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WIPO Arbitration and
Kiddopotamus & Company v. Kiddopottomus International
Case No. D2004-0403
1. The Parties
The Complainant is Kiddopotamus & Company, a Delaware corporation with a place of business in Leawood, Kansas, United States of America, and is represented by Polsinelli Shalton Welte Suelthaus P.C., United States of America.
The Respondent is Kiddopottomus International, Inc.
a corporation with a place of business in New York, New York, United States
of America and is represented by Steven Horowitz, United States of America,
and Brown Raysman Millstein Felder & Steiner, LLP, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <kiddopotomus.com>
and <kiddopottomus.com>, are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 2, 2004, and that same day, the Center transmitted to eNom, by e-mail, a request for registrar verification in connection with the disputed domain names. eNom responded on June 2, 2004, indicating that it had “locked” both domain names, confirming several details of its registration agreement, and directing the Center to its “whois” database for contact information.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with Rules 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 8, 2004. In accordance with Rule 5(a), the Response was due 20 calendar days later, on June 28, 2004.
On June 28, 2004, the due date for the Response, Center received an e-mail communication from an individual who identified himself as Steven Horowitz. The writer indicated that his firm had been retained by Respondent at the close of the prior business day and requested an additional week in which to gather necessary evidence and prepare and submit the Response. Complainant, which had been sent a copy of Respondent’s request, objected, asserting that Respondent not shown “exceptional circumstances” under Rule 5(d) and pointing to various factual assertions made in the Complaint regarding its previous efforts to contact Respondent. The Center granted Respondent five additional days in which to submit its response, making the due date for the Response July 3, 2004.
The Response was filed with the Center on July 2, 2004.
The Center appointed Debra J. Stanek as the sole panelist
in this matter on July 9, 2004. 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 Rule 7.
4. Factual Background
Complainant owns a United States federal trademark registration for the mark KIDDOPOTAMUS for stroller accessories, plastic safety caps and covers, and safety clips for adjusting a vehicle’s seat belt shoulder harness. The registration issued in 2000; the earliest date of first use claimed is October 1998. According to the Complaint, Complainant has, for many years, used the KIDDOPOTAMUS marks, both in the United States and elsewhere, for other products for infants and children, such as blankets, placemats, wraps, car seat liners, and seat protectors.
According to the Complaint, the <kiddopotomus.com>
and <kiddopottomus.com> domain names were registered in 2003. Visitors
to the “www. kiddopotomus.com” and “www.kiddopottomus.com”
sites are presented with the same page, which states that the site is currently
“under construction” and contains a numbered list of “kiddopottomus”
and “pottomus” references, for example, “Kiddopottomus Cafe
for Kids™ -- Franchise,” “Kiddopottomus Studio™,”
“Space-o-pottomus Shop Ltd.,” and “Book-o-pottomus™.”
5. Parties’ Contentions
Complainant makes the following contentions:
Complainant’s federal trademark registration, along with the other materials that it has submitted, demonstrates its rights in the KIDDOPOTAMUS mark.
The disputed domain names are confusingly similar to Complainant’s mark. One domain name simply substitutes the letter “o” for the letter “a;” the other makes the same substitution and additionally adds a second letter “t.”
Respondent has no rights or legitimate interests in either of the disputed domain names. Complainant has been unable to locate any information that demonstrates that Respondent is known by the terms, “kiddopotomus” or “kiddopottomus” or the disputed domain,” indicating that a search of the United States Patent and Trademark Office database for marks displayed on Respondent’s website did not reveal any applications or registrations owned by Respondent.
Complainant has not authorized Respondent’s use. Further, Complainant points out that Respondent’s website has been essentially unchanged since it was first established on April 15, 2003, suggesting that Respondent has not invested resources in developing a legitimate web site.
Finally, Complainant points to the fact that the cease and desist letters it has sent to Respondent appear to have been ignored, even though it obtained a receipt indicating that an electronic copy of Complainant’s message forwarding one of the letters had been “read,” meaning that it had been displayed on the recipient’s computer screen.
Respondent registered and is using the disputed domain names in bad faith because:
(1) Respondent is “typosquatting,” capitalizing on the fact that those seeking Complainants’ “www.kiddopotamus.com” site may inadvertently replace the letter “a” with the letter “o” and add an additional “t.”
(2) Respondent registered the disputed domain names after Complainant’s mark was registered and is apparently using them in connection with products for infants and children that are similar to Complainant’s products.
Respondent makes the following contentions:
Respondent began using the mark KIDDOPOTTOMUS in the United States as early as 1988, at least ten years before the date of first use claimed in Complainant’s federal trademark registration -- for children’s party planning and related services. Since that time Respondent has used the mark in other countries throughout the world. Respondent supports this contention with copies of invoices, work orders, packing slips, and correspondence directed to or otherwise referencing a business entity called “Kiddopottomus” that predate Complainant’s date of first use, as well as other more recent materials.
As a prior user, Respondent’s rights are superior to Complainant’s. Further, even if there are similarities in appearance between the parties’ respective marks, the parties’ goods and services are distinct. Respondent’s services focus on elaborate children’s parties, while Complainant’s mark is used with child and infant safety-related products.
By virtue of its prior use, Respondent has rights or legitimate interests in the disputed domain names. As noted above, Respondent asserts that it has operated a business called “Kiddopottomus” and used a KIDDOPOTTOMUS mark since as early as 1988.1
Respondent registered and is using the disputed domain names in good faith
by virtue of its prior and long-time use of the name “Kiddopottomus.”
6. Discussion and Findings
A. Procedural Matters
On June 28, 2004, the original due date for the Response, Respondent requested a one-week extension of time. Complainant objected, arguing, among other things, that Respondent had not shown “exceptional circumstances,” as required by Rule 5(d), by virtue of having not retained counsel until one business day before the deadline.
As noted above, the Center granted the request, giving Respondent five additional days, until July 3, 2004, to file its response. The Response was filed on July 2, 2004.
The Panel finds that granting the brief extension was consistent with the spirit of the Policy. The deadline for submitting a Response is intended to balance the need to give a respondent a reasonable time in which to submit arguments and evidence against the need to resolve the matter expeditiously to avoid prejudicing the complainant. Rule 10(b) requires the Panel to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” while Rule 10(c) requires the Panel to “ensure that the administrative proceeding takes place with due expedition.”
Here, the five-day extension may have permitted Respondent to provide a more complete response. Moreover, it is difficult to conceive that Complainant was prejudiced by the brief extension. Accordingly, but without suggesting that the same result would obtain under other circumstances, the Panel agrees with the Center’s determination.
B. Substantive Matters
In order to prevail, the Complainant must prove:
(i) The <kiddopotomus.com> and <kiddopottomus.com> domain names are identical or confusingly similar to Complainant’s KIDDOPOTAMUS mark.
(ii) Respondent has no rights or legitimate interest in the <kiddopotomus.com> and <kiddopottomus.com> domain names.
(iii) The domain names have been registered and are being used in bad faith.
See Policy, Paragraph 4(a). The Policy sets out four sets of circumstances that may evidence a respondent’s bad faith registration and use under Paragraph 4a(iii), see Policy, Paragraph 4(b), as well as examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, Paragraph 4(c).
C. Identical or Confusingly Similar
Complainants have established their rights in the KIDDOPOTAMUS mark by providing proof of their federal trademark registration and other information. The <kiddopotomus.com> and <kiddopottomus.com> domain names are strikingly similar to that mark. In the case of the <kiddopotomus.com> domain name, there is a difference of only a single letter in the penultimate syllable, an “o” instead of an “a.” In the case of the <kiddopottomus.com> domain name, the difference involves two letters, an “o” instead of an “a” and an additional “t.” Particularly where, as here, the mark at issue is a fairly long and multi-syllabic term, the differences appear in the last half of the term and do not result in any change in pronunciation, they are minor. The addition of the addition of the “.com” top-level domain does not alter this conclusion.
The Panel finds that Respondent’s domain names are confusingly similar to a mark in which Complainant has rights.
D. Rights or Legitimate Interests
Establishing that Respondent has no rights or legitimate interest in the domain names -- proving a negative -- can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within a respondent’s knowledge. Others have held that after a complainant makes a prima facie showing, the burden shifts to the respondent to rebut complainant’s evidence.
The Panel concludes that Complainant met its initial burden on this element, however, Respondent has rebutted that evidence and established that it has rights or legitimate interests in the disputed domain names.
Respondent’s submissions establish that its use of “Kiddopottomus” for children’s party services predates Complainant’s use by several years. This falls squarely within Paragraph 4(c)(i) of the Policy, which provides that a respondent may establish rights by using “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” before learning of the dispute.
The Panel therefore finds that Respondent has rights or legitimate interests in the disputed domain names.
E. Registered and Used in Bad Faith
As noted above, a complainant must establish each
of the three elements outlined in Paragraph 4(a) of the Policy in order to
prevail. In light of the conclusion that Complainant has not established the
second element, it is not necessary to address the issue of bad faith.
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Date: July 22, 2004
1 Respondent contends that its registration of <kiddopotomus.com>, which contains only one “t,” not two “t”s, as in Respondent’s business name, was inadvertent.