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, Informa’s 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.