLE OUTFITTERS mark); see also Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that a respondent’s domain names were confusingly
similar to a complainant’s GOOGLE mark where that respondent merely added
common-term suffixes such as “buy” or “gear”);
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, was confusingly similar to a complainant's
mark).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the contested domain name. Complainant must first make out a prima facie case in support of its allegations, whereupon the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the contested domain names. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent had no rights or legitimate interests in a domain name because that respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000):
By
not submitting a response, Respondent has failed to invoke any circumstance which
could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate
interests in the domain name.
However, the Panel will
nonetheless examine the record to determine if there is any basis for
concluding that Respondent has rights or legitimate interests under Policy ¶
4(c).
In this connection, we first observe that the WHOIS
information lists “Imagine the Possibilities” as the registrant of the
contested domain names, and there is no other evidence in the record indicating
that Respondent is commonly known by any of the domain names here in
dispute. Consequently, Respondent has
not established rights or legitimate interests in the <buildabearaccessories.com>,
<buildabearclothes.com> and <buildabearclothing.com>
domain names pursuant to Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have
rights in a domain name when, among other things, that respondent was not known
by the mark).
Moreover, Complainant alleges, and Respondent does not deny,
that Respondent uses the disputed domain names to redirect Internet users
seeking information on Complainant’s products and services to a commercial web
directory offering links to competing businesses. In Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum
Aug. 30, 2005), a panel found a respondent’s use of a domain name to divert
consumers to other travel websites competing with a complainant was 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). Because Respondent uses the
disputed domain names in a similar fashion and likely profits from its
diversion of Internet users to competing websites, the same conclusion obtains
here. See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580
(Nat. Arb. Forum Apr. 9, 2002): “Respondent is not using the disputed domain
name in connection with a bona fide offering of goods and services because
Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are advertised.”
It is also undisputed on this record that Respondent has
offered to sell the disputed domain name registrations to Complainant, and
threatened that, if Complainant did not agree to Respondent’s demand,
Respondent would sell them to other parties.
Such behavior provides further evidence that Respondent has no rights or
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb.
Forum May 27, 2003) (holding that, under the circumstances there obtaining, a
respondent’s willingness to dispose of its rights in a disputed domain
name suggested that it lacked rights or legitimate interests in the domain); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
a respondent’s intent to sell a domain name suggested it had no legitimate
use).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has offered to sell the disputed domain
name registrations to Complainant on at least two occasions for prices the
Panel concludes are far in excess of Respondent’s likely out-of-pocket
costs. This conduct demonstrates bad
faith registration and use pursuant to Policy ¶ 4(b)(i). See
Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding a
respondent’s offer to sell a domain name for $2,000 evidence of bad faith
registration and use under Policy ¶ 4(b)(i)); see also World
Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that a respondent used a domain name in bad faith where it offered to
sell the domain for valuable consideration in excess of any likely
out-of-pocket costs).
Moreover, it is uncontroverted on this record that Respondent
is using the disputed domain names to divert Internet users seeking information
on Complainant to Respondent’s commercial website featuring links to various
other businesses. Respondent likely
receives click-through fees for each consumer it diverts to such third-party
websites. Thus, Respondent seeks to
take advantage of the confusing similarity between the disputed domain
names and Complainant’s BUILD-A-BEAR WORKSHOP and BUILD-A-BEAR.COM marks,
profiting from the goodwill associated with the marks. Use of the disputed domain names for this
purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name
was obviously connected with a complainant’s marks, thus creating a likelihood
of confusion for commercial gain); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a
respondent profits from its diversionary use of a complainant's mark when the
domain name resolves to commercial websites and that respondent fails to
contest the complaint, it may be concluded that that respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Finally under this heading, we note that Respondent is charged with at least constructive knowledge of Complainant’s rights in its marks owing to their registrations with the competent authorities worldwide, including in the United States, Respondent’s country of residence, so that Respondent’s recent registration of domain names confusingly similar to Complainant’s registered marks is, without more, evidence of Respondent’s bad faith registration and use of the disputed domain names within the meaning of the Policy. Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002). See also Miller Brewing Co. v. km, FA 158252 (Nat. Arb. Forum Jul. 3, 2003).
For all of these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain names <buildabearaccessories.com>, <buildabearclothing.com> and <buildabearclothes.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 10, 2006
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