Ganz v. Wan-Fu China, Ltd.
Claim Number: FA0705000987018
Complainant is Ganz (“Complainant”), represented by Brandt W. Gebhardt of Baker & Hostetler LLP, 3200 National City Center, 1900 E. 9th
Street, Suite 3200, Cleveland, OH 44114.
Respondent is Wan-Fu China, Ltd. (“Respondent”), P.O.Box CB-11901,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <webjinz.com>, registered with Belgiumdomains, LLC, as well as <webkihz.com> and <webkinzsupport.com>, registered with Domaindoorman, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 15, 2007; the National Arbitration Forum received a hard copy of the Complaint May 16, 2007.
On May 16, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <webjinz.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC verified that Respondent is bound by the Belgiumdomains, LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
Also on May 16, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <webkihz.com> and <webkinzsupport.com> domain names are registered with Domaindoorman, LLC and that Respondent is the current registrant of the names. Domaindoorman, LLC verified that Respondent is bound by the Domaindoorman, LLC registration agreement and thereby has 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 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 2007, 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@webjinz.com, postmaster@webkihz.com, and postmaster@webkinzsupport.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain names that Respondent registered, <webjinz.com>, <webkihz.com>, and <webkinzsupport.com>, are confusingly similar to Complainant’s WEBKINZ mark.
2. Respondent has no rights to or legitimate interests in the <webjinz.com>, <webkihz.com>, and <webkinzsupport.com> domain names.
3. Respondent registered and used the <webjinz.com>, <webkihz.com>, and <webkinzsupport.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ganz, uses the WEBKINZ mark to offer plush toy pets and an online environment where WEBKINZ pet owners interact with virtual incarnations of their plush pets. Complainant registered the <webkinz.com> domain name to launch the online virtual world, which occurred as early as April 30, 2005. Complainant also holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the WEBKINZ mark (Reg. No. 3,015,923 issued Nov. 15, 2005).
Respondent, Wan-Fu China, Ltd., registered the <webjinz.com> domain name February 10, 2007, and the <webkihz.com>
domain name December 11, 2006.
Respondent is using these two disputed domain names to redirect Internet
users to a website which displays a list of hyperlinks advertising children’s
games.
Respondent registered the <webkinzsupport.com> domain name September 28, 2006. Respondent is using this disputed domain name to redirect Internet users to a website featuring adult-oriented material.
Complainant noted that National Arbitration Forum panels previously have Ordered Respondent to transfer the domain name registrations of other domain names that were found to be infringing upon complainants’ trademarks. Those panels found that each of the domain names were confusingly similar to the complainants’ marks and were registered and used in bad faith by Respondent, who did not have any rights or legitimate interests in the marks. See WeddingChannel.com v. Wan-Fu China Ltd., FA 913762 (Nat. Arb. Forum Mar. 16, 2007) (transferring the <wweddingchannel.com> domain name to the complainant); see also Popular Enters., LLC v. Wan-Fu China, Ltd., FA 892424 (Nat. Arb. Forum Mar. 1, 2007) (transferring the <netsster.com> domain name to the complainant).
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 will draw such inferences as the Panel 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 Complainant to 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.
Under Policy ¶ 4(a)(i), registration of a mark with an
appropriate governmental authority confers rights in that mark to
Complainant. The facts show that
Complainant successfully registered the WEBKINZ mark with the USPTO November
15, 2005. Therefore, Complainant
established rights in the WEBKINZ mark pursuant to Policy ¶ 4(a)(i). See
Expedia, Inc. v. Emmerson, FA 873346
(Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the
USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to
Policy ¶ 4(a)(i).”); see also Enter.
Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum
Apr. 14, 2006) (finding that the complainant’s registration with the USPTO for
the
The disputed domain name <webjinz.com> misspells Complainant’s WEBKINZ mark by replacing the “k” with a “j.” The disputed domain name <webkihz.com> misspells Complainant’s WEBKINZ mark by replacing the “n” with an “h.” Both of these misspellings render the disputed domain names confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i); the addition of the generic top-level domain (“gTLD”) “.com” is without relevance to this analysis. See The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Domain Registration Philipines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”).
The disputed domain name <webkinzsupport.com> contains Complainant’s WEBKINZ mark in its entirety and adds the generic word “support” as well as the gTLD “.com” Complainant alleges that the word “support” is indicative of technical support associated with the corresponding website, and therefore renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Panel agrees, especially since WEBKINZ remains the dominant portion of the disputed domain name. Therefore, the Panel finds that the disputed <webkinzsupport.com> domain name is confusingly similar to Complainant’s WEBKINZ mark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained within each of the disputed domain name. Complainant alleges that Respondent has no such rights to or legitimate interests in the <webjinz.com>, <webkihz.com>, and <webkinzsupport.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 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 rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Since Respondent has not responded to the Complaint, the Panel examines the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by
the disputed domain names. The WHOIS
information identifies Respondent as “Wan-Fu
China, Ltd.” Complainant asserts that Respondent is not authorized to use its
WEBKINZ mark in the disputed domain names.
The Panel finds no evidence in the record indicating that Respondent is
commonly known by the disputed domain names.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See The
Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding
that the respondent was not commonly known by the disputed domain names where
the WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
Instron
Corp. v. Kaner, FA 768859 (Nat. Arb.
Forum Sept. 21, 2006) (finding that the respondent was not commonly known by
the <shoredurometer.com> and <shoredurometers.com> domain names
because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip’t as the registrant of the disputed domain name and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute).
Respondent is using the <webjinz.com>
and <webkihz.com> domain
names to redirect Internet users to a website which displays a list of
hyperlinks advertising children’s games.
This use of the disputed domain names is unrelated to
Complainant’s business, and therefore is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), and is not a noncommercial or fair use under Policy ¶
4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha
v. CS into Tech, FA 198795 (Nat. Arb.
Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Respondent is using the <webkinzsupport.com> domain name to redirect Internet users to a website featuring adult-oriented material. Previous panels have found that this use of the disputed domain name tarnishes a complainant’s mark, and is therefore not considered to be a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)). Therefore, the Panel concludes that Respondent’s use of the <webkinzsupport.com> domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant alleges that Respondent’s use of the <webjinz.com> and <webkihz.com> domain names constitutes “typosquatting” because the disputed domain names differ from Complainant’s mark by one letter. Respondent is attempting to benefit from common typographical errors made by Internet users. This suggests that Respondent has no rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant alleges that Respondent has engaged in a bad faith pattern of registering and using trademark-related domain names. Complainant cites several UDRP decisions in which Respondent was found to have registered and used various trademark-related domain names in bad faith. See WeddingChannel.com v. Wan-Fu China Ltd., FA 913762 (Nat. Arb. Forum Mar. 16, 2007); see also Popular Enters., LLC v. Wan-Fu China, Ltd., FA 892424 (Nat. Arb. Forum Mar. 1, 2007). In light of these previous decisions, the Panel finds that Respondent’s registration and use of the <webjinz.com>, <webkihz.com>, and <webkinzsupport.com> domain names constitutes bad faith pursuant to Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Respondent is using the disputed domain names, which are
confusingly similar to Complainant’s WEBKINZ mark, to advertise goods and
services that are unrelated to Complainant’s business. Complainant has alleged that Respondent
likely commercially benefits from this confusing similarity by receiving
click-through fees for each redirected Internet user. Respondent is attempting to profit from the
goodwill associated with Complainant’s mark, and such registration and use
constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See
Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute
bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because
[r]espondent is taking advantage of the confusing similarity between the
<metropolitanlife.us> domain name and Complainant’s METLIFE mark in order
to profit from the goodwill associated with the mark.”);
see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
Furthermore, Respondent’s use of the <webkinzsupport.com> domain name to redirect Internet users to a website featuring adult-oriented material is clear evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name).
Respondent’s <webjinz.com> and <webkihz.com> domain names misspell Complainant’s WEBKINZ mark by one letter. This constitutes typosquatting, and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004), (“By engaging in typosquatting, [r]espondent has registered and used the <vanguard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webjinz.com>, <webkihz.com>, and <webkinzsupport.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 18, 2007.
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