1.1 The Complainant is Jobs on the Net Limited, Andrew Middleton of Surrey, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Kingsley Napley LLP, U.K.
1.2 The Respondent is International New Media Limited of Milton Keynes, U.K., represented by Adlex Solicitors, U.K. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2011. On September 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 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.
3.2 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”).
3.3 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 September 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2011. The Response was filed with the Center on October 3, 2011.
3.4 The Center appointed Matthew S. Harris, Frederick M. Abbott and Dawn Osborne as panelists in this matter on October 20, 2011. 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.
3.5 On October 17, 2011 the Complainant filed a supplemental submission in response to the Respondent’s response. In an email on October 19, 2011 the Respondent’s representative claimed that the Complainant has failed to demonstrate “exceptional circumstances” to justify that filing but requesting that if the Panel was minded to admit that filing, that the Respondent be given an opportunity to respond. 4. Factual Background
4.1 The Complainant has since September 1999 provided recruitment services for the childcare sector through a website operating from the domain name. The website provides various forms of childcare information and nannies and other child caretakers are able to advertise for work.
4.2 As at the date of this Complaint the website comprises a number of pages in the top left hand corner of which is the following logo:
The website contains a page in which the Complainant states that anyone linking to its site should use one of a number of variations of that logo. However, in places the term “Nannyjob” is also used alone as a name for the Complainant’s business.
4.3 The logo has been used on the website since 2005. How exactly historically the term “Nannyjob” has been used on the Complainant’s website is less clear.
4.4 In the early years following 1999, the Complainant’s revenue from its website was, to use the Complainant’s own words, “modest”. However, the business appears to have received a boost when in April 2005 it was featured in an article in U.K. national newspaper “The Sun”, and which recorded that David and Victoria Beckham had advertised on the Complainant’s website (identified as “www.”). By September 2008, monthly revenues had reached £10,000 per month. Thereafter, there was a dip in revenue but these had returned to approximately £11,000 per month in January 2011.
4.5 On December 19, 2007 the Complainant filed an application for a trade mark for the word marks NJ NANNY JOB and NJ NANNYJOB. This proceeded to registration in classes 35, 38 and 45 on October 17, 2008.
4.6 The Respondent is a U.K. registered company that is controlled by one Richard Conway. The Respondent appears to accept that the company and Mr. Conway can be treated as one person for the purposes of the Policy.
4.7 Mr. Conway is a successful Internet entrepreneur whose involvement in the business of domain name registration stretches back at least to 1997. He was one of the unsuccessful defendants in the well-known case (at least to English trade mark lawyers) of Marks & Spencer and others v. One In A Million Ltd and others [1998] EWCA Civ 1272 (July 23, 1998). This was the first case before the Court of Appeal in England to consider whether the registration of domain names that incorporated the trade marks of others infringed trade mark rights and/or offended against the English law of passing off.
4.8 Since 2007 the Respondent has acquired or registered a large number of nanny and childcare related domain names. The first of these, , was acquired on May 18, 2007 and another three similar domain names including were acquired later that year. In 2008 a further 17 domain names were registered or acquired including on July 11, 2008. The acquisition of these sorts of domain names continued in 2009 and by April 2, 2009 the Respondent had built up a portfolio of 32 childcare related domain names.
4.9 On April 8, 2009 Mr. Conway approached the Complainant by email enquiring as to whether the Complainant was interested in selling the Complainant’s “www.” website. Although the Complainant indicated it might be, these overtures did not result in any agreement. In the meantime, the Respondent’s childcare related domain name portfolio continued to increase with the acquisition or registration of another 17 domain names that year.
4.10 In 2009 the Respondent began to operate a website in competition to that of the Complainant from the domain name .
4.11 In January and February of 2010 the Respondent registered a further 10 child care related domain names bringing its portfolio to 59 domain names. On April 7, 2010 the Respondent acquired the Domain Name which is the subject matter of these proceedings. Since then the Respondent has registered a further 6 similar domain names increasing its total portfolio to 65.
4.12 It appears that the Respondent’s website operating from the domain name has become significantly more successful than that of the Complainant with a turnover of over £100,000 per month. It claims to be the largest online resource for nannies and childcare in the U.K.
4.11 It also appears that the Respondent’s domain name portfolio of childcare related domain names, including the Domain Name, has at all material times been used to redirect Internet users to the Respondent’s domain name . 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that by reason of its use of the term “nannyjob” it has common law rights in that term. It is claimed that such rights are recognised in English law “even if [the words in which such rights are claimed] were originally descriptive”.
5.2 The Complainant also contends that the Domain Name is confusingly similar to its U.K. registered trade marks.
5.3 The Complaint discusses the Respondent’s link to Mr. Conway and Mr. Conway’s past business history, including his involvement in the One in A Million case. It states that given Mr. Conway’s business history it is “inconceivable” that on acquiring the Domain Name the Respondent would not have checked the ownership and use of the Complainant’s domain name. It also refers to the correspondence between the Complainant and the Respondent and the Respondent’s representative, in which such knowledge is said to be evidenced or admitted.
5.4 It is claimed that given the Respondent’s knowledge of the Complainant’s business activities, the use of the Domain Name to direct Internet users to the Respondent’s competing website cannot provide a bona fide offering of goods or services with the meaning of paragraph 4(c)(i) of the Policy. Further, it contends that the Respondent is not commonly known by the Domain Name, and that the Respondent’s use of the Domain Name does not involve legitimate noncommercial or fair use of the Domain Name.
5.5 The Complainant further contends that the Respondent’s use of the Domain Name falls within the example of bad faith set out in paragraph 4(b)(iv) of the Policy. The final paragraph of the part of the Complaint that deals with the issue of bad faith, contends that the registration of the Domain Name is another example of the bad faith registrations of the sort that Mr. Conway was held to have unlawfully engaged in the One in a Million case. There is also a reference in that final paragraph to another domain name, , which is said to have been registered by Mr. Conway. It is claimed that pages operating from that domain name provide “popular searches” that are associated with Apple’s Ipad, Iphone and Ipod products. The suggestion appears to be that this is in some manner wrongful and/or should inform the Panel’s assessment of bad faith when it comes to the Domain Name. B. Respondent
5.6 The Response submitted in this case is both comprehensive and carefully reasoned.
5.7 It first denies that the Domain Name is similar to any mark of the Complainant. It accepts that the Complainant has trade mark rights in NJ NANNY JOB but contends that the “nanny job” element of that mark is generic and descriptive and that the Complainant has failed to prove secondary meaning in that term.
5.8 It contends that this is a case similar to that in Pet Warehouse v. Pets.Com, Inc.WIPO Case No. D2000-0105 (); City Utilities of Springfield, Missouri, aka City Utilities v. Ed Davidson,WIPO Case No. D2000-0407 (); Bar Code Discount Warehouse, Inc. v. Barcodes, Inc., dba Barcode Discount and Dan Reynolds,WIPO Case No. D2001-0405 (, ); Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE,WIPO Case No. D2003-0645 (, ).
5.9 In support of this proposition it refers to the existence of approximately 40 U.K.-related domains “comprising ‘nannyjob(s)’ and similar variations”. Reference is made here of trading websites such as “” and “www.london”.
5.10 Further, it contends that even if the term “nannyjob" were capable of generating rights, the descriptive nature of the term would mean that the Complainant would face a “hugely difficult task” of showing this in this case. It also claims that the Complainant itself uses the term in a descriptive manner, referring to various statements on the homepage of the Complainant’s website including the phrase “The Nanny Jobs website” and the use of “nanny jobs” as meta-keywords.
5.11 The Complainant also refers to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) which states:
“Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.”
5.12 Here it claims that the Complainant’s case of distinctiveness is undermined by its prominent use of another name and logo, namely the “NJ Nannyjob” name and logo referred to in Section 4 of this decision. Further, it claims that the page of the Complainant’s website in which the Respondent states that anyone linking to its site should use one of a number of variations of that logo, is important since it sets out in the Complainant’s own words how the Complainant wishes third parties to refer to it. Presumably the contention is that the fact that the Complainant does not consent to the use of the term “Nannyjob” alone carries with it the implication that in some manner the Complainant accepts that this term is not one that is exclusively associated with the Complainant.
5.13 As a matter of fact the Respondent also disputes that the Complainant’s website is well known. Citing an A analysis that the Complainant’s site is ranked 8,548 (to be contrasted with the Respondent’s ranking of 3,503).
5.14 Further, the Respondent cites various U.K. case law on the issue of secondary meaning. This includes the decision of the House of Lords in Office Cleaning Services v Office Cleaning Association (1946) 63 RPC. It refers to the statement (at page 43) of Lord Simonds in this case:
“… that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avoid confusion."
5.15 So far as the Complainant’s registered trade mark is concerned, the Respondent contends that the dominant part of the mark are the letters “NJ”. Its position is perhaps best encapsulated by the assertion; “One cannot say that ‘NJ NANNY JOB’ is confusingly similar to ‘NANNY JOB’ any more than one can say that ‘MS SOFTWARE’ is confusingly similar to ‘SOFTWARE’. It relies in this respect on the decisions in British Meat case supra and BFS of the Americas LLC, dba Battery Filling Systems v. Matthias Pahlke, Fillwatch Landau GmbH, WIPO Case No. D2008-1786.
5.16 On the issue of rights or legitimate interests, the Respondent contends that the Domain Name forms part of a general portfolio of child care related domain names. The purpose of all these registrations was “to attract traffic from [I]nternet users searching for generic terms relating to the childcare industry” and the registration of the Domain Name “had nothing to do with diverting traffic from the Complainant, the Respondent’s smaller competitor.”
5.17 The Respondent also relies on the fact that the portfolio of domain names include , which was acquired on July 11, 2008 and which the Respondent contends is “materially indistinguishable from , and yet the Complainant has raised no objection [to this domain name]”. This is said to illustrate “the impossibility of the Complainant’s position”.
5.18 The Respondent does not dispute that the Respondent was aware of the Complainant at the time of registration of the Domain Name. However, it contends that knowledge “is irrelevant where the Respondent registered a generic domain name for a generic purposes and then [used] the [D]omain name for that exact generic purpose”. It cites in this respect EMAP USA, Inc. v. Dick Jurgens d/b/a Mobile Dick’s Cycle Clinic,WIPO Case No. D2001-0311 (); Ciphergen Biosystems v. David Sabatini,WIPO Case No. D2002-0600 (), and Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270 ().
5.19 The Response also discusses at length the One in a Million case in which Mr. Conway was involved. It claims that this occurred when Mr. Conway was a 23-year-old student at York University and where the law as to domain name registration remained unclear. As such it is said to be historic and of no relevance to these proceedings. More significant is said to be the fact that in the 15 years since that case and notwithstanding that the Respondent controls a portfolio of 800 domain names, the Respondent has not been involved in a single UDRP, Nominet or similar case. The document also addresses the claims made by the Complainant in relation to the domain name as an attempt “to pin some vague and unspecified wrongdoing on the Respondent where plainly none exists”.
5.20 The Respondent also denies that the use of a privacy service is significant. The Respondent claims that Mr. Conway runs his business from his home and was uncomfortable using this address for his registrations. A privacy service was therefore used from 2009 for “most of his domains”, but in June 2010 he set up a P.O. Box address and has used this for his domains from that date, switching from one to the other as the privacy service for each domain expired. The Respondent also suggests that the allegation that the use of a privacy service was to disguise the Respondent’s identity makes little sense given that the Domain Name was redirected to the Respondent’s website.
5.21 Finally, the Respondent refers to paragraph 2.2 of the WIPO Overview 2.0 which states as follows:
“Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name ‘apple’ if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). […] Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
5.22 On the issue of bad faith, the Respondent states that it “relies upon the arguments raised above in connection with “rights and legitimate interests”. C. Supplemental Submissions
5.23 The Panel is unconvinced that the Complainant has shown sufficiently exceptional circumstances to justify the admission of a further submission in this case. In the circumstances, and in accordance with paragraphs 10 and 12 of the Rules, the Panel has disregarded the contents of that document and there is no need to address the Respondent’s request that it be permitted to file a further submission in reply. 6. Discussion and Findings
6.1 According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
6.2 The Complainant in this case relies upon both registered and alleged unregistered trade mark rights. It is convenient first to address the question of this part of the Policy by reference to the registered rights. As has already been explained it is clear that the Complainant has registered rights in the word marks NJ NANNY JOB and NJ NANNYJOB. In a nutshell, the issue is whether the Domain Name is confusingly similar to those registered marks given the Respondent’s contention that the term “nannyjob” is merely descriptive.
6.3 The issue of confusing similarity is described in paragraph 1.2 of the WIPO Overview 2.0 as a “threshold test”. What this means was discussed at some length in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227, in which the panel concluded that the threshold was a low one and that this would mean, for example, that in most (although not necessarily all) cases where a domain name reproduced in its entirety the trade mark of a complainant then the confusing similarity test would be satisfied.
6.4 It might be argued that if this low threshold applies then in a case such as this where the distinction between the mark and the domain name arises not by reason of the addition of text in the domain name but the absence of just two out of 10 letters then, that low threshold will be satisfied.
6.5 Of course, the Respondent claims that NJ is the only distinctive element of the Complainant’s mark and therefore if this is omitted nothing distinctive remains. In this respect it relies upon the British Meat decision supra, which indeed supports its position. In that case the panel refused to find that there was confusing similarity between and and a trade mark that took the following form:
6.6 In that case the panel reasoned as follows:
“The Panel is not satisfied by the evidence that the term BRITISH MEAT has itself become distinctive of the Complainant. As Jacob J. pointed in the Treat case, British Sugar v Robinson [1996] RPC 281, even extensive use of a common English word or phrase does not of itself show that the word or phrase has acquired a secondary meaning distinctive of the user, in the absence of evidence that this has in fact led to its being regarded as a trade mark by the relevant public.
In this respect, the Panel considers that this case is somewhat different fromWIPO Case No. D2001-0862, , concerning the same Respondent. Although the phrase ‘Countryside Alliance’ has a descriptive connotation, it was not in normal use as a descriptive term prior to its adoption as the name of a particular organization. By contrast, BRITISH MEAT was and is a normal and natural description of meat produced in Britain.
This leads to the next question, whether the Domain Names are confusingly similar to the marks in which the Complainant has rights. In considering this issue, it is appropriate to bear in mind the observations of Lord Simonds in Office Cleaning Services v Westminster Window and General Cleaners (1946) 63 RPC 39, that where names consist of descriptive elements, small differences suffice to distinguish.
It is also notable that the Respondent has apparently had active websites at the Domain Names for some six and five years respectively without overt objection from the Complainant. Although laches is not a defence in itself under the Policy (seeWIPO Case No. D2003-0447, ), the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.
In discussing the issue of bad faith, the Complainant alleges that it is aware of numerous instances of confusion and identifies several types of situation[s] in which confusion has allegedly occurred. However, the Complaint does not contain specific details or evidence of these incidents, and the descriptions of the situations are all consistent with the Respondent’s website being identified in response to searches using the descriptive term ‘British Meat’ in search engines. The Panel can attach little weight to this evidence.
The Panel is not satisfied on the evidence as a whole that the Domain Names are confusingly similar to any marks in which the Complainant has rights. Given that the term ‘British meat’ is the normal and natural term to describe meat produced in Britain, the Panel is not satisfied that the Domain Names would be regarded by Internet users as indicating a website of the Complainant.
Although each case turns on its particular facts, it may be noted that similar views have been reached in a number of decisions under the Policy where the SLD of the disputed domain name is a descriptive term which forms part of the Complainant’s logo or device mark: seeWIPO Case No. D2000-1816, ,WIPO Case No. D2001-0047, ,WIPO Case No. D2001-0565, andWIPO Case No. D2001-0964, .”
6.7 At its heart the reasoning in the British Meat case addresses a concern that many registered trade marks may only be able to proceed to registration because a non-distinctive element that could not have been registered alone (for example the words “British Meat”) has been combined with some distinctive feature (for example, a distinctive font or logo). If this is so, there is an understandable reservation amongst panellists that such a mark can be relied upon under the UDRP in circumstances where only the “non-registrable” element is relied upon. It a point that the Respondent itself makes when it asserts in the Response
“The Respondent would not be surprised to learn that the Complainant opted to apply for this trade mark, and to use the ‘nj’ prefix in its name, because it had been advised that the term ‘nanny job’ alone was unregistrable and unprotectable.”
6.8 In the case of some trade mark registries the issue is addressed by the registry requiring the non-distinctive element of the mark to be expressly disclaimed. If the only similarity between the mark and domain name in issue is the disclaimed element, then there can be no similarity and a claim under the Policy will fail (see, for example, Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS,WIPO Case No. D2005-0035). However, the approach to disclaimers varies from registry to registry. For example, in the U.K. Intellectual Property Office (the relevant registry so far as the Complainant’s registered marks are concerned), while it may sometimes be in the interest of the registrant to disclaim certain words, the inclusion of a disclaimer is voluntary (see paragraph 62 in Chapter 6 of the Trade Marks Work Manual).
6.9 That said, the approach in the British Meat case if taken too far can involve a panel embarking upon an assessment of the exact extent of a complainant’s trade mark rights that a panel under the Policy may be ill equipped to address. There are also plenty of cases under the UDRP where panels appear to have taken a somewhat more permissive approach. Further, and in any event, the less distinctive the element relied upon by the complainant, the harder it will be for the complainant to satisfy the other requirements of the Policy. In the circumstances, and if the first element of the Policy sets up a standing requirement, then these issues may be better addressed under those elements of the Policy.
6.10 With this in mind, the Panel respectfully declines to follow the reasoning in the British Meat case insofar as that case is said to be authority for the proposition that a complainant must show that a part of the mark relied upon has acquired secondary meaning in the sense that it has become exclusively associated with the complainant’s goods and service. Instead, the Panel is of the view that the dismissal of a complaint under the first heading of the Policy on the ground that only a non-distinctive element of a registered trade mark has been taken, should be restricted to those cases where it is clear that the element of the trade mark relied upon is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the mark is registered.
6.11 With these conclusions in mind, is it correct to say that the term “Nannyjob” is completely devoid of distinctive character and that it is incapable of distinguishing the Complainant’s goods and services? In this respect the Respondent refers to the Complainant’s own use of the term. That it should do so is unsurprising because if it can be shown that the Complainant is using a term that is alleged to be distinctive in a descriptive manner, that will obviously undermine the Complainant’s case.
6.12 The Complainant has not helped itself in this respect. Its evidenced approach to branding in the present case appears to have been confused and inconsistent. Even if it has consistently used its logo, there is a lack of clarity as to the exact way in which the terms “Nannyjob” and “Nanny job” have been used.
6.13 That said, the Respondent has somewhat overstated its case, when it contends that the Complainant itself uses the terms “NannyJob” in a wholly descriptive manner. As far as the Panel can tell, the term at all times seems to be used (whether as part of the Domain Name, the Complainant’s logos or otherwise) to refer exclusively to the Complainant. For example, the homepage contains the heading “Welcome to NannyJob” and there is also a reference (in what appears to be a link) to “My NannyJob”.
6.14 The Respondent’s argument is stronger when it comes to the use of the phrase “Nanny Jobs” (i.e., with a space between the words and pluralised). There is at least one unambiguous use of the term in a wholly descriptive sense by the Complainant. That is in the content of the “keyword” meta tag where “nanny jobs” is used alongside such terms as “childcare recruitment services” and “child minders”.
6.15 This is also not the sole extent of the Respondent’s evidence on the distinctiveness of the term “Nanny Job”. It also provides a Google search which at first sight appears to show a large number of advertisements in which third parties seek what they call a “nanny job”. It is evidence that the Panel treats with some scepticism as it appears that these are the results of a search conducted against advertisements on the Complainant’s own website. That in turn raises a question as to what extent the use of that exact phrase was unnaturally prompted by the Complainant (for example, those same results seem to show that Complainant repeatedly uses the term nanny job in a generic sense on its website). Nevertheless, it is material that tends to support the Respondent’s case.
6.16 However, ultimately, the Panel rejects the Respondent’s arguments on this point in this case. The reason is that it concentrates too much on how the term might be used generically or descriptively (whether by the Complainant or third parties) rather than the key question which is whether the element of the trade mark relied upon is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the mark is registered.
6.17 In this case the Complainant has registered its mark in classes 35, 38 and 45. The exact scope of these registrations is as follows:
Class 35:
Employment agency and recruitment agency services; advertising services, rental of advertising space on-line; provision of advertising space in whatever medium, print, graphical or electronic; compilation of advertisements for use as web pages on the Internet; compilation of directories for publishing on the Internet; provision of space on web sites for advertising goods and services; business information services provided on-line from a computer database or from the Internet; compilation of information into computer databases; provision of information and advice in relation to the aforementioned services.
Class 38:
Providing access to on-line Internet search engines and directories; providing access to databases on-line; providing Internet chat rooms.
Class 45:
Babysitting services, au pair services, nanny services; all in relation to childcare and babysitting services; provision of information and advice in relation to the aforementioned services.
6.18 A consideration of these specifications makes it clear that they extend far beyond any descriptive or generic use of the term “nanny job”.
6.19 It is no answer to this to assert (as the Respondent has done) that the Complainant has only actually used the term in a descriptive sense and/or has not used the term to the full extent of the marks. Under European trade mark law five years of non-use may well be a ground upon which to bring a claim of invalidity. But the mere fact that at the time of registration or for five years subsequently a mark is not used for the goods and services in respect of which it has been registered, does not make the registration invalid or improper.1
6.20 In the circumstances the Complainant makes out the requirement of the first element of the Policy, i.e., that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
6.21 Given that conclusion it is not necessary for the Panel to address the question whether the Complainant has unregistered rights in the “nannyjob” term so far as paragraph 4(a)(i) of the Policy is concerned. However, for the sake of completeness and given that this has been argued before the Panel, it will do so.
6.22 The issue of whether a complainant has rights for the purposes of the Policy is essentially an issue of local law. It has long been recognised under the Policy that the right to bring proceedings under the English law of passing off may provide rights recognised as trade mark rights under the Policy (see, for example, Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235).
6.23 Some care has to be taken in the use of terms “unregistered” or “common law” trade mark rights or for that matter “goodwill in a name”, given that under the English law of passing off, it is not goodwill in a name that is protected but goodwill in a business and that it is frequently said that in English law there is no such thing as a common law trade mark. Nevertheless, for the purposes of the Policy it is the extent to which the English law of passing off may protect against the use by a third party of a specific unregistered term (rather than other forms of “misrepresentation”) that is important. In this context the terms “goodwill in a name”, “common law trade marks” and “unregistered trade mark rights” remain both meaningful and useful. For a further explanation of the issues here see, for example, 3-004 to 3-006 of Wadlow ‘The Law of Passing-Off’, Fourth edition (see also Audiotech Systems Ltd. v. Videotech Systems Ltd,WIPO Case No. D2008-0431).
6.24 The relevance of “common law” or “unregistered” trade mark rights to the Policy is discussed in greater detail in paragraph 1.7 of the WIPO Overview 2.0. It is a paragraph that the Respondent directly refers to in the Response. The full paragraph describes the “consensus view” to be as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
6.25 The Complainant seeks to rely upon its “longstanding use of the name of the Complainant’s well-known website “www.”. However, as has already been described, the Complainant’s branding on its own website is currently inconsistent and confused. Even if the Panel accepts that the Complainant’s logo has been used in relation to its website for many years, this provides little evidence as to how the term “nannyjob” is understood.
6.26 Significantly, there is simply no evidence before the Panel in these Policy proceedings to support the claim that this term is being extensively used to refer to the Complainant by third parties. The only third party evidence before the Panel as to third party perception of the Complainant is the 2005 article in The Sun. In that article the Complainant is referred to not as “Nannyjob” but simply by reference to the website “www.”.
6.27 In the circumstances, a majority of the Panel (Dawn Osborne dissenting) concludes that the Complainant has failed to show that it has unregistered trade mark rights in the term “nannyjob” alone. B. Rights or Legitimate Interests
6.28 It is clear that the Respondent has no registered trade mark rights in the term “Nannyjob” or “”. Further, it does not use that term as a name for itself but instead uses it to redirect Internet users to its own website in competition to that of the Complainant operating from the domain name. There is therefore no suggestion that the Complainant has “rights” in the Domain Name. The question is whether it has a “legitimate interest”.
6.29 If a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview 2.0). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.30 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question: is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.31 This is a question that is addressed in greater detail when assessing the question of bad faith. C. Registered and Used in Bad Faith
6.32 There is no question that the Respondent was aware of the Complainant at the time that it registered the Domain Name. This is clear from the correspondence between the Complainant and Respondent prior to registration and this fact is confirmed by the Respondent.
6.33 However, as the Respondent rightly contends, knowledge alone is not enough. There usually must also be an intention to take advantage of the Complainant’s rights.
6.34 In this respect, it is clear that the Respondent has at all material times used the Domain Name to draw Internet users to its own website. Further, the only difference between the domain name used for the Complainant’s business and the Domain Name is the different suffix. Put another way, the Domain Name is the “.com” equivalent of the “.” domain name used by the Complainant and vice versa. Frequently those looking for a website (particularly persons in the U.K.) who imperfectly remember its address, will confuse the “.com” and “.” suffixes, and use the “.com” address instead of the “.”.
6.35 In the Response the Respondent contends that “Registration of the [D]omain [N]ame was nothing whatever to do with diverting traffic from the Complainant, the Respondent’s smaller competitor”. However, the Panel is unconvinced by that assertion. It simply does not believe that a U.K. Internet entrepreneur such as Mr. Conway would not have been aware at the time that he acquired the Domain Name that this diversion of traffic would have been a natural consequence of the registration and that he did not intend to take advantage of the same.
6.36 In most cases this would be sufficient for a finding of bad faith. However, the difficulty for the Complainant in this case, is that the Respondent has also brought forward compelling evidence to the effect that the Domain Name forms part of a series of registration of generic terms associated with childcare that could be traced back to 3 years prior to the Domain Name registration. Whilst the Panel does not accept that this particular registration “had nothing to do with” the Complainant’s site, the majority of the Panel (Dawn Osborne dissenting) nevertheless accepts that at the time of registration the Respondent honestly believed that the term was generic or descriptive and that he was entitled to take advantage of the generic or descriptive meaning of the Domain Name (along with other generic registrations) to direct Internet users to his site that promoted services related to that descriptive meaning.
6.37 Although the Respondent does not quite put its case in this fashion, the majority of the Panel (Dawn Osborne dissenting) also sees force in the argument that insofar as the Respondent is taking advantage of a confusion between the two domain names, the cause of that confusion is the Complainant’s choice of a generic term that should be free for all to use rather than any attempt to take illegitimate advantage of any trade mark rights.
6.38 Ultimately, a majority of the Panel concludes that the Complainant has failed to prove its case. Key to that conclusion is the wording of the Policy itself. The Complainant refers to paragraph 4(b)(iv) of the Policy. The Panel agrees that this provision is relevant. It characterises as evidence of bad faith the following circumstances:
“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.”
6.39 As the paragraph describes, what is important here is not whether confusion arises between two domain names but between the Domain Name and “the complainant’s mark”. In this case the majority of the Panel (Dawn Osborne dissenting) has concluded that the Complainant has failed to show trade mark rights in the term “nannyjob” alone. Further, no claim to rights in “” was made. The Complainant has instead satisfied the first element of the Policy because of its trade mark rights in the term NJ NANNYJOB in circumstances where the registered mark relied upon has been registered in relation to goods and services that extend beyond the field of childcare.
6.40 Against that background the majority of the Panel (Dawn Osborne dissenting) finds that the Complainant has failed to show that the Domain Name was registered or has been used in bad faith.
6.41 It is also finally worth recording a few comments in relation to the Complainant’s contentions in relation to the One in A Million case. In the One in a Million it was clear that the Defendants, one of which was Mr. Conway, had deliberately set out to target the trade marks of others. Some members of this Panel treat with scepticism the Respondent’s assertions that prior to that case the legality of obvious cybersquatting under English law was unclear. Further, the way in which the defendants sought to justify and explain the reason for these registrations to the court at that time, is not something of which Mr. Conway can be proud.
6.42 Nevertheless, the majority of the Panel (Dawn Osborne dissenting) is unconvinced that the registration in the case before it is of a similar character to those in the One in a Million case. The present case is one where there is a dispute between two entities in relation to the use of a term that all accept contains at least some descriptive element.
6.43 Further, the majority of the Panel (Dawn Osborne dissenting) is prepared to accept that Mr. Conway “learnt from his experiences” in the One in a Million case and only seeks to register domain names with a generic or descriptive meaning. The undisputed claim by the Respondent that Mr. Conway, notwithstanding being the owner of a substantial portfolio of domain names, has not been involved in a UDRP or similar dispute for 15 years was compelling to the majority of the Panel in this respect.
6.44 The Panel is also unpersuaded that the Complainant has convincingly shown that the Respondent has engaged in a deliberate policy of disguising its identity of Mr. Conway’s association with the Respondent, whether through the use of a privacy policy or otherwise.
6.45 Lastly, the Panel agrees with the Respondent that the Complainant’s reliance on the registration is not properly explained and again does not demonstrate bad faith on the part of the Respondent so far as the Domain Name is concerned. 7. Decision
7.1 For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Presiding Panelist
Frederick M. Abbott
Panelist
Dawn Osborne
Panelist (Dissenting)
Dated: November 2, 2011 DISSENT
I agree with the majority of the Panel on the Policy and its interpretation, but I disagree with them on the evidence and facts.
I agree with the decision of the majority of the Panel on the first ground that the Complainant has trade mark rights confusingly similar to the Domain Name.
In my view, however, although the evidence from the Complainant was not as full as it might have been, the Complainant has demonstrated on the evidence submitted that “Nanny Job” had secondary meaning in relation to their services in the field of activity in question sufficient to ground an action in passing off if another trader in child care services were to use “Nanny Job” as a trading name. As such I disagree with the comments of the Panel regarding the unregistered rights of the Complainant.
I do not disagree with the general comments relating to the second element and legitimate interest, but nothing turns on that (as the decision of the majority of the Panel is drafted).
On the third element relating to bad faith, however, since the Respondent had registered the name in question together with other domain names relating to child care only recently and was aware of the Complainant and its business and, in my view, the secondary meaning in relation to the mark Nanny Job I believe that the Domain Name was registered and is being used in bad faith.
As such I disagree with the decision of the Panel to deny the Complaint, and I would have made the decision to transfer the Domain Name to the Complainant.
Dawn Osborne
Panelist (Dissenting)
Dated: November 2, 2011
1 Panelist Abbott observes that the result reached here on the issue of confusing similarity depends on the application of European trademark law that does not appear to require use of a registered mark as a condition to its enforcement. Had Complainant's registered trademark “nj nanny job” been used only in connection with child care services, and if European trademark law did not extend its scope of application to other registered uses, Panelist Abbott would instead “assume without deciding” that the Domain Name and the Complainant’s “nj nanny job” trademark are confusingly similar within the meaning of paragraph 4(a) of the Policy for purposes of moving on to consider other elements of the Policy. A determination on this issue of confusing similarity is not required because Complainant does not succeed on the elements of rights or legitimate interests or bad faith.
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