WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TRU Kids Inc. v. Registration Private, Domains By Proxy, LLC / C Carman
Case No. D2019-0922
1. The Parties
Complainant is TRU Kids Inc., United States of America (“United States”), represented by Adelman Matz P.C., United States.
Respondent is Registration Private, Domains By Proxy, LLC / C Carman, United States.
2. The Domain Name and Registrar
The disputed domain name <trukids.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 1, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 24, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 5, 2019. 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 TRU Kids Inc., through its predecessor companies (hereinafter “Complainant”) is a major retailer of children’s toys. As of May 2007 (just before the Domain Name was registered), Complainant operated 586 toy stores in the United States and 684 stores in other countries. In 2007, Complainant’s sales exceeded USD 13 billion.
For more than 50 years, Complainant has used the TOYS “R” US trademark to identify and distinguish its retail offerings. Complainant holds several registrations of that mark (either in word form or stylized) with the United States Patent and Trademark Office (“USPTO”), such as USPTO Reg. No. 0902125 registered November 10, 1970. Complainant has annexed to the Complaint evidence of its extensive marketing efforts over the years in connection with this mark, as well as the considerable fame which this mark has achieved (such as a 1989 Los Angeles Times article referring to Complainant as “the world’s largest toy seller”).
Complainant has also used the common law mark TRU in conjunction with its famous TOYS “R” US family of marks. The letters TRU correspond to the first letters in the TOYS “R” US mark. These three letters have at times been featured more prominently than the other letters in the mark. In 1993, Complainant registered the domain name <tru.com>, and has used that mark to feature or link to Complainant’s main website, located at “www.toysrus.com”. Complainant also annexes to the Complaint screenshots of third-party blog sites in 2005, where consumers refer to Complainant’s stores as TRU.
The Domain Name was (re-)registered on August 22, 2007. The Domain Name resolves to a parking page hosted by the Registrar. At this page, there appear several hyperlinks, most of which relate to children, such as “KIDS BIRTHDAY INVITATIONS”, “FUN KIDS GAMES.” Other links relate to items such as “TREADMILLS.” When one clicks the “TREADMILLS” link, one is redirected to a web page where several commercial links to treadmill retailers are identified.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent has not replied to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has provided evidence of rights in the common law mark TRU for the purposes of the Policy, through its longstanding use of the <tru.com> domain name as a means to direct the Internet user to Complainant’s main retail site, as well as evidence of physical advertising. Moreover, there is evidence in the record that consumers have long referred to Complainant as TRU.
The Panel concludes further that the Domain Name is confusingly similar to the common law TRU mark. The Domain Name incorporates the TRU mark and adds the descriptive word “kids.” Given that Complainant’s core business is selling children’s toys, the additional word “kids” in the Domain Name does not diminish the confusion between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain his bona fides vis-à-vis the Domain Name. Respondent’s parking page contains various links to commercial websites, some of which pertain to children’s games and amusement. That is not a legitimate use of the Domain Name in these circumstances.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it likely that Respondent had Complainant’s mark in mind when registering the Domain Name. The Panel concludes that the common law TRU mark was sufficiently well established by 2007 as a source identifier for children’s toys, when the Domain Name was registered, to render it more likely than not that Respondent registered the Domain Name – containing the common law TRU mark and the word “kids” – with Complainant’s mark in mind.
The Panel also finds bad faith use of the Domain Name within the meaning of the above-quoted Policy paragraph 4(b)(iv). The Panel finds it more likely than not that Respondent derives pay-per-click revenue from the hyperlinks on his parking page, and does so by virtue of the confusion engendered between the Domain Name and Complainant’s common law TRU mark.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <trukids.com> be transferred to Complainant.
Robert A. Badgley
Date: June 7, 2019