WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Geoffrey, LLC v. Toys R Russ and Days of ‘49
Case No. D2011-0830
1. The Parties
Complainant is Geoffrey, LLC of Wayne, New Jersey, United States of America, represented by Bryan Cave, LLP, United States of America.
Respondent is Toys R Russ and Days of ‘49 of Oakhurst, California, United States of America, represented by himself.
2. The Domain Names and Registrar
The disputed domain names <toysareruss.com>, <toysareruss.net>, <toysrruss.com> and <toysrruss.net> (the “Domain Names”) are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2011. On May 13, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Names. On May 13, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the word limit, Complainant submitted the revised Complaint on May 19, 2011.
The Center verified that the Complaint together with the revised 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 Respondent of the Complaint, and the proceedings commenced May 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response June 12, 2011. The Response was filed with the Center on June 10, 2011.
The Center appointed Christopher S. Gibson, William R. Towns and Richard W. Page as panelists in this matter on July 18, 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
Complainant is a wholly owned subsidiary of Toys “R” Us, Inc. and owns the TOYS R US trademark.
Complainant began using its TOYS R US trademark as early as 1960 and today owns and operates over 1,600 retail stores throughout the world offering a wide variety of toys, games and playthings, as well as other goods and services for children and families. Complainant owns and operates 866 TOYS R US and BABIES R US stores in the United States. Annual sales of such goods and services worldwide were in excess of 13.8 billion US dollars for the fiscal year ending January 29, 2011.
Complainant owns 15 United States federal registrations for marks including TOYS R US and is also the listed registrant for over 250 domain names including TOYS R US and its phonetic equivalents such as <toys-are-us.com> and <toysareus.net>. Complainant has also used TOYSRUS.COM since September 2001 as a mark and domain name for its website, which provides online shopping and information services for a large spectrum of toys, playthings and other goods and services for children and families. Based on retail sales volume, Complainant’s “www.toysrus.com” site is one of America’s largest online retailers.
As a result of Complainant’s extensive use and registration of the TOYS R US mark, TOYS R US has become a famous trademark as is recognized in Thomas McCarthy’s treatise on trademark law.
According to the WhoIs look-up records, the Domain Names <toysareruss.com>, <toysareruss.net> and <toysrruss.net> were registered on November 7, 2010, December 31, 2010, and December 31, 2010, respectively, by a registrant listed as “Days of ‘49”. The Domain Name <toysrruss.com> was registered on August 12, 1999 by a registrant listed as “Toys R Russ”. The address details for the registrant of the first three Domain Names are identical, referencing a P.O. Box in Oakhurst, California. The address of the fourth Domain Name above lists a different P.O. Box in Oakhurst, California. The Administrative Contact and Technical Contact details (including postal address and email) for all four Domain Names are identical.
5. Parties’ Contentions
Complainant asserts that the Domain Names are nearly identical or confusingly similar to Complainant’s federally registered TOYS R US and TOYSRUS.COM marks. According to Complainant, each is an intentional misspelling of Complainant’s TOYS R US mark that dilutes, tarnishes and trades-off of the fame of Complainant’s mark. Respondent has engaged in “typosquatting” – registering a domain name that is a slight misspelling of a protected mark – to improperly divert customers that misspell Complainant’s mark to Respondent’ s websites. With respect to <toysrruss.com>, Respondent merely adds an extra “r” and “s” respectively at the beginning and end of “us”. The only additional change for <toysareruss.com> and <toysareruss.net> is the substitution of “are” for “r”. These minimal changes to the famous TOYS R US mark do not create a distinct mark capable of overcoming confusing similarity. While Complainant sometimes uses a quote around the R, the deletion of such quotation marks does not create a domain name capable of overcoming a likelihood of confusion, because quotation marks cannot be represented in domain names. Accordingly, the Domain Names create a likelihood of confusion with the TOYS R US mark, and it is in the public’s interest to order the transfer of the Domain Names to Complainant.
Complainant contends Respondent cannot demonstrate any rights or legitimate interests in the Domain Names for the following reasons. First, Respondent has no relationship with or permission from Complainant for the use of the Domain Names, and has no registered trademark rights in respect of the words TOYSARERUSS or TOYSRRUSS. Second, Respondent is legally on notice of Complainant’s rights to the TOYS R US mark as a result of Complainant’s numerous federal trademark registrations. Moreover, at the time of Respondent’s registration of the Domain Names, the TOYS R US mark was already world famous, including on the Internet. Third, misspelling the TOYS R US mark in Respondent’s Domain Names to divert consumers to a site sponsored by Respondent evidences that the Domain Names are not being used for a bona fide offering of goods and services and are not a legitimate, noncommercial or fair use. Fourth, Respondent does not use “Toysareruss” or “Toysrrus” as its business name, instead using these Domain Names to divert to a website for “The Dildo Depot” sex product business. Thus, Respondent cannot establish that it is commonly known as “Toysrareruss” or “Toysrrus”. Fifth, the Domain Names dilute the TOYS R US mark. The treatise McCarthy’s on Trademarks lists TOYS R US as a famous mark capable of being diluted. The use of confusingly similar domain names, such as the Domain Names, to sell adult sexually themed goods that will tarnish Complainant’s reputation and marks has been held to be contrary to a bona fide offering of goods and services. Further, by causing the lessening of the capacity of the TOYS R US mark to identify and distinguish Complainant’s goods or services, Respondent is diluting the TOYS R US mark. For all of these reasons, Respondent cannot claim that it has a right or legitimate interest in the Domain Names.
Finally, Complainant urges that Respondent registered and is using the Domain Names in bad faith. First, there is a legal presumption of bad faith when a respondent is actually or constructively aware of a complainant’s trademarks. In light of Complainant’s reputation, there can be no doubt that Respondent knew or ought to have known of Complainant. Moreover, Respondent almost certainly actually knew of Complainant given the proximity of Complainant’s retail stores to Respondent. According to the Store Locator on “www.toysrus.com”, there are three stores in Fresno County where Respondent’s administrative contact is located. Moreover, there are over 100 TOYS R US stores in California. Secondly, as described above, Respondent is engaged in typosquatting. This alone is evidence of bad faith. Typosquatting has been held to be inherently parasitic and of itself evidence of bad faith. Respondent’s bad faith is also shown by the tarnishing effect of the adult nature of the website operated at the Domain Names on the widely-recognized reputation of Complainant. Complainant is a family oriented business. One of Complainant’ core goals is providing parents and families the resources necessary to keep kids safe, including through partnerships with the Home Safety Council and Safe Kids Worldwide. Complainant also provides financial and product donations to keep children safe and help them in times of need and hosts multiple in-store fundraising campaigns annually benefiting charities – and children – around the world. Complainant also founded “The Toy “R” Us Children’s Fund” in 1992, which has contributed millions of dollars annually to various children’s organizations. There can be no dispute that the affiliation of the website for “The Dildo Depot” operated at the Domain Names, offering adult sex themed products, is tarnishing to the wholesome reputation of Complainant as a family-friendly retailer. The likely diversion of potential consumers, including children, to Respondent’s “The Dildo Depot” will cause immediate harm to the misdirected consumer and to Complainant’s brand. Finally, with respect to <toysrruss.net>, which is currently a parked page, UDRP panels have consistently held that inactive websites or parked pages under circumstances such as shown here are evidence of bad faith use and registration. In short, Respondent is taking advantage of consumer confusion as to the affiliation of its Domain Names with the TOYS R US mark. Respondent’s conduct clearly demonstrates that Respondent registered and is using the Domain Names in bad faith, adversely affecting the business of Complainant and tarnishing the famous TOYS R US mark.
Respondent identifies himself as Russell M. Jorzig, but states that he uses the name “Russ” in all his business dealings and with friends and associates. He has been using the name Russ for over 60 years, and prefers to be called Russ. He claims that he is the owner and operator of the business called “toysareruss.com”.
Respondent argues there is a distinct difference between "r" and "are", and he is astounded to find out that Complainant has trademark rights in the words "are" and "toys", which are in the dictionary. Respondent also contends that there are other companies using “are Russ” in advertising and business, because there are other people named Russ.
According to Respondent, although Complainant has accused Respondent of “cyber sitting” and that Respondent will approach Complainant wanting to sell the Domain Name <toysareruss.com>, Respondent argues this is not the case. Respondent states he has a growing business that was established in 1998. He first used the name <toysrruss.com> in 2001 and spent 5 months building an extensive website. However, unbeknownst to him, one day the site linked to <toysrruss.com> was removed with no explanation and no recourse, after receiving a threatening cease and desist letter from Complainant. At present, Respondent states he is using the Domain Name <toysareruss.com>, since his <toyrruss.com> Domain Name was shut down. Respondent decided he would use the new Domain Name that was registered in 2010. His new website is beautiful, arranged for easy surfing, and with fantastic products for the discreet shopper.
Although Complainant has raised a concern that a child might mistype "toysrus" and thus divert to Respondent’s site at “www.toysareruss.com”, Respondent urges that “you have to be pretty stupid to miss spell [sic] toysrus and type in ‘toysareruss’”. Respondent emphasizes there are four additional letters that would need to be typed and thus it would be deliberate typing. Respondent contends these are false accusations by Complainant, and indicates that little kids do not use credit cards.
Respondent also denies owning several of the Domain Names listed in the Complaint, while acknowledging he owns two of the Domain Names, <toysareruss.com> and <toysrruss.com>. Some of the Domain Names whose ownership is denied by Respondent appear to be cross-references to misspellings in the Complaint of the Domain Names. He suggests that Complainant and its attorneys should have proofread the Complaint.
Last, Respondent argues that it is unfair to face Complainant, a big company, in this dispute. He emphasizes that he sells “DILDO'S they sell LEGO'S” and there is no competition between them. Respondent states that his Domain Name <toysrruss.com> is not for sale or transfer.
6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered are being used in bad faith.
A. Identical or Confusingly Similar
As indicated above, the Panel determines that Complainant has strong and well-established rights in its famous TOYS R US and TOYSRUS.COM trademarks. The only question with respect to this first element is whether the Domain Names are identical or confusingly similar to these marks. The Panel finds that they are. As has been decided in similar circumstances, the Domain Names and the well-known TOYS R US mark have a high degree of similarity despite the substitution of the word “are” for the letter “r” or the additional “s” at the end of each Domain Name. The added “r” in two of the Domain Names preceding “us” also fails to add any significant distinctiveness. Any visual differences become virtually nonexistent when the Domain Names are spoken. Given the strength of Complainant’s marks, the differences noted in the Domain Names fail to overcome the confusing similarity. See Toys “R” Us v. Abir, 45 USPQ2d 1944 (S.D.N.Y. 1997) (TOYS R US mark and <toysareus.com> held to have “high degree of similarity,” noting “[t]here is no evidence that the composite term ‘R US’ or the phonetic equivalent ‘ARE US’ existed before it was coined and extensively used by [TOYS]…. Any visual differences become nonexistent when the marks are spoken”); Geoffrey, Inc. v. Toyrus.com, NAF Case No. FA150406 (<toyrus.com> held confusingly similar to TOYS “R” US mark despite deletion of the letter “s” from “toys” and the quotation marks around the “r”).
This Panel therefore finds that the Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is considered to have satisfied paragraph 4(a)(ii) of the Policy.
Here, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Names. The Panel finds that because Complainant’s marks are famous and well-known through extensive promotion and use starting in 1960, there is a strong presumption that no one besides Complainant has any rights or legitimate interests to use them or any variations that would be considered confusingly similar. As Complainant indicates above, it has not authorized the use by Respondent of the TOYS R US or TOYSRUS.COM trademarks in the Domain Names or otherwise. Nor does Respondent have any trademark rights in the terms corresponding to the Domain Names.
Respondent is operated by an individual named “Russ” who appears to be arguing that he should be entitled to use his name in the Domain Names when coupled with the descriptive words “toys” and “are”. However, this argument does not prevent concerns for the two Domain Names (i.e., <toysrruss.com> and <toysrruss.net>) where an “r” is used just as Complainant uses the “R” in its trademark instead of the word “are”. Moreover, the Domain Names are not linked to a website where the name Russ is used or referenced anywhere. Instead, three of the Domain Names (<toysareruss.com>, <toysareruss.net> and <toysrruss.com>) are linked to a website named “The Dildo Depot”, while the fourth Domain Name (<toysrruss.net>) is linked to a parking page. None of the sites refer to “Days of ‘49” or “Toys R Russ”, which are the entities listed as registrants for the Domain Names. Further, there is no name or identifying information given for Respondent under the “Contact Us” link on “The Dildo Depot” website, while the “About Us” link states only that the “www.toysareruss.com internet store was first opened over 9 years ago in Oakhurst, Ca”.
In light of all of these facts, the Panel finds that Respondent is not using his name or the Domain Names as his business name, but is instead using the Domain Names opportunistically to divert to a website for Respondent’s sex product business labeled “The Dildo Depot”. Respondent therefore has not acquired any rights or legitimate interests in the Domain Names, including the Domain Name <toysrruss.net>, which is linked to a parking page. Further, even if Respondent had chosen to use the names “Toys Are Russ” or “Toys R Russ” as his business name, this use would likely have resulted in trademark infringement concerns, as well as bad faith use under the Policy, especially given the widespread fame of Complainant’s TOYS R US and TOYSRUS.COM marks, which were well-known at the time when Respondent registered the earliest Domain Name in 1999 and the three other Domain Names in 2010.
Therefore, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest to the Domain Names, which has not been answered by Respondent. The Panel thus finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
With respect to bad faith, the Panel considers that the decisive issues in this case are whether or not Respondent has exhibited conduct that fits into bad faith registration and use by (i) the intentional registration of the Domain Names to capitalize on Complainant’s goodwill in its TOYS R US and TOYSRUS.COM marks, with (ii) the Domain Names being used in bad faith to draw Internet users to Respondent’s websites by the association of the Domain Names with Complainant’s famous marks.
There is nothing in this case to suggest that Respondent was not fully aware of Complainant's marks and in fact targeted the marks at the time Respondent registered the Domain Names. See e.g., Geoffrey, Inc. v. Toyrus.com, supra (respondent was on notice of “Complainant’s rights in the TOYS “R” US mark” based on the fame of the mark). Instead, the Panel finds that Respondent registered the Domain Names precisely because they are confusingly similar to Complainant’s trademarks, thereby engaging a form of parasitic typosquatting by using Domain Names that make a strong allusion to Complainant’s marks. Further, as other UDRP panels have previously found, using the Domain Names to divert to an adult website for sex products (or to a parking page) is clearly bad faith use. See Geoffrey, Inc. v. Alexandras, NAF Case No. FA99064 (“Respondent use of a confusingly similar domain name to offer and promote various adult sex products supports a finding of bad faith”); Geoffrey, Inc. v. Maverick Multimedia, NAF Case No. FA102727 (respondent’s use of <sextoysrus.com> for “commercial gain by promoting a commercial adult video site evinces bad faith”); Geoffrey, Inc. v. Lucy Enterprises, NAF Case No. FA287009 (respondent’s use of <cocksrus.com> “to divert Internet users to a pornographic website is evidence of bad faith use”); Geoffrey, Inc. v. Greg Gaskell, NAF Case No. FA103188 (“Respondent’s use of <schoolgirlsrus.com>” which is “confusingly similar to and dilutive of Complainant’s famous marks in connection with pornographic material is…evidence of bad faith registration and use”). The Panel finds that, pursuant to paragraph (4)(b)(iv) of the Policy, Respondent’s use of the Domain Names constitutes an intentional attempt, for commercial gain, to attract Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's TOYS R US and TOYSRUS.COM marks as to source, sponsorship, affiliation or endorsement.
Therefore, the Panel finds that Respondent registered and used the Domain Names in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <toysareruss.com>, <toysareruss.net>, <toysrruss.com> and <toysrruss.net> be transferred to Complainant.
Christopher S. Gibson
William R. Towns
Richard W. Page
Dated: August 8, 2011