WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ty, Inc., Complainant v. O.Z. Names, Respondent

Case No. D2000-0370

 

1. The Parties

The complainant is Ty, Inc., a Delaware corporation whose principal place of business is Oak Brook, Illinois, United States of America ("Complainant").

The respondents are O.Z. Names, ty.org and beanybaby.com, all fictitious business names under the control of Eitan Zviely, an individual, with addresses of P.O. Box 480167, Los Angeles, California 90048, United States of America, and 914 Westwood Blvd. #177, Los Angeles California 90048, United States of America ("Respondent"). The Administrative Panel (the "Panel") bases its conclusion that all four domain names are registered to and controlled by Eitan Zviely on the following evidence advanced by the Complainant and not refuted by the Respondent: (1) the telephone number provided to NSI for the administrative, billing and technical contact is identical for all four domain name registrations; (b) the domain servers identified for the "ty.org" domain name are the same as that for the "beaniesbabies.com", "beanybabies.com", and "beanybaby.com" domain names; and (c) neither O.Z. Names, "ty.org" nor "beanybaby.com" are registered California corporations, limited liability companies, or otherwise entities that have a separate, recorded existence in California.

 

2. The Domain Names and Registrar

The domain names at issue are "beaniesbabies.com", "beanybabies.com", "beanybaby.com", and "ty.org" (the "Domain Names") registered with Network Solutions, Inc. ("NSI") in the United States of America.

 

3. Procedural History

Complainant submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") electronically on May 2, 2000; the WIPO Center received a hard copy of the Complaint on May 4, 2000.

On May 12, 2000, NSI confirmed by e-mail to the WIPO Center that the domain names "beaniesbabies.com", "beanybabies.com", "beanybaby.com", and "ty.org" are registered with NSI and that Respondent is the current registrant of the names.

On May 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2000, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and courier, and to the entity and person listed on Respondentís registration as technical, administrative, zone and billing contacts by email.

On June 5, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.

On June 13, 2000, pursuant to Complainantís request to have the dispute decided by a single-member panel, the WIPO Center appointed Sally M. Abel as Panelist.

Having reviewed the communications records in the case file, the Panel finds that the WIPO Center 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." Therefore, the Panel shall issue its Decision based on the Complaint, The Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.

 

4. Factual Background

Complainant has provided evidence of registration of the following trademarks:

Trademark

Country of Registration

Registration Number

Date of Registration

BEANIE BABIES

United States

2,049,196

Apr. 1, 1997

THE BEANIE BABIES COLLECTION

United States

2,080,995

July 22, 1997

BEANIE BUDDIES COLLECTION

United States

2,052,465

Apr. 15, 1997

BEANIES

Benelux

910966

Nov. 1, 1998

BEANIE BUDDIES

Germany

399 52 369

Oct. 18, 1999

BEANIE BUDDIES COLLECTION

Germany

399 52 370

Oct. 18, 1999

BEANIES

Germany

389 09 233

Mar. 27, 1998

TEENIE BEANIE BABIES

Germany

399 13 516

Apr. 27, 1999

BEANIES

Japan

4324577

Oct. 15, 1999

BEANIES

Korea

429088

Nov. 11, 1998

TY

United States

2,118,114

Dec. 2, 1997

TY and Heart Design

United States

1,722,141

Oct. 6, 1992

TY COLLECTIBLE and Design

United States

2,121,826

Dec. 16, 1997

TY COLLECTIBLES

United States

2,123, 995

Dec. 23, 1997

Complainant is the creator of the Beanie Babies line of plush toy products. Complainant claims that it markets its products throughout the world in connection with its trademarks, sells them only through authorized dealers, and that the products have generated over one billion dollars in sales since their introduction in 1994. Complaint, Paragraphs 15.3 &15.4. Complainant asserts that it has developed successful websites in connection with its products, namely "beaniebabies.com" and "ty.com", which have allegedly become among the most popular childrenís sites on the Internet. Complaint, Paragraph 15.5. Complainant additionally claims that its marks were known throughout the world long before Respondent registered and began to use the Domain Names. Complaint, Paragraph 15.7.

Respondent registered the Domain Names with NSI over the course of four months in 1998: in May he registered the "beaniesbabies.com" and "beanybabies.com" domain names, in July he registered the "ty.org" domain name, and in September he registered the "beanybaby.com" domain name. The Complaint asserts that "Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainantís BEANIE or TY marks for any purpose." Complaint, Paragraph, 15.6. Complainant allegedly attempted to resolve this dispute amicably by sending Respondent a letter describing its objections to Respondentís registration and use of the Domain Names. However, as alleged in the Complaint, "Respondent failed to respond, and Complainant was forced to file suit in federal court. Respondent has successfully dodged service for several months, and Complainant has thus brought this administrative proceeding seeking to have the domains assigned to it." Complaint, Paragraph 16.5.

 

5. Partiesí Contentions

A. Complainant

The Complaint is sufficient under the notice pleading principles of the United States to allege that Respondent has registered domain names which are either identical or confusingly similar to the marks registered and used by Complainant, that Respondent appears to have no rights or legitimate interests in respect to the Domain Names, and that Respondent appears to have registered and used the Domain Names in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in deciding the dispute: "A Panel shall 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." Since both Complainant and Respondent are domiciled in the United States, the Panel will look to rules and principles of law of the United States.

Pursuant to Paragraph 3(c) of the Rules, "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." The Panel is satisfied that the Domain Names are all registered to and under the control of Respondent.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the respondent has no legitimate interests in respect of the domain name; and

(3) the domain name has been registered and used in bad faith.

The domain names "beaniesbabies.com", "beanybabies.com", "beanybaby.com" are all confusingly similar to trademarks registered and used by Complainant. The domain name "ty.org" is identical to a trademark registered and used by the Complainant. The first requirement of Paragraph 4(a) of the Policy is therefore satisfied.

As to the second requirement, Complainant states that "Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainantís BEANIE or TY marks for any purpose." Complaint, Paragraph 15.6. Respondent has failed to advance any evidence that would refute Complainantís contention or support a finding that it has any legitimate rights in the marks. The second requirement of Paragraph 4(a) of the Policy is therefore satisfied.

As to the third requirement, there is unrefuted evidence of Respondentís bad faith registration and use of the Domain Names. The Complaint alleges that "Respondent linked the [Domain Names] to two other web sites it owns, 37.COM and MEGAGO.COM, both of which contain graphic, adult-oriented material." Complaint, Paragraph 16.2. Further, there is evidence that Respondent 1 has registered other domain names that are identical or confusingly similar to the trademarks of third parties, such as "nortonantivirus.com", "adobeacrobat.com" and "acrobatreader.com." Complaint, Paragraph 16.3; Adobe Systems Incorporated v. Domain OZ, WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case No. D2000-0057, March 22, 2000 2. Given these uncontested allegations of bad faith, the third requirement of Paragraph 4(a) of the Policy is therefore satisfied.

Respondent has failed to respond to the Complaint in any way whatsoever. "It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts." Mondich v. Brown, WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case No. D2000-0004, February 16, 2000. Respondentís failure to respond to the Complaint allows the inference that the evidence would not have been favorable to Respondent.

 

7. Decision

Because the undisputed evidence permits a finding in favor of Complainant on each element of its claim, and there is no evidence to the contrary, the Panel finds (1) that the Domain Names registered by Respondent are identical or confusingly similar to Complainantís mark, (2) Respondent has no rights or legitimate interests in the Domain Names, and (3) Respondent registered and used the domain name in bad faith.

Accordingly, the Panel requires that the registration of the domain names "beaniesbabies.com", "beanybabies.com", "beanybaby.com", and "ty.org" be transferred to the Complainant.

 


 


Sally M. Abel
Presiding Panelist

Dated: June 27, 2000


 

Footnotes:

1. The Respondent in Adobe Systems Incorporated v. Domain OZ is another fictitious name used by the Respondent in this case, Eitan Zviely.

2. The Panel also notes the decision in Yahoo! Inc. v. Eitan Zviely, et al., WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case No. D2000-0273, June 14, 2000 (Involving 37 YAHOO! formative domain names).