National Arbitration Forum

DECISION

J.W. Spear & Sons PLC v. Jon Kinket

Claim Number: FA0410000356377

PARTIES

Complainant is J.W. Spear & Sons PLC (“Complainant”), represented by William Dunnegan, of Perkins & Dunnegan, 45 Rockefeller Plaza, New York, NY 10111.  Respondent is Jon Kinket (“Respondent”), De Reest 31, Hattem, Gelderland 8051 JP, NE.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <scrabble.biz>, registered with Go Daddy Software, Inc.

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.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2004.

On October 29, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <scrabble.biz> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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@scrabble.biz by e-mail.

A timely Response was received and determined to be complete on November 15, 2004.

On November 29, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

SCRABBLE is a trademark for board games marketed by Complainant (and Mattel, Inc., of which Complainant is a wholly-owned subsidiary) and Hasbro, Inc., which is not a party to this proceeding.  Complainant and its parent corporation own the SCRABBLE mark throughout the world, except in the United States and Canada, and have numerous trademark registrations for the mark.

Complainant contends that the <scrabble.biz> domain name is confusingly similar to its SCRABBLE mark, and that Respondent lacks rights or legitimate interests in the disputed domain name.  Complainant alleges in support of the latter contention that until recently the domain name was used for a website offering a demo version of Mattel’s Scrabble software, and that Respondent changed the website content after receiving Complainant’s demand that Respondent relinquish the domain name.

Finally, Complainant asserts that Respondent has used the disputed domain name with the intent to trade on and profit from the goodwill associated with Complainant’s SCRABBLE mark, and that in response to Complainant’s demand for the domain name, Respondent changed the website content and offered to sell the domain name to Complainant for € 10,000.  Based upon these allegations, Complainant contends that the domain name was registered and has been used in bad faith.

B. Respondent

Respondent raises a threshold procedural question, inquiring whether a domain name in the “.biz” top-level domain is subject to the Policy.  The Policy does indeed apply to “.biz” domain names, and it is incorporated by reference in the registration agreement between Respondent and Go Daddy Software, Inc.

On the merits, Respondent contends that Complainant has not shown it holds valid trademark rights in either the Netherlands, where Respondent is located, or in the United States, where Go Daddy Software, Inc., is located; and that the disputed domain name is not confusingly similar to the SCRABBLE mark because the word “scrabble” has different meanings.

In response to Complainant’s assertion that Respondent lacks rights or legitimate interests, Respondent states that by using the disputed domain name, he “can become commonly known by the name Scrabble over the next few years.”  He concedes that the domain name was used for a demo version of Mattel’s Scrabble software, but claims that his object was to promote authorized copies of a Scrabble CD-ROM game that he had previously purchased from a bookstore and wished to resell; Respondent contends that this was a bona fide offering of goods giving rise to a legitimate interest in the domain name.

Respondent acknowledges that he expressed a willingness to sell the domain name for a “reasonable price,” but denies that he demanded € 10,000; he claims that he was merely attempting to negotiate, and would have been willing to sell the domain name to Complainant for $850, “because $850 is a lower price than the price complainant has to pay for filing a complaint with the National Arbitration Forum.”

FINDINGS

The Panel finds that the <scrabble.biz> domain name is identical or confusingly similar to Complainant’s SCRABBLE mark; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.

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 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

Complainant’s numerous trademark registrations demonstrate that Complainant has rights in the SCRABBLE mark.  The disputed domain name <scrabble.biz> is identical to this mark but for the addition of the “.biz” top-level domain suffix.  It is therefore identical to the mark for purposes of the Policy.

Rights or Legitimate Interests

Complainant’s allegations as to rights or legitimate interests are sufficient to shift the burden of production to Respondent, although Complainant ultimately bears the burden of proof on this and all other elements required by the Policy.  See, e.g., Broadcom Corp. v. Novostroev, Case No. FA318098 (Nat. Arb. Forum Oct. 7, 2004).

Respondent’s claim that he may be able to become known by the disputed domain name in the future is clearly not a sufficient basis for finding that he presently has rights or legitimate interests in the domain name.  A closer question is presented by Respondent’s claimed use of the domain name to advertise legitimate copies of Complainant’s own software for sale.  Under the circumstances of this case, however, it appears to the Panel that any such activity was merely pretextual at best.  The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Under the Policy, a finding of bad faith may be made based upon evidence that Respondent registered the domain name primarily for the purpose of selling it to Complainant or a competitor for an amount in excess of Complainant’s out-of-pocket costs, or that Respondent intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark.  Policy ¶ 4(b)(i), (iv).  In this case it appears to the Panel that Respondent registered the domain name because of its correspondence to Complainant’s mark, intending then and now to sell the domain name at a profit, supporting an inference of bad faith registration and use under Policy ¶ 4(b)(i).  Furthermore, Respondent has used the domain name in a manner that would support an inference of bad faith under Policy ¶ 4(b)(iv) as well.  The Panel concludes that the domain name was registered and has been used in bad faith.

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 <scrabble.biz> domain name be TRANSFERRED from Respondent to Complainant.

David E. Sorkin, Panelist
Dated: December 13, 2004

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