Thursday , August 11 2022

Brand infringing #domain lost via the #UDRP process :DomainGang

When you ride on the coattails of a major brand such as Toys R US, prepare to be whipped.

The registrant of the domain name BabiesRUS.com thought they caught a great fish when they picked up the domain upon its drop earlier this year.

TRU Kids Inc., the owner of the “R US” family of marks, including BABIES R US and TOYS R US, filed a UDRP at the National Arbitration Forum.

Amazingly, the domain existed on and off for several years, with registration records going as back as 2005. BabiesRUS.com would drop, only to be picked up by the next clueless cybersquatter.

This time around, the decision was clear: transfer the domain BabiesRUS.com to the Complainant.

TRU Kids Inc. v. Host Master / 1337 Services LLC

Claim Number: FA2105001947120

PARTIES

Complainant is TRU Kids Inc. (“Complainant”), represented by Gerben Perrott, PLLC, District of Columbia, USA. Respondent is Host Master / 1337 Services LLC (“Respondent”), Saint Kitts and Nevis.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <babiesrurs.com>, registered with Tucows Domains Inc.

PANEL

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.

Paul M. DeCicco, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 23, 2021; the Forum received payment on May 23, 2021.

On May 26, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <babiesrurs.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to [email protected] Also on May 27, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On June 18, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant, TRU Kids Inc., is the owner of the “R US” family of marks, including BABIES R US and TOYS R US.

Complainant registered its BABIES R US mark with the United States Patent and Trademark Office (USPTO).

The at-issue domain name, <babiesrurs.com>, is identical or confusingly similar to Complainant’s BABIES R US mark because the <babiesrurs.com> domain name wholly incorporates Complainant’s BABIES R US mark, however misspelling it by including an extra letter “R”, while adding in the “.com” generic top-level domain (“gTLD”) to form a domain name.

Respondent does not have any rights or legitimate interests in the <babiesrurs.com> domain name because Respondent is not commonly known by the <babiesrurs.com> domain name. Respondent is not using the <babiesrurs.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent, while using Complainant’s logos, appears to sell products that a user would find on Complainant’s website.

Respondent registered and uses the <babiesrurs.com> domain name in bad faith because Respondent is using the <babiesrurs.com> as an attraction for commercial gain confusing users as to the domain name’s association with Complainant through Respondent’s use of Complainant’s marks, products, services, and other features that create the look and feel of Complainant’s website. Respondent acted with actual knowledge of Complainant’s rights in the BABIES R US mark.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has rights in the BABIES R US trademark through its registration of such mark with the USPTO.

Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.

Respondent registered the at‑issue domain name after Complainant acquired rights in the BABIES R US trademark.

Respondent uses the at-issue domain name to pass itself off as Complainant and promotes Respondent’s own products, which are highly similar to the goods sold by Complainant, on a website addressed by the at-issue domain name.

DISCUSSION

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.”

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:

(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.

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

Complainant shows that it has a USPTO registration for its BABIES R US trademark. Such registration is sufficient to demonstrate Complainant’s rights in the BABIES R US mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

Respondent’s <babiesrurs.com> domain name incorporates Complainant’s BABIES R US trademark less its spaces, with a letter “r” inserted into the mark. The resulting misspelled string is followed by the top-level domain name, “.com” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <babiesrurs.com> domain name from the BABIES R US trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <babiesrurs.com> domain name is confusingly similar to Complainant’s trademark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).

The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Host Master / 1337 Services LLC” and the record before the Panel contains no evidence otherwise showing that Respondent is commonly known by the <babiesrurs.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <babiesrurs.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).

Respondent’s uses <babiesrurs.com> to address a webpage offering Respondent’s own products for sale. Notably, such products appear to compete with goods offered under Complainant’s BABIES R US trademark. Respondent’s use of the at-issue domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also, Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

First, Respondent uses the confusingly similar <babiesrurs.com> domain name to address a website offering goods that are in competition with Complainant’s offering. Further, Respondent dresses its <babiesrurs.com> website with the mispelled version of Complainant’s BABIES R US trademark contained in the at-issue domain name. Respondent’s use of the confusingly similar domain name to pass itself off as Complainant in such manner disrupts Complainant’s business and falsely indicates that there is, or may be, a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent’s use of the domain name thus demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).

Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark or, as appears to be the case here, will read the misspelled trademark laden domain name and confuse it with its target trademark. As all can see, the at-issue domain name contains Complainant’s BABIES R US, mark which Respondent overtly misspells by inserting an extra “r”. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

Finally, Respondent had actual knowledge of Complainant’s rights in the BABIES R US mark when Respondent registered <babiesrurs.com> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s BABIES R US trademark, from Respondent’s use of its <babiesrurs.com> website in furtherance of promoting goods that compete with Complainant, and from the fact that the <babiesrurs.com> website is dressed to look and feel like Complainant’s relevant official website. Among its other trappings, Respondent’s <babiesrurs.com> website including a promenant display of Respondent’s misspelling of Complainant’s BABIES R US trademark in logo form. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of the <babiesrurs.com> domain name pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant’s mark when registering the disputed domain name); see also, Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <babiesrurs.com> domain name be TRANSFERRED from Respondent to Complainant.

Paul M. DeCicco, Panelist

Dated: June 21, 2021

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