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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Martomagic, S.L. v. Next Communications, Inc.

Case No. D2009-0521

1. The Parties

The Complainant is Martomagic, S.L., of Barcelona, Spain, represented by Intelect Legal Services, S.L., Spain.

The Respondent is Next Communications, Inc., of Minnesota, United States of America, represented by Dennis M. Gallaher, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gogoscrazybones.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2009. On April 22, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 22, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 April 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 009. The Response was filed with the Center on May 18, 2009.

The Center appointed John Swinson as the sole panelist in this matter on May 28, 2009. 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 June 5, 2009, at the request of the Panel, the Center issued Administrative Panel Order No. 1, allowing both parties the opportunity to submit further evidence relating to the second and third elements of the Policy by June 10, 2009. The Panel made this Order to be made because, while the Respondent asserted that it had physical evidence demonstrating rights or legitimate interests in the disputed domain name, such evidence was not included in the Response.

The Respondent submitted further evidence to the Center on June 5, 2009. The Complainant did not submit any further evidence.

4. Factual Background

The Complainant is based in Spain and runs a business known as "Magic Box Int". The business develops collectible products and games, and manufactures and distributes these items. One of the Complainant`s product lines is called "GoGos Crazy Bones", which is promoted on its website at "www.magicboxint.com". These products appear to be a collection of 80 small figurines, with different names and personalities.

The Respondent is based in Florida, United States of America, and operates in the technology industry, providing the Next Communications Network for voice and data services and associated technical support (according to the Respondent`s website at www.nextcommunications.com).

The website at the disputed domain name is not currently operational.

The GoGos Crazy Bones figures appear to be available for purchase from a range of websites, some of which do not appear to be affiliated with the Complainant.

5. Parties` Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant is the owner of many trade marks around the world for GOGO`S CRAZY BONES, GOGO`S and CRAZY BONES. They include the following:

Registered Marks

International Registration no. 753,939 (CRAZY BONES), registered in January 2001;

International Registration no. 753,847 (GOGO`S), registered in January 2001;

United States Registration no. 2,396,551 (CRAZY BONES);

EU Registration no. 4,295,151 (CRAZY BONES), filed in February 2005;

EU Registration no. 7,057,557 and 7,089,758 (CRAZY BONES), both filed in July 2008;

Spanish Registration no. 1,988,992 (CRAZY BONES), filed in October 2005.

Pending Marks

United States Serial no. 77,449,767 (CRAZY BONES) filed on April 16, 2009;

United States Serial no. 77,654,181 (GOGO`S CRAZY BONES) filed January 22, 2009.

The disputed domain name is identical to the trade marks registered by the Complainant.

The disputed domain name has not been activated since it was first registered in 1999. Therefore the Respondent`s registration is purely speculative.

The Respondent is not known by the disputed domain name, as can be seen from the Respondent`s website ("www.nextcommunications.com").

The disputed domain name has not been used in 10 years, a fact that shows registration was in bad faith. The Respondent appears to be a stockpiler of domain names, which is also evidence of bad faith, and precludes a finding of legitimate interests or rights in the disputed domain name.

B. Respondent

The Respondent makes the following contentions in its Response:

The disputed domain name was approved for registration by the United States distributor, Frieder, Inc., who sold products to the Respondent on a wholesale basis for resale.

It is untrue that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent developed a website and operated an online business from the domain from March 1999 until October 2004. The registration was not purely speculative.

The Complainant`s allegations of bad faith are untrue because the disputed domain name was activated and operational for several years. Also untrue is the claim that the Respondent is a stockpiler of domain names. The Respondent only registers domain names for which it has a legitimate and planned purpose.

In response to the Administrative Panel Order, the Respondent provided certain evidence which it claimed supported the above contentions. The documents provided included a copy of the website operating from the disputed domain name as at June 13, 2003, account statements and cheques which reference the disputed domain name and span several months in 2000, invoices and other documents from 1999, issued by the alleged distributor (Frieder Inc of Visions By Frieder), and orders or requests received by the Respondent from customers. The Respondent alleges that this evidence demonstrates that he was running a viable business from the disputed domain name.

The page printout from the "www.gogoscrazybones.com" website dated June 13, 2003 contained the following paragraph:

"GoGoscrazybones.com is an independent entity and Web Site for collectors of GoGo`s. It is not associated with or endorsed by the manufacturer or distributor of GoGo`s Crazybones (they are at www.crazybones.com). Names, images, art and information are used with permission and are copyrights and trademarks or their respective companies."

6. Discussion and Findings

To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the complainant.

A. Identical or Confusingly Similar

The Complainant is the registered owner of International Trade Mark Registration no. 753939 (CRAZY BONES) and 753847 (GOGO`S), both registered in January 2001, as well as Community Trade Mark No. 007089758 (CRAZY BONES), registered on March 4, 2009, Community Trade Mark No. 007057557 (CRAZY BONES), registered on February 12, 2009, Community Trade Mark No. 004295151 (CRAZY BONES), registered on March 21, 2006 and Community Trade Mark No. 007089841 (GOGO`S), registered on March 19, 2009.

The Complainant also has pending United States applications for GOGO`S CRAZY BONES (filed January 22, 2009) and for CRAZY BONES (filed April 16, 2008).

It is clear that the Complainant has registered trade mark rights for GOGO`S and CRAZY BONES separately. The disputed domain name is a combination of these two trade marks.

Domain names consisting of a mere combination of two trademarks can be considered as confusingly similar to such trademarks (Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118). In addition, the Complainant`s website (as at June 2003) displays a product called "Gogo`s Crazy Bones".

Accordingly the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 non-commercial 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."

The Respondent states that its registration of the disputed domain name was approved by a United States distributor, who sold products to the Respondent on a wholesale basis for resale. The Respondent also states that it was operating an online business from the disputed domain name for over five years. This could arguably constitute rights or legitimate interests under paragraph 4(c)(i). The evidence provided by the Respondent could also be used to claim that the Respondent was known as "gogoscrazybones.com" under paragraph 4(c)(ii) of the Policy.

Previous panel decisions have found that a reseller of goods and services can be making a bona fide offering of goods and services in certain circumstances. The difficulty here is that while the Respondent claims to have been authorised by a United States distributor (Frieder) to sell the Complainant`s products via the disputed domain name, there is still no evidence of the Respondent`s or Frieder`s relationship with the Complainant, or the Complainant`s consent to the website. The Panel cannot conclude, on the evidence provided to it, that the Respondent is an authorised reseller of the Complainant, or has a contractual arrangement or understanding with the Complainant (or the Complainant`s authorised representative).

The Panel also notes that iToys appears to be the official distributor of Gogo`s Crazy Bones products in the United States (where the Respondent is located) and Canada. So even if the Respondent was a reseller in the United States at one time, that does not appear to be the case now.

The Panel has had regard to a number of reseller cases, including those which involve authorised dealers (such as Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903), and those where there is no contractual relationship (such as DaimlerChrysler A.G. v. Donald Drummonds WIPO Case No. D2001-0160).

These cases, and in particular, Oki Data, list a number of factors which are relevant to determining whether there is a "bona fide" offering of goods or services in reseller cases. They are:

"- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).

- The site must accurately disclose the registrant`s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website`s use of Complainant`s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent`s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant`s products).

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001) ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark")."

As at 2003, the Respondent`s website contained a disclaimer, which stated that the Respondent was in no way affiliated with Complainant, and which provided a link to the Complainant`s official website. The disclaimer also acknowledged that intellectual property used on the website belonged to others, although the Respondent stated that it had permission to use trade marks and images. The website printout does show that the Respondent was using the disputed domain name to sell what appear to the Complainant`s official "Gogoscrazybones" products. Further, it also appears that the Respondent operated its business from 1999 to 2003, without receiving any notice of dispute from the Complainant.

However, while the Respondent may have met the majority or all of the Oki Data factors at some time between 1999 to 2003 (while its website was active), it is not currently offering any goods or services, or engaging in any use of the disputed domain name (the website is currently inactive). Therefore while at one stage the Respondent may have had rights or legitimate interests in the disputed domain name, that is not the case now, because the Respondent`s actions no longer fall within the circumstances outlined in Oki Data.

Similarly, while the Panel agrees that the Respondent conducted a business primarily under the name "Gogoscrazybones.com", perhaps between 1999 to 2003, there is no evidence that the Respondent was entitled to use such a name. Even if there was such entitlement, any rights or legitimate interests the Respondent had in this regard would have ceased many years ago, when it ceased carrying on business.

The Policy is not designed to allow third parties to indefinitely retain domain names which comprise the trade mark of another, where the third party has ceased having an interest in the domain name. Passively holding a domain name in such circumstances is not a legitimate interest.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that the second element has been met.

C. Registered and Used in Bad Faith

The final element to determine is whether the Respondent registered and used the disputed domain name in bad faith.

The Panel notes that the disputed domain name was registered on March 25, 1999, which appears to be prior to the filing date of any of the Complainant`s trade marks. In the Complaint, the Complainant focuses on its registered trade mark rights, and does not refer to any common law rights or use of the GOGO`S CRAZY BONES marks prior to 1999.

The "Gogo`s Crazy Bones" products were launched sometime in the 1990s, and therefore most likely before the Respondent registered the disputed domain name. It is implausible that the Respondent thought of such a distinctive name as "Gogo`s Crazy Bones" without reference to the Complainant`s product (particularly when the Respondent sold the "Gogo`s Crazy Bones" products at one time. While the Respondent alleges that its registration of the disputed domain name was approved by a wholesaler as a resale website (as discussed above), this suggests that the Complainant`s products existed under the disputed domain name as registered, but this is still unclear on the evidence.

By the Respondent`s own admission, it ceased offering any goods or services from the disputed domain name in October 2004. When taking this into account with other factors, such as the distinctiveness of the "GOGO`S CRAZY BONES" trade mark and the minimal response to the Complaint, it indicates that the Respondent has engaged in passive holding of the disputed domain name for a significant period of time. (See for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Taking into account the factors outlined above, the Panel finds that, on the evidence provided to it, the disputed domain name was registered and used in bad faith. If the Respondent had provided evidence indicating that it was still a reseller of the "Gogo`s Crazy Bones" products, the Panel may have found otherwise. However such evidence was not forthcoming.

The Panel find that the third element has been 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, <gogoscrazybones.com> be transferred to the Complainant.

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John Swinson
Sole Panelist

Dated: June 11, 2009