WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KidKraft, L.P. v. Nick Turi / MrToys.com LLC
Case No. D2014-2198
1. The Parties
Complainant is KidKraft, L.P. of Dallas, Texas, United States of America (“United States”), represented internally.
Respondent is Nick Turi / MrToys.com LLC of Fairfield, New Jersey, United States.
2. The Domain Names and Registrar
The disputed domain names <kidkraft.biz> and <kidkraftstore.com> are registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2014. On December 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 on December 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2015.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 21, 2015. The Panel finds that it was properly constituted. 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 KidKraft, L.P. is a Texas limited partnership that was established in 1968 in Dallas, Texas, United States. Complainant specializes in selling toys and children’s furniture under its own KIDKRAFT brand as well as for private labels. Complainant first applied to register the KIDKRAFT mark in the United States in a stylized version on or about December 9, 1999 and subsequently in the European Union and Canada in March 2000. Complainant obtained a Community Trade Mark (CTM) registration for a stylized version of the KIDKRAFT mark on August 8, 2001 and its first United States registration for a stylized version on April 2, 2002. Complainant has also subsequently applied for and obtained registrations for its KIDKRAFT mark in the United States, Canada, Europe, Australia and other jurisdictions. Complainant also owns the domain name <kidkraft.com> which it uses in connection with its toy and furniture products.
The disputed domain name <kidkraftstore.com> was registered on or about September 5, 2001 and the disputed domain name <kidkraft.biz> on or about November 18, 2001. Currently, the disputed domain names do not resolve to active web pages.
On or about March 6, 2014 and April 15, 2014, Complainant sent demand letters to Respondent via email demanding the transfer of the disputed domain names. Respondent does not appear to have responded to these two demand letters.
5. Parties’ Contentions
Complainant asserts that it is a well-known provider of toys and children’s furniture and, in particular, is known for its inventive, interactive and educational toys. Complainant submits that it was established in 1968 and that over the course of many years it has received honors and awards from numerous organizations for its products. Complainant also asserts that it has extensively and continuously used the KIDKRAFT mark since at least 1973 to design, develop and distribute toys and children’s furniture. Complainant has submitted evidence that it applied for the KIDKRAFT mark in the United States in 1999 and thereafter obtained registrations for the KIDKRAFT mark in the United States, Europe and other jurisdictions.
Complainant contends that the disputed domain names are identical and confusingly similar to Complainant’s KIDKRAFT mark because they each contain the KIDKRAFT mark in its entirety. Complainant also contends that the addition of the generic word “store” with respect to the disputed domain name <kidkraftstore.com> is particularly confusing because it falsely suggests that the disputed domain name is the official online location for purchasing and viewing KidKraft products.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent registered the disputed domain names after Complainant had started use of the KIDKRAFT mark in 1973 and after Complainant had applied to register the KIDKRAFT mark in 1999. Complainant further contends that Respondent is not commonly known by the disputed domain names and has used the disputed domain names to redirect Internet traffic to a web site at “www.toystore.info”, which at one point contained third party, pay-per-click (PPC) links and promoted Respondent’s <mrtoys.com> domain name and website for competing products.
Complainant asserts that while Respondent was allowed to place orders with Complainant for KIDKRAFT goods and had the right to provide KIDKRAFT goods to consumers from on or about June 22, 2001 through on or about November 2012, Complainant at no time authorized, approved, or acquiesced to Respondent’s use of the KIDKRAFT trademark and brand in the disputed domain names. Complainant also maintains that despite having sent two demand letters to Respondent in March and April 2014 it has never received a response and that Respondent has renewed the disputed domain names and used them in illegitimate ways, such as by linking them to a web site with third party PPC links competing with Complainant or to blank websites.
Finally Complainant asserts that Respondent, unbeknownst to and without approval of Complainant, has registered and used the disputed domain names in order to capitalize on the confusion of Complainant’s customers in trying to locate Complainant’s services and products on the Internet. Complainant contends that Respondent had actual knowledge of the KIDKRAFT mark prior to registering the disputed domain names on account of the “business cooperation between Respondent and Complainant,” which started in or about June 2001 and lasted up through November 2012. Complainant also asserts that Respondent has acted in bad faith by (i) using the disputed domain names to promote Respondent’s “www.mrtoys.com” web site and to offer PPC links to third party good or services, and/or (ii) by now “passively holding” the disputed domain names after receiving two demand letters from Complainant. Lastly, Complainant contends that bad faith should be inferred in this matter as Respondent has a pattern of registering and using domain names based on the marks of others.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) states:
“4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent’s default does not automatically result in a decision in favor of the complainant… the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
Thus, although in this case Respondent has failed to respond to the Complaint against him, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it applied for the KIDKRAFT mark in a stylized form in the United States on or about December 9, 1999, which matured to registration on April 2, 2002, and that it obtained a CTM registration for the stylized KIDKRAFT mark on August 8, 2001. Complainant has also submitted evidence that it owns other registrations for the KIDKRAFT mark in the United States, Canada, Europe and Australia.
With Complainant’s ownership interest in the KIDKRAFT mark established, the remaining question under the first element of the Policy is whether the disputed domain names (disregarding the generic Top-Level Domains “.com” and “.biz”) are identical or confusingly similar with Complainant’s mark. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The disputed domain name <kidkraft.biz> is identical to the registered trademark KIDKRAFT and 4(a)(i) of the Policy is thus satisfied with respect to this disputed domain name. The disputed domain name <kidkraftstore.com> is confusingly similar to the KIDKRAFT mark as it incorporates the KIDKRAFT mark in its entirety. The addition of the generic word “store” in that disputed domain name is of no import and does not distinguish the disputed domain name from Complainant’s KIDKRAFT mark. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of 4(a)(i) in establishing its ownership interest in the KIDKRAFT mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production to the respondent, the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second factor of the UDRP.
From the record in this case, and as discussed in Section C below, there is an issue regarding the legitimacy of Respondent’s registration and use of the disputed domain names. Complainant asserts that a business relationship existed between Complainant and Respondent from June 2001 through November 2012 during which time Respondent was allowed to purchase KidKraft products from Complainant for resale to consumers. Complainant asserts in its complaint, however, that it was not aware of Respondent’s registration and use of the disputed domain names.1 While unsubstantiated allegations in a complaint are typically not entitled to much, if any, weight (see Budge Industries, LLC v. Joe Carrero, WIPO Case No. D2010-0392; Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103), the Panel notes that, given Respondent’s failure to file a response, Complainant has established with sufficient evidence that it owned rights in the KIDKRAFT mark prior to the registration of the disputed domain names and that Respondent has at various times used the disputed domain names to redirect web traffic to a website with PPC links for third party goods or services and/or to promote Respondent’s website at “www.mrtoys.com” (which has included references to Complainant’s KidKraft products). Consequently, it appears that Respondent was aware of Complainant’s rights in the KIDKRAFT mark at the time he registered the disputed domain names and that he has sought at various time to use such to redirect web traffic for commercial gain. Such registration and use of the disputed domain names does not constitute a legitimate interest or bona fide use.
The Panel finds that in light of Respondent’s failure to file a response none of the circumstances of paragraph 4(c) of the Policy are met in this case. Nor are there any other circumstances indicating that Respondent has rights or legitimate interests in the disputed domain names.
The Panel also notes that there has been a considerable delay of almost fourteen years from when the disputed domain names were registered and the date when this case was filed. Complainant’s only comment on this delay is that it was not aware of the registration or use of the disputed domain names until fairly recently. Again, while unsubstantiated allegations by a party’s counsel are entitled to little, if any, weight, here there is evidence that Complainant sent two email letters to Respondent on March 6, 2014 and April 15, 2014 demanding the transfer of the disputed domain names – thus suggesting that Complainant discovered the registration and use of the disputed domain names in or about that time frame. Respondent never responded to the demand letters and has not provided a response to the Complaint in this case. Accordingly, given Respondent’s silence, the Panel concludes that Complainant has not unreasonably delayed in filing this case under the Policy.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain names. As Respondent, although given an opportunity to present its case, has decided not to submit a response and put forward arguments as to why he should be regarded as having rights or legitimate interests in the disputed domain names, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant’s prima facie case. Complainant thus prevails on this element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate he acquired and utilized the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered domain names that fully incorporate Complainant’s KIDKRAFT mark and which have been used, at various times, to redirect web traffic to a website containing PPC links and/or promoting Respondent’s own website. Such registration and uses of domain names for commercial gain are evidence of bad faith. Respondent was clearly aware of Complainant’s rights in the KIDKRAFT mark as he purportedly not only acquired KidKraft products from Complainant for sale to consumers prior to registering the disputed domain names, but, as the evidence shows, has in some instances offered KidKraft products for sale on Respondent’s own website at “www.mrtoys.com”. Indeed, Respondent has been found by at least one other UDRP panel of having registered and used domain names based on another party’s mark in bad faith where, as here with regard to <kidkraftstore.com>, he used a suffix whose only purpose was to attract Internet traffic while using the publicity and reputation of another’s trademark. See Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356.
Moreover, given that Respondent has failed to respond to two demand letters sent on behalf of Complainant concerning the disputed domain names and has chosen to default in this proceeding, the Panel can only infer that Respondent’s actions have been undertaken in bad faith. The panel also finds that Respondent’s more recent decision to passively hold the disputed domain names is further evidence of Respondent’s continued bad faith in this matter.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <kidkraft.biz> and <kidkraftstore.com> be transferred to Complainant.
Date: February 3, 2015
1 The Panel notes that Complainant has submitted an affidavit from its Chief Financial Officer concerning the KIDKRAFT mark. The affidavit addresses neither this issue of lack of knowledge nor Complainant’s delay in filing this case.