Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 03264 Geoffrey, Inc v Richard Mawdsley Decision of Independent Expert
1. Parties

Complainant: Geoffrey, Inc

Country: US

Respondent: Richard Mawdsley

Country: Great Britain

2. Domain Name

toys-r-us.co.uk ("the Domain Name")

3. Procedural Background

The Complaint was lodged with Nominet on 10 January 2006. Nominet validated the Complaint and informed the Respondent on 13 January 2006 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 7 February 2006) to submit a Response. The Respondent did not file a Response. On 20 February 2006 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").

On 27 February 2006 Nominet appointed Andrew Clinton ("the Expert"). The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as expert in this case, and further confirmed that he knows of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4. Outstanding Formal/Procedural Issues (if any)

Under paragraph 15c of the DRS Procedure Version 2 ("the Procedure") if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure (in this case by declining to file a Response) the Expert will draw such inferences as he considers appropriate.

5. The Facts

The Domain Name was registered in the name of the Respondent on 22 February 2004.

6. The Parties' Contentions

Complainant

The Complaint, so far as is relevant, is as follows:

The Complainant has rights in the abovementioned domain name as the Registered Proprietor of the following UK and Community Trade Mark Registrations for the mark TOYS "R" US: UK Trade Mark No. 1289890 UK Trade Mark No. 1337015 UK Trade Mark No. 1495962 UK Trade Mark No. 2000499A UK Trade Mark No. 2000499B UK Trade Mark No. 2158489 UK Trade Mark No. 2257543 Community Trade Mark No. 400929 Community Trade Mark No. 1398361 Community Trade Mark No. 1786862 Database print outs of these registrations are attached hereto at Annex 1. The Complainant has built up massive reputation in the name 'Toys-R-Us' throughout the UK by virtue of its use of the mark over the years since 1985 and the 'Toys R Us' brand has become well known for the sale and manufacture of toys and goods for children. A substantial part of the Complainant's business is conducted via the Internet through its website www.toysrus.co.uk. A print out from this website is attached hereto at Annex 2.

The abovementioned domain name in the hands of the Respondent is abusive for the following reasons: The domain consists entirely of the name 'Toys-R-Us' being a name in which the Complainant has registered protection rights via its UK and Community Trade Mark Registrations. The holding of this domain by the Respondent unfairly takes advantage of the Complainant's trade mark rights and reputation in the name 'TOYS R US'. The domain could easily be construed as being controlled by the Complainant or operated with the Complainant's authorisation resulting in customer confusion. Indeed, the Respondent is operating a website under the domain name which sells toys and children's items. A print out from the Respondent's website is attached at Annex 3. We submit that this domain was acquired primarily for the purpose of unfairly disrupting the business of the Complainant. The Respondent is trading off the reputation that the Complainant has in its trade marks listed in Annex 1. Disruption is caused to the Complainant's business when customers wishing to access the Toys R Us official site search for a domain name under the term 'Toys R Us' and find the Respondent's site. Such customers will be confused into believing that the Respondent's site is associated with the Toys R Us site as it is common for companies to register domain names incorporating hyphens as a means of separating the words comprising the company name. This confusion will lead customers to purchase goods from the Respondent's site, rather than continuing to search for the Complainant's official site, thus diverting business away from the Complainant.

The Complainant has attempted to contact the Respondent to inform him of its rights in the 'Toys R Us' name and to demand the immediate transfer of the domain but our letters have been returned to us and therefore it would seem that the Respondent has also provided Nominet with incorrect address details. We attach hereto at Annex 4, letters sent to the Respondent and returned to us, as proof that the address provided is invalid. We understand that registering a domain name with incorrect name or address details in itself constitutes an abusive registration. As a result of these submissions, the Complainant requests that the domain name 'toys-r-us.co.uk' be transferred into its name due to the existence of its trade mark rights and to avoid the confusion and association of the user and the damage to the Respondent's business which would result were the domain to remain in the hands of the Respondent.

Remedies Requested

Transfer

Respondent

The Respondent did not file a Response.

7. Discussion and Findings:

General

Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question. The Complainant is a retailer of toys and children's goods and the TOYS R US brand is well-known. The Complainant has a number of trade mark registrations for the mark TOYS "R" US. The Domain Name and the brand name are not completely identical as the inclusion of the hyphens in TOYS-R-US sets the Domain Name and the brand name apart. However, in terms of aural impact "TOYS R US" and "TOYS-R-US" sound exactly the same and from a visual perspective the differences are insignificant. The Expert is satisfied that the Complainant has Rights in respect of a name which can be deemed to be identical, or is very similar, to the Domain Name (disregarding, for these purposes, the generic domain suffix).

Abusive Registration

Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which either:

(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

Non-exhaustive factors – paragraph 3 of Policy

A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy as follows:

(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B. as a blocking registration against a name or mark in which the Complainant has Rights; or

C. for the purpose of unfairly disrupting the business of the Complainant;

(ii) Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

(iv) It is independently verified that the Respondent has given false contact details to Nominet; or

(v) The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

(A) has been using the domain name registration exclusively; and

(B) paid for the registration and/or renewal of the domain name registration.

The list of factors at paragraph 3 of the Policy is non-exhaustive and a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors. However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.

The Complainant argues that the Domain Name was acquired primarily for the purpose of unfairly disrupting the business of the Complainant. The Complainant points out that:-

•    The Domain Name consists entirely of the mark "Toys-R-Us" being a mark it has rights in.

•    The Respondent is operating a website which markets toys and children's items, ie in direct competition with the Complainant's business.

•    There is a risk that customers will be confused and believe that the Respondent's website is associated with the Complainant and may purchase goods from the Respondent's website.

The Respondent has chosen to register a domain name that incorporates a very well known mark and is using the Domain Name to sell products in competition with the Complainant. The Respondent has declined to file a Response and there is nothing to rebut the Complainant's assertions that the Domain Name should be considered an Abusive Registration in the hands of the Respondent. In the absence of a Response it is difficult to think of a reason why the Respondent would register and use the Domain Name if it were not with the object of trading on the back of the Complainant's reputation and thereby taking unfair advantage of the Complainant's Rights. The Expert is satisfied that there are circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. The Expert also finds that the second part of the definition of Abusive Registration is made out in that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

The Complainant refers to the fact that its letters to the Respondent have been returned and it therefore would seem that the Respondent has provided Nominet with incorrect address details. In light of the conclusion reached above it is not necessary for the Expert to make a finding on whether paragraph 3(a)(iv) of the Policy is made out.

Non-exhaustive factors – paragraph 4 of Policy

There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy. However, there was no Response to the Complaint.

8. Decision

The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.

Andrew Clinton

13 March 2006