The Complainant is Geoffrey, LLC of Wayne, New Jersey, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is The R Us Group, Mohiuddin, Tops of Ilford, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , and are registered with R.
The disputed domain names , , , , , , , , , and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2011. On April 6, 2011, the Center transmitted by email to R and Tucows Inc. a request for registrar verification in connection with the disputed domain names. On April 6, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 7, 2011, R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 15, 2011. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2011.
The Center appointed a three-member panel in this matter on June 10, 2011. On July 5, 2011, the Center notified the Parties of the recusal of one of its members due to identification by that panelist of a potential conflict and proceeded to appoint as panelists (including an alternate for the recusing panelist) in this matter Luca Barbero, William R. Towns and Jonathan Turner on July 5, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the owner of over thirty United States federal registrations for marks containing R US, such as TOYS R US, BABIES R US, SCOOPS R US, SPORTS R US and R US alone.
The Complainant has submitted certificates for, among others, the following United States registrations: Nos. 2442370 for R US, registered on April 10, 2001, for gift cards, in class 16; 2282394 for “R” US, registered on October 5, 1999, for retail department store services, in class 35; 2494425 for BABIES “R” US, registered on October 2, 2011, for gift registry services, in class 35; 2981142 for SPORTS “R” US, registered on August 2, 2005, for on-line retail store services featuring sporting goods, inflatable pools, games, telescopes, apparel, watches and accessories therefore and retail department store services, in class 35; 2019153 for TOYS “R” US, registered on November 26, 1996, for on line retail store services featuring computer related products, in class 42; 2063369 for TOYS “R” US, registered on May 20, 1997, for credit card services, in class 36; 3065294 for BIRTHDAYS “R” US, registered on March 7, 2006, for birthday party planning, in class 41; 3815634 for TOYSRUS, registered on July 6, 2010, for batteries, in class 9; 3849863 for BABIESRUS, registered on September 21, 2010, for laundry detergent and baby wipes, in class 3.
The Complainant is also the registrant of approximately eight hundred domain names incorporating “r us” and “are us”, including the domain names , , , , , , , , , and .
The Respondent registered the disputed domain names between August 2008 and August 2010. 5. Parties’ Contentions A. Complainant
The Complainant, Geoffrey, LLC is a wholly owned subsidiary of Toys “R” Us, Inc., which began using the “R Us” Family of Marks as early as 1960. Today, Toys “R” Us, Inc. owns and operates over 1,600 retail stores throughout the world, offering a wide variety of toys and games, children’s furniture, children’s clothing, watches and accessories, gardening, digital products such as cameras, mp3 players, and computers, and other products and services under the R Us family of marks.
The Complainant highlights that the mark R US was coined by Toys “R” Us, Inc.’s predecessor over 40 years ago and is exclusively associated with Toys “R” Us, Inc. and its affiliated companies. The Complainant underlines that Federal district courts and UDRP panels, including at WIPO, have consistently held that the use of any mark containing a prefix combined with the mark R US is a violation of Toys “R” Us, Inc.’s rights in its mark.
The Complainant contends that the disputed domain names are nearly identical or confusingly similar to its federally registered R US family of marks and domain names in sound, appearance, meaning, connotation and overall commercial impression, since the addition of generic terms to the registered trademark R US does not change the overall impression of the mark. The Complainant highlights that the unauthorized use of the disputed domain names by the Respondent creates a likelihood of confusion with its marks, is likely to divert customers to the Respondent’s sites, and to dilute and tarnish the R US family of marks.
With reference to rights or legitimate interest in the disputed domain names, the Complainant states that the Respondent’s registration and use of domain names incorporating the coined and famous R US mark are not bona fide and do not reflect a legitimate interest of the Respondent, since the mark R US is exclusively associated with Toys “R” Us, Inc. and its affiliated companies and the Respondent has no relationship with or permission from Toys “R” Us, Inc. to use the mark in the disputed domain names. The Complainant also highlights that, also thanks to its enforcement efforts, there is no mark on the United States Federal Register consisting of a descriptive term followed by “R US” but for the ones registered in the name of the Complainant.
The Complainant furthermore states that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or for any legitimate purposes, since the Respondent’s sites are primarily focused on providing links to third party commercial web sites.
A first group of the disputed domain names was pointed, at the time of filing of the Complaint, to sites purporting to offer a category of products for sale, such as watch bands or desk lamps, but searches for listed items brought up results powered by A. A second group of the disputed domain names was redirected to web sites which consisted in a compilation of generic information with embedded links to third party sites. The disputed domain name was pointed to a web site promoting the Respondent’s domain name portfolio.
The Complainant underlines that such use of the disputed domain names cannot be considered as a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii), since it dilutes and tarnishes its famous R US family of marks.
The Complainant informs the Panel that the Respondent registered eleven other domain names containing the stem R US on the Registry and two additional domain names on the Registry, none of which were used in connection with web sites offering any substantive content or with a bona fide offer of goods and services. The Complainant highlights that, while the Respondent’s domain names are apparently purported to offer a variety of unrelated goods and services, such as children’s furniture and car insurance, the corresponding web sites are filled with links to, or advertisements for, third parties, which presumably generate pay-per-click revenue for the Respondent.
With reference to the bad faith requirement, the Complainant states that the Respondent’s registration and use of the disputed domain names incorporating the Complainant’s coined and famous R US mark was clearly made in bad faith since the Respondent should have been aware of the Complainant’s trademark rights and, however, was actually aware of the “R Us” family of marks due to the fact that, according to the store locator on the Toys “R” Us, Inc.’s web site, a TOYS R US and BABIES R US store is located less than a mile and a half from the Respondent’s address and three additional Toys “R” Us, Inc.’s stores are located within fifteen miles from the Respondent.
The Complainant states that the Respondent’s business model appears to be based solely on taking advantage of the Complainant’s famous R US mark to generate traffic to its web sites, in order to increase its ranking in search results and generate revenue through affiliate relationships with advertisers and pay-per-click fees. The Complainant points out that the Respondent’s intent to take advantage of the goodwill and reputation associated with the R US family of marks is evidenced by a comment posted by the Respondent’s principal, Tops Mohiuddin, on the web site , devoted to maximizing links, in which he stated “I have over 20 active domains with multiple keyword phrases on page 1 and page 2 as a direct result of using MyWayLinks. One of my biggest phrases is a very competitive 2 word phrase and has 450,000 monthly exact match search for it”, in which the “very competitive 2 word phrase” was referred to the Complainant’s mark R US. In response to the Complainant’s cease and desist letter, Mr. Mohuiddin also admitted to having used “besttoysrus” as a domain name and also “thebesttoysrus” as a username on Twitter.
As a further evidence of the Respondent’s bad faith, the Complainant states that some of the disputed domain names falsely purport to offer goods in competition with goods offered by Toys “R” Us, Inc., therefore causing initial interest confusion among Internet users. Specifically, consumers searching online for games, lamps, children’s furniture, gardening supplies, digital products or watches offered by Toys “R” Us, Inc. may be diverted to the Respondent’s web sites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
According to consensus view of the panelists expressed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name”.
The Complainant has provided evidence of ownership of several United States trademark registrations for R US, as well as of a significant number of R US - formative marks, i.e., marks constituted by the suffix “rus” with the addition of descriptive or generic terms. As found by several United States Federal district courts and UDRP panels, Toys “R” Us, Inc. is also recognized as the owner of a family of R US marks under the United States trademark law.
In the case at hand, the disputed domain names are constituted by combinations of descriptive or generic terms such as “bestcreditcards”, “carinsurancequote”, “cheaptermlifeinsurancerates”, “childrensbedroomfurniture”, “dentalinsuranceplans”, “digitalproducts”, “healthinsurance”, “injuryattorney”, “insurance”, “makingmoneyonline”, “wholelifeinsurance”, “desklamps”, “edmontonlawyer”, “floridainjurylawyer”, “freeonlinegames”, “homebusinessopportunity”, “personalinjurylawyers”, “stringtrimmers”, “tattoos” and “watchbands” with the addition of the mark R US, that is used as a suffix in all domain names, but for the domain name , in which the mark is used as an interfix between the article “the” and the noun “group”.
In the Panel’s opinion, the incorporation of the mark R US in the disputed domain names is sufficient to establish confusing similarity for purposes of the first element of the Policy.
It is in fact well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature and is not therefore sufficient to exclude confusing similarity. See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
See, along these lines, the following prior decisions regarding domain names identical or confusingly similar to the mark R US: Geoffrey, Inc. v. Downmark Ltd., J Highmoor and George Highmoor, NAF Claim No. 103815 (in which over thirty domain names containing the stem R US such as , , , and were held confusingly similar to the Complainant’s R US marks); Geoffrey, Inc. v. Innovative Network Designs Corporation, NAF Claim No. 275926 (where was found confusingly similar to the Complainant’s R US marks); Geoffrey, Inc. v. Meyer, NAF Claim No. 145964 (stating that was confusingly similar to the Complainant’s “R” US marks); Geoffrey, Inc., v. Russian Baby,WIPO Case No. D2000-1010 (finding a likelihood of confusion between and the Complainant’s R US marks); Geoffrey, Inc., v. Babys Russian,WIPO Case No. D2000-1011 ( found confusingly similar to the Complainant’s R US marks).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the consensus among panels in UDRP cases, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant shall be found to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. 852581).
The Panel finds that, in the case at hand, the Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights to or legitimate interests in the disputed domain names. By not submitting a Response, the Respondent has failed to provide the Panel with any kind of evidence from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain names (see along these lines, inter alia, Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Moreover, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names. The Panel notes that the disputed domain names are registered in the name of “The R US Group”, but there is no evidence in the record of an actual and legitimate use of such denomination by the Respondent.
Furthermore, there are no significant indications that the Respondent’s intent in registering the disputed domain names was to parody the Complainant’s marks.
The Panel finds that the use of a domain name in connection with parking and landing pages or sponsored pay-per-click web sites to generate paid advertising revenues may be permissible in circumstances when i) the domain name consists of dictionary or common words or phrases supporting posted pay-per-click links genuinely related to the generic meaning of the domain name and ii) the respondent registers a domain name based on a good faith belief that the domain name’s value derives from its generic or descriptive qualities.
On the contrary, when, as in the present case, a domain name’s inclination to drive Internet traffic to the Respondent’s site arises from the incorporation of registered and well-known mark, such use of the domain name is generally found to be an unfair use resulting in misleading diversion and does not constitute a legitimate, non commercial or fair use of the disputed domain name under the Policy.
The Panel finds therefore that under the circumstances such use of the disputed domain names does not constitute a bona fide offer of goods or services or a legitimate, non commercial use of the disputed domain names under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain names; or
(ii) the holder has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the long and extensive use of the R US trademark in connection with the sales of the Complainant’s products and services online and through retail stores in the United States and in several other countries, including the United Kingdom, where the Respondent is based, and in view of the distinctiveness and fame of the Complainant’s marks documented by the Complainant, the Respondent was or ought to be aware of the R US mark at the time of registration.
Moreover, the Respondent’s actual knowledge of the Complainant and of the R US marks can be inferred by the fact that, in response to the Complainant’s cease and desist letter, the Respondent admitted to having used in the past the term “besttoysrus” in a domain name and “thebesttoysrus” as a username of his Twitter account stating “with regards to the domain name best, this domain is no longer active and I no longer use this domain name in any shape or form. With regards to the twitter accounts linked to this domain name. They have also not been in any use for many months”.
With reference to the use of the disputed domain names, as mentioned above, the Respondent has redirected most of the domain names to landing pages hosting several links to third party sites, some of which provided products and services similar to the Complainant’s ones, such as games, lamps, children’s furniture, gardening supplies, digital products and watches.
In these circumstances, the Panel finds that the Respondent registered and used the disputed domain names seeking to attract Internet users to the corresponding sites and to third party affiliated sites for commercial gain, by creating a likelihood of confusion with the R US mark. Moreover, in all likelihood, the Respondent has profited by earning pay-per-click revenues from the sponsored links published on its sites (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
In light of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Luca Barbero
Presiding Panelist
William R. Towns
Panelist
Jonathan Turner
Panelist
Dated: July 25, 2011
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