Ty Inc. v. The Webshop Company

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Ty Inc.

v. The Webshop Company

Case No.

D2001-0310

1. The Parties

The Complainant in

this administrative proceeding is Ty Inc., a corporation under the laws

of the State of Delaware, with its principal place of business in Oak Brook,

Illinois, USA.

The Respondent in this

Administrative Proceeding is The Webshop Company, a United Kingdom entity

with its principal place of business in Dorchester, United Kingdom.

2. The Domain Names

and Registrar

The disputed domain

name is <beanie-babies.com>. The Registrar of this domain name is

CORE Internet Council of Registrars, of Geneva, Switzerland.

By registering the

subject domain name with the Registrar, the Respondent agreed to the resolution

of dispute pursuant to the Policy and Rules.

3. Procedural History

This is a mandatory

administrative proceeding submitted for decision in accordance with the

Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy, approved by

ICANN on October 24, 1999 (the "Rules") and the World Intellectual

Property Organization ("WIPO") Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative

Panel consisting of three members was appointed on May 2, 2001, by WIPO.

Complainant filed its

Complaint with the World Intellectual Property Organization Arbitration

and Mediation Center (the "Center") on March 2, 2001, by hardcopy

and on March 12, 2001, by email. The Center dispatched to the Registrar

a Request for Registrar Verification on March 12, 2001. An Amendment to

the Complaint was received on March 13 and 15, 2001. The Respondent

did not file a response by the due date. On March 19, 2001, having verified

that the Complaint satisfied the formal requirements of the Policy and the

Rules, the Center formally commenced this proceeding.

An examination of this

material confirms that all technical requirements for the prosecution of

this proceeding were met.

Neither party requested

an opportunity to make further submissions and the Administrative Panel

is content to proceed on the basis of the existing record.

4. Factual Background

The following information

is derived from the Complainant’s material.

The Complainant is

the owner of rights in and to the trademarks BEANIE BABIES, BEANIE BABY,

THE BEANIE BABIES COLLECTION, BEANIE BUDDIES, BEANIE BUDDY, THE BEANIE BUDDIES

COLLECTION, BEANIE BABIES OFFICIAL CLUB, TEENIE BEANIE BABIES, TEENIE BEANIE

BABY, TEENIE BEANIES, TEENIE BEANIE, BEANIES, BEANIE and BEANI ("the

BEANIE BABY marks"), and has obtained the multiple registrations worldwide,

including the following:

Trademark

Country

Registration

Number

BEANI

United Kingdom

2,002,646

BEANIE BABIES

United Kingdom

2,186,737

BEANIE BABIES

United States

2,049,196

THE BEANIE BABIES

COLLECTION

United States

2,080,995

BEANIE BUDDIES

COLLECTION

United States

2,052,465

THE BEANIE BABIES

COLLECTION

CTM

1,016,443

BEANIES

Benelux

910966

BEANIE BABIES

Benelux

928456

THE BEANIE BABIES

COLLECTION

Benelux

928457

BEANIE BUDDIES

Germany

399 52 369

BEANIE BUDDIES

COLLECTION

Germany

399 52 370

BEANIES

Germany

389 09 233

TEENIE BEANIE BABIES

Germany

399 13 516

BEANIE BABIES

Germany

398 70 916

BEANIES

Japan

4324577

BEANIES

Korea

429088

These registrations are valid, subsisting and in full force and effect.

The Complainant is

the creator of numerous successful lines of plush toy products. It markets

these plush toy products in the United Kingdom and throughout the world

and sells them through authorized dealers. Since their introduction in 1994,

the Complainant’s plush toy products have proven to be enormously popular

with children throughout the world.

The Complainant has

sold tens of millions of dollars of its BEANIE BABY products in Europe,

including in the United Kingdom, and in excess of two billion dollars of

these products worldwide.

The Complainant has

spent millions of dollars marketing its plush toy products worldwide under

its marks, including hundreds of thousands of dollars developing and maintaining

the integrity of its web site and thousands of dollars and much effort promoting

its product at United Kingdom trade shows. In addition to its worldwide

marketing efforts, the Complainant has marketed two products exclusively

in the United Kingdom, the BRITANNIA BEANIE BABY and the BRITANNIA BEANIE

BUDDY.

As a result of its

extensive marketing and product sales, the Complainant’s plush toys have

become famous and the Complainant has created a strong market identity in

the United Kingdom and worldwide.

The Complainant also

has developed a presence on the Internet, including its web site accessible

through the address <beaniebabies.com>. Tens of thousands of the site’s

registered users are European and many are from the United Kingdom. These

users are active members of the Complainant’s online community and are frequent

participants in the chat feature of the Complainant’s web site.

The Respondent registered

the subject domain name in December 1997. It has registered other domain

names containing the trademarks of third parties, including <ourpokemon.com>,

<pokemonwebstore.com> and <forpokemon.com>.

The Respondent is not

a licensee of the Complainant and is not otherwise authorized to use the

Complainant’s BEANIE BABY marks for any purposes.

The Complainant has

established its rights in its BEANIE BABIES mark through prior ICANN proceedings.

For example, in WIPO Case No. D2000-0370, the Complainant succeeded

against the registrant of the domain names <beaniesbabies.com>, <beanybabies.com>,

and <beanybaby.com>. In its ruling, the administrative panel found

that these domain names "are all confusingly similar to trademarks

registered and used by the Complainant."

The Complainant also

succeeded in its WIPO Case No. D2000-0688 complaint against the registration

and use of the domain names <ebeaniebaby.com>, <ebeaniebabies.com>,

<ebeanies.com>, and <e-beanies.com>. In its ruling, the administrative

panel found that these domain names "are confusingly similar to the

trademarks in which the Complainant has rights".

At the web site located

through the subject domain name, the Respondent has offered to sell the

domain name to the highest bidder. The Respondent also has attempted to

sell the <beanie-babies.com> domain name to private individuals, including

to one person for £8,000.

The Respondent has

attempted to profit from the subject domain name by attempting to conduct

business and generate Internet traffic. It has used the subject domain name

at various times to link Internet users to its commercial web sites.

As of February 27,

2001, the Respondent was using the subject domain name to link to a third

party web site and using the Complainant’s trademark to advertise an online

travel accommodation reservation management system.

The Respondent used

the Complainant’s BEANIE BABIES trademark in the hidden source code of the

Respondent’s web site, in order to lure Internet users entering that term

into search engines.

5. Parties’ Contentions

A. Complainant

The Complainant relies

on the registration and use of its marks and asserts that the subject domain

name is identical to its marks. It relies in part on previous ICANN administrative

panel decisions to support its contention.

The Complainant says

that the subject domain name is not the name of the Respondent and it cannot

be considered its business name or common trade name. On this basis the

Respondent does not have a legitimate interest in the subject domain name.

As to bad faith, the

Complainant relies on the efforts of the Respondent to sell the subject

domain name, its use of the name for its own commercial interests and on

other similar conduct by the Respondent.

B. Respondent

The Respondent has

asserted no position in this proceeding.

6. Discussion and

Findings

Paragraph 4(a) of the

Policy requires the Complainant to prove that:

(i) the domain

name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights;

(ii) the Respondent

has no rights or legitimate interests in respect of the domain name;

(iii) the

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

Paragraph 4(b)

provides for the implication of evidence of bad faith in a number

of circumstances:

(i) circumstances

that indicate that the Respondent has registered or has 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 the

Complainant, for valuable consideration in excess of the Respondent’s

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

(ii) registration

of 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 the Respondent has engaged in a pattern of such

conduct;

(iii) registration

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

of a competitor;

(iv) by using

the domain name, intentionally attempting to attract, for commercial

gain, Internet users to the Respondent’s web site 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

the web site or location or of a product or service on it or a location.

These are illustrative

and do not represent the only circumstances from which may arise evidence

of bad faith.

The Complainant relies

on factual determination by other ICANN administrative panels. The decisions

of other administrative panels are neither binding on this administrative

panel nor determinative of the factual issues that it must decide, but reference

to them can be of assistance.

The resolution of this

dispute takes place in the context of a consideration of the requirements

of paragraph 4(a) of the Policy.

A. Identical or

Confusingly Similar

The subject domain

name essentially is identical to one or more of the Complainant’s marks.

The administrative

panel is satisfied that the Complainant has met the requirements of paragraph

4(a)(i).

B. Respondents Legitimate

Interest

The subject domain

name does not identify any business or interest of the Respondent. It has

offered no information to support a legitimate interest in the subject domain

name and has offered it for sale.

The administrative

panel is satisfied that the Complainant has met the requirements of paragraph

4(a)(ii).

C. Bad Faith

The Respondent offered

the subject domain name for sale, but there is no evidence that it did so

to the Complainant. It is usual in an ICANN domain name dispute proceeding

to have evidence of a request by a complainant that the respondent cease

and desist using the domain name in issue and often of a demand by a respondent

for payment from a complainant, but, as noted, the examples given in the

policy of conduct from which bad faith can be inferred are not exhaustive.

In this case, the conduct of the Respondent supports an inference that it

registered and used the subject domain name in bad faith.

Evidence of similar

conduct must be approached with caution, but it can support an inference

of bad faith, particularly in the absence of any explanation of the conduct

by a Respondent.

The administrative

panel is satisfied that the Complainant has met the requirements of paragraph

4(a)(iii).

7. Decision

Based on the evidence

and its findings of fact, the administrative panel concludes that the Complainant

has established its case. It asked that the subject domain name be transferred

to it.

The administrative

panel so orders.

Edward C.

Chiasson, Q.C.

Presiding Panelist

Sally M.

Abel

Panelist

Dawn Osborne

Panelist

Dated: May

10, 2001

More cases by this complainant

• Ty Inc. v. Joseph Parvin d/b/a Domains for Sale — D2000-0688 · ebeaniebabies.com, ebeaniebaby.com, e-beanies.com · Transfer · 09 Nov 2000
• Ty Inc. v. O.Z. Names, Eitan Zviely — D2000-0370 · beaniesbabies.com, beanybabies.com, beanybaby.com · Transfer · 27 Jun 2000