DECISION

Prema Toy Company v. Administration Local

Claim Number:  FA0309000193692

PARTIES

Complainant is Prema Toy Company, Los Osos, CA, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Administration Legal, Hong Kong, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gumbysex.com>, registered with Dotster.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 5, 2003; the Forum received a hard copy of the Complaint on September 8, 2003.

On September 8, 2003, Dotster confirmed by e-mail to the Forum that the domain name <gumbysex.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@gumbysex.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Complainant submitted an Additional Submission on September 26, 2003, which was deemed in compliance with Forum Supplemental Rule #7. Due to the nature of Respondent’s use of the disputed domain name, Complainant believed it beneficial to file an expedited Complaint, and Complainant’s Additional Submission consists of copies of trademark registration certificates for the trademark referenced in the Complaint that were not available to Complainant at the time that the Complaint was filed. Under the circumstances of this dispute, the Panel chooses to consider Complainant’s Additional Submission.

On October 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,  as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <gumbysex.com> domain name is confusingly similar to Complainant’s GUMBY mark.

2. Respondent does not have any rights or legitimate interests in the <gumbysex.com> domain name.

3. Respondent registered and used the <gumbysex.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Prema Toy Company, holds numerous trademark registrations for the GUMBY mark (e.g. U.S. Reg. No. 1,399,537, registered on July 1, 1986). The GUMBY mark is and has been used to denote the cartoon character GUMBY, first introduced to the viewing public in 1956 through stop-motion animation. Complainant uses the GUMBY mark in connection with a broad array of goods and services that range from video and sound recordings to toys, posters, clothing, and various novelty items.

Respondent, Administration Local, registered the <gumbysex.com> domain name on December 25, 2002, without license or authorization to use the GUMBY mark for any purpose. Respondent uses the disputed domain name to provide adult-oriented goods and services.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant has established rights in the GUMBY mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce.

Respondent’s <gumbysex.com> domain name is confusingly similar to Complainant’s GUMBY mark. Its inclusion of the entire GUMBY mark with the addition of the generic word “sex” does not change the fact that the main feature of the domain name is the famous GUBMY mark, rendering the domain name confusingly similar to Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”); see also Oki Data Ams. Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

Accordingly, the Panel finds that the <gumbysex.com> domain name is confusingly similar to Complainant’s GUMBY mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses Complainant’s famous GUMBY mark, without license to direct Internet users to adult-oriented goods and services. These services bear no relation to Complainant’s GUMBY mark, and only serve to tarnish the goodwill surrounding that mark. For these reasons, Respondent is not making a bona fide offering of goods or services at the disputed domain name, and its use of the domain name cannot be characterized as a legitimate noncommercial or fair use. Thus, Policy ¶¶ 4(c)(i) and (iii) do not apply in this dispute. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that the use of the disputed domain name in connection with pornographic images and links “tarnished and diluted” Complainant’s mark and this was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Respondent names itself as “Administration Local” in its WHOIS contact information, which supports the inference that Respondent is not “commonly known by” the disputed domain name. Therefore, Policy ¶ 4(c)(ii) does not apply in this dispute. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <gumbysex.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Given the fame surrounding Complainant’s mark, the Panel infers that Respondent was aware of Complainant’s rights in the GUMBY mark at the time that it registered the <gumbysex.com> domain name. Respondent’s attempt to capitalize on the goodwill that Complainant has built up around the GUMBY mark through years of use of the mark in commerce is evidence that the domain name was registered in bad faith. Respondent’s tarnishing use of the domain name supplies the requiste bad faith use under Policy ¶ 4(a)(iii).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003)  ( “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name).

The Panel thus finds that Respondent registered and used the <gumbysex.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <gumbysex.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 27, 2003

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