WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications
Case No. D2001-0210
1. The Parties
The Complainant is Awesome Kids LLC and/or Awesome Kids, L.L.C., P. O. Box 4867, Oak Brook, Illinois 60522, USA.
The Respondent is Selavy Communications, P. O. Box 450862, Miami, Florida 33245, USA.
2. The Domain Name and Registrar
The contested Domain Name is .
The Registrar is Signature Domains, 4021 Laguna St., Miami, Florida 33146, USA.
3. Procedural History
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy"), which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved on October 24, 1999 and in accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") as approved on October 24, 1999 and supplemented by the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 ("Supplemental Rules").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on February 8, 2001, and in hard copy, with Annexes A-F, as well as the appropriate payment on February 12, 2001. The Complainant's attorneys, stated that they separately served a copy of the Complaint, by postal mail and email, on both the Respondent and the Registrar.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this proceeding. Through the Complaint, the Complainant requested a single member panel.
After receiving the original Complaint, the Center, in accordance with paragraph 5 of the Supplemental Rules, determined whether the Complaint fully complied with the formal requirements of the Rules and the Supplemental Rules. In that regard, on February 20, 2001, the Center requested confirmation from the Registrar of information set forth in the Complaint relative to the contested domain name; specifically, contact and registrant information for that domain name, as well as whether the Registrar received a copy of the Complaint from the Complainant. The Center also requested the Registrar to specify: (a) whether the ICANN Policy applies to the contested domain name, and (b) the current status of that domain name. On February 27, 2001, the Registrar provided its response to the Center through which the Registrar provided contact information pertinent to the contested domain name from its WHOIS database, confirmed that Signature Domains is the registrar of the contested domain name, stated that the Policy is in effect for the contested domain name, and that the contested domain name was then in an "active" status.
On February 27, 2001, the Center issued, by email, a Complaint Deficiency Notification to the Complainant's counsel. In response to this notification, the Complainant, through its counsel, amended the Complaint by forwarding a suitable amendment to the Center on March 1, 2001 by email and on March 7, 2001 in hard copy form. The amendment corrected a deficiency in Section VI (Remedies Requested) of the Complaint.
On March 9, 2001, the Center notified the Respondent of the filing of the Complaint (including its amendment), including an indication that the Center was forwarding a complete copy of the Complaint (and its amendment), both in email and hard copy form, to the Respondent (with the latter method forwarding a copy of all the annexes as well). In that regard, the file contains a copy of the courier air bill, along with a shipment tracking report from the courier indicating that the courier shipment was delivered, as well as an email transmission report evidencing that the Complaint was indeed sent to the Respondent. The Complaint, and its accompanying documents, and all subsequent communications associated therewith were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on March 9, 2001 under paragraph 4(c) of the ICANN Policy, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and succeeding correspondence between the Center and the Registrar, in detail, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20-calendar day period, expiring on March 28, 2001 to file its response with the Center and serve a copy of the response on the Complainant.
As of March 28, 2001, the Center had not received a substantive response to the Complaint from the Respondent; hence, the Center, in an email letter dated March 30, 2001, notified the Complainant and Respondent of the default of the Respondent.
Accordingly, pursuant to the Rules and Supplemental Rules, on April 4, 2001, the Center contacted the undersigned, Mr. Peter L. Michaelson, Esq., requesting his service as a sole panelist for this dispute. On the same day, Mr. Michaelson accepted and returned, by facsimile to the Center, a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center, through an email letter dated April 6, 2001, notified the parties of the appointment of Mr. Michaelson as the panelist.
Based on deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel to the Center on or before April 19, 2001.
This dispute concerns one domain name, specifically .
The language of this proceeding is English.
4. Factual Background
Inasmuch as the Respondent, Selavy Communications, has failed to respond to the Complaint as required by the Policy and Rules, all the factual representations alleged by the Complainant will be accepted as undisputed. For convenience of the reader, factual allegations from the Complaint are reproduced below.
A copy of the WHOIS registration record for the contested domain name appears in Annex A to the Complaint. As indicated on that record, the Respondent registered the contested domain name with Signature Domains on October 21, 1999.
The Complainant currently owns the following valid and subsisting U.S. trademark registrations on which this dispute is based. The Complainant has provided a copy of each of these registrations, as issued by the United States Patent and Trademark Office (PTO), in Annex C to the Complaint. For ease of reference, the Panel will collectively refer to these registered marks as the AWESOME KIDS marks
a) AWESOME KIDS (stylized)
US registration 2,192,460; registered September 29, 1998
This trademark was registered, for use in connection with: "House mark for a full line of electronic and computer video toys", in international class 28. This mark claims first use and first use in inter-state commerce of December 31, 1995. While the registration certificate specifies the registrant of this mark as "MYM International" of Oak Brook, Illinois, the Panel takes judicial notice that the computerized assignment records of the US PTO indicate that, through an assignment executed July 23, 1998 and recorded on September 18, 1998, the registrant assigned its entire interest in this mark to the Complainant.
b) AWESOME KIDS USA (block letters)
US registration 2,338,400; registered April 4, 2000
This trademark was registered, for use in connection with: "T-shirts and hats", in international class 25; and "Toys, namely toy action figures, plastic toy animals, toy vehicles, toy weapons, and playsets comprising any of toy action figures, toy buildings, plastic toy animals, toy vehicles, toy weapons and toy background panoramas" in international class 28. This mark claims, for both classes, first use and first use in inter-state commerce of September 30, 1994.
The Complainant also owns various pending foreign trademark applications to register its marks "AWESOME KIDS" and "AWESOME KIDS USA" in the European Community, Bermuda, Mexico, People's Republic of China and Zimbabwe; with copies of these applications having been provided in Annex C to the Complaint. Since none of these marks is needed to support the Panel's decision, then, to avoid unnecessary complexity, the Panel will simply discuss its findings and reasoning in the context of the Complainant's two US trademark registrations.
The Complainant has provided hard copies in Annex D of excerpts of its web site through which it sells, at retail, a wide array of children's merchandise. This web site is accessible through either of the Complainant's registered domain names; namely, "" or "". Annex D also contains a copy of the WHOIS registration record for "".
As indicated in a copy of the WHOIS registration record also provided in Annex D, the domain name "" was registered with Network Solutions, Inc. on December 13, 1998 -- prior to the date, October 21, 1999, on which the Respondent registered the contested domain name. On November 14, 2000, subsequent to the date on which the Respondent registered the , the Complainant registered, also with Network Solutions, its other domain name ""
Upon entering the contested domain name as a second level domain within a URL into a browser to access a web site, a web page is returned, a copy of which is provided in Annex E to the Complaint, which merely states, in pertinent part: "Coming Soon ..... . This domain name registered by Signature Domains". The Complainant states that this indicates that a web site corresponding to the contested domain name is "under construction".
The Complainant states that as soon as it learned, on or about November 14, 2001 and through review of the WHOIS database, that the contested domain name had been registered to Respondent, the Complainant, through its counsel, sent a letter dated November 15, 2000, a copy of which appears in Annex F to the Complaint, to the Respondent notifying it that its adoption or use of the contested domain name constituted infringement of the AWESOME KIDS marks. In that letter, the Complainant demanded that the Respondent transfer the contested domain name to the Complainant. While the Complainant requested that the Respondent provide a response to the letter by November 30, 2000, no such response was forthcoming.
On December 26, 2000, the Respondent provided its response to the effect that it had never received the November 15th letter. The Complainant�s counsel re-sent the November letter to Respondent on December 27, 2000, but never received any further response.
The Complainant states that it has extensively promoted and advertised its AWESOME KIDS marks. By virtue of the Complainant�s extensive promotion and advertising, and sales of goods bearing its marks, the Complainant has generated significant public awareness of its business name and AWESOME KIDS marks and the term AWESOME KIDS has acquired distinctiveness, as a source indicator, in its consumer marketplace.
Also, the Complainant states that it has never licensed or sublicensed the Respondent to utilize either of the AWESOME KIDS marks nor has it authorized the Respondent to sell any goods or service bearing either of those marks. Furthermore, the Complainant states that the Respondent does not sell any goods or services that bear any of the AWESOME KIDS marks.
5. Parties� Contentions
A. Complainant
Similarity
The Complainant takes the position that the contested domain name is virtually identical to its mark AWESOME KIDS inasmuch as the Respondent has misappropriated this term as the predominant portion of the contested domain name.
Hence, by virtue of this similarity, the Complainant contends that the contested domain name is confusingly similar to its registered marks so as to as to cause Internet users, who were to access a site addressable by the contested domain name, to be confused, deceived or mistaken into believing they are doing business with the Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated, in some fashion, with the Complainant -- when, in fact, no such endorsement, affiliation or relationship between the Complainant and the Respondent exists; hence, satisfying the confusing similarity requirement in paragraph 4(a)(iii) of the Policy.
Legitimacy
The Complainant contends that the Respondent has no rights or legitimate interests in the contested domain name.
Specifically, the Complainant contends that the Respondent is not commonly known by the contested domain name and has not acquired any lawful trademark or service mark rights to this name. In that regard, the Complainant points to the fact that the Respondent does not sell any goods or services under the AWESOME KIDS marks, nor has the Complainant authorized the Respondent to do so. Furthermore, the Complainant points to the fact that the Respondent is neither a licensee or sublicensee from the Complainant of any right to utilize the AWESOME KIDS marks.
Accordingly, the Complainant concludes that the Respondent cannot demonstrate any rights or legitimate interests in the contested domain name pursuant to paragraph 4(a)(ii) of the Policy.
Bad Faith
The Complainant contends that the Respondent has registered and is now using the contested domain name in bad faith.
First, the Complainant contends that the Respondent registered the contested domain name primarily for the purpose of disrupting the business of the Complainant by specifically misappropriating the Complainant�s AWESOME KIDS marks; hence, contravening paragraph 4(b)(iii) of the Policy.
Second, the Complainant contends that the Respondent�s use or prospective use of the contested domain name will ostensibly attract Internet users for commercial gain as a result of having created a likelihood of confusion, mistake or deception in those users, with respect to the AWESOME KIDS marks, as to source, sponsorship, affiliation or endorsement of web site activities accessed through that name. The Complainant asserts that this conduct contravenes paragraph 4(b)(iv) of the Policy.
Therefore, the Complainant concludes that the Respondent�s conduct in registering and using the contested domain name constitutes bad faith registration and use under paragraph 4(a) of the Policy.
B. Respondent
The Respondent has not filed any response to the allegations raised in the Complaint.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant's undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.
Similarity
The Panel finds that confusion would likely arise as a result of the Respondent's current use of the contested domain name.
The Complainant's registered mark AWESOME KIDS, the first use and registration of which both predate the registration of the contested domain name, utilizes stylized lettering, in terms of a fanciful colored font pattern.
The Panel views that, for confusing similarity to occur between a domain name and a mark, identicality is not necessary.
All that is necessary is that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark. See, Playboy Enterprises International, Inc. v. Hector Rodriguez D2000-1016 (WIPO November 7, 2000).
With respect to a test for "confusing similarity", � 5.01[3], page 5-15 of J. Gilson, et al, Trademark Protection and Practice (© 1996, Matthew Bender & Co., Inc.) states:
"When one trademark is said to be 'confusingly similar to another', it is so similar to the other that, when it is used on products the purchasing public is likely to be confused. The term [confusingly similar] is simply another way to express the fact that confusion is likely. "
In assessing whether sufficient similarity exists between two marks, Gilson, at � 5.02[1], further states: "If a word trademark sounds similar to the plaintiff's mark courts often find likelihood of confusion, especially if the associated product is typically ordered orally. Visual similarity frequently causes confusion if there is sufficient resemblance in overall appearance. Even if word trademarks neither sound alike nor look alike, similarity in meaning may cause confusion.". In its seminal decision on the issue, In re E.I. du Pont de Nemours & Co. 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) , the Court of Customs and Patent Appeals (predecessor to the Court of Appeals for the Federal Circuit), in its definitive listing of factors to assess in determining whether likelihood of confusion exists or not, enumerated as its first factor: "(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.".
Societal naming conventions for Internet sites have evolved to the point where a member of the public seeking information on the Internet for a source identified by a particular mark will most likely start a search by simply forming a domain name constituted by that mark followed by any one of three very common, now (from a user's perspective) essentially interchangeable, generic top level domains (gTLDs); namely, ".com", ".org" and ".net" and then enter that name into his(her) browser and see what results. See, Playboy Enterprises International, Inc. v. Hector Rodriguez, cited supra.
Currently, domain names are limited to textual characters (with the exception of foreign language character glyphs which are not relevant here). As of yet, a domain name does not include any graphical, i.e. stylistic, element. Hence, any stylized trademark that is to serve as the basis of a domain name must be reduced to a textual term.
Hence, it is very conceivable to this Panel that an ordinary Internet user familiar with the Complainant's goods provided under its stylized mark "AWESOME KIDS" and who seeks information on those goods, would, in all likelihood, first think to form a domain name by simply concatenating the words "AWESOME" and "KIDS" together, justifiably ignoring the stylized element of the Complainant's stylized mark, and then follow it with one of those three gTLDs.
The Complainant, having apparently recognized this, has already registered and utilizes, as addresses for its web site, the domain names "" and "". However, the Respondent in registering the contested domain name subsequent to the date the Complainant registered "" effectively precluded the Complainant from registering that particular name.
Consequently, an Internet user who seeks the Complainant's web site but enters into his(her) browser the name "awesomekids" coupled with, as the gTLD, ".net" instead of either ".com" or ".org" would not be directed to the Complainant's site but instead to the Respondent's site -- a site that has no connection whatsoever with the Complainant. Given this, that user, in all likelihood, would be confused into thinking that an affiliation of some sort exists between the Complainant and the Respondent, when, in fact, no such relationship exists at all. See, e.g., Ticketmaster Corporation vs. DiscoverNet, Inc. D2001-0252 (WIPO April 9, 2001), Dollar Financial Group, Inc. v VQM NET FA 96101 (Nat. Arb. Forum January 25, 2000); eBAY Inc. v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd. D2000-1463 (WIPO January 10, 2001); Treeforms, Inc. v. Cayne Industrial Sales, Corp. FA 95856 (Nat. Arb. Forum December 18, 2000) and The Pep Boys Manny, Moe and Jack of California v. E-Commerce Today, Ltd. AF-0145 (eResolution May 3, 2000).
This confusion would only increase significantly were the Respondent subsequently to either use the contested domain name in connection with a web site that actually offered goods competitive with those of the Complainant or transfer that name to a third-party that would so use it.
The Panel is very mindful of not imposing unreasonable, excessive and unfair burdens on Internet users. The Panel believes that such a burden would clearly and unquestionably arise if such a user, in seeking to reach a desired website, were required to correctly discriminate between several plausible gTLDs by remembering and then entering just that one specific gTLD to use (i.e., whether it is ".org" or ."com" or ".net") for reaching that site, and where, should (s)he enter the wrong gTLD that user would be transported to an unrelated website that engenders source confusion. See, MSNBC Cable, LLC v. T D2000-1204 (WIPO December 8, 2000), Playboy Enterprises International, Inc. v. Hector Rodriguez, cited supra. That is exactly what transpires here.
Were this Panel to permit a party, such as the Respondent here, unrelated to a trademark owner (or its licensee), to incorporate its trademark as a formative element of a URL but with a different gTLD from that which the trademark owner utilizes in a domain name for its own site, the Panel would be implicitly permitting increased source confusion and trademark dilution to occur. Proper recognition of trademark rights imposes a duty not only on this Panel, but also others like it, to remain ever vigilant against such intrusions on trademark rights -- intrusions that, if not thwarted in their infancy, would only intensify as additional gTLDs become available, to the detriment of trademark owners and their licensees, and certainly to Internet users. See, MSNBC Cable, LLC v. T, cited supra.
Therefore, the Panel finds that the contested domain name sufficiently resembles the Complainant's stylized mark "AWESOME KIDS" as to cause confusion.
Accordingly, the Panel also finds that sufficient similarity exists under paragraph 4(a)(i) of the Policy for the contested domain name .
Illegitimacy
Based on its federal service mark registrations, the Complainant has acquired exclusive rights to use its AWESOME KIDS marks. Furthermore, by virtue of the registration of these marks, the US PTO has implicitly recognized that each of these marks has acquired appropriate secondary meaning in the marketplace.
The Respondent has not proven any basis that would legitimize any claim it has to the contested domain name under paragraph 4(a)(ii) of the Policy. In fact, the Panel believes that, under the present facts, it is extremely unlikely that the Respondent can even make such a claim.
Specifically, as noted above, the contested domain name is sufficiently similar to the Complainant's AWESOME KIDS marks under which the Complainant provides its products.
The Complainant has never authorized the Respondent to utilize any of the AWESOME KIDS marks in any manner, nor does the Complainant have any relationship, affiliation or association whatsoever with the Respondent.
Hence, any use to which the Respondent were to put of the term "AWESOME KIDS", in connection with products identical or similar to those with which the Complainant is using its marks, would directly violate the exclusive trademark rights now residing in the Complainant -- rights which began accruing to the Complainant approximately four years prior to the date on which the contested domain name was registered. As such, the Respondent is not commonly known by any of the AWESOME KIDS marks. Thus, its continued use of the contested domain name violates paragraph 4(c)(ii) of the Policy. See, e.g., Cabletron Systems, Inc. v. DSL Enterprises D2000-0571 (WIPO August 18, 2000).
Second, the Panel reasonably infers from the lack of any Response, that the Respondent's only use of the contested domain name, starting from the date it registered that name on October 21, 1999 to the date it was notified by the Complainant of the dispute (either on or about November 15, 2000, as the Complainant claims, or December 26, 2000, if the Panel provides the Respondent with the benefit of the doubt) was in conjunction with directing an Internet user to a web page (as shown in Annex E) that provides a "Coming Soon" (which the Panel views as a form of an "under construction") message.
There can be no question that this bald use, absent more, does not rise to a level consistent with activities that collectively reflect construction of a web site for a bona fide commercial offering of goods or services. Hence, this use simply fails to qualify as legitimate use in and of itself or demonstrable preparation for such use under paragraph 4(c)(i) of the Policy. See Ticketmaster Corporation vs. DiscoverNet, Inc. cited supra, Lusomundo - Sociedade Gestora de Parcipaçoes Sociais, S.A. and Lusomundo Audiovisuais, S.A. v. InmoSoria and Andr�s Ceballos Moscoso D2000-0523 (WIPO August 2, 2000), Ticketmaster Corporation v. Dmitri Prem cited supra, and The Hamlet Group v. James Lansford D2000-0073 (WIPO March 31, 2000).
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the contested domain name within paragraph 4(a)(ii) of the Policy.
Bad Faith
The Panel, pursuant to Rule 14(b), infers from the lack of any Response that the Respondent intentionally chose the contested domain name for its identical resemblance to the Complainant's "AWESOME KIDS" mark. Clearly, the Panel believes that in doing so the Respondent intended at some point to reap financial benefit from that name by eventually offering that name to the Complainant for pecuniary gain or using that name in a manner that, through diverting Internet users away from the Complainant's web site to either the Respondent or a third-party to whom the Respondent might subsequently transfer the domain name, would cause consumer confusion and concomitant injury to the Complainant. If the goal of the Respondent was not to obtain future financial gain from its actions, then why would it have chosen a domain name that incorporates the Complainant's well-known mark "AWESOME KIDS"? Given the lack of any Response, the Panel believes that, if the Respondent did not harbor this goal, the Respondent would have had no reason to choose this name and, in all likelihood, would not have done so.
Given that use of the Complainant's AWESOME KIDS mark started several years prior to the date on which the Respondent registered the contested domain name, the Panel infers, and it is difficult to contemplate otherwise, that the Respondent was well aware of the Complainant's mark "AWESOME KIDS" but chose, in spite of that knowledge, to register the contested domain name that, to the extent possible, incorporated this mark, and with the intent of misappropriating and ultimately financially benefiting, from the ensuing consumer confusion and to the detriment of the Complainant, from the goodwill inherent in the Complainant's mark.
Hence, the Respondent's acts in registering the contested domain name clearly constitute bad faith registration.
As to bad faith use, since October 21, 1999, the date on which the Respondent registered the contested domain name, the Respondent's only use of that name appears to be in posting a single web page, accessible through the name, which provides the "Coming Soon" message. Given the lack of any Response, the Panel infers that, in fact, the Respondent has made no further use of the contested domain name, let alone in conjunction with any activities aimed at developing a web site reachable through this domain name for the bona fide offering of goods or services. There is no evidence whatsoever in the record before the Panel that the Respondent ever intended or now intends to develop such a site or utilize the contested domain name to any further extent that it is now doing. Moreover, given the Complainant's exclusive trademark rights in its AWESOME KIDS marks, the Respondent, in all likelihood, is simply precluded from posting such a site for any products competitive with those set forth in the Complainant's trademark registrations without infringing any of those marks. As indicated above, the Panel infers that the Respondent choose the contested domain name fully aware and in spite of the Complainant's rights in its AWESOME KIDS marks.
Under the present facts, the Respondent's continuing retention and minimal use of the contested domain name, now over a period stretching approximately 18 months, amounts to passive holding which, while being fully cognizant of the Complainant's trademark rights, evidences bad faith use.
Various panels have held that passive holding, coupled with knowledge of trademark rights of a complainant in the name being so held, can amount to bad faith use. Under the present facts, this Panel sees no reason to depart from that view. In that regard, see, e.g., Liberty Public Limited Company v. Thomas Guarrera FA 95103 (Nat. Arb. Forum August 17, 2000), V & S Vin & Spirit Aktiebolag v. Gunnar Hedenlans Peev FA 95078 (Nat. Arb. Forum August 9, 2000), and Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003 (WIPO February 18, 2000).
Hence, the Respondent's post-registration activities regarding the contested domain name clearly constitute bad faith use.
Therefore, the Panel finds that the Complainant has shown a sufficient basis to establish bad faith registration and use of the contested domain name under paragraph 4(a)(iv) of the Policy.
Thus, the Panel concludes that the Complainant, even apart from default of the Respondent, has provided sufficient proof of its allegations to establish a prima facie case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
7. Decision
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the relief sought by the Complainant is hereby granted.
The contested domain name, specifically , is ordered transferred to the Complainant.
Peter L. Michaelson, Esq.
Sole Panelist
Dated: April 16, 2001
Full & Egal Universal Law Academy