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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
dELiA*s Properties, Inc. v. JUSTFORKIDS.COM et al.
Case No. D2000-0459
1. The Parties
Complainant is a Delaware Corporation located at 300 Delaware Ave., 9th Floor Wilmington, Delaware 19801 USA.
Respondents are JustForKids.Com and Greg Ricks located at 26 Center Avenue, Sulphur, Louisiana 70663 USA. Greg Ricks ("Respondent") is the owner and operator of a free web based email service named Yada.Com e-mail, which uses the website justforkids.com.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is justforkids.com (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") whose address is 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on May 19, 2000, via email and via hardcopy on May 22, 2000. The Complainant paid the required fee. The Center sent an Acknowledgment of Receipt of Complaint to Complainant.
On May 22, 2000, the Center sent to the Registrar a request for verification of registration data.
On May 30, 2000, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On June 5, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On June 23, 2000, the Center received the Response and sent an Acknowledgment of Receipt of the Response.
On July 6, 2000, the Complainant sent a request to the Center to be allowed to file a Reply.
After the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
The Sole Panelist advised the Center, which in turn notified the parties, that the Complainant’s Reply would be considered and that any Sur-Reply from Respondents would also be considered.
Thereafter, the Complainant filed a Reply and the Respondents filed a Sur-Reply.
4. Factual Background
Complainant has a registered trademark with the United States Patent and Trademark Office in JUST FOR KIDS (U.S. Reg. No. 1,806,551) which is used for "mail order services in the fields of children's toys, games, books, signs, gifts, clothing."
Complainant admits that, in addition to its trademark, there are 74 registered trademarks using combinations of "just" and "kids" and 10 registered trademarks using the phrase "just for kids."
Respondent registered the domain name justforkids.com without the authorization of Complainant.
Respondent, Greg Ricks, is the owner and operator of a free web based email service named Yada.Com e-mail. This website can be accessed at www.yada.com. When the Yada.Com site is accessed the individual or company can choose from a list of domain names where it desires to receive email. One of the domain names on the list is justforkids.com. In the case of justforkids.com, the email is received by the recipient at the following email address: [name] @Justforkids.com. Currently there are over 3,500 subscribers to the free email address and many of these subscribers use the domain name justforkids.com in their email address. Respondent generates income by allowing advertisers to display their banners when the email recipients visit the website to open or read their mail.
Respondent’s free web based email services has been in the planning and developmental phase for over two years. In anticipation of the operation of the email service, Respondent registered the domain name justforkids.com on November 6, 1999. The web based Yada.Com e-mail service began operation and registered its first user on May 15, 2000. The Complaint in this matter was filed via email on May 19, 2000, and via hardcopy on May 22, 2000. Respondent was not notified of any dispute prior to those dates.
Complainant alleges that Respondent has told at least one third party that the Domain Name is for sale, and that Respondent would be willing to sell the Domain Name in exchange for an equity stake in a start up company.
5. Parties’ Contentions
A. Complainant contends that it has a trademark in JUST FOR KIDS and that the domain name justforkids.com is identical with and confusingly similar to the JUST FOR KIDS trademark and service mark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent contends that Complainant has failed to show that the Domain Name is identical with or confusingly similar to Complainant’s trademark because numerous similar trademarks have been registered with the United States Patent and Trademark Office.
Respondent contends that it does have rights or legitimate interest in the Domain Names because it registered the Domain Names prior to notification of this dispute and engaged in the sale of bona fide services.
Respondent contends Complainant has failed to show any bad faith by Respondent in the registration and use of the Domain Name.
6. Discussion and Findings
Identity or Confusing Similarity.
Complainant has a registered trademark in JUST FOR KIDS. Respondent registered the domain name justforkids.com. The phrase "just for kids" is identical in each.
Therefore, the Sole Panelist finds the Domain Name is identical with the trademark JUST FOR KIDS pursuant to the Policy paragraph 4(a)(i).
The analysis of confusing similarity between the trademark JUST FOR KIDS and the Domain Name, among the 74 registered trademarks using the phrases "just" and "kids" and among the 10 trademarks using the phrase "just for kids" is unnecessary.
Rights or Legitimate Interest.
The Policy paragraph 4(c) allows three methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent contends that, pursuant to the Policy paragraph 4(c)(i), before any notice of this dispute, Respondent used the Domain Name in connection with a bona fide offering of goods or services.
Respondent registered the domain name justforkids.com on November 6, 1999. The web based Yada.Com e-mail service began operation and registered its first user on May 15, 2000. The purpose of the website was to offer free email service to users and to sell advertising on the website through the placement of banners. The Complaint in this matter was filed via email on May 19, 2000, and via hardcopy on May 22, 2000. Respondent was not notified of any dispute prior to those dates. There is no evidence in the record to suggest that the Respondent’s use of the domain name fail to constitute a bona fide offering of goods or services.
Therefore, the Sole Panelist finds that Respondent has rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii) and that Complainant has failed to demonstrate a necessary element of its claim.
The Policy paragraph 4(b) sets forth four criteria for bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant’s only basis for asserting bad faith is the unsubstantiated statement that:
Respondent has told at least one third party that the name was for sale and that Respondent would be willing to sell the name in exchange for an equity stake in a start up company.
The Sole Panelist finds that the third party statement purportedly supporting Complainant’s assertion of bad faith is unsubstantiated and does not provide a sufficient basis for a finding of bad faith against Respondent.
Even accepting Complainant’s unsupported factual allegations as true, Complainant’s allegations do not rise to the level of proof of bad faith as that term is define by Section 4(b)(i) of the Policy. Even if Respondent had offered to sale or rent the Domain Name, which Respondent at all times denies, Respondent has never offered to sell or rent the name to the Complainant.
Therefore, the Presiding Panelist finds that Complainant has failed to prove that Respondent has registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii), thus failing to show a necessary element in its claim.
The Sole Panelist concludes Complainant has shown that the domain name justforkids.com is identical with the trademark JUST FOR KIDS. However, Complainant has failed to show that Respondent has no rights or legitimate interest in the domain name or that Respondent registered and used the domain name in bad faith. Therefore, the Sole Panelist refuses to order that the Domain Name be transferred to dELiA*s Properties, Inc., pursuant to paragraphs 4(i) of the Policy and 15 of the Rules.
Richard W. Page
Dated: August 4, 2000