[Indexed as:
Car Toys v. Informa]
[Indexed as:
Cartoys.com]
The National
Arbitration ForumAdministrative Panel DecisionCase NoFA0002000093682 Judgment:
20 March, 2000
Presiding
Panelist: Marilyn W. Carney Senior United States Judge (Ret.)
Domain name Domain name dispute resolution policy Trademark Servicemark Identical Confusingly similar Bad faith Legitimate interest Good faith use Associated business Fanciful name Secondary meaning Famous name
The Complainant
is Car Toys, Inc., a Washington corporation located in Seattle, WA.
Car Toys, Inc. operates a business of selling automobile accessory products
and services and has been using the CAR TOYS trademark since 1987.
Car Toys, Inc also has the domains for cartoys.com and cartoys.org.
Respondent
Informa Unlimited, Hollywood, FL, registered the cartoys.net domain name
with Network Solutions on July 30, 1998. They acquire domain names for
the purpose of developing business uses and selling them to interested
parties.
Held,
Name Not Transferred.
Car Toys,
Inc. has not proven that Informa has no legitimate interests in respect
of the domain name cartoys.net. The CAR TOYS trademark is not fanciful
or arbitrary, and Car Toys has submitted no evidence to establish either
fame or strong secondary meaning in its mark such that consumers are likely
to associate cartoys.net with CAR TOYS. The arbitrator finds, therefore,
that Informa has rebutted Car Toys arguments and has shown that it is
in the business of selling descriptive domain names such as cartoys.net.
As a result, Informa does have a legitimate interest in the domain name.Furthermore,
Informas Floridanow.com website specifically states that cartoys.net is
not affiliated with CAR TOYS of Seattle, WA.
Informa
sent Car Toys an e-mail outlining terms for sale or lease of the name,
and also offered to work with Car Toys as a special affiliate and/or linking
relationship. That Informa has offered to sell this domain name to
Complainant after inquiry by Complainant does not make its interest illegitimate.
Policies
referred to
Uniform
Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision
referred to
Carney, Panelist:
-
This is a
DOMAIN NAME dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution
Policy (the "Policy"). Marilyn W. Carney, Arlington, VA, was assigned as
the Arbitrator to make the decision.
For the reasons
explained below, the arbitrator has determined that the domain name should
not be transferred to the Complainant.
1.
The Domain name
This dispute
concerns the domain name cartoys.net. The registrar for this domain name
is Network Solutions, Inc.
2.
The Parties
The Complainant
is Car Toys, Inc., a Washington corporation located in Seattle, WA. According
to the Complaint, Car Toys, Inc. operates a business of selling automobile
accessory products and services and has been using the CAR TOYS trademark
to identify a wide range of electronic and other kinds of products used
in this field since 1987.
Respondent
Informa Unlimited, Hollywood, FL, registered the cartoys.net domain name
with Network Solutions on July 30, 1998. The record indicates they acquire
domain names for the purpose of developing business uses and selling them
to interested parties.
3.
Factual Background
Complainant
Car Toys, Inc. is represented by counsel and has submitted its position
along with documentary evidence in support of its position. Information
from the U.S. Patent and Trademark Office indicates that Car Toys, Inc.
is the holder of the trademark/servicemark CAR TOYS. Car Toys, Inc also
has the domains for cartoys.com and cartoys.org.
Informa is
in the business of acquiring domain names of common words for development
and sale. Their business plan is to offer diverse groups that are interdependent
but can evolve with shared links, resources, etc. Informa is not represented
by counsel.
4.
The Parties Allegations
Car Toys maintains
that cartoys.net is identical in sight, sound and appearance to their registered
trademark; they also demanded that Respondent transfer the registration
of the cartoys.net domain name as soon as they learned of its existence.
They also allege that Informa has not developed a website using the domain
name at issue or made any other good faith use of the domain name. Additionally,
they maintain that the disputed domain name could not be identified with
or related to a legitimate interest of Respondent.
On October
22, 1999, counsel for Car Toys sent a letter to Informa outlining their
position and insisting that Informa immediately discontinue use of the
disputed domain name. On October 28, 1999 Informa sent Car Toys an e-mail
outlining terms for sale or lease of the name, and also offered to work
with Car Toys as a special affiliate and/or linking relationship.
Included in
this e-mail of October 22, 1999, Informa provided a partial list of names
which they currently had registered. They included names such as TOYS4ME.COM,
FORSAIL.NET, 4SAIL.NET and others with common words as well as some suggested
business names.
Informa maintains
that its business plan is to set up networks of associated businesses (hence
the .net) and has already developed some networks. Also, their Floridanow.com
website specifically states that cartoys.net is not affiliated with CAR
TOYS of Seattle, WA.
They also
note there are companies in existence which use the CAR TOYS name such
as, Car Toys Auto Sound & Security, Inc. of Miami, FL. Finally, they
note that CAR TOYS consists of two words, while cartoys is only one word.
5.
Discussion
Paragraph
4(a) of the Policy provides that, to justify transfer of a domain name,
a complainant must prove each of the following:
(1) that the
domain name registered by the respondent is identical or confusingly similar
to a trademark or servicemark in which the complainant has rights;
(2) that the
respondent has no legitimate interests in respect of the domain name; and
(3) the domain
name has been registered and used in bad faith.
There can
be little question that the domain name cartoys.net is similar to CAR TOYS,
the trademark in which Car Toys, Inc. has rights; nonetheless, whether
or not cartoys.net or CAR TOYS are identical is irrelevant for purposes
of this decision.
Car Toys,
Inc. has not proven that Informa has no legitimate interests in respect
of the domain name cartoys.net. The CAR TOYS trademark is not fanciful
or arbitrary, and Car Toys has submitted no evidence to establish either
fame or strong secondary meaning in its mark such that consumers are likely
to associate cartoys.net with CAR TOYS. Informa has demonstrated that the
name is in use elsewhere. The arbitrator finds, therefore, that Informa
has rebutted Car Toys arguments and has shown that it is in the business
of selling descriptive domain names such as cartoys.net. As a result, Informa
does have a legitimate interest in the domain name. That Informa has offered
to sell this domain name to Complainant after inquiry by Complainant does
not make its interest illegitimate.
Finally, Car
Toys has not shown that Informa has acted in bad faith. On the contrary,
Informa has been more than fair and open with Car Toys. Moreover, they
did not seek to sell the domain name until there was communication between
the parties. These facts do not indicate any bad faith on the part of Informa.
6.
Decision
It is the
decision of this Arbitrator that the cartoys.net domain name should not
be transferred to the Complainant.
Marilyn W.
Carney,
Arbitrator
March 20,
2000
I certify that I have no known conflict of interest to serve as Arbitrator in this case.
Name not transferred