WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Build-A-Bear Workshop, Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2019-1486
1. The Parties
The Complainant is Build-A-Bear Workshop, Inc., United States of America (the “United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <buildabaer.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2019.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on August 13, 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
The Complainant defines itself as a global company that offers a teddy bear themed retail-entertainment experience.
The Complainant Build-A-Bear Workshop, Inc. and its wholly owned subsidiary Build-A-Bear Retail Management, Inc. own several trademark registrations in different jurisdictions, including the following:
- United States trademark registration No. 2884223 BUILDABEAR.COM, filed on May 12, 2003 and registered on September 14, 2004 in class 28;
- United States trademark registration No. 2553748 BUILD-A-BEAR WORKSHOP, filed on February 18, 1997 and registered on March 26, 2002 in classes 16, 18, 25, 28, 35, and 41;
- European Union trademark registration No. 004872479 BUILD-A-BEAR, filed on February 1, 2006 and registered on October 10, 2007 in class 9; and
- European Union trademark registration No. 009660812 BUILD-A-BEAR, filed on January 14, 2011 and registered on June 21, 2011, among many others.
In addition, the Complainant maintains Internet and retail presence through its website located at its domain name <buildabear.com> registered on March 13, 1997.
The disputed domain name <buildabaer.com> was registered on September 15, 2003 and it resolves to a website that features multiple third party links for “Build a Bear”, “Plush Bear” and “Winter Bear”, “Get Well Teddy Bears” and the like. It also features a link that references the Complainant and its business i.e. “Build a Bear”.
5. Parties’ Contentions
Maxine Clark founded Build-A-Bear, and in 1997 opened its first Build-A-Bear store at Saint Luis Galleria, a shopping mall in Saint Louis, Missouri. Today there are over 400 Build-A-Bear stores worldwide, including company-owned stores in the United States, Canada, the United Kingdom, Denmark, and Ireland, and franchise stores in Europe, Asia, Australia, Africa, Mexico, and the Middle East. According to the Complainant’s Reports Fiscal 2018 Third Quarter Results Build-A-Bear posted a total revenue of USD 68.7 million.
The Complainant has won numerous awards and recognition. Build-A-Bear is listed No. 55 in the FORTUNE Best Companies to Work For 2018 and has been on this list for the 10th year in a row. In 2005 the National Association of Small Business Investment Companies made Build-a-Bear Workshop Portfolio Company of the Year. It was named one of the International Shopping Centers “Hottest Retailers of 2004” and the Retail Innovator of the Year for 2001 by the National Retail Federation.
The Complainant and its BUILD-A-BEAR trademark is known internationally, with trademark registrations across numerous countries. The Complainant has marketed its goods and services using the trademark since 1997, which is well before the Respondent’s registration of the disputed domain name on March 13, 2003.
The Complainant claims that the disputed domain name <buildabaer.com> is confusingly similar, if not identical, to the trademark BUILD-A-BEAR in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The Complainant contends that the Respondent is not known as the disputed domain name but rather as Domain Admin, which does not resemble the disputed domain name in any manner.
Presumably, the Respondent receives pay-per-click fees from the link websites that are listed at the website of the disputed domain.
The Respondent is not using the disputed domain name to provide a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use as allowed under the Policy, but rather the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill or the Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used In bad faith.
A. Identical or Confusingly Similar
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademarks and the disputed domain name to determine whether the domain name is confusingly similar to the trademarks. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademarks to assess whether the mark is recognizable within the domain name.
In this case, the disputed domain name <buildabaer.com> differs from the Complainant’s trademarks BUILDABEAR.COM and BUILD-A-BEAR by switching the letters “e” and “a” in the word “bear”. The same applies in connection to the distinctive element in the Complainant’s trademark BUILD-A-BEAR WORKSHOP.
Following what is usual practice in these cases, for the purpose of comparison the Panel shall disregard the generic Top-Level Domain “.com” being a technical requirement, the dashes between the words “build-a-bear” and the word “workshop”.
Thus, the Panel considers that the disputed domain name <buildabaer.com> is confusingly similar with all three trademarks in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interest in the disputed domain name <buildabaer.com>. The name of the Respondent is “Domain Admin” which does not resemble the disputed domain name in any manner.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.
Likewise, and as further discussed under C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name which is confusingly similar with the Complainant’s above-mentioned trademarks, but rather it is using the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the disputed domain name relates to the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy has been complied.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks mentioned in 4 above (Factual Background) when it registered the disputed domain name <buildabaer.com> on September 15, 2003. The time elapsed since then does not in any way preclude the Complainant’s rights to bring these administrative proceedings under the rules of the Policy.
The disputed domain name <buildabaer.com> was registered after the Complainant registered the trademark BUILD-A-BEAR WORKSHOP which was applied for in 1997 and registered in 2002, and after the trademark BUILDABEAR.COM was applied for on May 12, 2003.
The disputed domain name <buildabaer.com> was also registered well after the Complainant had registered the domain name <buildabear.com> on March 13, 1997, year in which the Complainant began to market and sell its goods and services using the trademark BUILD-A-BEAR.
The Respondent when registering the disputed domain name <buildabaer.com> has targeted the Complainant’s trademark by switching the letters “e” and “a” in “bear”, in a typical act of typosquatting, with the intention to confuse Internet users and capitalize on the fame of Complainant’s name and trademark for its own monetary benefit.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used marks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 name <buildabaer.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: August 26, 2019