Geobra Brandstatter GmbH & Co. KG v. Only Kids, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Geobra Brandstätter GmbH & Co KG v. Only Kids Inc

Case No. D2001-0841

1. The Parties

The Complainant is Geobra Brandstätter GmbH & Co. Kg, a corporation, with its principal place of business in Zirndorf, D-90513, Germany ("Complainant"). The Complainant is represented by Michael J. Brown of Curtis, Mallet-Prevost, Colt & Mosle LLP, 101 Park Avenue, New York, NY 10178, United States of America.

The Respondent is Only Kids, Inc., a corporation with a mailing address of 4760 Poplar Avenue, Memphis, Tennessee 38117, United States of America ("Respondent"). The Respondent is represented by Frank Jackson, of LawTennessee.com, 232 S. Highland, Suite 1202, Memphis, TN 38111, United States of America.

2. The Domain Names and Registrar

The domain names on which the Complaint is based are <playmobil.net>, <playmobile.com>, <playmobilusa.net> and <playmobileusa.com>.

The registrar with which the domain names are registered is Network Solutions of 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on June 30, 2001, and in hard copy on July 2, 2001.

3.3 Following verification of the registration of the domain names and other details with the Registrar on July 6, 2001, the Center completed its formal requirements compliance checklist on July 9, 2001.

3.4 On July 9, 2001, the Center notified the Respondent of the Complaint and the commencement of administrative proceedings by email, facsimile message and in hardcopy.

3.5 A Response from the Respondent was received by the Center on July 26, 2001 (by email) and on July 27, 2001 (in hardcopy).

3.6 On July 31, 2001, the Complainant requested permission to submit a reply to the Response and on August 15, 2001, the Respondent requested that the Complainant’s request be denied.

3.7 On August 27, 2001, the parties were notified of the appointment of the administrative panel comprising Professor Staniforth Ricketson (presiding member) and Professor William Cornish and Mr. Tim Casey (panelists), with a projected decision date of September 13, 2001.

3.8 On September 3, 2001, the Panel made a procedural order (Procedural Order

No. 1) giving the Complainant permission to submit a reply to the Response within

4 days of receipt of the order and giving the Respondent a further four days

from this to submit a further response to the reply. Upper word limits of 2,400

words were set for both documents, and the Panel extended its projected decision

date to September 20, 2001.

3.9 Pursuant to Procedural Order No. 1, the Center and Panel received a further

submission from the Complainant on September 7, 2001. An additional response

from the Respondent was not received until September 14, 2001. This was out

of the time limits set by Procedural Order No. 1, but the Panel accepts this

late filing in view of the national emergency that affected the USA on and after

September 11, 2001.

3.10 In light of the above, the Panel finds that

- The Complaint was filed in accordance with the requirements of the Rules

and the WIPO Supplemental Rules.

- The Respondent was properly notified of the Complaint and the Response was

also filed in accordance with the Rules.

- The reply to the Response and the response to the reply were properly filed

in accordance with Procedural Order No. 1 in the proceeding.

- The Panel was correctly constituted.

- The Panel has jurisdiction over the parties and the subject matter of this

dispute.

3.11 On the basis of the above documents, the Panel now proceeds to determine

the dispute.

4. Factual Background

4.1 The Complainant is a German company that manufactures and distributes children’s

toys and related goods. It is the owner of a number of trade and service marks

registered for and used on a wide variety of goods and services, but most notably

children’s toys and related goods. These include the marks PLAYMOBIL, PLAYMOBIL

FUNPARK, PLAYMOBIL FIRST SMILE and PLAYMO among others, but most important for

the purposes of the present proceeding is the PLAYMOBIL mark, which is the subject

of registrations in Germany, the USA and under the Madrid Agreement (Complaint,

Exhibit C). The earliest of these (in Germany and Madrid) date back to 1990,

but the others also appear to predate the registration of the domain names that

are in issue in the present proceeding. There are also registrations in a wide

number of other countries (Complaint, Exhibit E). It appears further from the

Complaint (page 4) that the mark PLAYMOBIL has been used for a considerable

period prior to 1990 (from around 1974) as the house mark of the Complainant’s

group of companies. In particular, it should be noted that the Complainant has

a US subsidiary, Playmobil USA Inc ("PUSA").

4.2 The Respondent is a Tennessee-based corporation that has sold toys from

its Memphis headquarters since 1989, and has done so through its internet retail

division (OnlyTOYS.com) since 1995 (Response, page 6). It has been an authorized

retail distributor of the Complainant’s products since 1989.

4.3 According to the WHOIS database of Network Solutions, the Respondent is

listed as the Registrant of the each of the disputed domain names, Stephen P.

Arnold of Only Kids is listed as the administrative and billing contact, and

Hostmaster, WebnetOnline, is listed as the technical contact. (Complaint,Exhibit

A). The registrations of the domain names were effected at different times:

- <playmobile.com> – record created May 9, 1997, last updated May 6,

2000, expires May 10, 2004

- <playmobil.net> – record created April 17, 2000, last updated June

28, 2001, expires April 17, 2002

- <playmobilusa.net> – record created May 31, 2000, last updated May

10, 2001, expires May 31, 2002

- <playmobileusa.com> – record created 31 May 2000, last updated May 10, 2001,

expires 31 May 31, 2002.

4.4 It appears that the Respondent had earlier registered the domain name <playmobil.com>

(in 1995), but transferred this to the Complainant in 1997 (Response, page 5).

It is alleged by the Respondent (but denied by the Complainant) that the registration

of <playmobil.com> and the later registration of <playmobile.com>

was made with the consent and support of the Complainant as part of the Respondent’s

operations in building up the Internet side of its business. Subsequently (from

around late 1999), the Complainant has requested that the domain names held

by the Respondent should be transferred to it, and the Respondent has refused

to do so. Ultimately, the present proceeding was initiated by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant seeks transfer to it of each of the domain names listed above,

PLAYMOBIL; in support of this contention, addresses each of the elements described

in paragraph 4(a) of the Policy as follows.

- With respect to the element described in paragraph 4(a)(i), the Complainant

submits that the disputed domain names are identical or confusingly similar

to its registered trade mark.

- With respect to the element described in paragraph 4(a)(ii), the Complainant

submits that there is no evidence of any right or legitimate interest by the

Respondent in the domain names. It states that the Respondent, as a retailer

selling the Complainant’s goods, has been aware of the Complainant’s trade marks

at all times. It states further that there is no evidence that the Respondent

has used, or has made any demonstrable preparations for use of the trade marks

PLAYMOBILE, PLAYMOBILUSA or any variations thereof for any purpose other than

as a domain name for the Respondent’s separately identified business or to identify

the Complainant’s goods sold by the Respondent. It also asserts that the Respondent

has not been commonly known by the Domain Names and that any such use by the

Respondent would be a direct and willful infringement of Complainant’s registered

marks.

- With respect to the element described in paragraph 4(a)(iii) of the Policy,

the Complainant submits that the Respondent has registered and used the domain

names in bad faith. It repeats its allegation that the Respondent has throughout

been aware of the Complainant’s marks. It further alleges that the Respondent

originally registered the domain name <playmobil.com> and transferred

it to the Complainant only after the Complainant had objected to such registration

and had threatened legal action. It alleges further that at the time of the

transfer, the Respondent did not advise the Complainant that it had also registered

the <playmobile.com> domain name, and that, while there were disputes

between the parties in 1999-2000 about their retailing arrangements, the Respondent

registered the other domain names (<playmobil.net>, <playmobilusa.net>

and <playmobileusa.com>). The Complainant also alleges that, at the date

of the Complaint, the <playmobile.com> and <playmobileusa.com> domain

names show a link to a web site www.playmobileclassaction.com which presents

the consumers with a negative impression about the Complainant and has no valid

relationship to the Respondent’s business. It alleges further that the Respondent

uses its <playmobile.com> domain name to encourage consumers to complain

to the general manager of PUSA about the Complainant’s internet retail policy,

with which the Respondent does not agree and that this has created a public

image problem for the Complainant (Complaint, Exhibits I). Finally, it asserts

that the Respondent is using the <playmobile.com> domain name to sell

and offer other goods that compete directly with the Complainant’s goods and

that are sold under other companies’ trade marks.

B. Respondent

The Respondent denies each of the above contentions in turn.

- As to the element described in paragraph 4(a)(i), the Respondent agrees that

the Domain Names are comprised of the Complainant’s marks or misspellings thereof,

but denies that "most Internet users are or should be confused" because

of the care which the Respondent takes on its web page to identify the nature

of its own business, to draw attention to the correct spelling of the Complainant’s

mark, and to disclaim any association with the latter other than as a retailer

of its goods.

- As to the element described in paragraph 4(a)(ii), the Respondent argues

that the domain names were registered with the Complainant’s consent and encouragement

and were used to develop the Respondent’s online business and, in so doing,

to benefit the Complainant in that the Respondent at all times has made it clear

that it is distributing the Complainant’s genuine trade marked goods. In so

doing, the Respondent argues that it has invested heavily in the domain names

and has done this with the full support of the Complainant until changes in

management of PUSA occurred in 1999.

- As to the element described in paragraph 4(a)(iii), the Respondent asserts

that its registration and use of the disputed domain names has been in good

faith at all times, repeating here the same arguments concerning the Complainant’s

consent that are set out under the preceding dot point. It also stresses that

at all times it has not sought to confuse consumers, but has clearly identified

that the goods it sells are the "genuine" trade marked goods of the

Complainant and that its site is not associated with the Complainant.

6. Discussion and Findings

By way of introductory remarks, the Panel notes that the present proceeding

is part of a more far-reaching and continuing dispute between the parties as

to the Complainant’s policy on the Internet retail selling of its products.

There are possible issues arising as to the interpretation of contracts, the

application of antitrust laws and the scope of registered trade mark protection

under US law that this Panel is not competent to settle. Its only concern here

is with the disputed Domain Names and the question of whether the Complainant

can bring its case within the requirements of the ICANN Policy. The Panel therefore

has nothing to say, one way or other, on the respective merits of the wider

dispute between the parties. In relation to the disputed domain names, however,

the Panel’s task is quite clear: the Complainant has the burden of demonstrating

each of the three elements set out in paragraph 4(a) of the Policy:

6.1 That the complainant has rights in a trade or service mark with which the

respondent’s domain name is identical or confusingly similar

As noted in paragraph 4.1 above, the Complainant has provided evidence of its

registrations, both in the USA and elsewhere of trade and service marks comprising

the word "PLAYMOBIL" and other phrases incorporating that word. These

are registrations that precede the registration of the disputed domain names

by a number of years. Accordingly, the Complainant has established (and this

is admitted by the Respondent) that it clearly has "rights in a trade or

service mark" for the purposes of the first part of paragraph 4(a)(i).

The next question is whether the disputed domain names are identical or confusingly

similar to the Complainant’s marks. In this regard, <playmobil.net> is

clearly identical to the trade mark PLAYMOBIL (leaving aside the suffix .net),

while the addition of the "e" in <playmobile.com> is sufficient

to make it confusingly similar, particularly since "mobile" is the

equivalent in English of the German "mobil". In this regard, it should

be noted that there are numerous prior Panel decisions where minor differences

of spelling and punctuation have nonetheless been held to make a domain name

confusingly similar to a trade or service mark: see, for example, World Wrestling

Federation Entertainment Inc v Michael Bosman, WIPO

Case No. D99-0001 (January 14, 2000) (<worldwrestlingfederation.com>

and WORLD WRESTLING FEDERATION) and InfoSpace.com, Inc v Registrar Administrator

Lew Blanck, WIPO Case No. D2000-0069

(April 3, 2000) (<wwwinfospaces.com> and INFOSPACE). It is beside

the point here for the Respondent to suggest that there is no confusion on the

part of Internet users once they have accessed the <playmobile.com> web

page, because this clearly indicates the nature of the site and services that

are offered there. For the purposes of making the comparison required by paragraph

4(a)(i), the Panel is required to compare the disputed domain name and the trade

or service mark alone, and not to take account of extraneous circumstances of

usage that may be relevant to other parts of the Policy. Accordingly, the Panel

concludes that the domain name <playmobile.com> is confusingly similar

to the registered trade and service mark PLAYMOBIL.

In the case of the remaining two domain names, the question is whether the

addition of the suffixes "usa" and "eusa" are sufficient

to prevent the likelihood of confusing similarity arising. Here, it is relevant

to note that the opening and striking component of both domain names and marks

is "PLAYMOBIL…" and this tends to overwhelm the suffixes. Ultimately,

this is a matter of impression, but it is worth noting that many WIPO panels

have held that confusion is still likely when a distinguishing word is added

to the principal element of a well known mark. E.g., America Online, Inc.

v Tirona, WIPO Case No. D2001-0645 (ICQSELL

and ICQ); Professional Golfers of America v Baldwin, WIPO

Case No. D2000-0339 (PGA and PGADEALS). See also Jordan Grand Prix Ltd

v Gerry Sweeney, WIPO Case No. D2000-0233.

In the present proceeding, the Panel reaches the conclusion that the last two

domain names are confusingly similar to the Complainant’s registered trade and

service marks.

6.2 That the Respondents must be shown to have no rights or legitimate interests

in the Domain Name

Paragraph 4(c) of the Policy sets out certain matters to which a Respondent

can point as demonstrating rights or legitimate interests in a disputed domain

name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the 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 (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 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."

In the present proceeding, it appears that the principal domain name that the

Respondent has used is <playmobile.com>, which has been registered since

early 1997 and that the remaining three domain names were registered in 1999

as part of the growing dispute between it and the Complainant.

So far as <playmobile.com> is concerned, it seems clear that this domain

name has been used throughout by the Respondent for the "offering of goods,"

namely the genuine trade marked goods of the Complainant that have been supplied

to the Respondent as a retailer. Paragraph 4(c)(i) does not say that these goods

have to be those of the domain name holder as a manufacturer or wholesaler or

even as a trade mark licensee, simply that there is a "offering of goods,"

which obviously occurs whenever a user accesses the website. As to whether such

an offering is "bona fide," however, is a different matter, and would

appear to largely turn on whether the use was authorized. It may be that there

are possible arguments as to whether this use of the domain name constitutes

an infringement of the Complainant’s US trade mark rights, but the answer to

that question also partially depends on whether the use was authorized. It is

worth noting that other WIPO panels have determined that the right to retail

the goods of another does not grant the retailer broader rights than necessary,

Caterpillar, Inc. v Globe Tex, Inc., WIPO Case

No. D2001-0448. There has been extensive argumentation between the parties

as to whether this expansive usage of Complainant’s trademarks was authorized,

or even encouraged, by the Complainant, in the period up to 1999. This is a

complicated factual issue and, as a general matter of principle, the Panel would

be prepared to hold that, if it were clear that the Complainant had objected

to this use of the domain name throughout the period 1997-1999, this would not

give the Respondent a basis for arguing that it had "rights or legitimate

interests" in the domain name. In this regard, the Panel is keenly aware

that, at this time, the phenomenon of "cybersquatting" was a very

recent development, that consideration of this issue by national courts was

in its infancy, and that the ICANN dispute resolution procedures did not begin

until 2000. In these circumstances, trade mark owners were often unclear as

to how to proceed against someone who had registered a domain name that incorporated

their trade mark, particularly when that person was a distributor with whom

they had longstanding commercial arrangements. On the facts presented here,

however, it is not clear what the Complainant’s attitude to the Respondent’s

registration and use of the domain name was. The following matters are relevant

here:

- Prior to June 1997, there had been discussions between the parties as to

the transfer from the Respondent to the Complainant of the domain name <playmobil.com>

and it seems that this was effected in that month. This indicates that the Complainant

was obviously aware of the importance of having a domain name that corresponded

exactly to its registered trade and service marks.

- Shortly before this, the Respondent had registered <playmobile.com>

and there is a suggestion that this was brought to the attention of the officers

of the Complainant’s subsidiary, PUSA: Response, Exhibit B. [There is an allegation

by the Complainant in its Reply that this document was altered by the Respondent

so as to highlight the reference there to <playmobile.com>, but the Panel

accepts the explanation of the Respondent that this change occurred in the course

of adapting the document from one electronic format to another]. There are similar

suggestions that this occurred in other documents that went to the Complainant,

but these are passing references and there is no express evidence produced by

the Respondent of the Complainant’s consent and authorization.

- There was a course of dealings between the Respondent and the former president

of PUSA in which it is suggested that the latter agreed to, and even encouraged,

the development and use of the <playmobile.com> domain name. These dealings

are now disowned by the Complainant on the basis, among other things, that PUSA

and its officers did not have authority to bind the Complainant. It further

appears that it has not been possible to obtain evidence from the former officer

to confirm or deny the Respondent’s version.

- In any event, express objection does not seem to have been made to the use

of the domain name by the Respondent until late 1999, following a change of

management in PUSA and a change of policy with respect to Internet selling by

the Complainant.

As noted above, these raise complex factual issues which could only be authoritatively

determined by litigation in which the various pieces of evidence can be tested

in the course of cross-examination. In proceedings such as the present, the

Panel is unable to do this, nor can it determine the various legal issues (contractual,

trade mark and otherwise) that are raised by the parties. All that it can do

is to draw inferences from the material that has been presented to it, and these

are as follows:

- The Respondent was aware, in 1997, that the Complainant was concerned about

domain names containing the registered trade and service mark (as evidenced

by the transfer of <playmobil.com>).

- The Respondent registered the English-language domain name <playmobile.com>

shortly before the transfer of the other domain name.

- It is far from clear that this action was brought explicitly to the attention

of the Complainant and PUSA.

- There is no direct evidence of encouragement to use the disputed domain name

from PUSA or the Complainant.

- The Respondent was not in the position of an exclusive distributor or exclusive

licensee of the Complainant’s trade and service marks.

- The Complainant may not have objected expressly to the use of the domain

name during the period 1997-1999, but it was far from clear what course of action

was available to it, apart from the expensive option of litigation, and the

WIPO dispute option did not become available until the beginning of 2000.

The above inferences also relate to the question of bad faith, which is considered

below, but in the present context the Panel concludes that there is insufficient

evidence to show that the Respondent has "rights or legitimate interests"

in the domain name within the circumstances described in paragraph 4(c)(i).

In reaching this conclusion, it notes that at least one other Panel has reached

a contrary conclusion on a similar set of facts, but it appears that in that

proceeding there was clear evidence of the Complainant’s approval of the Respondent’s

website over a period of years: Weber-Stephen Products Co. v Armitage Hardware,

WIPO Case No. D2000-0187.

The Panel has also considered whether the Respondent might have rights or legitimate

interests in the domain name within either of the other two sub-paras of paragraph

4(c). In relation to paragraph 4(c)(ii), there is no evidence that the Respondent

was known by the name "Playmobile:" it is quite clear that it advertised

itself as "Only Kids" and that this was the name under which it carried

on business. As regards paragraph 4(c)(iii), while there is some suggestion

that the Respondent was using the domain name to direct consumers to the Playmobil

class action site, as well as directing them to complain to the actual website

of the Complainant, these uses seem to have occurred after the Complainant objected

to the Respondent’s use of the domain name, and can therefore be disregarded

for present purposes.

With respect to the other domain names, playmobil.net>, <playmobilusa.net>

and <playmobileusa.com>, the Panel does not find any evidence of use of

these names for any of the purposes outlined in paragraph 4(c) and therefore

there is no basis here on which the Respondent can point to rights or legitimate

interests in those names. However, the matters referred to in paragraph 4(c)

are not an exhaustive statement of what may constitute rights or legitimate

interests in a domain name, and it is open to a Respondent to point to other

evidence that may show this. In the present proceeding, all the Respondent has

done is to suggest that these registrations were made in the course of its dispute

with the Complainant during 2000 and were made as some kind of "defensive"

measure. This kind of reason, however, provides no basis for establishing any

right or "legitimate interest" in these domain names, and the Panel

therefore finds that the Complainant has also made out its case with respect

to these three domain names.

6.3 That the Respondent registered and is using the Domain Name in bad faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel

to be present, shall be evidence of registration and use of a domain name in

bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] 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 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 your web site or location

or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration

and use of the domain name in bad faith are required. Of the factors

listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration

(and acquisition) of the name, while (iv) relates to use following registration.

However, in view of the fact that these factors are stated to be inclusive,

it follows that there can be other factors that can be relied upon to point

to bad faith, both in registration and in use. In this regard, it is worth noting

an early decision of an Administrative Panel to the effect that registration

in bad faith followed by a passive holding of a domain name when there is no

way in which it could be used legitimately can amount to use in bad faith: Telstra

Corporation Ltd v Nuclear Marshmallows WIPO

Case No. D2000-0003. In addition, it would be both mistaken and artificial

to confine paragraphs (i)-(iii) solely to the time of registration: presumably,

it would also be a use of a disputed domain name in bad faith to do so, after

registration, with one of the purposes outlined in those paragraphs. Support

for this view is to be found in several Panel decisions: see, for example, Estee

Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO

Case No. D2000-0869 and E & J Gallo Winery v Hanna Law Firm,

WIPO Case No. D2000-0615.

For ease of analysis, it is preferable to consider the situation separately

with (i) the domain name <playmobile.com>, and (ii) the remaining domain

names.

playmobile.com

There is no evidence of, or any allegation relating to, the matters referred

to in paragraph 4(b)(i).

The possibility, however, arises that there was bad faith registration and

use falling within paragraph 4(b)(ii). The facts relating to the timing of the

registration of <playmobile.com> have already been referred to above.

However, it appears that the Respondent has also registered as domain names

words that are part of the well known trade and service marks of other toy manufacturers.

Thus, the Complaint, Exhibit L, refers to the registration of <muffybear.com>

in the Respondent’s name since January 13, 1999, and notes that the word mark

MUFFY has been registered in the US with respect to toys by the North American

Bear Co, Inc, since 1994 and the word mark MUFFY VANDERBEAR since 1986. Likewise,

the domain name <dardacars.com> has been registered in the Respondent’s

name since November 10, 1997, while the word mark DARDA has been registered

in the US since 1990. It seems that toys from these manufacturers and bearing

the genuine trade marks are also offered online by the Respondent under the

disputed domain name. These two other domain name registrations provide some

evidence of a "pattern of conduct" consisting of the intentional registration

of domain names to prevent the owner of trademarks or service marks from reflecting

their mark in a corresponding domain name. However, this evidence postdates

the registration of <playmobile.com>, and while it might be evidence of

a "pattern of conduct" in the case of MUFFY and possibly DARDA, it

cannot therefore be said that the intention specified in paragraph 4(b)(ii)

was present at this earlier time.

So far as paragraph 4(b)(iii) is concerned, there is no evidence that the purpose

of the registration of the domain name was primarily to disrupt the business

of a competitor: at that stage, the Respondent was an authorized retailer of

the Complainant, and it does not appear that the Complainant was then contemplating

online distribution of its products. At the time of registration, this would

therefore not have disrupted the Complainant’s business but would rather have

enhanced it, through the greater flow of orders received from customers. This

situation has now changed, and the parties are competitors in the relevant sense,

but this change of circumstance cannot assist in establishing, in a retrospective

manner, what was the intention of the Respondent at the time of registration.

So far as paragraph 4(b)(iv) is concerned, there is evidence of confusion on

the part of consumers that the Respondent’s web page is that of the Complainant,

but the web page makes it clear that it is not that of the Complainant and,

in any event, there is no question that the Respondent only supplies the genuine

trade marked goods of the Complainant. It is possible that there is some adverse

reflection on the Complainant’s business activities by the references to the

class action and the exhortation to complain to PUSA about the Complainant’s

Internet retailing policy, but this does not represent a tarnishment of the

Complainant’s mark within the meaning of paragraph 4(b)(iv).

It needs to be recalled, however, that the matters listed in paragraph 4(b)

are inclusive only; there may be other matters that go to establish the bad

faith registration and use requirement under paragraph 4(a)(iii). In this regard,

the Panel is keenly aware that the parties are locked in a bitter and complicated

dispute about their retailing and supply arrangements, where issues of fact

and motive are hotly contested. Nonetheless, it has identified above in its

discussion of paragraph 4(b)(ii) of the Policy a number of matters that tend

to show that the Respondent does not have any rights or legitimate interest

in the domain name and that also are relevant when considering questions of

bad faith. Thus, in the context of registration, it seems too much of a coincidence

that the Respondent registered <playmobile.com> just before it transferred

the German domain name to the Complainant. Furthermore, while the evidence on

this question is strongly disputed, it is not clear that the Complainant was

fully aware of this second registration. More generally, it is not clear why

the Complainant would want the <playmobile.com> domain name when (a) it

has its own distinctive domain name and web page, and (b) was able to use the

PLAYMOBIL trade mark, in any event, to refer to the goods that it had for sale

as part of its online catalogue. At the end of the day, the issue appears to

depend on who one believes, and since the Panel is left with the impression

that the Respondent has not been completely forthright in its conduct with respect

to the <playmobile.com> domain name and its explanation of the facts,

the Panel chooses to believe the Complainant. Quite apart, then, from the specific

matters listed in paragraph 4(b), the Panel concludes that the overall conduct

of the Respondent in registering and using the <playmobile.com> domain

name meets the bad faith requirements of paragraph 4(a)(iii).

The remaining domain names

The Panel concludes that the registration and use of these names was also done

in bad faith and, in particular, falls within the circumstances described in

paragraph 4(b)(ii) and (iii). So far as sub-para (iii) is concerned, it notes

that, as these registrations occurred in 2000, the prior "pattern of conduct"

required by this sub-para in relation to the other registrations is clearly

established.

Conclusions

The Panel finds that the Complainant has established its case with respect

to each of the elements stated in paragraph 4(a) of the Policy and with respect

to each of the disputed domain names.

7. Decision

The Administrative Panel accordingly directs that the registrations of the

domain names <playmobile.com>, <playmobil. net> , <playmobilusa.net>

and <playmobileusa.com> should be transferred to the Complainant.

Staniforth Ricketson

Presiding Panelist

William R. Cornish

Panelist

Timothy Casey

Panelist

Dated: September 20, 2001