The Complainants are Liam Sutcliffe, Eurocycles & Eurobaby and Eurotrek Group Limited of Dublin, Ireland, represented by Cruickshank Intellectual Property Attorneys, Ireland.
The Respondent is Marchex Sales, Inc - Brendhan Hight of Las Vegas, Nevada, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). It was first registered by a predecessor in title to the Respondent on September 26, 2000. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2012. On October 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2012 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.
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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response November 1, 2012. The Response was filed with the Center November 1, 2012.
The Center appointed Andrew Brown QC, James Bridgeman and Richard G. Lyon as panelists in this matter on November 29, 2012. 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.
The Complainants have filed three short informal supplemental emails. The three emails do not address the issues as to why the information contained in them could not have been provided in the Complaint nor why this is an exceptional circumstance requiring consideration of this material. In anticipation, the Respondent has filed a brief Response.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (”WIPO Overview 2.0”) records that Panels have a discretion whether to accept an unsolicited supplemental filing. The WIPO Overview 2.0 notes that “the party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the Complaint or Response. Most Panels that have allowed unsolicited filings have also tended to require some showing of “exceptional circumstances”.
None of these matters has been addressed by the Complainants nor does the supplemental material on its face fall within the category of something that should be admitted in “exceptional circumstances”. The panel therefore declines to consider these informal supplemental filings. Consistent with that decision, it has not considered the Respondent’s brief Response to the supplemental filings. 4. Factual Background
The Complainants, who are all based in Dublin, Ireland, claim rights in both the registered and unregistered trademarks EUROBABY EUROCYCLES and EUROBABY in respect of, inter alia, bicycles, car seats, children’s car seats, prams, strollers (and the like) and baby clothing. The Complainants’ Eurotrek Group Limited and Eurocycles & Eurobaby claim to have been trading in Ireland since 1999/2000.
The Respondent claims to be a successor through reorganization to MDNH Inc and is a wholly-owned subsidiary of Marchex Inc, a publicly-traded US corporation. It claims, without evidentiary support, to have acquired the disputed domain name as part of its acquisition of a large number of domain names from the Ultimate Search portfolio “in late 2004”. No more precise date has been provided by either party. The Panel treats this as the relevant date for the purpose of ascertaining whether the disputed domain name was registered in bad faith. 5. Parties’ Contentions A. Complainants
In summary, the Complainants contend that:
1. They predominantly rely on unregistered trademark rights in EUROBABY EUROCYCLES and EUROBABY and assert that the disputed domain name is confusingly similar to the unregistered trademark EUROBABY. They further assert that unregistered trademark rights are protected in Ireland and in the UK by means of the passing off cause of action.
2. The Respondent does not own a trademark for EUROBABY and lacks any rights or legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name and is not making a non-legitimate, noncommercial or fair use of the disputed domain name. The Respondent in fact derives some commercial benefit from it in that there are pay-per-click links to commercial third party competitor sites on the webpage to which the disputed domain name resolves.
3. When one of the Complainants contacted the Respondent to see if it could purchase the disputed domain name, it was told “not for less than five figures”. The Complainants assert that after this exchange, the Respondent became aware of the Complainants’ activities and took advantage by using the disputed domain name to divert Internet users to competitive websites. The Complainants assert that “one way of demonstrating bad faith registration in use is to show that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with a Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it”. The Complainants further assert that the use of the disputed domain name is disrupting their business. B. Respondent
In summary, the Respondent contends that:
1. The Complainants have provided “little to no evidence of a trademark or service mark at all let alone a right pre-dating the Respondent’s acquisition of the domain name at issue”.
As to registered rights, the two pending CTM applications were filed in May 2012, long after the Respondent’s acquisition of the disputed domain name.
As to registered business names and organizations, the Respondent states that no evidence has been provided to establish use of business names as trade or service marks prior to the Respondent’s acquisition of the disputed domain name. Further the Complainants have provided no evidentiary substantiation of the allegation that they have “spent considerable time, effort and money since 1999 advertising and promoting its goods using the name EUROBABY and EUROCYCLES EUROBABY”.
As to domain names and the website prior to the relevant date, the only evidence is of an inactive website for dated 2001. The Respondent has provided evidence in the form of a copy of the WhoIs database to show that the ccTLD database name was in fact registered by the Complainants in 2005.
As to their current website , the Complainants have not provided any current or historical information concerning sales conducted under any claimed EUROBABY mark, no evidence as to where the Complainants conducted such business, or any indication whatsoever of consumer recognition of the alleged mark. The Respondent further asserts that the Complainants have not established the date on which they acquired secondary meaning in the mark EUROBABY.
2. The Respondent states that it maintains a sizeable portfolio of domain names comprising simple words, short phrases and other descriptive or common terms for the purposes of providing keyword advertising in relation to the words in the domain name. It does not use the disputed domain name as a trade or service mark. The particular disputed domain name is one which it purchased as part of the Ultimate Search portfolio in late 2004 and is “composed of the common geographic prefix ‘euro’ referring to Europe or European, and the words ‘baby’”. To the best of the Respondent’s knowledge, the disputed domain name has always been connected with an advertising system based on domain name keyword content and has been used in connection with baby products. Further, the Complainants have provided no evidence of a trade or service mark predating the Respondent’s acquisition of the domain name.
3. The Complainants have not demonstrated any registered or common law rights in EUROBABY predating the Respondent’s registration of the disputed domain name in late 2004. At that time what was known to the Respondent was that the disputed domain name had been used for pay-per-click purposes for some four years (by its predecessor in title) without notice or complaint by any party. The Respondent states that the purchased portfolio of domain names included not only the disputed domain name but also a number of other “euro” formative domain names (which it has listed).
As to the Complainants’ contact with the Respondent in an attempt to purchase the disputed domain name, this was a blind solicitation for a sales quote and was years after registration of the domain name. The Respondent states that it has used the disputed domain name for pay-per-click advertising relating to baby products for more than seven years and is quite content to continue to do so. 6. Discussion and Findings A. Identical or Confusingly Similar
While neither party seriously disputes that the disputed domain name incorporates a dominant feature of the Complainants’ claimed trademark of Eurobaby, the Complainants’ evidence of holding rights in that mark is thin, to say the least. For purposes of paragraph 4(a)(i) of the Policy, the Panel looks to the Complainants’ rights on the date the Complaint was filed (see WIPO Overview 2.0, paragraph 1.4.).
The Community Trademarks relied on by the Complainants were only applied for on May 15, 2012, and only just before the filing of the Complaint. None of these marks had issued as a registered trademark as at the date of filing of the Complaint.
As to unregistered trademark rights, sometimes called common law rights, the Complainants state that “Eurotrek Group/Eurocycles Eurobaby has been trading in Ireland since 1999/2000. In that time they have acquired unregistered rights in the name Eurobaby”. They attach as evidence of this an archived parking page from April 1, 2001 showing .
However no corroborative evidence of actual trading under the EUROBABY mark as at late 2004 (when the Respondent claims to have acquired the disputed domain name) has been provided. The archived parking page from 2001 simply states “test page for ” and no more. It does not show any active trading. The other extracts relating to the same website provided by the Complainants (using ) all date from 2009 and 2010.
The Complainants state “Details of Company and Business names are set out in Annex 7 attached”. However this provides no information as to when one of the Complainants, Eurotrek Group Limited, was incorporated. Although there was a business name for EUROBABY registered on September 25, 2003 and a business name for EUROCYCLES & EUROBABY registered on July 25, 2003, there is no corroborative evidence as when actual use commenced.
The Complainants have stated that they are the “market leader in ‘bicycles of all kinds and baby products’”. But this statement is not supported by any evidence directed to the position prior to late 2004 nor to the extent of the claimed reputation and whether this may have extended beyond Dublin or even beyond Ireland.
As the Complaint fails under another Policy head, the Panel need not determine whether the Complainants have satisfied paragraph 4(a)(i). The Panel does note, however, that the Complainants’ evidence of the extent of their claimed unregistered trademark rights, even in 2012, lacks detail and corroboration. B. Rights or Legitimate Interests
Because of its finding on bad faith registration in the next section of this decision, the Panel need not consider this question. C. Registered and Used in Bad Faith
The Complainants have not made out an essential aspect of this third requirement, i.e. that as at the relevant date in late 2004 when the Respondent claims to have acquired the disputed domain name as part of a portfolio of other domain names, the Respondent registered the disputed domain name in its name in bad faith.
To establish registration in bad faith in 2004, the Complainants must demonstrate trademark rights as of that date. In order for the Panel to make a finding that the Complainants have unregistered trademark rights in EUROBABY prior to late 2004, it is incumbent on the Complainants to provide corroborative or supporting evidence showing use and advertising of the mark such that reputation and goodwill has been created. The Respondent obviously could not know of a mark that did not then exist. Although the Complainants have asserted that they have spent considerable time, effort and money advertising or promoting their goods, there is no evidence as to what sums of money have been spent, nor even a single copy of an advertisement. There is no evidence that, as at the relevant date, the Respondent (an entity based in the United States) knew of or had notice of the Complainants or any reputation or goodwill in their unregistered trademark EUROBABY.
The Complainants have not provided any evidence corroborating their bare assertion claiming use of the unregistered trademark EUROBABY in Ireland prior to late 2004 sufficient to enable the Panel to make a finding that the Complainants enjoyed a significant reputation and goodwill in EUROBABY. Further, there is no evidence that, even if the Complainants had achieved a reputation and goodwill in that unregistered trademark, that this reputation was ever likely to have come to the notice of the Respondent so as to render its acquisition and registration of the disputed domain name in late 2004 to be a registration in bad faith.
As a result of this finding, the Panel need not consider the question whether the disputed domain name is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew Brown QC
Presiding Panelist
James Bridgeman
Panelist
Richard G. Lyon
Panelist
Date: December 13, 2012
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