WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Graco Childrens Products Inc. v. Domains Ventures

Case No. D2006-0598

 

1. The Parties

The Complainant is Graco Childrens Products Inc., Exton, Pennsylvania, United States of America, represented by Schiff Hardin LLP, Chicago, Illinois, United States of America.

The Respondent is Domains Ventures, Fujian, China.

 

2. The Domain Name and Registrar

The disputed domain name <graycobaby.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2006, by e-mail and on May 16, 2006, in hard copy. On May 12, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 12, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2006.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on June 30, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The trademark upon which the Complaint is based is GRACO. According to the contentions submitted by Complainant, Graco Childrens Products Inc. is in the business of manufacturing babies’ and children’s products and related accessories, and has marketed and sold its products under the GRACO marks in the United States since at least as early as 1955 and for many years in various other countries around the world.

Complainant has owned the <gracobaby.com> domain name since at least as early as April 3, 1996. Complainant provides information about the company and its products through its website at “www.gracobaby.com”. An independent survey on Complainant was conducted by the Panel by visiting the Complainant’s website, where additional information about Graco Childrens Products Inc. and its line of products was obtained (access on July 12, 2006).

According to documentary evidence and contentions submitted by Complainant, Complainant is the owner of at least the following trademark registrations (reference is made to Annexes 2 and 3 to the Complaint):

Mark

Country

International Class

Registration Date

Reg. No.

GRACO

USA

9,12,18,20,21,28

2004-08-10

2,871,521

GRACO

USA

20,28

1975-12-23

1,027,977

GRACO(stylized)

USA

12,20,28

1985-11-05

1,368,853

GRACO

CHINA

20

1994-08-21

702,965

According to documentary evidence on the records and the contentions submitted by Complainant, Respondent registered the disputed domain name on October 1, 2003, and its website purports to provide links to information about Complainant’s products, its competitors’ products, general information links, and pop up advertisements. An independent survey was conducted by the Panel by visiting the Respondent’s website at “www.graycobaby.com”, and the Panel confirmed the contentions submitted by Complainant (access on July 12, 2006).

 

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name is substantially and confusingly similar to the GRACO trademark and is nearly identical to Complainant’s <gracobaby.com> domain name because both “graco” and “grayco” look and sound substantially the same.

Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, because Respondent has never been commonly known under any business as “Grayco Baby”, Respondent’s name bears no similarity or connection with the disputed domain name, and Complainant has never granted Respondent any explicit or implied license or consent to use the GRACO trademark or the <graycobaby.com> domain name. Complainant also argues that use of that domain name has no legitimate purpose because Respondent is trading on and profiting from Complainant’s reputation and goodwill.

Finally, Complainant contends that Respondent is a serial cybersquatter and has shown a pattern of conduct of violating the URDP, having been the subject of at least two other UDRP proceedings for nearly identical conduct as in this case. Complainant further argues that Respondent clearly registered the disputed domain name in bad faith because Respondent was aware of the GRACO marks, and intentionally misdirects members of the public to its own website, thereby causing confusion in Complainant’s customers, and attempts to attract, for commercial gain, Internet users.

In accordance with paragraph 4(b)(i) of the Policy, Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Effect of the Default

The consensus view in WIPO UDRP panel decisions is that a respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not implausible will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

Complainant’s basic contention is that both “graco” and “grayco” look and sound substantially the same because: (i) Respondent merely adds a silent “y” to its domain name, and (ii) “grayco” is a word that sounds the same as, and is the phonetic equivalent to, GRACO. Complainant relies on Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728, where the panel found that, despite the existing variations, there is a close similarity both aurally and visually between respondent’s <bangolusen.com> and <bagolufsen.com> domain names and the BANG & OLUFSEN trademark.

In fact, Complainant’s contention that both “graco” and “grayco” are substantially similar words in appearance is clearly warranted. Complainant’s argument in relation to phonetic similarity is also warranted. In addition, the word “baby” is used to describe Complainant’s goods and Complainant’s domain name <gracobaby.com> also adopts the same word. Therefore, the Panel finds that the disputed domain name is confusingly similar to the GRACO trademark. It is also nearly identical to Complainant’s domain name.

In the Panel’s view, this case may be considered a “typosquatting” case where the disputed domain name is a slight variation from a registered trademark. In fact, the <graycobaby.com> domain name comprises the Complainant’s GRACO trademark and <gracobaby.com> domain name with a slight variation: the silent “y”. As a result, this is an example of confusing similarity brought about through easily made typing errors made by an Internet user: rather than typing the word “graco”, an Internet user could easily type “grayco”, which is phonetically equivalent, and be diverted to a different website.

The Panel takes into account previous WIPO UDRP decisions relating to the practice of “typosquatting” where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. This is a point well-established in UDRP domain name case law. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.

The Panel accepts Complainant’s contentions that Respondent’s domain name is in all likelihood intended to attract customers and members of the public searching for Complainant’s website for information about its family of baby products, and creates consumer confusion as to any affiliation of, or endorsement by, Complainant of Respondent’s site.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

Complainant further argues that Respondent, which is called “Domains Ventures”, has no rights to or legitimate interests in the disputed domain name.

The consensus view in the WIPO URDP Panel decisions has been that a complainant is required to make out an initial prima facie case, the respondent then carrying the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel accepts as reasonable Complainant’s contentions that Respondent has never been commonly known under any business as “Grayco Baby”, and that Complainant has never granted Respondent any explicit or implied license or consent to use the GRACO trademarks. The Panel also finds that Respondent’s name – “Domains Ventures” – bears no similarity or connection to the disputed domain name.

In addition, Complainant contends that the “www.graycobaby.com” website offers, among other things, advertising and links for competitive products including baby furniture, swings and strollers as well as information about competing retailers. Complainant relies on My Diamond Place, Ltd. v. Domains Ventures, WIPO Case No. D2005-1276, a case involving the same respondent, where the panel found it inconceivable that the respondent would have any rights or legitimate interests in the use of a domain name that is strictly identical to a trademark in connection with the marketing of competing products.

The Panel concurs with such opinion and finds that Respondent has no rights or interests in a domain name that bears no relationship with Respondent’s name, is confusingly similar to the GRACO trademark and is nearly identical to Complainant’s domain name, and resolves to a website that provides links to Complainant’s products, to competitors’ products, and to pop up advertisements.

In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

Complainant contends that Respondent is a serial cybersquatter and has shown a pattern of conduct of violating the URDP, having been the subject of at least two other UDRP proceedings for nearly identical conduct as in this case.

Complainant relies on My Diamond Place, Ltd. v. Domains Ventures, cited above, and on Winshape Centre, Inc. v. Domains Ventures, WIPO Case No. D2005-0885. In both cases, Respondent’s disputed domain names differed from marks to which complainants had valid rights only in inessentials, and in both cases the panel ordered the transfer of the disputed domain name to the complainant.

The Panel finds that the Respondent has a history of registering and using domain names in bad faith, and that Respondent also registered the domain name <graycobaby.com> in bad faith. In the circumstances, the Panel considers it highly unlikely that Respondent would not be aware of the GRACO trademark when registering the disputed domain name.

In addition, the act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration and use. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107, citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. The Panel concurs that this is the correct approach.

In addition, this Panel takes the view that the content of a website (whether it is similar or different to the business of a trademark owner) is relevant in the finding of bad faith registration and use. This is so because where a potential visitor, after typing in a confusingly similar domain name, reaches the website offering for sale goods and services that are in direct competition with those of the trademark owner’s <gracobaby.com> domain name, there is an implied act of fraud (unfair competition), which is clear evidence of bad faith.

Finally, the Panel accepts Complainant’s contentions that Respondent’s domain name is, in all likelihood, clearly intended to attract customers and members of the public searching for Complainant’s website for information about its family of baby products, and creates consumer confusion as to possible affiliation of, or endorsement by, Complainant of Respondent’s site.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <graycobaby.com> be transferred to the Complainant.

Manoel J. Pereira dos Santos
Sole Panelist

Dated: July 14, 2006