The Complainants are Alan and Denise Fields d/b/a Windsor Peak Press of Boulder, Colorado, United States of America, represented by Hutchinson Black and Cook LLC, United States of America.
The Respondent is Babies 411, LLC of Austin, Texas, United States of America, represented by Law Office of Griffin D. Vance PC, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Go Australia Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2011. On April 20, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 20, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 27, 2011. 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” 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 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2011. The Response was filed with the Center on May 18, 2011.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 7, 2011. 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. 4. Factual Background
The Complainants, a couple residing in Boulder, Colorado, United States and doing business as Windsor Peak Press, are authors and publishers of consumer and parenting advice books. The Complainant Denise Fields has written a series of parenting advice books with co-author Dr. Ari Brown, a pediatrician. The first of these, Baby 411, was originally published in 2003, and then in substantially revised versions in 2005, 2007, and 2009. Editions of Toddler 411 were published in 2006, 2008, and 2010, while Expecting 411, by Michele Hakaktha and Dr. Ari Brown, appeared in 2010. The Complaint states that “411” is used in these book titles because it suggests “information” to North American readers, since that number has long been used for telephone directory information services across the United States and Canada.
The Complainants own the domain name , which redirects Internet users to the Complainants’ website at . The Complainants’ website promotes the Complainants’ books and features a parenting guide and discussion board. The Complainants also promote their books in advertising and local appearances, and the books have been discussed in print and broadcast media in the United States as well as on third-party parenting websites.
The Complainants assert that they use BABY 411 as an identifying mark for the Baby 411, Toddler 411, and Expecting 411 series of books. The claimed mark appears prominently on the covers of the successive editions of Baby 411 and also those of Toddler 411 and Expecting 411, although it is not accompanied by the “TM” symbol asserting unregistered trademark rights. In the United States, a single book title normally cannot be registered as a trademark, but a mark associated with a series of books, including multiple, substantially revised editions of the same title, may be registered. See United States Patent and Trademark Office (USPTO) Trademark Manual of Examining Procedure (TMEP) sections 1202.08(b) and (c) (7th ed., 2010); 2 McCarthy on Trademarks and Unfair Competition section 10:6 (4th ed. 2011). The Complainants filed three applications with USPTO on April 13, 2010 to register “Baby 411” as a standard-character mark (disclaiming the right to use “BABY” apart from the mark as shown); those applications are pending.
The Complaint attaches evidence of the popularity of the Complainants’ Baby 411 books. More than 300,000 copies have been sold to date, 200,000 by the end of 2008. In March 2010, Nielson BookScan, a publishing industry resource in the United States, ranked the fourth edition of Baby 411 among the top ten bestsellers in the paperback “Family/Relations” category, while the third edition of Toddler 411 ranked in the top forty. The fourth edition of Baby 411 was also recently ranked as the number one bestselling reference book on parenting and families on A, and number four in that category on AllB. In January 2009, shortly before the Respondent registered the Domain Name, Nielson BookScan listed Baby 411 among the top twenty-five paperback family/relations bestsellers in the United States.
The Respondent is a Delaware limited liability company that was formed in February 2009, by Diba Tillery, a registered nurse in Austin, Texas. The Respondent registered the Domain Name on February 14, 2009, and uses it for a website headed “Babies 411”, with the tagline “Babies Are Our Business”. The Respondent’s website publishes parenting advice and resources including articles and instructional videos, displays third-party advertising for baby products, and features e-commerce pages “Powered by Amazon”, through which website visitors can purchase a range of products designed for parents. These include the Complainants’ Baby 411, Toddler 411, and Expecting 411 books, as well as parenting books from other sources (including at least one with which the Respondent is associated) that in some respects compete with the Complainants’ books. According to the Respondent, four employees and four external experts develop and review material for the Respondent’s website, which has attracted more than a million site visits so far in 2011. The “Babies 411” YouTube page has delivered more than 339,000 views of the Respondent’s instructional videos.
The Respondent applied to USPTO on October 9, 2009, to register a “Babies 411” design mark prominently featuring the words, “Babies 411 Babies Are Our Business”. The Complainants have submitted an opposition to that application. The Respondent has also filed oppositions to the Complainants’ pending USPTO trademark applications for “Baby 411”.
In May 2010, the Complainants’ representative sent a letter to the Respondent alleging trademark infringement and demanding the transfer of the Domain Name. The parties failed to resolve the dispute in the ensuing exchange of correspondence, and this proceeding ultimately followed. 5. Parties’ Contentions A. Complainant
The Complainant claims common law rights in the unregistered mark BABY 411 and asserts that the Domain Name is confusingly similar to that mark. The Complainant argues that the Respondent targeted the mark in bad faith in registering a confusingly similar company name and the Domain Name, using the latter to divert Internet users to the Respondent’s competing website. B. Respondent
The Respondent challenges the Complainants’ claims for common law trademark protection. The Respondent denies prior knowledge of the Complainants or their books and denies any intent to trade on the Complainants’ reputation. The Respondent claims a legitimate interest in using the Domain Name for a business known by the same name and argues that the trademark dispute between the parties, which is before the USPTO, should not be resolved in the context of a UDRP administrative proceeding. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Complainant claims “Baby 411” as a common law mark associated with a series of books. The Respondent challenges that claim. The Respondent contends that the asserted mark is comprised merely of descriptive terms and observes that the Complainants themselves have not signaled trademark claims by displaying the “TM” symbol on the book covers or in advertising the books on the Complainants’ website. The Respondent has opposed the Complainants’ pending applications with USPTO to register “Baby 411” as a mark.
There is substantial evidence in the record supporting the Complainants’ claim for common law trademark rights in BABY 411. Moreover, it appears from the USPTO database that a Notice of Allowance was issued on June 7, 2011, for one of the applications, indicating that the mark may be registered if the Complainants submit an acceptable Statement of Use within six months. Under these circumstances, the Panel would be reluctant to conclude that the claimed mark is merely descriptive and unregistrable, or that a court in the United States would not recognize common law rights in the mark. However, given the Panel’s conclusions on the other elements of the Complaint, it is unnecessary to reach a decision in this proceeding concerning the Complainants’ claims for common law trademark rights. B. Rights or Legitimate Interests
The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could demonstrate rights or legitimate interests in a domain name, including:
“(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”
It is uncontested that the Respondent has been known by a name corresponding to the Domain Name since February 2009, when it was organized and registered as a limited liability company, and also registered the Domain Name. It is also uncontested that, before notice of this dispute, the Respondent began conducting a substantial business under that company name, using the website associated with the Domain Name. These facts would normally establish the Respondent’s rights or legitimate interests for purposes of the Policy, paragraphs 4(a)(i) and (ii).
However, the Respondent’s assertion of rights or legitimate interests would be undermined if the Complaint established the likelihood that both the Domain Name and the company name were selected precisely to abuse the Complainants’ mark, had it been necessary and the Panel had concluded the Complainant possessed such rights. That would call into question the Respondent’s use of the Domain Name in connection with a “bona fide” offering of goods or services under Paragraph 4(c)(i). See Telephone and Data Systems, Inc. v. TDS Holdings,WIPO Case No. D2010-1422, citing Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847. Further, the Panel endorses the conclusion expressed in World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642, concerning the application of Paragraph 4(c)(ii) in such circumstances:
“It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to ‘create’ a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy.”
Thus, the question of the Respondent’s rights or legitimate interests in this case hinges on the strength of the Complainants’ argument that the Respondent must have selected the Domain Name, as well as the Respondent’s company name, in contemplation of the Complainants’ mark, hoping to trade on the Complainants’ reputation. That argument is more fully addressed below in the discussion of the Respondent’s alleged bad faith in the registration and use of the Domain Name. C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, on which the Complainants implicitly rely:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainants argue that the Respondent must have been aware of the Complainants’ popular Baby 411 books in February 2009, when the Domain Name was registered, since the books had sold well by then and were mentioned in advertising, media stories, and parenting websites. The Complainants observe that the Respondent’s website emphasizes that Respondent had researched the sometimes conflicting advice published for parents and expectant parents and decided to provide a reliable online source for such advice. According to the Complainants, it is, therefore, probable that the Respondent became aware of the Baby 411 books and chose the Domain Name to take advantage of their popularity, hoping to exploit that popularity to attract consumers to the Respondent’s new parenting website. This is possible, of course, but the Panel does not find that the record establishes that advertising and commentary about the Complainants’ Baby 411 books was so pervasive that anyone in America looking into parenting advice must have become aware of them.
The Respondent denies prior knowledge of the Complainants’ books and points to the very large number of publications on the market offering advice to parents of babies. Moreover, the Respondent argues that “baby” and “411” are “dictionary” terms that are used together in a generic sense by a number of third parties, including use in domain names such as , , , , and . The Respondent furnishes many other examples of domain names adding “411” to a word or phrase indicating the subject matter of the associated website. The Panel notes that “411” is indeed used as shorthand for “information or knowledge” in contemporary informal American usage, as indicated in online dictionaries of American English such as D, MSN Encarta, MacMillanD, TheFreeD, UrbanD, and B.
It is plausible, therefore, that the Respondent selected the Domain Name for its generic value, and the Respondent has used the Domain Name in a manner appropriate to its generic sense, publishing information about caring for babies, along with paid advertising for baby products. The Domain Name has obvious appeal for this purpose, and the Respondent has expended considerable time and money in building a related website and business, with a graphic logo for which trademark registration is pending. On balance, it appears more likely that the Domain Name was chosen for its generic value for a parenting website with “the 411” (information) about babies, rather than for the possibility of misleading Internet users seeking information about the Complainants’ Baby 411 books. The fact that visitors to the Respondent’s website can find and purchase books about parenting, including the Complainants’, through A links does not suffice to establish that the Respondent targeted the Complainants’ unregistered mark in selecting and using the Domain Name.
The burden of proof on this issue, as with each of the elements of the Complaint, is on the Complainant. In a UDRP proceeding, there is no opportunity to conduct discovery, cross-examine witnesses, or assess their demeanor. On the available record, the Panel is presented with a credible, certified Response denying prior knowledge of the Complainants’ asserted mark, accompanied by ample evidence of the generic value and use of the Domain Name. Based on that record, the Panel finds that neither the second nor third elements of the Complaint have been established. 7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: June 29, 2011
Full & Egal Universal Law Academy