The Complainant is A.D. Sutton & Sons, Inc. of New York, New York, United States of America, represented by Tucker & Latifi, LLP, United States of America.
The Respondent is BABYESSENTIALS.COM c/o Nameview Inc. Whois IDentity Shield of St. Michael, Barbados / Vertical Axis Inc. of Christ Church, Barbados, represented by ESQ Law Firm, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Nameview Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010. On July 8 and 13, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On July 14, 2010, Nameview Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 15, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2010. In response to a notification of July 15, 2010 by the Center that the Complaint was administratively deficient, the Complainant filed another amended Complaint on July 21, 2010. The Center verified that the Complaint together with the amended Complaints 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 July 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response August 11, 2010. The Response was filed with the Center on August 12, 2010.
The Center appointed David Perkins, Steven Auvil and The Hon Neil Brown QC as panelists in this matter on September 10, 2010. The Panel finds that it was properly constituted. Each member of 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. 4. Factual Background 4.A. The Complainant
4.A.1 The Complainant describes itself as a source of well-designed and priced products supplied to mass-merchandising retailers in the United States of America (“United States” or “US”). The Complainant’s business dates back more than 50 years.
4.A.2 Among the products made by the Complainant are what they describe as a wide variety of consumer goods for use by infants and their parents. Such products are sold under or by reference to the trademark BABY ESSENTIALS.
4.A.3 The Complainant is the proprietor of registered trademarks in Canada and the United States including the following US registrations:
US Trademark Reg. No. Trademark Class of Goods Reg. Date Goods
1917345
BABY ESSENTIALS
25
September 5, 1995
Infant’s and children’s clothing
3101152
BABY ESSENTIALS
18
June 6, 2006
Diaper bags, etc.
2953445
BABY ESSENTIALS
21
May 17, 2005
Decorative trays; food containers; piggy banks
2931846
BABY ESSENTIALS
16
March 8, 2005
Photo albums
3174734
BABY ESSENTIALS
10
November 21, 2006
Baby bottles, etc.
3074251
BABY ESSENTIALS
24
March 28, 2006
Towels and bed blankets
3216211
BABY ESSENTIALS
20
March 6, 2007
Pillows
3058551
BABY ESSENTIALS
28
February 14, 2006
Plush toys 4.B. The Respondent
4.B.1 The disputed domain name was created on May 25, 2002 and was registered by the Respondent in August 2006 after it was deleted.
4.B.2 The Respondent is also the registrant of more than 60 domain names which incorporate one of the words constituting the disputed domain name. Such domain names include ; ; ; ; ; ; ; ; ; ; ; ; ; and .
4.B.3 The disputed domain name is hosted by the Respondent with H a service which places pay-per-click advertising links, based on a Yahoo advertiser feed, on hosted domains. The Respondent shares the advertising revenue with the other domain name holders. The disputed domain name has been linked variously over the years since it was registered by the Respondent on August 2006 to generate pay-per-click revenue advertising baby and children goods and services with links to “baby”, “baby checklist”, “baby clothes”, “baby crib”, “new baby essentials”, “first baby essentials”, “baby monitors” and such like.
4.B.4 Annexed to the Response are archived screen shots of the website to which the disputed domain name has resolved, as well as print-outs from the current website. The archived screen shots date from October 1, 2006 and indicate these uses of the disputed domain name from shortly after its date of registration by the Respondent in August 2006. 5. Parties’ Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 The Complainant claims registered rights in the trademark BABY ESSENTIALS, the earliest of which dates from the US registration in September 1995. The Complainant’s case is that the disputed domain name – which was not created until May 25, 2002 – is identical to its BABY ESSENTIALS trademark. Rights or Legitimate Interests
5.A.2 The Complainant states that long after it established rights in and to its BABY ESSENTIALS trademark, which are used in connection with a wide variety of consumer goods for use by infants and their patents, the Respondent registered and began using the disputed domain name to resolve to a website advertising third party websites offering the same range of products. Consequently, by reason of its prior rights in the BABY ESSENTIALS trademark, the Complainant’s case is that the Respondent has no right to make such use of the disputed domain name nor any legitimate interest in that name. That use, the Complainant says, wrongfully leads the public to believe that the Respondent’s business is associated with and/or authorised by the Complainant. Registered and Used in Bad Faith
5.A.3 Here, the Complainant’s case is as follows. First, the Complainant reiterates that “[l]ong after Complainant’s adoption and use of the BABY ESSENTIALS trademarks, Respondent registered and commenced the use of the infringing Domain Name, which contains a piratical and unauthorized use of the BABY ESSENTIALS trademark”.
5.A.4 Second, the Complainant says that “[t]here can be no legitimate business reason provided for Respondent’s use of the BABY ESSENTIALS trademark in connection with the infringing Domain name and Respondent’s business”. 5.B. Respondent The BABY ESSENTIALS trademark
5.B.1 The Respondent’s case is the BABY ESSENTIALS trademark is entirely descriptive. Although the Complainant is the registrant of the BABY ESSENTIALS US trademarks listed under paragraph 4.A.3 above, the Respondent points to numerous third party uses. For example, a Google search for “baby essentials” yielded 504,000 search results from numerous websites offering a wide range of baby goods and services which have no connection with the Complainant. Examples include.
Term Website
New Baby Essentials and New Mother Essentials
mamanad
Real Baby Essentials
Bay Essentials and Products
New Baby Essentials
Put Safety First When Picking Baby Essentials
Top 10 Baby Essentials
Interactive Baby Essentials
Summer Infant Baby’s Essentials Kit
What are the absolute baby essentials?
Top Ten Baby Essentials
Bay Essentials for First-Time Moms
Green Baby Essentials
Baby Essentials that are ok to buy used
5.B.2 As further evidence of third party use of the term “essential” in relation to babies, the Response refers to and exhibits the results of a Google Search for pages containing both the words “baby” and “essentials” which yielded 10.3 million webpages. The Response also refers to and exhibits the results of a Google search for the term “essential for a baby” which yielded 226,000 third party results. The term “essentials for a baby” yielded 36,400 such results.
5.B.3 The Response lists 5 US trademark registrations which incorporate the words “baby “ and “essential”. Some of these were filed after the Complainant began use of its BABY ESSENTIALS trademark in September 2005 but none were opposed by the Complainant. They are
US Trademark Reg. No. Trademark Class of Goods and Services When applied for and registered
2796079 BABY’S ONLY ESSENTIALS
5
Filed: February 7, 2002
Registered: December 16, 2003
App. 77774350 ESSENTIAL BABY
3
Notice of Allowance: April 6, 2010
3516133
LUXURY AND LIFESTYLE ESSENTIALS FOR BABY, CHILD AND WOMAN
35
Filed: March 18, 2008
Registered: October 14, 2008
App. 77851345
WEGO BABIES BABY ESSENTIALS
Filed: October 19., 2009
Notice of Allowance: May 25, 2010
App. 77714840
AWAY BABY ESSENTIALS LUXURY
5.B.4 Finally, the Respondent says that the Complainant purchased an earlier filed BABY ESSENTIALS trademark (US Reg. No. 1917345) from a third party (Primex International Corporation) on May 16 2003 for USD 30,000. That trademark was registered in September 1995. However, according to the Complainant’s filing with the US Patent and Trademark Office (USPTO), it did not commerce use of the mark until September 1, 2005. Consequently, the Respondent submits that no use was being made of the BABY ESSENTIALS mark by the Complainant or its predecessor in title to the 1995 BABY ESSENTIALS trademark registration between May 16, 2003 and September 1, 2005.
5.B.5 In sum, the Respondent’s case is that although the earliest BABY ESSENTIALS trademark was registered in the United States in 1995, it was only acquired by the Complainant in 2003 and first used by the Complainant in September 2005. The disputed domain name was first registered in May 2002, was acquired by the Respondent in August 2006 and was first used by the Respondent in October 2006 to derive revenue from a pay-per-click website with links to websites offering baby and children goods. The words “baby” and “essentials” are descriptive and are used by the Respondent for not only the disputed domain name but also for the other “baby” and “essentials” descriptive domain names identified in paragraph 5.B.1 above of which the Respondent is also the registrant. Additionally, there is significant third party usage of the words in combination, namely “Baby Essentials” in other websites totally unrelated to the Complainant.
5.B.6 In all the circumstances, the Respondent’s case is that it has rights and legitimate interests in the disputed domain name which was registered and has always been and continues to be used by the Respondent in good faith. Identical or Confusingly Similar
5.B.7 The Respondent simply states that it takes no position regarding the enforceability of the Complainant’s BABY ESSENTIALS trademark rights in this administrative proceeding. Rights and Legitimate Interests
5.B.8 On the basis that “Baby Essentials” is a descriptive term, provided a respondent does not register the disputed domain name with the Complainant’s trademark in mind, the Respondent’s case is that it is entirely legitimate to register and use such domain name. Such descriptive terms are registerable on a “first come, first served basis”.
5.B.9 The Respondent says that it registered the disputed domain name based solely on its descriptiveness without knowledge of, or an intent to target, the Complainant or its BABY ESSENTIALS trademark. As to the descriptiveness of that term, the Respondent relies on the facts summarized in paragraphs 5.B1 to 5.B.4 above. Hence, the Respondent says that it has demonstrated rights and legitimate interests in the disputed domain name within paragraph 4(c)(i) of the Policy.
5.B.10 If the Complainant believes it has exclusive right to use the BABY ESSENTIALS trademark, the Respondent suggests that it would have filed oppositions to the third party trademarks and trademark applications identified in paragraph 5.B.3 above. However, it did not do so.
5.B.11 The legitimacy of the Respondent’s interests in the disputed domain name is illustrated, the Respondent says, by the fact that it uses that name to advertise links to websites which offer baby and children goods and services. These are goods and services covered by the descriptive term “baby essentials”. Furthermore, using a domain name to generate pay-per-click revenue is, the Respondent says, an entirely bona fide use under the Policy. The Response cites numerous decisions under the Policy where such use has been held to be bona fide. Registered and Used in Bad Faith
5.B.12 The Respondent’s case is as follows. Firstly, as stated in paragraph 5.B.9 above, it had no knowledge of the Complainant’s BABY ESSENTIALS trademark when it registered the disputed domain name in August 2006. It was simply registered as a common descriptive term and because the original (2002) registrant failed to renew it and the domain name was consequently deleted.
5.B.13 A complainant cannot, the Respondent says, assert an exclusive right over a common generic term. Furthermore, as noted in paragraph 4.B.2 above, the Respondent has registered over 60 other domain names incorporating one of the words “baby” or “essentials”. Quite simply, the Respondent says, there is no evidence that the disputed domain name was registered in bad faith to prey on the Complainant’s trademark.
5.B.14 Second, the Respondent points to the fact that the Complainant did not have long established use of the BABY ESSENTIALS trademark at the time (August 2006) when the Respondent registered the disputed domain name. Although the earliest BABY ESSENTIALS registration dates back to 1995, the mark was not acquired by the Complainant until 2003 and the Complainant did not begin to use the mark until September 2005. In the circumstances, the Complainant cannot say that, when the disputed domain name was registered in August 2006, the Complainant’s BABY ESSENTIALS mark was a well-known mark such that the Respondent should have had knowledge of it. The Respondent was not aware of the trademark. The Respondent simply registered the disputed domain name when the former registrant failed to renew it in August 2006 and began using it for a pay-per-click website two months later in October 2006.
5.B.15 Third, substantial third party use of the words “baby essentials” lends credence, the Respondent says, to its lack of knowledge of the Complainant’s registered trademark.
5.B.16 Fourth, registering a deleted descriptive domain name, like the disputed domain name, is – the Respondent says – entirely legitimate and recognized as such by several decisions under the Policy.
5.B.17 Fifth, where a complainant makes an unsolicited enquiry as to whether a domain name is available for purchase – as the Complainant did in this case – it cannot be an indication of bad faith for the respondent to offer to sell it at a profit. There is no reason why parties may not speculate in domain names provided that they have no intention to profit thereby from another party’s trademark. Bad faith only arises where a domain name is registered with the intention of selling it to the trademark owner at a profit. There is, the Respondent says, no evidence of such intention in this case.
5.B.18 Sixth, the fact that the disputed domain name is registered under a privacy service is entirely legitimate. Further, the Respondent did not use the privacy registration in an attempt to evade service of the Complaint.
5.B.19 Seventh and finally, if the Complainant really did believe that the disputed domain name was registered and used in bad faith, why – the Respondent asks – has it taken the Complainant so long to bring this Complaint. The Respondent began using the disputed domain name for a website offering baby goods and services in October 2006. Given all the other circumstances in this case, such delay is, the Respondent says, indicative of a lack of belief by the Complainant in the merits of the Complaint. 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
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 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 disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant clearly has registered trademark rights in BABY ESSENTIALS which date back to 1995 (paragraph 4.A.3 above) and the disputed domain name is identical to that trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.6 The Complainant’s evidence is that the disputed domain name is used for a pay-per-click website containing links to baby goods and services provided at other websites. This, the Complainant says, conflicts with its prior use of the BABY ESSENTIALS trademark for similar goods and will cause the public, wrongly, to believe that there is some connection with its business and the Respondent’s website.
6.7 The Respondent’s evidence is that the first knowledge it had of the Complainant’s BABY ESSENTIALS trademark was when it received this Complaint. The Respondent says the words are descriptive, they are widely used by third parties and the disputed domain name is only one of a large number of descriptive domain names registered by the Respondent which incorporate the words “baby” and “essentials”. According to the Respondent, its use of the disputed domain name since October 2006 has, and continued to be, in connection with a bona fide offering of baby goods and services.
6.8 Had the Complainant’s BABY ESSENTIALS trademark been widely used and, hence, well-known in August 2006 when the Respondent registered the disputed domain name, there might have been basis for the Complainant’s case under paragraph 4(a)(ii) of the Policy. However, the facts are that the mark, although registered, is descriptive of the goods to which it is applied, that the words comprising the trademark are widely used by other parties dealing in such goods, and the Complainant appears to have only begun to use the BABY ESSENTIALS trademark in September 2005, less than 12 months before the Respondent acquired the disputed domain name in August 2006. Further the disputed domain name was first registered in May 2002, some 3 years prior to the date when the Complainant began using BABY ESSENTIALS registered trademark in September 2005. Still further, the other BABY ESSENTIALS registered trademarks upon which the Complainant relies were all registered many years after the disputed domain name was first registered.
6.9 In the circumstances, the preponderance of the evidence points to the Respondent having rights and legitimate interests in the disputed domain name, which it has used consistently and without objection from the Complainant for almost 4 years. The first registration of the disputed domain name dates back still further to May 2002. Accordingly, the Complaint fails to fulfill the requirement of paragraph 4(a)(ii) of the Policy. But, even if the Complainant had succeeded under that requirement, the Complaint would still have failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy for the reasons set out below. Registered and Used in Bad Faith
6.10 Without repeating the facts summarized above, it is apparent that the Complainant has not demonstrated any of the circumstances of paragraph 4(b) of the Policy which evidence bad faith registration and use by the Respondent, nor does the Complaint contain any other evidence upon which a bad faith finding on the part of the Respondent could be based. 7. Decision
For all the foregoing reasons, the Complaint is denied.
David Perkins
Presiding Panelist
Steven Auvil
Panelist
The Hon Neil Brown QC
Panelist
Dated: September 22, 2010
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