DECISION

PJ Kids, LLC v. Dean Pannell a/k/a Dinotrac, Inc.

Claim Number: FA0406000289432

PARTIES

Complainant is PJ Kids, LLC (“Complainant”), 3490 US Route 1, Building #16, Princeton, NJ 08540.  Respondent is Dean Pannell a/k/a Dinotrac, Inc. (“Respondent”), 1200 South Second Street, St. Charles, IL 60174.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <roomstodream.com>, <roomstodream.net> and  <igotpjkids.com>, registered with Go Daddy Software, 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.

M. Kelly Tillery, Esquire as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 25, 2004; the Forum received a hard copy of the Complaint on June 28, 2004.

On June 25, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <roomstodream.com>, <roomstodream.net> and <igotpjkids.com> are registered with Go Daddy Software, Inc. and that 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 July 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 27, 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@roomstodream.com,postmaster@roomstodream.netand postmaster@igotpjkids.com by e-mail.

A timely Response was received and determined to be complete on July 27, 2004.

On August 2, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that: 

1)            Respondent is an illegitimate holder of the domain names as they were transferred to Respondent after an initial complaint was filed on June 7, 2004 against the original owner, Jeffrey W. Lahdenpera;

2)            Complainant owns U.S. Registered Trademarks for PJ Kids under Serial Numbers: 76/416,399, 75/702,203, and 75/760,732, active since May 10, 1999 and a U.S. Registered Trademark for Rooms to Dream under Serial Numbers 76/506,492 and 76/466,962, active since November 7, 2002;

3)            Complainant is a furniture and accessories wholesaler and retailer selling to stores under the PJ KIDS Mark;

4)            Complainant owns a “Rooms to Dream” retail store in Cherry Hill, Pennsylvania and has franchised five “Rooms to Dream” stores nationally; 

5) the PJ KIDS and Rooms to Dream Trademarks are used and well-known;

6) Complainant has spent eight years building brand awareness so that PJ KIDS will be associated in consumers’ minds with imaginative lifestyle furniture;

7) “Rooms to Dream” is a fast growing retail chain that builds brand recognition with a consistent and unique atmosphere in its stores;

8)            <roomstodream.com> and <roomstodream.net> are identical to Complainant’s Trademarks;

9)         <igotpjkids.com> is a predatory version of Complainant’s Trademark;

10)            <roomstodream.com>, <roomstodream.net>, and <igotpjkids.com> were unused since their initial registration in February of 2002, until after a Complaint was filed on June 7^th;

11)            between June 15^th and June 17^th, 2004, Respondent uploaded webpages to the disputed domain names, specifically in response to this Complaint;

12) the previous owner of these domains, until after June 7^th, is a competitor of Complainant;

13) Respondent told Complainant in a phone conversation that Jeffrey Lahprenda gave the disputed domain names to Dean Pannell because he feared the NAF would rule against him;

14)            the disputed domain names were registered in bad faith, with the specific intention of preventing competitors from reflecting their trademarks in a corresponding domain name;

15)            Mr. Lahprenda has also registered the domain names of many furniture wholesalers and retailers, such as <igotflexa.com>, <igotashleyfurniture.com>, <igotstanleyfurniture.com>, <igotgautier.com>, <igotpalliser.com>, and <igotbarndoorfurniture.com>;

16)            the former owner, Mr. Lahprenda, (original Complaint Respondent) has demonstrated a pattern of registering domain names of competitors to prevent competitors from reflecting their trademarks in a corresponding domain name;

17)            when Mr. Lahprenda found out Complainant was filing a Complaint against him, he gave the disputed domain names to Respondent; and 

  

18)            the webpage, as of June 17^th, on the disputed domain names makes it clear that Respondent’s sole interest in the domain names is to inconvenience Complainant on behalf of his friend, Complainant’s competitor, Mr. Lahprenda.

B. Respondent

Respondent contends that:

1)             Complainant's first Rooms to Dream Trademark Application, limited in scope to retail sales of children's furniture was filed on November 7, 2002, seven months after the disputed domains were originally registered;

2)            Complainant's second Rooms to Dream Trademark Application, limited to children's lamps was filed on April 14, 2003, claiming first commercial use on February 18, 2002;

3)            Complainant's Trademarks are thin in grant, generic in nature, and vulnerable to contest;   

4)            "Rooms to Dream" or similar phrases are already used in other commercial contexts such as by The Plaza Luzern Hotel and Martha Stewart Kids;

5)            Complainant's Trademarks are so new and so generic no reasonable basis exists to conclude that consumers would expect that <roomstodream.com> or <roomstodream.net> are associated with Complainant;

6)            Complainant's Trademarks, if valid, are thinly assigned to market segments whereas URL’s do not recognize divisions in market segment or geography;

            7)            the disputed pages clearly transmit a valid non-commercial political message, specifically, that cyber-squatting regulations and statutes are being abused to deny legitimate domain name holders of their rights;

8)            the disputed pages all contain a very clear disclaimer that the websites are not associated with Complainant in any way and that Respondent neither sells nor buys Complainant’s furniture;

9)            Respondent's history of using the web for legitimate political expression is a matter of public record, and his present use of the disputed domain names is completely consistent with that record; 

10)            the original registration of <roomstodream.com> and <roomstodream.net> was made in good faith by the original registrant for the permissible purpose of establishing a website presence for his furniture business;

11)            the subsequent failure of the original registrant's business to develop as planned has no bearing on his original intent;

12)     Complainant had neither applied for a Trademark on Rooms to Dream or used the phrase in commerce when the domain names were initially registered;

13)            Mr. Lahprenda, the original registrant, has conveyed all interest in the disputed domain names to Respondent who is acting on solely on his own behalf, for his own demonstrated and permissible interests.

FINDINGS

1.      Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain names are identical and/or confusingly similar to marks in which Complainant has rights.  Policy ¶4(a)(i).

2.      Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interests in respect to the domain names. Policy ¶4(a)(ii).

3.      Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain names have been registered and are being used in bad faith. Policy ¶4(a)(iii).

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 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.

A chronological review of relevant events disputed and undisputed (as noted), will set the stage for the analysis and decision that follows.

CHRONOLOGY OF RELEVANT EVENTS[1]

5/10/99            Complainant Files TM Application ● PJ KIDS (Classes 16, 20, 28)

7/26/99          Complainant Files TM Application ● PJ KIDS (Class 25) [ITU Application – in 2^nd Extension Period]

7/17/01          Complainant’s Mark ● PJ KIDS ● Registered (Classes 16, 20, 28) USPTO #2,470,339

4/7/02            Domain Name <roomstodream.com> created/registered by Respondent’s alleged predecessor in interest

4/27/02          Domain Name <igotpjkids.com> created/registered by Respondent’s alleged predecessor in interest

5/2/02            Domain Name <roomstodream.net> created/registered by Respondent’s alleged predecessor in interest

6/3/02            Complainant Files TM Application ● PJ KIDS (Class 27, 11)

11/7/02          Complainant Files TM Application ● Rooms to Dream (Class 35) [Claiming First Use 2/3/03]

11/18/02        Complainant Claims First Use ● Rooms to Dream (Class 11)  [Disputed]

2/3/03                        Complainant Claims First Use ● Rooms to Dream (Class 35)

3/4/03            Complainant’s Mark ● PJ KIDS Registered (Classes 27, 11) USPTO #2,693,168

4/14/03          Complainant Files TM Application ● Rooms to Dream (Class 11) [Claiming First Use 11/18/02]

2/24/04          Complainant’s Mark ● Rooms to Dream Registered (Class 11) USPTO #2,816,787

6/13/04          Complainant’s Mark ● Rooms to Dream Registered (Class 35) USPTO #2,863,415

Identical and/or Confusingly Similar

            Respondent does not dispute that Complainant owns U.S. Registered Trademarks for PJ KIDS (USPTO #’s 2,470,339; 2,193,168) and ROOMS TO DREAM (USPTO #’s 2,816,787; 2,863,415).  Said registrations are live and presumptively valid.  See 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 presumption.)       Complainant thus ‘has rights’ in them.  Policy ¶ 4(a)(i).  Respondent has presented no credible, sufficient evidence to rebut this presumption.

Respondent’s <roomstodream.com> and <roomstodream.net> domain names are identical to Complainant’s ROOMS TO DREAM U.S. Registered Mark except for the addition of “.com” and “.net” respectively which is irrelevant for purposes of this analysis.  The fact that the domain names include a top level domain designation is irrelevant in determining whether the domain names are identical to the mark.  See Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com."); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

Respondent’s <igotpjkids.com> domain name is likewise identical to Complainant’s PJ KIDS U.S. Registered Mark except for the prefix “I got”.  The addition of a general expression merely signifying possession of the Mark and/or what it stands for is clearly insufficient to dispel the identity and/or confusingly similarity between Complainant’s Mark and Respondent’s domain name.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also 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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Although Respondent contends that Complainant’s Marks are “thin in grant, generic in nature, and vulnerable to contest,” Respondent has failed to produce evidence and/or citation and/or argument sufficient to permit any serious consideration of such contentions.  Neither Respondent, nor its alleged predecessor in interest saw fit to oppose any of Complainant’s four U.S.P.T.O. Trademark Applications, though they had constructive, if not actual, notice of same and ample opportunity to do so.

Respondent’s disclaimers are inadequate to dispel the confusion.  See Ciccone v. Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).

Under these circumstances, Complainant has met its burden of proof to prove by a preponderance of the credible, relevant, admissible evidence that all three of Respondent’s domain names are identical and/or confusingly similar to Marks in which Complainant has rights.

Rights or Legitimate Interests

            Respondent claims that it has rights or legitimate interests in the three domain names because (1) its alleged predecessor in interest registered/created the <roomstodream.com> and <roomstodream.net> domain names before any Trademark Applications were filed or actual use for such a Mark by Complainant and registered same in good faith to further his furniture business that ultimately did not develop as planned. [(Policy ¶ 4(c)(i)]; and (2) that its site merely conveys a non-commercial, political message. [(Policy ¶ 4 (c)(iii)].

            Respondent, on this record, has failed to demonstrate that it is in fact a successor in interest to one who used or made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services prior to notice of this dispute and does not itself claim that it did so.  Thus, Respondent may not rely on Policy ¶ 4(c)(i) to establish its rights or legitimate interests.[2]

            Although Respondent has cleverly posted a brief, one-page somewhat veiled diatribe against Complainant and the ICANN system, such is, under all circumstances of this case, insufficient to demonstrate by a preponderance of the evidence that it is actually “... making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.”  Policy ¶ 4(c)(iii).  If this singular, simple act alone by a respondent were sufficient to establish “rights and interests,” it would render Policy ¶ 4(a)(ii) a very low hurdle indeed.  Neither the drafters of the Policy nor logic intended or permit such a result.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant…is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark); see also Sears, Roebuck & Co. v. Hanna Law Office, D2000-0669 (WIPO Sept. 8, 2000) (finding a high degree of initial interest confusion, where consumers would be easily confused, when a Respondent registers a domain name that is identical to a Complainant’s mark for an otherwise fair use). 

            Respondent gives no explanation whatsoever for his selection/use of these particular domain names though he acknowledges that they were transferred to him by the previous registrant who was in the same business as Complainant.  Likewise, he does not dispute that this transfer occurred shortly after Complainant filed an initial ICANN Complaint against the prior registrant. 

            Complainant has sufficiently proven that Respondent has no rights or legitimate interests in the domain names.

Registration and Use in Bad Faith

            Respondent has not disputed Complainant’s contentions regarding the prior registrant of the domain names, such as, that he is a competitor of Complainant, that he transferred the domain names to Respondent after an initial ICANN Complaint was filed against him because he thought he would lose an arbitration, and that he has improperly registered many other domain names incorporating the marks of other competitors.  (Complainant’s Contentions #13, 15, 16, and 17 above).

           

            Respondent has produced no evidence to support his contention that the domain names were registered in good faith or to counter the well plead contentions of Complainant.  Respondent does not even attempt to explain his own registration and/or receipt of transfer of the domain names.

Further, at least as to the <igotpjkids.com> domain name, there is no doubt that Complainant applied for (5/16/99 and 7/26/99) and was granted Registration (7/17/01) of the PJ KIDS Mark long before Respondent’s alleged predecessor in interest created/registered the <igotpjkids.com> domain name. (4/27/02).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

Respondent does not deny that there was no use whatsoever of the domain names until after an initial Complaint was filed against the previous registrant.  Such inactivity and rapid response posting of such insubstantial matter alone is sufficient evidence of “use” in bad faith. 

Complainant has sufficiently proven that the domain names were registered and are being 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 <roomstodream.com>, <roomstodream.net> and <igotpjkids.com> domain names be TRANSFERRED from Respondent to Complainant.

M. Kelly Tillery, Esquire, Panelist

Dated: August 23, 2004

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