Domain names – Domain name dispute resolution policy – Fictitious business names – Multiple domain names but single owner because domain names do not have separate, recorded existence – No response from Respondent – Respondent successfully dodged service – No participation in dispute resolution by Respondent – Adverse inference drawn against Respondent - Complainant developed successful websites that were popular among children – Complainant’s marks are internationally known – Confusingly similar -Respondent not licensee of Complainant – Respondent linked domain names to web sites containing graphic, adult-oriented material – Likelihood of confusion.

Complainant is the creator of the Beanie Babies line of plush toy products.  Complainant has developed successful web sites in connection with its products, namely “beaniebabies.com” and “ty.com”.  Respondent registered the following domain names: “beaniesbabies.com”, “beanybabies.com”, “beanybaby.com” and “ty.org.”  Complainant’s marks were known throughout the world long before Respondent registered and began to use its domain names. 

Held, Names Transferred to Complainant.

The Panelist was satisfied that all four domain names were registered to and controlled by Respondent.  Since Respondent did not participate in dispute resolution process, it was not disputed that Complainant’s web sites are essentially the same as the Respondent’s domain names, and thus they are confusingly similar to Complainant’s web sites. 

Furthermore, it was not disputed by Respondent that Respondent was not a licensee nor otherwise authorized to use Complainant’s trademarks for any purpose.  Respondent did not offer any evidence to contradict the fact that he was engaged in linking the domain names to two other web sites it owns, both of which contain graphic, adult-oriented material.  This is bad faith use. Further, there is evidence that Respondent has registered other domain names that are identical or confusingly similar to the trademarks of third parties 

Cases referred to:

Adobe Systems Incorporated v. Domain Oz, No. D2000-0057 (WIPO Mar.22, 2000)
Mondich v. Brown, No. D2000-0004 (WIPO Feb.16, 2000)
Yahoo! Inc. v. Eitan Zviely, et al., No. D2000-0273 (WIPO).

Policies referred to:

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.

Panel Decision referred to
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Abel, Panelist:
 

1. The Parties:

Complainant is Ty, Inc., a Delaware corporation whose principal place of business is Oak Brook, Illinois, United States of America ("Complainant").  Respondents are O.Z. Names, ty.org and beanybaby.com, all fictitious business names under the control of Eitan Zviely, an individual, with addresses of P.O. Box 480167, Los Angeles, California 90048, United States of America, and 914 Westwood Blvd. #177, Los Angeles California 90048, United States of America ("Respondent"). 

The Administrative Panel ("Panelist") bases its conclusion that all four domain names are registered to and controlled by Respondent, Eitan Zviely, on the following evidence advanced by Complainant and not refuted by Respondent:  (1) the telephone number provided to NSI for the administrative, billing and technical contact is identical for all four domain name registrations; (b) the domain servers identified for the "ty.org" domain name are the same as that for the "beaniesbabies.com", "beanybabies.com", and "beanybaby.com" domain names; and (c) neither O.Z. Names, "ty.org" nor "beanybaby.com" are registered California corporations, limited liability companies, or otherwise entities that have a separate, recorded existence in California.

2. The Domain Names and Registrar:

The domain names at issue are "beaniesbabies.com", "beanybabies.com", "beanybaby.com", and "ty.org" ("domain names") registered with Network Solutions, Inc. ("NSI") in the United States of America.

3. Procedural History:

Complainant submitted a complaint to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") electronically on May 2, 2000.  The WIPO Center received a hard copy of the complaint on May 4, 2000.
On May 12, 2000, NSI confirmed by e-mail to the WIPO Center that the domain names "beaniesbabies.com", "beanybabies.com", "beanybaby.com", and "ty.org" are registered with NSI and that Respondent is the current registrant of the names.

On May 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "commencement notification"), setting a deadline of June 1, 2000, by which Respondent could file a response to the complaint, was transmitted to Respondent via email, post and courier, and to the entity and person listed on Respondent’s registration as technical, administrative, zone and billing contacts by email. 

On June 5, 2000, having received no response from Respondent, using the same contact details and methods as were used for the commencement notification, the WIPO Center transmitted to the parties a notification of respondent default. 

On June 13, 2000, pursuant to Complainant’s request to have the dispute decided by a single-member panel, the WIPO Center appointed Sally M. Abel as Panelist.

Having reviewed the communications records in the case file, the Panelist found that the WIPO Center had discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panelist shall issue its decision based on the domplaint, the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the WIPO Supplemental Rules, without the benefit of any response from Respondent.

4. Factual Background:

Complainant has provided evidence of registration of the following trademarks:

Trademark Country of Registration Registration Number Date of Registration
BEANIE BABIES United States 2,049,196 Apr. 1, 1997
THE BEANIE BABIES COLLECTION United States 2,080,995 July 22, 1997
BEANIE BUDDIES COLLECTION United States 2,052,465 Apr. 15, 1997
BEANIES Benelux 910966 Nov. 1, 1998
BEANIE BUDDIES Germany 399 52 369 Oct. 18, 1999
BEANIE BUDDIES COLLECTION Germany 399 52 370 Oct. 18, 1999
BEANIES Germany 389 09 233 Mar. 27, 1998
TEENIE BEANIE BABIES  Germany 399 13 516 Apr. 27, 1999
BEANIES  Japan  4324577  Oct. 15, 1999 
BEANIES  Korea  429088  Nov. 11, 1998 
TY  United States  2,118,114  Dec. 2, 1997 
TY and Heart Design  United States  1,722,141  Oct. 6, 1992 
TY COLLECTIBLE and Design  United States  2,121,826  Dec. 16, 1997 
TY COLLECTIBLES  United States  2,123, 995  Dec. 23, 1997 

Complainant is the creator of the Beanie Babies line of plush toy products. Complainant claims that it markets its products throughout the world in connection with its trademarks, sells them only through authorized dealers, and that the products have generated over one billion dollars in sales since their introduction in 1994 (Complaint, Paragraphs 15.3 & 15.4). 

Complainant asserts that it has developed successful web sites in connection with its products, namely "beaniebabies.com" and "ty.com", which have allegedly become among the most popular children’s sites on the Internet (Complaint, Paragraph 15.5). 

Complainant additionally claims that its marks were known throughout the world long before Respondent registered and began to use its domain names (Complaint, Paragraph 15.7). 

Respondent registered the domain names with NSI over the course of four months in 1998: in May he registered the "beaniesbabies.com" and "beanybabies.com" domain names, in July he registered the "ty.org" domain name, and in September he registered the "beanybaby.com" domain name. 

The complaint asserts that “Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainant’s BEANIE or TY marks for any purpose” (Complaint, Paragraph, 15.6). 

Complainant allegedly attempted to resolve this dispute amicably by sending Respondent a letter describing its objections to Respondent’s registration and use of the Domain Names. However, as alleged in the Complaint, “Respondent failed to respond, and Complainant was forced to file suit in federal court. Respondent has successfully dodged service for several months, and Complainant has thus brought this administrative proceeding seeking to have the domains assigned to it” (Complaint, Paragraph 16.5).

5. Parties’ Contentions:
a) Complainant:

The Complaint is sufficient under the notice pleading principles of the United States to allege:   that Respondent has registered domain names which are either identical or confusingly similar to the marks registered and used by Complainant, that Respondent appears to have no rights or legitimate interests in respect to the domain names, and that Respondent appears to have registered and used the domain names in bad faith.

b) Respondent:

Respondent has not contested the allegations of the complaint.

6. Discussion and Findings:

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in deciding the dispute: "A Panel[ist] 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 Complainant and Respondent are domiciled in the United States, the Panelist will look to the rules and the principles of law of the United States.

Pursuant to Paragraph 3(c) of the Rules, "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." The Panelist is satisfied that the domain names are all registered to and under the control of Respondent.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(1) that the domain name registered by Respondent is identical or 
      confusingly similar to a trademark or service mark in which the 
      Complainant has rights; and
(2) that Respondent has no legitimate interests in respect of the domain 
name; and
(3) the domain name has been registered and used in bad faith.

The domain names "beaniesbabies.com", "beanybabies.com", "beanybaby.com" are all confusingly similar to trademarks registered and used by Complainant. The domain name "ty.org" is identical to a trademark registered and used by Complainant. The first requirement of Paragraph 4(a) of the Policy is therefore satisfied.

As to the second requirement, Complainant states that “Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainant’s BEANIE or TY marks for any purpose” (Complaint, Paragraph 15.6). Respondent has failed to advance any evidence that would refute Complainant’s contention or support a finding that it has any legitimate rights in the marks. The second requirement of Paragraph 4(a) of the Policy is therefore satisfied.

As to the third requirement, there is unrefuted evidence of Respondent’s bad faith registration and use of its domain names. The complaint alleges that “Respondent linked the [Domain Names] to two other web sites it owns, 37.COM and MEGAGO.COM, both of which contain graphic, adult-oriented material” (Complaint, Paragraph 16.2). Further, there is evidence that Respondent 1 has registered other domain names that are identical or confusingly similar to the trademarks of third parties, such as "nortonantivirus.com", "adobeacrobat.com" and "acrobatreader.com” (Complaint, Paragraph 16.3; Adobe Systems Incorporated v. Domain OZ, WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case No. D2000-0057, March 22, 2000). 2.  Given these uncontested allegations of bad faith, the third requirement of Paragraph 4(a) of the Policy is therefore satisfied. 

Respondent has failed to respond to the complaint in any way whatsoever. “It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts” (Mondich v. Brown, WIPO Arbitration and Mediation Center, Administrative Panel Decision, Case No. D2000-0004, February 16, 2000).  Respondent’s failure to respond to the complaint allows the inference that the evidence would not have been favorable to Respondent.

7. Decision:

Because the undisputed evidence permits a finding in favor of Complainant on each element of its claim, and there is no evidence to the contrary, the Panelist finds (1) that the domain names registered by Respondent are identical or confusingly similar to Complainant’s marks, (2) Respondent has no rights or legitimate interests in the domain names, and (3) Respondent registered and used the domain names in bad faith.

Accordingly, the Panelist requires that the registration of the domain names "beaniesbabies.com", "beanybabies.com", "beanybaby.com", and "ty.org" be transferred to Complainant.

Dated:  June 27, 2000 Footnotes:
1. Respondent in Adobe Systems Incorporated v. Domain OZ is another fictitious name used by Respondent in this case, Eitan Zviely.
2. The Panelist also notes the decision in Yahoo! Inc. v. Eitan Zviely, et al., WIPO Decision No. D2000-0273, involving 37 YAHOO! formative domain names.