WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ty Inc. v. Joseph Parvin d/b/a Domains For Sale

Case No. D2000-0688

 

1. The Parties

1.1 The Complainant is Ty Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business in Oak Brook, Illinois, United States of America.

1.2 The Respondent is Joseph Parvin, an individual giving an address at For Sale Domains, FirstDomains.com, 9 Brendan Place, Lawrenceville, New Jersey, United States of America.

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue are <ebeanies.com>, <e-beanies.com>, <ebeaniebabies.com>, and <ebeaniebaby.com>, the first two of which domain names are registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America, and the third and fourth of which are registered with the CORE Internet Council of Registrars.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 27, 2000, and the signed original together with four copies was received on June 29, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated July 1, 2000.

3.2 On July 1, 2000, the WIPO Center transmitted a Complaint Deficiency Notification to the Complainant, noting that while the Complainant had elected a three-person panel, Complainant had failed to provide the name and contact details of three candidates, as required by the Uniform Rules, Rule 3(b)(iv).

3.3 On July 1, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

3.4 On July 4, 2000, NSI confirmed by reply e-mail that the domain names <ebeanies.com> and <e-beanies.com> are registered with NSI, are currently in active status, and that the Respondent is the current registrant of the names. NSI also confirmed that the domain names <ebeaniebaby.com> and <ebeaniebabies.com> are registered with the CORE Internet Council of Registrars. NSI also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.5 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three-person Panel were paid on time and in the required amount by the Complainant.

3.6 The formal deficiency having been remedied, on July 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of August 2, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís confirmation. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, subsequent communications establish that Respondent received actual notice.

3.7 On August 5, 2000, three days after the date on which a response was due, the WIPO Center received a Response from the Respondent in electronic form. On August 8, 2000, the WIPO Center received a hard copy of the Response.

3.8 On August 16, 2000, the WIPO Center transmitted an Acknowledgement of Receipt (Response), noting that the Response was received after the deadline and that it would be within the discretion of the Panel whether or not to accept the Response.

3.9 On October 2, 2000, in view of the Complainant's designation of a three person Panel, the WIPO Center appointed G. Gervaise Davis, III, Jeffrey M. Samuels, and M. Scott Donahey to serve as Panelists, with M. Scott Donahey to act as Presiding Panelist.

 

4. Factual Background

4.1 Complainant registered the trademark "Beanie Babies" in connection with plush toys with the United States Patent and Trademark Office ("USPTO"). The registration issued on April 1, 1997. Annex 4 attached to the Complaint shows date of first use of the mark as November 1993.

4.2 Complainant registered the trademark "beanies" in connection with plush toys with the Benelux Trademark Office on February 20, 1998. Complaint, Annex 7.

4.3 Complainant registered the trademark "beanies" in connection with stuffed toys and other toy related fields with the German Patent Office. The application was filed on February 19, 1996, and issued on March 27, 1998. Complaint, Annex 10.

4.4 Complainant registered the trademark "beanies" in connection with stuffed animals and other toys with the Japanese Patent Office. The registration issued on October 15, 1999. The application was made on August 21, 1997. Complaint, Annex 12.

4.5 Complainant registered the trademark "beanies" in connection with plush toys with the Korean Industrial Property Office. The registration issued on November 11, 1998. Complaint, Annex 13.

4.6 Complainant created the successful "beanie babies" plush toys and has marketed these and related products throughout the world. Complainant has sales in excess of one billion dollars, and has spent millions of dollars marketing its plush toys under the marks "beanies," "beanie babies," "beanie buddies," "teenie beanie babies," "beanie buddies collection," and "beanie babies collection."

4.7 Complainant markets its products not only through traditional retail outlets, but also on the world wide web via its web site at <beaniebabies.com>.

4.8 Respondent is not a licensee of Complainant nor otherwise authorized to use Complainant's marks for any purpose.

4.9 Respondent registered the domain names at issue between August 3 and 15, 1998.

4.10 On June 27, 1997, the Complainant applied for the registration of the mark "beanie" with the USPTO. That action is currently under suspension. On February 12, 1999, Complainant filed four applications with the United States Patent and Trademark Office to register the marks "e beanie" and "e beanies." Two of those applications are currently pending, and two are currently under suspension.

4.11 Complainant did not mention in its Complaint the facts set out in paragraph 4.10, above. In his Response, Respondent asserted that the Complainant had filed three such applications and that "its attempts to register [the above-described marks] have been rebuffed by the USPTO. These failed registration attempts occurred after the registration of EBEANIES.COM AND E-BEANIES.COM." Response, ∂ 14.1.

4.12 The Panel has consulted the United States Patent and Trademark Office web site to determine the facts set out in this paragraph 4.10, above. Such reference to publicly available information is tantamount to the taking of judicial notice by a United States Federal Court. See, Federal Rules of Evidence, Rule 201. Prior Panel decisions have sanctioned consideration of such evidence. See, e.g., Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000-0119; America Networks Inc. v. Tariq Masood and Solo Signs, ICANN Case No. D2000-0131.

4.13 Respondent has not used the domain names at issue to resolve to active web sites.

4.14 Complainant has alleged and Respondent has effectively conceded that <ebeanies.com> and <e-beanies.com> were registered under the name "Domains For Sale" and that this is tantamount to offering the names for sale. Complaint, ∂ 13.4; Response, ∂ 6.

4.15 Complainant alleges that Respondent has offered the domain names at issue for sale on the web site <domains.com> and has attached as Annex 14 to the Complaint screen print outs which demonstrate that <ebeanies.com> and <e-beanies.com> were posted on the <domains.com> web site and bids therefor were invited. Although Respondent dismisses this allegation as "another misrepresentation, " he denies the allegation only as to <ebeaniebabies.com> and <ebeaniebaby.com>. Complaint, ∂13.5; Response, ∂ 15.5.

4.16 Complainant alleged that Respondent registered the domain names at issue with knowledge of Complainant's ownership and widespread use of the marks. Complaint, ∂ 13.2. Respondent replied that "[t]he mark of which the Respondent reasonably might be assumed to have been aware is the BEANIEBABIES mark." Moreover, while Respondent contends that "beanies" is a generic term, Respondent makes no such contention as to "beanie babies." Response, ∂ 15.3.

4.17 Complainant alleges that Respondent has registered 633 other domain names and has warehoused those names for future sale. Complainant fails to identify the names allegedly registered. Complaint, ∂ 13.6 and Annex 15. In a rambling statement, Respondent apparently denies this allegation. Response, ∂ 15.6.

 

5. Partiesí Contentions

5.1 Complainant contends that Respondent has registered domain names which are identical or confusingly similar to marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent has denied the allegations contained in the complaint and has asserted that two of the marks are generic in nature, that Respondent could not reasonably have had knowledge of the two generic marks, and that Complainant is engaged in reverse domain name hijacking. In effect, Respondent appears to have conceded that it has no defense to the two BEANIE BABIES domains, since he does not seriously contest the Complaint as to those marks.

 

6. Discussion and Findings

The first question which the Panel must resolve is whether it should accept the late filed Response. Uniform Rules, Rule 10(c). Because the Panel believes that the Complainant was not prejudiced by the three-day delay, the Panel unanimously agrees to accept the late filed Response.

Next the Panel considers the question of consolidation. Complainant brings a claim relating to four different domain names, two of which are registered in the name of Respondent individual and two of which are registered in the name of Domains For Sale, with the Respondent individual as the designated representative. The Policy gives the Panel the sole discretion to determine whether such claims should be consolidated. Policy, ∂ 4(f). Because the Panel believes it to be efficient to resolve all such claims in one proceeding, and because the Respondent expressed no opposition to such consolidation, the Panel unanimously agrees to consolidate the claims as to the four domain names at issue.

At the outset, it is important to discuss the Panel's view of its role in these proceedings. We view our role as a limited one, circumscribed by the terms of the Policy and the Uniform Rules, supplemented by the Supplemental Rules established by the providers and by such other principles of law that the Panel might find of assistance in applying the Rules and the Policies to a given set of facts. We do not view our role to be limited by the unavailability of United States style discovery procedures; rather our role is limited by the agreement of the parties to a jurisdiction whose boundaries are the Policy and the Uniform Rules.

The Panel is an international body, not an American centric one. Civil law jurisdictions, which are predominant internationally, do not provide for American type discovery, yet those systems function quite well. In civil law jurisdictions, documentary evidence is given great weight, while oral testimony is given relatively little. The practice of the Panels, then, is much closer to civil law, than to common law.

As an international body, it is not for the Panel to elevate one country's laws over those of another or to second guess the rulings of national trademark bodies, at least absent compelling evidence of changed circumstances. EAuto L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu yea Enterprises, Inc., ICANN Case No. D2000-0047.

The parties have agreed that we are to apply to the facts that they have submitted or which are publicly known, the Policy, the Uniform Rules, and such principles of law as may assist us. "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." Uniform Rules, Rule 15(a). In this process, we should look to prior panel decisions to offer guidance, and, to the extent reasonable, we should attempt to harmonize our decisions with those of prior panels. The decision we reach should naturally flow from that process. It is not our role to moralize or to decide areas of law which are not part of our mandate.

In following this procedure, we look to the questions that the Policy requires us to determine. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) 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,

(ii) That the Respondent has no legitimate interests in respect of the domain name; and,

(iii) That the domain name has been registered and is being used in bad faith.

The Complainant has a valid trademark issued by the United States Patent and Trademark Office in the mark "beanie babies." Since the addition of an "e" has been found not to distinguish a domain name from a registered mark (Busy Body, Inc. v. Fitness Outlet, Inc., ICANN Case No. D2000-0127; International Data Group, Inc. v. Maruyama & Co., Ltd., ICANN Case No. D2000-0420), nor does a change from singular to plural form or the reverse (MatchNet plc. v. MAC Trading, ICANN Case No. D2000-0205; PlayNetwork, Inc. v. Play Industries, ICANN Case No. FA 0003000094232), the Panel finds that the domain names <ebeaniebaby.com> and <ebeaniebabies.com> are identical or confusingly similar to the mark in which Complainant has rights.

The Complainant has valid trademarks issued by the Benelux Trademark Office, the German Patent Office, the Japanese Patent Office, and the Korean Industrial Property Office in the mark "beanies." For the same reasons set out above and in Busy Body, Inc. v. Fitness Outlet, Inc., ICANN Case No. D2000-0127 and in International Data Group, Inc. v. Maruyama & Co., Ltd., the Panel finds that the domain names <e-beanies.com> and <ebeanies.com> are identical or confusingly similar to the marks in which Complainant has rights.

Nor does the majority believe that Respondent has any rights or legitimate interest in respect of the domain names at issue. All of the trademarks discussed, supra, were applied for and three issued before Respondent registered any of the domain names at issue. Before any notice of this dispute, Respondent had not used, or demonstratively prepared to use, the domain names at issue in connection with a bona fide offering of goods or services. Policy, ∂4(c)(i). Respondent has not been commonly known by the domain names at issue. Policy, ∂4(c)(ii). Respondent is not making legitimate or noncommercial use of the domain names at issue. Policy, ∂ 4(c)(iii). A majority of the Panel believes that the Complainant has carried his burden in establishing that Respondent has no right or legitimate interest in respect of any of the four domain names at issue. Do the Hustle, LLC v. Tropic Web, ICANN Case No. D2000-0624. The dissenting panelist expresses in his dissent some concern about this conclusion as to the "e-beanies domains," but fully agrees with the Majority as to the two "beanie baby" domains.

The Panel finds that Respondent registered the domain names <ebeanies.com> and <e-beanies.com> under the name "Domains For Sale." The Panel also finds that the same domain names were offered for sale on the <domains.com> web site. This constitutes an offer for sale. A majority of the Panel concludes that such an offer for sale constitutes bad faith registration and use. Policy, ∂4(b)(i); The Avenue, Inc. and United Retail Incorporated v. Chris Guirguis d/b/a Lighthouse Web Design and/or Cannibal, and Sam Guirguis, ICANN Case No. D2000-0013.

The Panel finds and Respondent admits that Respondent reasonably should have been aware of the "beanie babies" mark at the time it registered the domain name in question. Moreover, the full Panel believes that it is clear beyond cavil that the mark "beanie babies" is, at this point, a famous mark. Registration in such circumstances is done in bad faith. Christian Dior Couture SA v. Liage International Inc., ICANN Case No. D2000-0098; Chi-Chi's, Inc. v. Restauran Commentary (Restaurant Commentary), ICANN Case No. D2000-0321. In light of all of the circumstances of this case, including the offer for sale of the domain names identical or confusingly similar to Complainant's famous related marks, the Panel finds that the bad faith registration of the domain names incorporating the famous marks is evidence of bad faith registration and use. Kabushiki Kaisha Toshiba v. Shan Computers, ICANN Case No. D2000-0325.

The dissent indicates that it believes that Respondent has legitimate rights and interests in respect of the domain names <e-beanies.com> and <ebeanies.com> and that the Respondent did not register and use these domain names in bad faith.

The dissent accuses the complainant of "Foreign Trademark Shopping," which it defines as going to a non-English speaking country "to register a mark that would have been generic in an English speaking country, and register(ing) the generic mark there four years before attempting to register it in an English speaking country." Even if the majority agreed that there was something improper in such a practice, which it does not, that is not the situation we have before us. Complainant applied for the registration of the mark "beanie" with the U.S.P.T.O. on June 17, 1997. This appears to be earlier than all but one of the applications made in foreign countries for this mark.

If the dissent intends to suggest that the Complainant sought registration abroad because the Complainant was unsuccessful in attempting to register the marks in the United States, that, too, is erroneous. All of Complainantís applications for marks are currently pending before the USPTO. Some are currently in suspension status. The majority refuses to speculate as to what the USPTO might ultimately determine with respect to the applications.

The majority declined to ask the Complainant to supplement its presentation by providing information as to the status of the proceedings before the USPTO for a number of reasons. Most importantly, in the majorityís view, the outcome of the USPTO proceedings will not detract from the fact that the Complainant has "rights" in the "beanies" mark, within the meaning of the Policy. The Policy does not require this Complainant, or any Complainant, to possess U.S. rights in order to meet the requirements of the Policy. Second, the majority believes that any representations by the Complainant would likely be self-serving and not subject to contradiction by the Respondent, who is not a party to those proceedings.

Does the dissent intend to suggest that English language marks should only be registered in English speaking countries, or that for purposes of the UDRP panelists should only give effect to trademarks that are registered in a country whose language is the same as the language of the mark? If so, the majority strongly disagrees.

The dissent suggests that our decision will enable the owner of a foreign trademark to "take away from another party domain names . . . which the registrant has a perfect legal right to register for use or sale in his own country under his own trademark laws." (Emphasis in the dissent.). The majority not only disagrees with this assertion, but is troubled by its implications. Does the dissent propose that the panel undertake to determine whether a trademark registered under the law of a sovereign country may be a generic term in some country in which the language of the mark is spoken, and, if so, deny recognition to such a mark in performing the panelís duties under the UDRP? The majority finds such a proposal beyond both the panelís abilities and the scope of the panelís charge.

The dissent even invokes the United States Constitution to suggest that a U.S. citizen has a Constitutional right to have United States law apply to his activities in the United States. While the majority believes that its limited task of attempting to regulate "cybersquatting" in the area of Internet domain names is of some small importance, we do not believe that the steps we are taking rise to the level of invading Constitutional areas. Moreover, we are dealing not with the sovereign territory of the United States and its laws, but with cyberspace, which is the "territory" in which domain names exist.

The dissent suggests that the majority is "mak[ing] law that could only be done by treaties, approved by the President and Congress under U.S. law. This has the effect of permitting informal arbitration rules, adopted by ICANN and imposed on all the domain name registrars of the world, to modify U.S., and for that matter the trademark laws of every nation in the world, without any of the legislative bodies of those nations passing on this important policy decision." With all due respect, we fail to see how a decision ordering the transfer of the registration of the domain names <e-beanies.com> and <ebeanies.com> can be said to rise to such grandiose levels. In fact, by respecting the registered trademarks of each sovereign nation and giving the registrations of each equal weight, the majority believes that it is acting responsibly and within the limited powers which have been conferred on it.

In the end, the majority simply believes that the role of ICANN panels is limited to applying the applicable Policy as currently adopted, not as a panel believes it should have been adopted or may be adopted in the future.

 

7. Decision

For all of the foregoing reasons, the full Panel decides that the domain names registered by Respondent are confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the BEANIE BABY domain names at issue, and that the Respondent's BEANIE BABY domain names have been registered and are being used in bad faith. One panelist disagrees with the last two conclusions as to the e-beanie marks. Accordingly, pursuant to Paragraph 4(i) of the Policy, the full Panel requires that the registration of the domain names <ebeaniebaby.com>, and <ebeaniebabies.com> be transferred to the Complainant. A majority of the Panel also directs that the <e-beanies.com>, <ebeanies.com> domains be transferred to Complainant, while the dissenting Panelist disagrees as to those two domain names for the reasons expressed in detail in the Partial Dissent set forth below.

 


 

M. Scott Donahey
Presiding Panelist

Jeffrey M. Samuels G. Gervaise Davis, III
Panelists

Dated: November 9, 2000

 


Partial Dissent of Panelist G. Gervaise Davis III:

I am in full agreement with the Majority as to the requirement of transfer of the ebeaniebaby.com and ebeaniebabies.com domains for the reasons we all agreed upon in the above decision. Furthermore, even Respondent made only a half-hearted attempt to defend those two domains. I must confess that I am also not entirely convinced of the good faith of the Respondent in his registration any of the four domains, due to his public offer of sale of them, and other aspects of his apparent business; however, as to the e-beanies domains I think this possible defect is over-ridden by the unresolved public policy issues I comment on below. Therefore, I do not, by this dissent, however, wish to be considered as condoning bad faith registration of valid trademarks as domain names. I have previously, and will continue to when presented with the proper facts, ruled against such activities in proceedings under the ICANN Rules, as I have here as to two of the domains.

However, I am disturbed by the peculiar facts and circumstance of this case, as presented by the Complainant and Respondent, which indicate existence of what might be termed "Foreign Trademark Shopping," and the effect this decision may have in the future on U.S. and other nationally-based trademark laws vis a vis international use of domain names, when considering the effect of the Majorityís decision to transfer the ebeanies.com and e-beanies.com domains, in dispute here, to Complainant. By the phrase "Foreign Trademark Shopping," I mean the fact that Complainant deliberately went to four non-English speaking countries to register a mark that would have been generic in an English speaking country, and registered the generic mark there four years before attempting to register it in an English speaking country (the U.S.) suggests to me that Complainant was attempting to gain an advantage over a U.S. citizen that it would not have had under U.S. trademark law. Encouraging this subterfuge is poor public policy and was not, I think, intended by the ICANN Board when it adopted the dispute resolution rules.

I am concerned that by ruling for Complainant on these facts, as to two domains that may well be are likely generic terms in the English language, we are creating a situation in which a U.S. or other English speaking origin business can forum shop for a place where common generic English words can be easily registered as trademarks, while they could not be registered in an English speaking country. Then, using the ICANN rules and ICANN proceedings, that trademark owner can, later, take away from another party domain names based on the generic English words, which the registrant has a perfect legal right to register for use or sale in his own country under his own trademark laws. To permit this kind of foreign trademark shopping is to make a fundamental change in nationally-based trademark laws. I deem this a highly undesirable situation that we ought not encourage. We are not a national court, but merely arbitrators trying to follow hastily developed rules to stop a pernicious activity of abusive registration of legitimate trademarks as domain names. We ought not make international policy decisions concerning national-based trademark laws. This is not just a U.S. centric view, since the same situation could occur under the Majorityís decision if the domains were generic French words, and the trademark owner took advantage of that fact and registered them in an Arabic speaking country.

I do not think that we are so bound by the ICANN rules in our review of the facts that we have no right to consider the significant international policy implications of our decisions. The ICANN rules were adopted as a compromise, with the intent that they be reviewed after use for a short period, and they are by design intended only to apply in obvious abusive registration cases. I feel that if there is a serious unresolved international policy decision involved, as here, we ought to leave such matters to the Courts, and not to make such a ruling in a summary proceeding like this. By denying the transfer of these two disputed domains, we would leave this momentous significant international policy decision to the U.S. Courts who have the procedural tools and authority to ascertain the full facts of this case that we do not. Deferring this decision and permitting the Courts to resolve it will not seriously harm Complainant, and by doing so, we do not set precedents in a case that I seriously doubt anyone who agreed to the establishment of the ICANN rules ever thought would occur. I would prefer that approach, which is why I dissent, in part, to this decision. I do not disagree with the Majority, that if we ignore the fact this decision will have the effect of creating a super-national trademark law for the Internet, that one might reach the decision they did. I simply disagree that we have the authority to change national trademark laws in an international arbitration proceeding, or that we should do so.

I am also concerned that, on the peculiar facts of this specific case, the ICANN rules are being applied here, retroactively, in a manner that elevates the ICANN rules to the point they actually overrule existing U.S. trademark law in a case between two U.S. citizens. That does not seem appropriate to me for us to do in an arbitration proceeding, and I do not think that any reasonable U.S. citizen registering a domain name with a U.S. based registrar would have ever considered this possible. By ruling as the Majority does, that a U.S. citizen has to consider if his registration of a generic English domain name might violate a pending foreign trademark registration in every other non-English speaking country, we are in effect charging every domain name registrant with constructive notice of every pending and existing trademark registration in the world. This is not reasonable, and certainly not reasonable when applying such a rule retroactively to facts and events -- all of which occurred before the existence of the ICANN rules.

Furthermore, while Constitutional law is not my forte, I have a strong feeling that, as between two U.S. domiciliaries and citizens, this is an un-Constitutional derogation of a U.S. citizenís right to have U.S. law applied to his activities in the U.S. This is not, after all, a decision involving a German company and a U.S. resident Ė it is a complaint between two U.S. citizens. What the Majority is doing, when it applies the ICANN rules in this manner is creating a super-national rule to transactions between U.S. citizens in a manner never adopted nor formally authorized by the U.S. Congress. This decision makes law that could only be done by treaties, approved by the President and Congress, under U.S. law. This has the effect of permitting informal arbitration rules, adopted by ICANN and imposed on all the domain name registrars of the world, to modify U.S., and for that matter the trademark laws of every nation in the world, without any of the legislative bodies of those nations passing on this monumental important policy decision. For this reason, alone, I would dissent from that aspect of the decision.

Finally, factually, I am deeply troubled by Complainantís failure to tell the Panel, candidly, that it has apparently been unsuccessful in obtaining a trademark registration in the country of origin of the Beanie Baby products and the situs of Complainantís business, the United States, and that the only place it has been successful in obtaining such registrations is in non-English speaking countries like Germany and Japan, where the word "beanies" is presumably not recognized as being a generic English term. I am disappointed in Complainantís concealment of this material fact, which I believe it had an obligation to disclose, as a U.S. based Complainant.

Respondent suggests, although because of lack of discovery and the lack of candor of the Complainant we have no way of knowing for certain, that the reason for the lack of U.S. registration is because the word "beanies" is so generic that registration is being denied in the U.S., at least until the mark can be established as having achieved secondary meaning after five years. As an experienced trademark attorney in the U.S. I suspect that that is exactly why the U.S. registrations have been held up, since that would be an obvious conclusion to anyone that spoke English as his or her native language. However, none of the Panelists have any way of knowing this for sure, so I suggested to the Panel that we ask the Complainant to supplement its presentation by providing that information. The Majority declined to do so on the basis that whatever the reason, it would not make any difference in their final decision. While I respect their considerable experience and judgment in the area of trademark law, I respectfully disagree with this conclusion, as well.

 

Conclusion. In short, I believe, under these disputed facts and because of the timing of the events here, there is a reasonable basis to believe that the registration of the ebeanies.com and e-beanies.com domains was not made in bad faith,. Since the word "beanies" was likely a generic English word in 1998 when Respondent registered the e-beanies domain names, I cannot hold that Complainant has proven bad faith registration, given the national based status of U.S. and international trademark law at the time of registration of the domains in 1998. The ICANN rules did not exist at the time, and at that time no trademark lawyer in the world would, I believe, have advised a U.S. client that registration of a generic English word as a domain name by a U.S. citizen was prohibited because someone had registered it as a trademark in Germany or Japan, for example. The burden of proof on the law and the facts on this issue is upon the Complainant, and not the Respondent. It is not up to us to provide this critical evidence, nor can we ignore the state of the law at the time of registration of the domains.

Since the ICANN rules in 4(a)(iii) require such a bad faith finding, I would not order the transfer of these two domains, but would leave the issues discussed above to a national Court to decide. I, therefore, respectfully dissent in part from the decision of the Majority as to transferring these two domains, while acknowledging the good faith differences of opinion in this matter between the Majority and myself, as the dissenting Minority Panelist.

 


 

G. Gervaise Davis III
Minority Panelist