DECISION

JAKKS Pacific, Inc. v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0409000323757

PARTIES

Complainant is JAKKS Pacific, Inc. (“Complainant”), represented by Larry Miller, of Feder, Kaszovitz, Isaacson, Weber Skala, Bass & Rhine LLP, 750 Lexington Avenue, 23rd Floor, New York, NY 10022.  Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), #518 F.D. Rooseveltweg; Curacao, NA AN.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <jakkspacificinc.com>, <jakspacific.com> and <wwejakkspacific.com>, registered with Nameking.com, Inc.

PANEL

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

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 3, 2004; the Forum received a hard copy of the Complaint on September 7, 2004.

On September 14, 2004, Nameking.com, Inc. confirmed by e-mail to the Forum that the domain names <jakkspacificinc.com>, <jakspacific.com> and <wwejakkspacific.com> are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 4, 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@jakkspacificinc.com, postmaster@jakspacific.com and postmaster@wwejakkspacific.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.

On October 11, 2004 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <jakkspacificinc.com>, <jakspacific.com> and <wwejakkspacific.com> domain names are confusingly similar to Complainant’s JAKKS PACIFIC mark.

2. Respondent does not have any rights or legitimate interests in the <jakkspacificinc.com>, <jakspacific.com>and <wwejakkspacific.com> domain names.

3. Respondent registered and used the <jakkspacificinc.com>,  <jakspacific.com> and <wwejakkspacific.com> domain names in bad faith.

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

FINDINGS

Complainant, JAKKS Pacific, Inc., is a multi-brand company that designs and markets a broad range of toys and leisure products around the world.  Complainant has used the JAKKS PACIFIC mark in conjunction with the offering of its products in commerce since as early as 1997.  Complainant has also registered the JAKKS PACIFIC mark with the United States Patent and Trademark Office for use in connection with toys, namely male action figures, including World Wresting Entertainment (WWE) wrestling figures, radio controlled vehicles, fashion dolls and mini dolls (Reg. No. 2,267,543, issued

August 3, 1999).

Respondent registered the <jakkspacificinc.com>, <jakspacific.com> and <wwejakkspacific.com> domain names on December 2, 2002.  Respondent is using the domain names to redirect Internet users to a search engine containing pop-up ads and featuring links to other websites selling toys, video games and other products similar to those offered by Complainant. 

Respondent has also been involved in a number of other Internet domain name disputes where Respondent was found to have used the disputed domain names to divert internet traffic to search engines offering comissions.

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 that it has rights in the JAKKS PACIFIC mark through registration with the United States Patent and Trademark office and through continuous use of the mark in commerce for the last seven years.  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).

Respondent’s <jakspacific.com> domain name is confusingly similar to Complainant’s JAKKS PACIFIC, Inc. mark because the addition of the top level domain “.com” is insufficient to establish a distinctive mark.  See 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 Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).

Additionally, the misspelling of Complainant’s mark in the <jakspacific.com> domain name and the addition of “wwe” in the <wwejakkspacific.com> domain name does not alter the confusing similarity of the domain names with Complainant’s JAKKS PACIFIC mark, since deliberate introduction of changes and/or spelling mistakes do not change Respondent’s infringement of Complainant’s mark).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to Complainant’s mark BEANIE BABIES); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant asserts Respondent does not have any rights or legitimate interests in the dispute domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with

concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,  FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <jakkspacificinc.com>, <jakspacific.com> and <wwejakkspacific.com> domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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).

Respondent is using the domain names to redirect Internet users to a search engine containing pop-up advertisements and featuring links to other websites selling toys, video games and other products similar to those offered by Complainant.  Respondent’s use of domains name that are confusingly similar to Complainant’s JAKKS PACIFIC mark to redirect Internet users interested in Complainant’s products to a commercial website with links for the sale of products similar to those offered by Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Respondent’s use of the <jakkspacificinc.com>, <jakspacific.com> and <wwejakkspacific.com> domain names to redirect Internet users to a search engine containing pop-up ads and featuring links to websites selling toys, video games and other products similar to those offered by Complainant is evidence that Respondent registered and used the domain names for commercial gain.  Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Additionally, Respondent has been implicated in several other domain name disputes involving the use of corporate names and/or trademarks in domain names where Respondent was found to have intended to profit from the redirection of Internet traffic to search engines offering commissions.  See InfoSpace, Inc. v. Horoshiy, Inc., FA282775 (Nat. Arb. Forum July 23, 2004 ); see also Citigroup Inc. v. Horoshiy, Inc., FA290633 (Nat. Arb. Forum Aug. 11, 2004), see also Avery Dennison Corp. v. Horoshiy, Inc., FA289048 (Nat. Arb. Forum Aug. 2, 2004).  Respondent’s history of registering infringing domain names evidences bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Hitachi, Ltd. v. Fortune Int’l Dev. Ent,  D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <jakkspacificinc.com>, <jakspacific.com> and <wwejakkspacific.com> domain names be TRANSFERRED from Respondent to Complainant.

                                   

Louis E. Condon, Panelist

Dated:  October 25, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1258.html