DECISION

Geoffrey, Inc. v. Proto Web Co

Claim Number: FA0407000304297

PARTIES

Complainant is Geoffrey, Inc. (“Complainant”), represented by Lawrence W. Greene, One Geoffrey Way, Wayne, NJ 07470-2030.  Respondent is Proto Web Co.  (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <babysuperstore.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Steven L. Schwartz, Esquire, Jeffrey M. Samuels, Esquire and Hon. Richard B. Wickersham, Judge (Ret.), Chairman, as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 23, 2004; the Forum received a hard copy of the Complaint on July 26, 2004.

On July 23, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the <babysuperstore.com> domain name is registered with The Registry At Info Avenue d/b/a IA Registry and that the Respondent is the current registrant of the name.  The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by The Registry At Info Avenue d/b/a IA Registry 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 July 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 18, 2004 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@babysuperstore.com by e-mail.

A timely Response was received and determined to be complete on August 18, 2004.

On September 5, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Steven L. Schwartz, Jeffrey M. Samuels and Richard B. Wickersham, Chairman, as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant in this administrative proceeding is Geoffrey, Inc. (“Geoffrey”), a Delaware corporation having a place of business in Wayne, New Jersey, USA.  (Decl. ¶ 1.)

Geoffrey is a wholly owned subsidiary of Toys “R” Us, Inc. (“Toys “R” Us”). Toysrus.com, LLC (“Toysrus.com”) is a related company to both Geoffrey and Toys “R” Us.  Babies “R” Us is an operating division of Toys “R” Us.  (Decl. ¶ 3).

Toys “R” Us and Toysrus.com are Delaware corporations having a place of business in Wayne, New Jersey, USA.  (Decl. ¶ 4).

Geoffrey, through its related companies and predecessors in interest, began using its BABY SUPERSTORE mark in connection with the retail sale of merchandise for babies at least as early as 1985.  Geoffrey currently licenses the BABY SUPERSTORE mark to Toys “R” Us and other related companies. (Decl. ¶ 5).

Geoffrey is the owner of valid and subsisting United States Trademark and Service Mark Registrations for BABY SUPERSTORE (collectively, the “Geoffrey BABY SUPERSTORE Mark”).

(Please note that the registration certificates were originally issued to Geoffrey’s predecessor-in-interest, Baby Superstores, Inc.  Accompanying documents reflect assignment of these registration certificates to Geoffrey – the current owner of the marks -- subsequent to the 1997 acquisition of Baby Superstores, Inc. by Toys “R” Us.)  (Decl. ¶ 6). 

Since May 2001, Toysrus.com has used BABIESRUS.COM as a mark and domain name that links to a web site jointly sponsored by Toysrus.com and Amazon.com, Inc.  This web site displays the Geoffrey BABY SUPERSTORE Mark and provides on-line shopping and information services for a large spectrum of products including, but not limited to, clothing, diapers, toys, car seats, furniture, photo albums, books, and food processors.  Previously, the <babiesrus.com> domain name was a stand-alone site, providing essentially the same goods and services under the mark BABIESRUS.COM, from at least as early as June 2000.   

The <babiesrus.com> domain name is actively promoted to encourage potential Internet customers to visit the sites and take advantage of their product and information offerings. Geoffrey and its related companies have entered into thousands of merchant partner promotional linking agreements with suppliers through an affiliate program, to expand their Internet presence.  (Decl. ¶ 8).

As of February 2004, Geoffrey’s related and affiliated companies had 198 Babies “R” Us stores spread across the United States of America.  Many of these stores prominently feature the Geoffrey BABY SUPERSTORE Mark on their front façade.  Babies “R” Us stores have been in operation in the United States since at least as early as 1996.  (Decl. ¶  9).

Geoffrey’s affiliated companies have expended, and continue to expend, millions of dollars annually to advertise, publicize and promote products and services related to the Babies “R” Us stores, throughout the United States and internationally.  Advertising expenses for the Babies “R” Us stores totaled $16,368,000 for the year ending February 1, 2003.  The BABIES “R” US and Geoffrey BABY SUPERSTORE mark have been regularly and extensively advertised on radio and television, on billboards, in publications, direct mail promotions, in newspapers having a national and international circulation, and in “color rotogravure - Sunday Supplement” inserts to newspapers distributed across the United States and throughout the world.

Geoffrey’s related companies now sell, and have sold, billions of dollars of products and have similarly rendered retail department store services within the Babies “R” Us stores and on the Internet, throughout the United States and internationally.  Net sales at Babies “R” Us stores, wherein the Geoffrey BABY SUPERSTORE Mark has been prominently featured, totaled $1,763,000,000 for the year ending January 31, 2004.  (Decl. ¶ 11).

By reason of extensive advertising, promotion and sale of products and services, the Geoffrey BABY SUPERSTORE mark has acquired and enjoys fame, distinctiveness, and substantial secondary meaning.  Geoffrey owns valuable goodwill which is symbolized by the Geoffrey BABY SUPERSTORE Mark.  (Decl. ¶ 12).

Geoffrey and its related companies vigilantly protect their marks from unauthorized uses by third parties.  This vigilance includes the writing of numerous cease-and-desist letters, the bringing of legal actions, and the filing of UDRP proceedings.

Geoffrey recently became aware that Proto Web Co. registered the BABYSUPERSTORE.COM domain name.  The BABYSUPERSTORE.COM domain name is currently registered with The Registry at Info Avenue in the name of Proto Web Co.

Proto Web Co. is using the <babysuperstore.com> domain name to resolve to a website whose principal purpose is to advertise third party websites, including those offering goods and services pertaining to babies.

B. Respondent

The disputed domain is composed solely of the common descriptive, or generic, term “babysuperstore.com,”  a term subject to substantial third party use.  The American Heritage Dictionary of the English Language defines a “superstore” a “very large retail store that stocks . . .  a wide variety of merchandise in a specific product line, such as computers or sporting goods.”  It is undisputed that Complainant uses the term “baby superstore” to describe its large stores offering baby merchandise.  Complainant, thus, uses the term “baby superstore” in, at best, a descriptive manner and, arguably, in a generic manner. A Google search for the term “baby superstore” excluding “r us” and “rus” to exclude references to Complainant, yielded over 8,000 web sites containing the common descriptive term “baby superstore.”

Respondent uses the Disputed Domain for a web site that provides paid advertising links that relate to the term “baby superstore,” including links to baby-related merchandise.    The advertising is provided through an affiliate program operated by Overture.com, a division of Yahoo.com.  Overture.com’s program provides pay-per-click advertising links related to the generic meaning of each domain name through a domain name-matching technology.   Respondent receives a share of the advertising revenue earned by Overture.com.  Respondent did not register the Disputed Domain to sell to Complainant, to disrupt its business, to prevent it from registering a domain name incorporating its trademark, or to confuse users.  Respondent simply had no knowledge of Complainant when it registered the Disputed Domain.  Respondent has not used the domain name to confuse users who are seeking to find Complainant’s web site.

The term “baby superstore” is defined as a large store that carries a wide variety of baby merchandise.  This exactly describes how Complainant uses the term “baby superstore.”  This is undisputed.  Complainant’s web site at babiesrus.com, describes Complainant’s business, inter alia, as “the largest baby product specialty store in the world.” Complainant clearly uses the term “baby superstore” to describe its Babies R Us business, referring to Babies R Us as “The Baby Superstore”.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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  Policy ¶4(a)(i).

Complainant asserts that it has established rights in the BABY SUPERSTORE mark through several registrations of the mark with the United States Patent and Trademark Office (Reg. No. 1,475,416, issued February 2, 1988, Reg. No. 1,999,333, issued September 10, 1996, Reg. No. 2,114,475, issued November 18, 1997, Reg. No. 2,114,476, issued November 18, 1997, Reg. No. 2,114,478, issued November 18, 1997).  The Panel finds that Complainant has established rights in the BABY SUPERSTORE mark pursuant to Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainant contends that the <babysuperstore.com> domain name is identical to Complainant’s BABY SUPERSTORE mark because the domain fully incorporates Complainant’s mark with the omission of a space between the words “baby” and “superstore.”  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK). 

Moreover, the Panel finds that the addition of the generic top-level domain “.com” in the domain name is irrelevant in determining whether the domain name is identical to Complainant’s mark under Policy ¶ 4 a)(i).   See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either 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” and thus Policy ¶ 4(a)(i) is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES).

Rights or Legitimate Interests  Policy ¶4(a)(ii).

Complainant contends that Respondent is using the <babysuperstore.com> domain name to redirect Internet users to a website containing links to third-party websites advertising products directly in competition with those offered by Complainant.  The Panel finds that Respondent was using the <babysuperstore.com> domain name to redirect Internet users to Complainant’s competitors, and the Panel finds that Respondent lacks rights and legitimate interests in the domain name.  The commercial use of a domain name identical to another’s mark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

The Panel finds that there is nothing in the record to indicate that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Registration and Use in Bad Faith  Policy ¶ 4(a)(iii).

Complainant contends that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is using the domain name <babysuperstore.com> to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of its website.  The Panel finds that Respondent was commercially benefiting from use of the <babysuperstore.com> domain name and concludes that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Furthermore, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent’s domain name is identical to Complainant’s mark and is used to provide links to websites offering products in direct competition with Complainant.  See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

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 <babysuperstore.com> domain name be TRANSFERRED from Respondent to Complainant.

___________________________________________________

Hon. Richard B. Wickersham, Judge (Ret.), Chairman

Steven L. Schwartz, Esquire

Jeffrey M. Samuels, Esquire,  Panelists
Dated: September 17, 2004

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