## Facts

- Ty Inc. manufactured plush toys and used the trademarks BEANIE BABIES and BEANIES, supported by trademark registrations and applications in multiple jurisdictions.
- Joseph Parvin, doing business as “Domains for Sale,” registered four domain names: `<ebeanies.com>`, `<e-beanies.com>`, `<ebeaniebabies.com>`, and `<ebeaniebaby.com>`.
- The domain names incorporated Ty’s marks with minor variations, including an “e-” prefix and formatting changes.
- The domain names were not used for an active website offering goods or services associated with Parvin; they were held as part of a domain portfolio.
- Evidence showed Parvin offered the domain names for sale without Ty’s authorization and did not claim to be commonly known by the disputed names.
- Ty filed a UDRP complaint with the WIPO Arbitration and Mediation Center seeking transfer of the domain names.

## Issues

1. Whether the disputed domain names are identical or confusingly similar to marks in which Ty has rights.
2. Whether Parvin lacked rights or legitimate interests in the disputed domain names.
3. Whether the disputed domain names were registered and used in bad faith under the UDRP.

## Decision

- The panel found Ty proved all three elements required by UDRP paragraph 4(a).
- The panel held the domain names were confusingly similar to BEANIES and BEANIE BABIES because the marks remained recognizable despite the “e-” prefix and the “.com” gTLD.
- The panel found Parvin had no rights or legitimate interests because he was not commonly known by the disputed names and made no bona fide or fair use of them.
- The panel found bad faith registration and use based on evidence the domains were acquired primarily for resale, with knowledge of Ty’s well-known marks and without any legitimate use.
- The panel ordered transfer of all four domain names to Ty.

## Legal Principles

- Under the UDRP, adding a generic Internet-related prefix (such as “e-”) and a gTLD to a complainant’s trademark generally does not prevent a finding of confusing similarity when the mark remains clearly recognizable.
- A respondent lacks rights or legitimate interests where it is not commonly known by the domain name and does not use (or demonstrably prepare to use) the domain for a bona fide offering of goods or services, noncommercial use, or fair use.
- Registering a domain name incorporating another’s trademark primarily for the purpose of selling it to the trademark owner (or a competitor) for consideration beyond out-of-pocket costs is evidence of bad faith under UDRP paragraph 4(b)(i).
- Passive holding may support a finding of bad faith when combined with factors such as targeting a well-known mark, absence of legitimate use, and an offer to sell the domain name.

## Conclusion

The panel ordered transfer of the “e-” prefixed BEANIE BABIES/BEANIES domain names to Ty because the domains were confusingly similar to Ty’s marks, Parvin had no legitimate interest in them, and the registrations were made and used in bad faith to profit from resale tied to Ty’s trademark goodwill.


Ty Inc. v. Parvin, D2000-0688 (WIPO Arb. & Mediation Ctr. 2000)