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and Mediation Center
Bits & Pieces, Inc. v. Henry Tsung
Case No. D2005-0196
1. The Parties
The Complainant is Bits & Pieces Inc., a corporation
duly organized and existing under the laws of the State of Delaware, having
a place of business in Massachusetts, United States of America. Respondent is
Henry Tsung, with an address in Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The domain name at issue is <wwwbitsandpieces.com>,
registered on December 9, 2003. The registrar is Iholdings.com, Inc. d/b/a Dot
Registrar, Miami, Florida, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint of Bits & Pieces Inc., on February 18, 2005, by e-mail and on February 22, 2005 in hardcopy.
On February 21, 2005, the Center acknowledged the receipt of Complaint.
The Center verified that the Complaint satisfies 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”). The Complainant made the required fee payment.
The Administrative Proceeding commenced on February 24, 2005. The Center sent to the Respondent a notification of Complaint under Paragraph 2(a) of the Rules together with copies of the Complaint. The Respondent was required to send a Response to the Complainant and to the Center within 20 calendar days from the date of commencement of the Administrative Proceeding.
The Respondent failed to send a Response by the deadline on March 16, 2005. The Respondent’s default was notified on March 18, 2005.
The Center appointed Eduardo Magalhгes Machado as the sole panelist in this matter on March 23, 2005. 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.
On March 29, 2005, the sole Panelist received via
courier a complete copy of the Complaint and enclosures in accordance with the
4. Factual Background
The trademark upon which the Complaint is based is “BITS AND PIECES”. The word “bits and pieces” is the main part of the Complaint’s trade name: Bits & Pieces Inc.
The Complainant has been providing consumers with a wide assortment of jigsaw puzzles, toys, brain teasers, games, gift items, dolls, coin banks, novelties, novelty lightning and accessories therefore through its mail order catalog Bits And Pieces and through its on-line catalog of the same name located at “www.bitsandpieces.com”.
Millions of consumers have been shopping from Complaint’s Bits And Pieces mail order and on-line catalogs.
Respondent registered the domain name <wwwbitsandpieces.com> on December 9, 2003, with Iholdings.com, Inc. d/b/a Dotregistrar.
Complainant argues that Respondent’s Domain Name is identical or confusingly similar to Complainant’s Marks. Respondent’s use of the “www” prefix in front of a valid trademark for use in a domain name operates as prima facie evidence that Respondent has no rights and legitimate interests in the disputed domain name.
Finally, Complainant states that Respondent cannot demonstrate any legitimate interest in the Domain Name, since Respondent has registered its Domain Name only after Complainant had established rights in its BITS AND PIECES Mark.
Furthermore, there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the domain name, which incorporate in their entirety and/or are confusingly similar to Complainant’s Marks. Respondent is not commonly known by the Domain Name and is not making legitimate noncommercial or fair use of it.
Based on the above mentioned, Complainant states that it has met the requirements of the Policy by demonstrating not only its own legitimate interest in its mark, but also that Respondent registered and has used further Domain Names in bad faith, and that Respondent’s sole interest in the Domain Name is to unlawfully profit from it.
On the grounds of the above, Complainant alleges that <wwwbitsandpieces.com>
was registered and is being used in bad faith.
5. Parties’ Contentions
The Complainant says that trademark “BITS AND PIECES”, or a slight variation thereof such as “BITS & PIECES”, has been used in connection with its business since October 3, 1983. Complainant registered the trademark “BITS AND PIECES” in the United States of America for “retail mail order services in the field of jigsaw puzzles and accessories therefore” on November 8, 1992 (duly renewed). Copies of the United States Patent and Trademark Office’s database records are attached to the Complaint.
Complainant also mentions that by virtue of the quality of its products and services, and as a result of its expenditure of considerable sums of money on advertising and promotional activity, a valuable goodwill in its registered trademark has been built up. The mark “BITS AND PIECES” is of an immeasurable value to the Complainant.
Complainant registered its <bitsandpieces.com> domain name on or about December 27, 1995, and has been operating a website at this Internet address since at least as early as 1998. The website is used to advertise, promote and sell its jigsaw puzzles, toys, brain teasers, games, gift items, dolls, coin banks, novelties, novelty lighting and related items.
The Complainant’s website operates 24 hours a day and permits consumers to request a copy of Complainant’s “BITS AND PIECES print catalog and place orders for Complainant’s goods. The website is also used to communicate special events and promotions to its customers, provide customer service information and permits customers to sign-up for Complainant’s e-mail newsletter. In a sum, the Internet has become an extremely important communication and marketing tool and revenue source for Complainant.
The domain name <wwwbitsandpieces.com> was registered on behalf of Respondent without the consent of Complainant:
a) subsequent to Complainant’s first use of the trademark “BITS AND PIECES”,
b) subsequent to Complainant’s United States registration of the trademark “BITS AND PIECES”, as well as
c) subsequent to Complainant’s registration and first use of the <bitsandpieces.com> domain name and establishment of its website and online catalog at such location.
According to the Complainant, sometime during or after December 2003, Respondent began using the <wwwbitsandpieces.com> domain name to point Internet users to a website.
The Complainant also argues that the Respondent’s “www.wwwbitsandpieces.com” website contains a list of terms that describe the types of products sold by Bits and Pieces, Inc. in its print catalog and on its website, including “jingsaw puzzles”, “collectables”, “banks”, and “gifts”. Printouts from Respondent’s website showing this list of terms are attached as Annex F of the Complaint.
The Complainant states that when a consumer clicks on one of these terms, the consumer is instantaneously presented with a list to various third party websites that sell the items associated with the terms such as jigsaw puzzles, collectables, coin banks and gifts, as showed in the document attached as Annex G.
According to the Complainant, when a consumer clicks on the terms “jigsaw puzzle” on the Respondent’s website, the consumer is presented with links to websites including, “www.puzzlepoint.com”, “www.nicetoys.com”, and “www.puzzlements.com”, all of which sell jigsaw puzzles as well as, toys, brain teasers, games, and gift items, which implies that the Respondent competes directly with the Complainant. Furthermore, the Respondent registered at least 10 (ten) other domain names containing famous or well known trademark, or mis-spellings of the trademark of others, including: <hyattvancouver.com>, <wwwsmartbargain.com>, <moneygraminternational.com>, <wwwmoneygram.com>, <occuvite.com>, <neimanmarcusa.com>, <americawestvacations.com>, <wwwwhitneybank..com>, <wwwtrustbank.com>, <firsthorizonmorgage.com> and <wwwfirsthorizonmortgade.com>. All of these domain names were subject of previous UDRP proceedings and, as a result, have been transferred to their rightful owners. The Complainant attached copies of the Panel decisions involving these domain names as Annex I.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Policy institutes in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant to succeed in an administrative proceeding for abusive domain name registration.
6.1. Identity or Confusing Similarity
Since the particle “.com” is merely an attribute to this kind of gTDL domain names, the Panel finds that, in view of the above, the domain name <wwwbitandpieces.com> reproduces the trademark “BITS AND PIECES”, part of the trade name Bits and Pieces, Inc. and is almost identical to the domain name <bitandpieces.com>, owned by the Complainant. Therefore, the requirement of Paragraph 4(a)(i) has been met.
6.2. Absence of Respondent’s Rights or Legitimate Interests in the Domain Name
The Respondent received notice of dispute as of February 24, 2005, and failed to respond to the Complaint and to present any evidence demonstrating that it had any plan for bona fide use of the domain name prior to notice of the dispute.
On this basis, the Panel concludes that the Respondent has no legitimate interest in the domain name <wwwbitsandpieces.com>. Therefore, the requirement of Paragraph (a)(ii) is met.
6.3 Respondent’s Registration and Use of the Domain Name in Bad Faith
The Respondent failed to respond to the Complaint. The Panel is of the opinion that the registration of the domain name <wwwbitsandpieces.com> took place in bad faith. As circumstances supporting this conclusion, it should be mentioned first of all that no legitimate interest or use in or with respect to the sign BITS AND PIECES could be established on the side of the Respondent.
Respondent’s registered the disputed domain name with full knowledge that the name belonged to Complainant and in infringement of the Registrar Service Agreement in §17 (ii), that states:
“to the best of your knowledge and belief neither the registration of your domain name nor the manner in which you intend to use such domain will directly or indirectly infringe the legal rights of a third party”.
Indeed, taking into consideration Complainant’s development and fame across the United States, it can only be reasonably assumed that Respondent knew of the existence of Complainant and of its “BITS AND PIECES” trademark, and nevertheless proceeded with the registration of the litigious domain name.
Although mindful of the descriptive character of Complainant’s trademark, the Panel is of the opinion that Respondent has violated paragraph 4(b)(ii) of the Policy and that the domain name was registered by the Respondent with the clear intention to divert the Complainant’s clients and to obtain profits with this domain name.
In conclusion, this Panel finds that the Respondent registered and used the
domain name <wwbitsandpieces.com> in bad faith.
Complainant has proved that the domain name is identical to its trademark, that Respondent has no rights or legitimate interest in the domain name, and that Respondent registered and used the domain name in bad faith. Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name <wwwbitsandpieces.com> be transferred to the Complainant.
Eduardo Magalhгes Machado
Dated: April 6, 2005