The Complainant is KidKraft, L.P. of Dallas, Texas, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whoisguard Protected/Whoisguard Inc., of Panama / Hiram Wilson, of Gosnells, Australia.
The disputed domain name <buykidkraft.com> (the “domain name in dispute”) is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2015, originally involving another two domain names. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 16, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 24, 2015, removing the other two domain names and keeping the domain name in dispute.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2015.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 26, 2015. 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.
The Complainant’s evidence is that it is the owner of trademark registrations for the mark KIDKRAFT in various jurisdictions. Since at least 1973 it has extensively and continuously used the mark KIDKRAFT to design, develop and distribute toys and children’s furniture.
Evidence of the Complainant’s trademark rights are set out at Annex 1 to the Complaint consisting of printouts from the United States Patent and Trademark Office (“USPTO”) database, the Canadian Intellectual Property Office database, the Office for Harmonization in the Internal Market (“OHIM”) database and the Australian Trademark Online search system. The relevant marks are listed in the Complaint as follows:
|
TRADEMARK |
JURISDICTION TM OFFICE |
REGISTRATION NUMBER |
IC CLASS |
|
KIDKRAFT |
United States |
2554736 |
35 |
|
KIDKRAFT |
United States |
2980495 |
20, 28 |
|
KIDKRAFT |
United States |
2980497 |
20, 28, 35 |
|
KIDKRAFT & Design |
Canada |
TMA605504 | |
|
KIDKRAFT |
Canada |
TMA680420 | |
|
KIDKRAFT |
Europe |
CTM 001539360 |
35 |
|
KIDKRAFT |
Europe |
CTM 003829793 |
20, 28, 35 |
|
KIDKRAFT |
Australia |
1043775 |
20, 28, 35 |
|
KIDKRAFT |
Australia |
1043776 |
20, 28, 35 |
The Complainant is a leader in the toy and children’s furniture industries. It was established in 1968 in Dallas, Texas, United States. It specialises in toys that are inventive, interactive and educational. It is well-known for its play kitchens, dolls houses, doll furniture and train sets. In addition to toys the Complainant also specialises in children’s furniture such as chairs, tables, train tables, vanities and beds. The Complainant’s products are designed by a team of dedicated engineers who focus on making each product as safe, sturdy and durable as possible ensuring that the toys and furniture can be passed from one generation to the next. In addition to its own mark KIDKRAFT the Complainant also designs and develops toys and furniture for private labels.
The Complainant is known worldwide and its website is available in five languages for global use. At Annex 5 to the Complaint are set out screenshots of the Complainant’s website.
The Complainant is well-known and admired across the world, having been recognized for its excellence by numerous organisations. In 2014 the Complainant was awarded a gold medal from the “Independent Toy Awards UK” in the “role of play category” for its modern kitchen island. It has also obtained multiple additional honours and awards over the years including for example being named the “Toys R Us” vendor of the year in both 2004 and 2005. The Complainant has also worked closely with companies such as “Hello Kitty”, the “PGA Tour” and “Nickelodeon”. Examples of the awards are set out at Annex 7 to the Complaint.
The Complainant submits that the mark KIDKRAFT has come to be known worldwide to represent the highest quality in wooden toys and children’s furniture and as a result of its popularity and success in the market place the mark has become a “famous mark” that consumers immediately associate with the Complainant and its goods and services.
In support of its evidence the Complainant relies upon an affidavit made by Mr. John Walker, Chief Financial Officer of the Complainant which is set out at Annex 10 to the Complaint.
At Annex 9 to the Complaint are set out copies of cease and desist letters and emails sent to the Respondent requesting the domain name in dispute as a result of its registration and use (together with two other domain names which were the subject of the earlier un-amended Complaint) be transferred to the Complainant. The Complainant asserted that the Respondent’s registration and use of the domain names should be viewed “as an attempt to illegitimately divert traffic to the Respondent’s site” and is in contravention of the Policy. There is no evidence of a reply from the Respondent to this correspondence.
The domain name in dispute was registered on December 22, 2014 and was previously used to host a website that prominently featured the KIDKRAFT mark while posting images of the Complainant’s train table product. The domain name in dispute is currently inactive.
In the absence of a Response the Panel finds the unchallenged evidence submitted by the Complainant to be true. The Panel proceeds to determine this Complaint on the basis of the Complainant’s evidence.
The Complainant contends:
1. The Complainant is the owner of relevant trademark rights and that the domain name in dispute is identical and/or confusingly similar to the mark KIDKRAFT.
2. The Respondent has no rights or legitimate interests in the domain name in dispute for the following reasons:
(i) The Respondent is not commonly known by the domain name in dispute;
(ii) The Respondent is not making a bona fide offering of goods or services using the domain name in dispute;
(iii) The Respondent is currently using the domain name in dispute to redirect Internet users to a blank website.
3. The domain name in dispute was registered and is being used in bad faith, and in particular:
(i) The Respondent has intentionally targeted the Complainant’s trademark rights;
(ii) The domain name in dispute currently resolves to an inactive site and passively holding a domain name can constitute a factor in finding registration and use in bad faith;
(iii) The domain name in dispute can only be taken as intending to cause confusion amongst Internet users as to its source;
(iv) The Respondent employed a privacy service to hide its identity;
(v) The Respondent has ignored the Complainant’s cease and desist letters.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds that the Complainant has trademark rights in the mark KIDKRAFT in accordance with the evidence submitted in the amended Complaint and the evidence of trade mark registrations set out to Annex 1 to the Complaint.
The Panel notes that the domain name in dispute has added to it the generic descriptive term “buy”. In the Panel’s view the use of the term “buy” underscores and increases the confusing similarity between the domain name in dispute and the trademark KIDKRAFT. It is essentially a word encouraging the purchase of goods utilizing the mark KIDKRAFT.
Accordingly the Panel finds that the domain name in dispute is identical and/or confusingly similar to the Complainant’s mark KIDKRAFT.
The Panel has seen no evidence that the Respondent is commonly known by the domain name in dispute.
The Panel also finds that the Respondent is not making a bona fide offering of goods or services in respect of the domain name in dispute. In particular the Panel has considered Annex 3 to the Complaint which consists of screenshots of the Respondent’s website showing use of the domain name in dispute. Given the products sold by the Complainant, this in the Panel’s view is clear evidence of the fact that the Respondent is not making a bona fide offering of goods or services under the domain name in dispute.
The Panel also finds that the Respondent is currently using the domain name in dispute to redirect Internet users to a website that resolves to blank pages and lacks content. It resolves to a blank website featuring text that reads, in part, “Sorry. If you are the owner of this website please contact your hosting provider: []@buykidkraft.com”.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.
In demonstrating bad faith the Complainant relies upon the fact that the domain name in dispute was registered using the mark KIDKRAFT whilst adding the generic term “buy”. The Respondent has therefore created a domain name that is confusingly similar to the Complainant’s trademark.
The evidence of use set out at Annex 3 to the Complaint demonstrates that the Respondent had a knowledge of and familiarity with the Complainant’s brand and business and had therefore intentionally made use of the Complainant’s trademark rights.
The Complainant argues that the domain name in dispute was used in such a way that it can only be taken as intending to cause confusion among Internet users as to the source of the domain name in dispute. This is established by the composition of the domain name in dispute as well as use of images from the Complainant’s website and the mark KIDKRAFT. The Panel accepts this evidence of bad faith use.
It is also noted that the domain name in dispute currently resolves to an inactive site as referred to above. It is long established practice that passive holding does not as such prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2.
Moreover, the Panel in accordance with previous UDRP decisions referred to by the Complainant finds that the Respondent’s failure to respond to the cease and desist correspondence constitutes a further indicator of bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the domain name in dispute in bad faith pursuant to the Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs (4)(i) of the Policy and 15 of the Rules, the Panel orders that the domain name in dispute <buykidkraft.com> be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Date: September 4, 2015