Marine Toys for Tots Foundation v. Jim Gayles, a.k.a James Gales; Signature Payment Systems

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Marine Toys

for Tots Foundation v. Jim Gayles

Case No.

D2001-0088

1. The Parties

Complainant is Marine Toys

for Tots Foundation ("Complainant" or "Marine Toys"), a

New York not-for-profit corporation located at 715 Broadway Street, P.O. Box

1947, Quantico, Virginia 22134 USA.

Respondent is Jim Gayles

aka Jim Gales dba Signature Payment Systems ("Respondent" or "Gayles")

with a mailing address at P.O. Box 8254, Fort Meyers, Florida 33916 USA.

2. The Domain Name(s)

and Registrar(s)

The domain name at issue

is "toysfortots.com" (the "Domain Name"). The registrar

is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar

Park Drive, Herndon, Virginia, 20170 USA.

3. Procedural History

On January 18, 2001, the

WIPO Arbitration and Mediation Center (the "Center") received a copy

of the Complaint via email. On January 22, 2001, the Center received hardcopies

of the Complaint. On January 23, 2001, the Center sent an Acknowledgment of

Receipt of Complaint to Complainant.

On January 26, 2001, after

the Center sent a Request for Verification to the Registrar requesting verification

of registration data, the Registrar confirmed, inter alia, that it is

the registrar of the Domain Name and that the Domain Name is registered in the

Respondent's name.

The Center verified that

the Complaint satisfies the formal requirements of the ICANN Uniform Domain

Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform

Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

On January 29, 2001, the

Center advised the Complainant that it had tendered insufficient fees. On February

5, 2001, the Center received additional fees from the Complainant.

On February 6, 2001, the

Center sent a Notification of Complaint and Commencement of Administrative Proceeding

to the Respondent together with copies of the Complaint with Amendment, with

a copy to the Complainant. This notification was sent by the methods required

under paragraph 2(a) of the Rules.

On March 2, 2001, the Center

advised Respondent that it was in default for failing to file its Response.

No Response has been received.

On March 6, 2001, after

the Center received a completed and signed Statement of Acceptance and Declaration

of Impartiality and Independence from Richard W. Page (the "Sole Panelist"),

the Center notified the parties of the appointment of a single-arbitrator panel

consisting of the Sole Panelist.

4. Factual Background

Complainant, through its

predecessors, is the owner of all intellectual property rights in and to the

TOYS FOR TOTS service mark and owns U.S. Registration No. 1,680,712 for TOYS

FOR TOTS in connection with "soliciting donations for use in purchasing toys

for distribution to children by the United States Marine Corps Reserve" and

U.S. Registration Nos. 1, 929,756 and 1,946,913 for TOYS FOR TOTS in connection

with "charitable fundraising services."

In connection with its

TOYS FOR TOTS service mark, Complainant solicits donations for use in purchasing

toys for needy children during the holiday season. Complainant, through its

predecessors, has used the TOYS FOR TOTS mark since at least 1948, and, through

substantial and sustained advertising efforts, has endowed the mark with great

value. The date of first use for the TOYS FOR TOTS mark, October 1, 1948, is

well before the creation date of the disputed domain name, that is - March 2,

1998.

Complainant maintains a

significant presence on the Internet through its website located at "toysfortots.org".

Gayles had only limited

authority to use Complainant’s TOYS FOR TOTS mark, pursuant to licensing agreements

with Complainant, subject to Complainant’s express approval, for terms that

expired on January 1, 1999, March 1, 1999, and February 1, 2000, respectively.

On February 27, 1998, Gayles

entered into a licensing agreement with Complainant for a term from March 3,

1998 until January 1, 1999. This agreement authorized Respondents to use TOYS

FOR TOTS in association with corporate sponsorship activities, marketing, promotion

and a webpage only for the term of the contract. Respondents agreed that

Complainant had the right to review and approve uses of TOYS FOR TOTS, and expressly

acknowledged that Complainant "is the right owner of the name and logo

‘Toys for Tots’." The licensing agreement signed by Respondents contained

a merger clause providing that "[t]his agreement represents the entire

understanding of the parties."

On June 4, 1998, Gayles

entered into a substantially similar licensing agreement with Complainant for

a term from June 4, 1998 until March 1, 1999. This licensing agreement also

provided that Respondents’ authority to use TOYS FOR TOTS expired with the agreement,

that Complainant had the right to review and approve Respondents’ uses of TOYS

FOR TOTS and that Respondents acknowledged Complainant’s ownership of the TOYS

FOR TOTS name and logo.

By letter dated March 11,

1999, Complainant informed Respondents that their continued use of TOYS FOR

TOTS was unauthorized under the initial licensing agreement and demanded that

they cease all use of TOYS FOR TOTS, and that they make royalty payments due

under that agreement.

Gayles replied by telephone

on March 16, 1999, requesting additional time to use the TOYS FOR TOTS mark.

On March 21, 1999, as a result of Gayles' request for additional time to use

the TOYS FOR TOTS mark, Complainant and Gayles entered into a third licensing

agreement substantially similar in terms to the first two licensing agreements,

with a term from March 22, 1999 until February 1, 2000.

On January 29, 2000 Complainant

received an email from "Jean" at "ToysForTots@aol.com",

apparently on behalf of Respondents, indicating that "we are looking into

the possible sale of the web page domain name."

Complainant has tried repeatedly

by email, mail, telephone, and facsimile to reach Respondents since February

2, 2000. Aside from a telephone call from J. Gayles in mid-February, 2000, indicating

that the Signature Group had been sold to William Pringle of Brainstormers Inc.

in the Fall of 1999 and providing inaccurate contact information, Complainant

has heard nothing from Respondents.

By certified letters dated

June 22, 2000, and August 16, 2000, counsel for Complainant informed Gayles

that his continued unauthorized use of "toysfortots.com" violated

Complainant’s rights and demanded that Gayles transfer the domain name to Complainant.

Complainant has received no response.

5. Parties’ Contentions

A. Complainant contends

that it has numerous registrations of the service mark TOYS FOR TOTS. Complainant

further contends that the Domain Name is identical with and confusingly similar

to the TOYS FOR TOTS mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that

Respondent has no rights or legitimate interest in the Domain Name pursuant

to the Policy paragraph 4(a)(ii).

Complainant contends that

Respondent registered and is using the Domain Name in bad faith in violation

of the Policy paragraph 4(a)(iii).

B. Respondent failed

to contest Complainant’s assertion that it has numerous registrations in the

TOYS FOR TOTS mark or that the Domain Name is identical with and confusingly

similar to the mark.

Respondent failed to contest

Complainant’s assertion that Respondent has no rights or legitimate interest

in the Domain Name.

Respondent failed to contest

Complainant’s assertion that Respondent registered and used the Domain Name

in bad faith.

6. Discussion and Findings

Paragraph 15(a) of the

Rules instructs the Panel as to the principles the Panel is to use in determining

the dispute: "A Panel shall 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."

Since both the Complainant

and Respondent are domiciled in the United States, and since United States’

courts have recent experience with similar disputes, to the extent that it would

assist the Panel in determining whether the Complainant has met its burden as

established by Paragraph 4(a) of the Policy, the Panel shall look to rules and

principles of law set out in decisions of the courts of the United States.

Even though Respondent

has failed to file a Response or to contest Complainant’s assertions, the Sole

Panelist will review the evidence proffered by Complainant to verify that the

essential elements of the claims are met.

Paragraph 4(a) of the Policy

directs that the Complainant must prove each of the following:

i) that the domain name

registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and,

ii) that the Respondent

has no legitimate interests in respect of the domain name; and,

iii) that the domain

name has been registered and is being used in bad faith.

Identical or Confusing

Similarity

Complainant contends that

it has numerous registrations of the service mark TOYS FOR TOTS and that its

registrations are valid and subsisting and serve as prima facie evidence

of its ownership and the validity of the TOYS FOR TOTS mark. 15 U.S.C. § 1115.

Complainant’s registrations are incontestable and conclusive evidence of Complainant’s

ownership of the mark and exclusive right to use the mark in connection with

the stated services. 15 U.S.C. §§ 1065 and 1115(b).

Respondent has not contested

the assertions by Complainant that it has valid registrations of the TOYS FOR

TOTS mark. Therefore, the Sole Panelist finds that Complainant, for purposes

of this proceeding, has enforceable rights in the TOYS FOR TOTS mark.

Complainant further contends

that the Domain Name is identical with and confusingly similar to the TOYS FOR

TOTS service mark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested

the assertions by Complainant that the Domain Name is confusingly similar to

the TOYS FOR TOTS mark.

The Sole Panelist notes

that the entirety of the TOYS FOR TOTS mark is included in the Domain Name.

Generally, a user of a

mark "may not avoid likely confusion by appropriating another's entire mark

and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy,

McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).

The deletion of the spaces between the words in the mark is not distinctive.

Therefore, the Sole Panelist

finds that the Domain Name is confusingly similar to the TOYS FOR TOTS mark

pursuant to the Policy paragraph 4(a)(i)

Rights or Legitimate

Interest.

Complainant contends that

Respondent has no rights or legitimate interest in the Domain Names pursuant

to the Policy paragraph 4(a)(ii).

Respondent was granted

a series of licenses to use the TOYS FOR TOTS mark. The most recent of these

licenses expired on February 1, 2000. Therefore, Respondent has no relationship

with or permission from Complainant for the use of the TOYS FOR TOTS mark.

The Policy paragraph 4(c)

allows three nonexclusive methods for the Sole Panelist to conclude that it

has rights or a legitimate interest in the Domain Name:

(i) before

any notice to you [Respondent] of the dispute, your use of, or demonstrable

preparations to use, the domain name or a name corresponding to the domain name

in connection with a bona fide offering of goods or services; or

(ii) you [Respondent]

(as an individual, business, or other organization) have been commonly known

by the domain name, even if you have acquired no trademark or service mark rights;

or

(iii) you [Respondent]

are making a legitimate noncommercial or fair use of the domain name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the

trademark or service mark at issue.

The file contains no evidence

that the use of the Domain Name meets the elements for any of the nonexclusive

methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist

finds that Respondent has no rights or legitimate interest in the Domain Name

pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that

Respondent registered and is using the Domain Name in bad faith in violation

of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b)

sets forth four nonexclusive criteria for Complainant to show bad faith registration

and use of domain names:

(i) circumstances

indicating that you have registered or you have acquired the domain name primarily

for the purpose of selling, renting, or otherwise transferring the domain name

registration to the complainant who is the owner of the trademark or service

mark or to a competitor of that complainant, for valuable consideration in excess

of your documented out-of-pocket costs directly related to the domain name;

or

(ii) you have

registered the domain name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name, provided

that you have engaged in a pattern of such conduct; or

(iii) you have

registered the domain name primarily for the purpose of disrupting the business

of a competitor; or

(iv) by using

the domain name, you have intentionally attempted to attract, for commercial

gain, Internet users to your website or other on-line location, by creating

a likelihood of confusion with the complainant's mark as to the source, sponsorship,

affiliation, or endorsement of your website or location or of a product

Complainant has not shown

the presence of any of the criteria set forth in the Policy paragraph 4(b).

The four criteria set forth

in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited

v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these

criteria, other factors alone or in combination can support a finding of bad

faith.

Inaction

Complainant alleges that

Respondent is not making legitimate noncommercial or fair use of the domain

name "toysfortots.com". In fact, the website to which the Domain Name

resolves is not in use, but leads only to a disabled webpage.

One such factor is that

Respondent has made no use of the Domain Name. Complainant alleges that Respondent

has not developed any active website at "www.toysfortots.com" or made

any other use of the Domain Name "toysfortots.com". See Telstra

Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).

In Telstra it was

established that registration together with "inaction" and other facts can constitute

bad faith use, and the Telstra decision has since been cited for

that proposition and followed by subsequent Panels. Ingersoll-Rand v.

Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain,

S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp.

v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and

Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada,

dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi

Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case

No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112;

InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

To quote a prior Panel

decision, "[B]ecause Respondent is contributing no value-added to the Internet

-- it is merely attempting to exploit a general rule of registration -- the

broad community of Internet users will be better served by transferring the

domain name to a party with a legitimate use for it." Educational Testing

Service v. TOEFL, ICANN Case No. D2000-0044.

See also, Leland

Stanford Junior Univ. v. Zedlar Transcription & Translation,

FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v.

Yosef, D2000-0468 (WIPO July 27, 2000) (citing cases where panel found

inaction constitutes bad faith).

In World Wrestling

Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case

No. D2000-0290 (June 20, 2000) the Panel made a finding of bad faith

based on the fact that the domain name website had not been developed, stating

"the concept of a domain name being used in bad faith is not limited to positive

action; inaction is within the concepts." Id. at 10.15. See also, Mondich

v. Brown, WIPO Case No. D00-0004 (February 16, 2000) (bad faith evidenced

by "failure for a substantial period of time to make good faith use of the domain

name for [respondent's] business");

In the present case, the

Domain Name was registered on March 2, 1998. The Domain Name has not yet been

used for any legitimate purpose. The lack of any legitimate, good faith use

suggests bad faith.

Actual or Constructive

Knowledge

A second factor found to

support a finding of bad faith is Respondent’s knowledge of the Complainant’s

mark. Respondent was a licensee of this mark for several years and has actual

knowledge of its existence.

Furthermore, Respondent

registered the "toysfortots.com" Domain Name on March 2,1998, long

after Complainant registered the TOYS FOR TOTS mark. Respondent had constructive

notice of the TOYS FOR TOTS mark, as a trademark search on the date of the registration

of the Domain Name would have revealed Complainant’s registration of the TOYS

FOR TOTS mark in the United States.

Actual or constructive

knowledge of the Complainant’s rights in the trademark is a factor supporting

bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137

(WIPO April 18, 2000); Document Technologies v. International Electronic

Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondent’s knowledge

of complainant’s mark at the time of registration of the domain name suggests

bad faith).

Failure to Respond to Requests

to Transfer

A third factor is Respondent’s

refusal to voluntarily transfer the contested Domain Name. Complainant alleges

that substantial communications took place with Respondent. Since the expiration

of the license to use the mark, Respondent has failed to respond to Complainant

and had refused Complainant’s requests to transfer the Domain Name.

The evidence establishes:

(i) inaction by Respondent in the use the Domain Name to post any content on

the Internet or for any other legitimate purpose; (ii) actual and constructive

knowledge by Respondent of Complainant’s rights in the mark upon the registration

of the Domain Name; and (iii) Respondent’s failure to positively respond to

Complainant’s request for transfer. Based upon this evidence, the Sole Panelist

finds that Complainant has shown sufficient facts to support a finding that

the Domain Name was registered and used in bad faith pursuant to the Policy

paragraph 4(a)(iii).

7. Decision

The Sole Panelist concludes

(a) that the Domain Name "toysfortots.com" is confusingly similar

to Complainant’s registered service mark TOYS FOR TOTS, (b) that Respondent

has no rights or legitimate interest in the Domain Name and (c) that Respondent

registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs

4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain

Name be transferred to the Marine Toys for Tots Foundation.

Richard

W. Page

Sole Panelist

March 20,

2001