WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cave Springs, Inc. v. Private WHOIS/Motherhood Maternity Assistance Private Limited
Case No. D2007-0458
1. The Parties
The Complainant is Cave Springs, Inc., of Wilmington, United States of America, represented by Duane Morris LLP, United States of America.
The Respondent is Private WHOIS/Motherhood Maternity Assistance Private Limited, of Juhu, Mumbai, Maharashtra India, represented by a “Director”.
2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March�23,�2007. On March�28,�2007, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. The Respondent named in the Complaint was Private WHOIS Privacy Protection of Mumbai, Maharashtra Cocoo, India. On April�2,�2007, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response identifying the Respondent Motherhood Maternity Assistance Private Limited of Juhu, Mumbai, Maharashtra and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center of a change in the registrant’s contact information, the Complainant filed an amendment to the Complaint on April�13,�2007 naming Motherhood Maternity Assistance Private Limited as the Respondent. The Center verified that the Complaint together with the amendment to the Complaint satisfied 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”).
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�17,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May�7,�2007. The Response was filed with the Center on May�7,�2007.
The Center appointed David Perkins as the sole panelist in this matter on May�11,�2007. 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 May�11,�2007 the Complainant submitted a Reply to the Respondent's Response with a request to the Panel that it be admitted pursuant to paragraph 10 of the Rules. On May�14,�2007 Respondent submitted a Supplementary Answer to the Complainant's Reply. On May�16,�2007 the Panel issued a Procedural Order admitting both the Complainant's Reply and the Respondent's Answer.
4. Factual Background
A. The identity of the Respondent
The original Complaint filed on March�23,�2007 named Private WHOIS, Privacy Protection, of Mumbai, Maharashtra, India as the Respondent. However, the Registrar's Verification to the Center dated April�2,�2007 identified Motherhood Maternity Assistance Private Ltd of Juhu, Mumbai as the registrant of record. Accordingly, the Center advised the Complainant on the change in the registrant’s contact information. As noted above, an Amended Complaint was filed on April�13,�2007 identifying Motherhood Maternity Assistance Private Ltd, as the Respondent.
B. The Complainant
B.1 The Complainant is a United States of America corporation with an address in Wilmington, Delaware. From its registered trademark it would appear that the Complainant sells maternity clothing and accessories under and by reference to the trademark MOTHERHOOD since 1952. It began using the trademark MOTHERHOOD MATERNITY in 1993.
Complainant's Trademarks
B.2 The Complainant has provided the following evidence of rights in those trademarks.
Country
Registration No.
Mark
Class(es)
Date of Application / Registration
United States of America
1,055,611
MOTHERHOOD*
25
Filed May�12,�1975
Registered January�1,�1977
United States of America
1,898,334
MOTHERHOOD MATERNITY**
42
Filed August�8,�1997
Registered June�6,�1998
Singapore
T02/17083H
MOTHERHOOD MATERNITY
25
Registered November�1,�2000
Singapore
T02/17084F
MOTHERHOOD MATERNITY
35
Registered November�1,�2002
Costa Rica
146,457
MOTHERHOOD MATERNITY
25, 35
Filed October�18,�2002
Registered January�27,�2004
Canada
416,417
MOTHERHOOD * MATERNITY SHOPS
Filed April�29,�1992 Registered September�3,�1993
Canada
420,071
MOTHERHOOD *
Filed April�29,�1992 Registered November�26,�1993
Community Trademark
003511649
MOTHERHOOD MATERNITY
35
Registered March�23,�2003
China
602,757
MOTHERHOOD
40
Registered July�1,�1993
Brazil
819882631
MOTHERHOOD***
25
Filed April�10,�1997
Registered July�6,�1999
Mexico
424,463
MOTHERHOOD
25
Registered March�25,�1992
France
023200530
MOTHERHOOD
5, 25
Filed December�19,�2002
Registered January�24,�2003
Oman
8,087
Registered February�17,�1993
Italy
638,983
MOTHERHOOD
Filed June�19,�1992
Republic of Korea
0329930
MOTHERHOOD
45
Filed May�9,�1992
Registered November�16,�1994
* US1,055,611 and the two Canadian registrations were registered in the name of Motherhood Maternity Shops, Inc of El Segundo, California. It appears that these registrations were subsequently assigned to the Complainant.
** US1,898,344 carries a disclaimer to the word MATERNITY.
*** Brazil 819882631 is registered in the name of Mothers World, Inc of Philadelphia.
In respect of certain of the above registrations particulars have been provided indicating a merger between Motherhood Maternity Shops, Inc. with Mothers Work, Inc. of Philadelphia, Pennsylvania and subsequent transfer of ownership to the Complainant, Cave Springs, Inc. of Wilmington, Delaware. From the Panel's own research, it appears that the Complainant is a subsidiary of Mothers Work, Inc.
Where gaps appear in the above table, either the particulars are incomplete or the Panel has been unable to complete such gaps from its own research.
C. The Respondent
C.1 The domain name in issue was registered on October�6,�2002.
C.2 Respondent states that it is the proprietor of that domain name and used the private WHOIS service on the advice of its Service Provider for two reasons. First, to avoid spam and, second, to avoid other unwanted emails which result from a Registrant disclosing its true identity.
C.3 The Respondent states that "for many years" it has been in the business of providing assistance to pregnant women in India. For that purpose, Respondent says that it has "various centres" which provide guidance to pregnant mothers to be including exercise and yoga to help them through their pregnancies The principal Centre is at the Navjivan Trust Welfare Centre, BMC Colony, Panch Marg, Yari Road, Versowa, Mumbai. There is another such centre at Parekh Plaza, Vallabhbhai Road, Vile Parle (West), Mumbai.
C.4 The Respondent explains that this business was "since many years" conducted under the firm name, Motherhood Maternity Assistance. As evidence, the Response exhibits a Government India Permanent Account Card which is dated September�1,�2005.
C.5 That Firm was then transferred to a private limited company, Motherhood Maternity Assistance Private Limited, which was incorporated on December�22,�2006.
C.6 Respondent states that its staff use the domain name in issue only as an email address, for both internal and external purpose. The Respondent says that its service provider, from whom it acquired the domain name, offered to establish a website to which the domain name would resolve. Indeed, the domain name was acquired to facilitate the Respondent's business goals. However, there is at present no website and, consequently, the domain name is parked by the Registrar.
5. Parties’ Contentions
A. Complainant
A.1 Complainant asserts that it has rights in the trademarks MOTHERHOOD and MOTHERHOOD MATERNITY. The domain name in issue, save for the gTLD suffix is identical or virtually identical to the MOTHERHOOD MATERNITY trademark.
A.2 As to rights or legitimate interests in the domain name, the Complainant states that it has not licensed or otherwise authorized the Respondent to use its trademarks.
A.3 Further, there is no evidence that the Respondent has been commonly known by the domain name in issue.
A.4 Still further, according to the Complainant, the Respondent has not made use of that domain name in connection with a bona fide offering of goods or services. Nor, says the Complainant, has Respondent made non-commercial or fair use of that domain name. In that respect, the Complainant refers to the website to which the domain name resolves. Indeed, in its Supplemental Submission the Complainant exhibits archived pages from the website from 2003 to the present. The extracts from that website taken in 2007 demonstrate that it offers links to Complainant's competitors and to other entities offering the same type of goods – namely, maternity clothing and accessories – that the Complainant sells under its MOTHERHOOD and MOTHERHOOD MATERNITY brands. This practice, the Complainant says, has been held in decisions under the Policy to constitute neither bona fide nor fair use of the domain name. The Complainant refers in that connection to Bang & Olufsen A/S .v. Unasi, IncWIPO Case No. D2005-0728 and to Deutsche Telekom A.G. .v. Dong Wang WIPO Case No. D2005-0819.
A.5 As to registration and use in bad faith, the Complainant relies on paragraphs 4(b)(ii) to (iv) of the Policy. First, the Complainant says that its MOTHERHOOD and MOTHERHOOD MATERNITY marks are known and recognized worldwide and points in that respect to its trademark registrations for those marks in a number of countries outside the United States of America. The Complainant repeats that its first use of MOTHERHOOD dates from 1952 and of MOTHERHOOD MATERNITY from 1993, respectively 50 years and 9 years before the domain name in issue was registered in October 2002. This, the Complainant says indicates actual or, at least, constructive notice of its trademark rights before registration of the domain name.
A.6 Second, the Complainant refers to correspondence – not exhibited in the Complaint – with the original owner of the domain name, Mr Yonatan Belousov, from which it appears that in late 2006 Mr. Belousov disclosed that his partner and co-owner of the domain name, Mr. Naresh Malik would not disable the website nor transfer the domain name as requested by the Complainant. The Complainant asserts that use of a proxy service, such as WHOIS Private (the original Registrant of the domain name in issue) is indicative of registration in bad faith. In support of that contention, the Complainant cites Microsoft Corporation v. Whois Privacy Protection Service WIPO Case No. D2005-0642.
A.7 Third, such anonymous registration, coupled with use of the domain name to provide links to websites offering products competing with those of the trademark owner provides conclusive evidence of both registration and use in bad faith. The pattern of conduct which began with use of a proxy service as Registrant, followed by transfer of the domain name to Mr. Belousov's partner after Complainant's cease and desist email in November 2006, and culminated in transfer to the Respondent after the original Complaint was communicated in March 2007, all points to the Respondent having actual or constructive knowledge of the Complainant's trademarks and use of that domain name in willful disregard of those trademarks. In support of this assertion, the Complainant cited Toyota Sales USA, Inc .v. Pick Pro Parts, IncWIPO Case No. D2005-0562 and Movado LLC .v. Simo Elbaz WIPO Case No. D2004-1029.
A.8 Fourth, it is clear – the Complainant says – that the Respondent has used the domain name in issue for commercial gain by attracting Internet users to the website and creating a likelihood of confusion with its MOTHERHOOD and MOTHERHOOD MATERNITY marks as to affiliation of the products offered on that website with those trademarks. Where such a website gives links to competitors of the trademark owner, decisions under the Policy have held this to be bad faith use. For example, Mudd (USA) LLC .v. Unasi IncWIPO Case No. D2005-0591; the Bang & Olufsen case referred to above and Caesar's World, Inc .v. Forum LLC WIPO Case NO. D2005-0517.
A.9 Fifth, in its Supplemental Submission (as noted in paragraph 5.A.4 above) the Complainant exhibits archived pages from the website to which the domain name in issue resolved over the period 2003 to 2007. These demonstrate that in the early years the website – despite being neither authorized nor sponsored by the Complainant – posted links to the Complainant's website. However, currently the domain name resolves to a live and active pay-per-click site with links to and information about the Complainant's competitors. Accordingly, the Complainant concludes that the Respondent's explanation of its registration and use of the domain name in issue is nothing but a sham. The reality is – the Complainant says – that it constitutes a bad faith registration and use and has never, in fact, been anything but a pay-per-click site from which the Respondent derives revenue from other companies offering maternity clothing.
B. Respondent
B.1 As to rights in the MOTHERHOOD and MOTHERHOOD MATERNITY trademarks, the Respondent's case is as follows:
B.1.1 Respondent does not admit that the Complainant owns and has registered those trademarks.
B.1.2 Respondent was not aware of the existence of those trademarks when it acquired the domain name in issue.
B.1.3 Complainant is not the only user of those trademarks, nor does the Complainant have exclusive rights to those trademarks for all categories of goods or services. Consequently, others can use those trademarks for "various trades and businesses".
B.2 As to rights and legitimate interests in the domain name in issue, Respondent relies on paragraph 4(c)(ii) of the Policy and assets that it has been commonly known as Motherhood Maternity despite having no trademark or service mark rights in that name. In that respect, the Respondent points to the Government of India Tax Account Number of September 2005 and to the Certificate of its Incorporation in December 2006 [see, 4.C.4 and 5 above.]
B.3 Further, Respondent relies on paragraph 4(c)(iii) of the Policy and asserts that, because its staff only use the domain name for email purposes [see, paragraph 4.C.6 above], it is only making non-commercial and fair use of that domain name.
B.4 As to registration and use in bad faith, the Respondent puts its case as follows:
B.4.1 The domain name is identical to its "Motherhood Maternity" trading name.
B.4.2 Its use of that domain name does not disrupt the Complainant's business.
B.4.3 It is not using the domain name to attract for commercial gain Internet users, because its business model [namely, providing maternity guidance to pregnant mothers-to-be] is totally different to that of the Complainant.
B.4.4 The geographical location of the Respondent (India) and that of the Complainant (the United States of America) are far apart, such that they will not attract each other's customers.
B.4.5 The Respondent was totally unaware of the existence of the Complainant or its trademarks. Here, the Respondent refers to the circumstances in which it acquired the domain name [See, paragraph 4.C.6 above].
B.4.6 The Respondent says that the domain name was transferred to them long before having notice of the original Complaint of March�23,�2007. They only used the WHOIS Privacy Service on the advice and recommendation of its Service Provider [see, paragraph 4.C.2 above].
6. Discussion and Findings
6.1 The Policy paragraph�4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
— that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
— that the Respondent has no rights or legitimate interests in respect of the domain name; and
— that the domain name has been registered and is being used in bad faith.
6.2 As stated above, the Policy paragraph�4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph�4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
6.4.1 As to proof of the Complainant's rights in the MOTHERHOOD and MATERNITY. MATERNITY trademarks, the Certificates of Registration exhibited by the Amended Complaint are adequate evidence of its rights as regards MOTHERHOOD since approximately 1975 and MOTHERHOOD MATERNITY since approximately 1993. The Panel must, however, express its concern at the less than perfect way in which the trademark registrations outside the United States of America have been presented and the haphazard way in which the Complaint presents ownership by the Complainant of registrations originally filed and registered to predecessor companies. Where a Complainant relies on registered trademarks it should provide clear and adequate evidence and not rely on the Panel's own diligence to fill in the gaps in the Complaint. Furthermore, it would have been appropriate for the Complaint to describe the business of the Complainant, its parent company, Mothers Work, Inc., the retail activities of that Group in the United Kingdom and Canada, and in particular its MOTHERHOOD MATERNITY stores. It should not be necessary for Panels to have to research publicly available document in order to supplement a Complaint.
6.4.2 As to identicality, clearly the domain name is identical to the Complainant's MOTHERHOOD MATERNITY registrations in the United States of America, Singapore, Costa Rica, Canada and the European Union (which comprises 27 Member States).
6.4.3 The Policy does not require a Complainant to have trademark rights for every class of goods and services in every geographical area where trademark registrations are available. Consequently, the Respondent's assertions in this respect do not apply. It follows that the Complaint satisfies the first requirement of the Policy.
6.5 Rights or Legitimate Interests
6.5.1 The Respondent asserts that it only uses the domain name in issue for email purposes. The Respondent further states that it has no active website and that the domain name is presently "parked". However, that is totally contrary to the evidence produced by the Complainant, which clearly shows that the domain name does resolve to a live website and that it has done so since at least 2003. Further, that website links to the websites of third parties offering maternity clothing in competition with the Complainant. Consequently, there is no basis on the evidence for the Respondent asserting rights and legitimate interests under paragraphs 4(c)(i) or 4(c)(iii) of the Policy.
6.5.2 As to paragraph 4(c)(ii) of the Policy, the Respondent asserts that, in one form or another [e.g. first as a firm and since December 2006 as a limited company] it has been known as "Motherhood Maternity" for many years, However, assertions apart, the only tangible evidence offered by the Respondent is a Tax Account Number of September 2005 and a Certificate of Incorporation of December 2006. Further, it appears from the Complainant's (uncontested) assertion that the Respondent is not the original registrant of the domain name but that it acquired the domain name at some stage. Whether that acquisition took place only after March�23,�2007 [as the Complainant asserts] or beneficial ownership considerably predates that [as the Respondent says] is of no consequence. It would have been simple for the Respondent to produce documentary evidence of the assertion that it has been commonly known by the domain name but it has totally failed to do so.
6.5.3 On the record before the Panel, there is absolutely no evidence of the Respondent having rights or legitimate interests in the domain name, whether under paragraph 4(c) of the Policy or otherwise. Accordingly, the Complaint satisfies the second requirement of the Policy.
6.6 Registered and Used in Bad Faith
6.6.1 It is commonly a corollary to a finding of no rights to or legitimate interests in a domain name that registration and use in bad faith naturally follow. This is just such a case.
6.6.2 It is clear that before the domain name in issue was registered in October 2002, the Complainant had registered trademark rights – at least in the United States of America – for the words MOTHERHOOD MATERNITY. That registration was based on use in the United States of America since 1993. Also, by late 2002 the Complainant had begun to file trademark applications for MOTHERHOOD MATERNITY in other countries – for example, Canada, Singapore and Costa Rica – which could indicate that by that time the Complainant was using that trademark internationally. Still further, from the 2003 archive pages from the “” website it is apparent that the registrant was well aware of the Complainant and its MOTHERHOOD MATERNITY mark by giving unauthorized links to the Complainant's website. Finally, from public source material accessed the Panel it would appear that by late 2002 MOTHERHOOD MATERNITY was a sizeable chain of stores operating in the United States of America.
6.6.3 As to present use of the domain name, as stated in paragraphs 5.A.4 and 5.A.8 above, the evidence from the website to which it resolves is totally contrary to the Respondent's contentions. Not only is there an active website, but that website offers links to third party websites offering merchandise competing with the Complainant's maternity wear This, as established by many decisions under the Policy, is evidence of bad faith use.
6.6.4 In the circumstances, the Panel finds that the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy.
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 be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: May 25,�2007
Full & Egal Universal Law Academy