The Complainant is Eczacıbaşı Hijyen Ürünleri San. Ve Tic. A.Ş. of İstanbul, Turkey, represented by BTS & Partners, Turkey.
The Respondent is Hu Yanlin of Beijing, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complainant filed a complaint (the “Complaint”) with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, and the Registrar identified the Respondent as the registrant of the disputed domain name and provided to the Center the Respondent’s contact information. The Center later 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.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2013. The Respondent timely submitted a response (the “Response”) with the Center on November 14, 2013.
The Center appointed David H. Bernstein as the sole panelist in this matter on November 26, 2013. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant, a Turkish manufacturer of wet wipes used in baby and personal care, medical hygiene, and household cleaning, is a wholly owned subsidiary of Eczacıbaşı Group, a Turkish conglomerate that provides goods and services across a wide array of industrial sectors. The Complainant has registered with the Turkish Patent Institute ten trademarks containing the mark UNI BABY (collectively, the “UNI BABY marks”) that are used in connection with baby care products that the Complainant exports to sixty-one countries across the globe. UNI BABY ŞEKIL1 (carrying a protection date of April 26, 1999), UNI BABY WORLD (carrying a protection date of June 15, 2004), and UNI BABY (carrying a protection date of July 5, 2013) are among the Complainant’s family of registered UNI BABY marks.
The Respondent appears to be a resident of Beijing, China, who, according to the WhoIs database, registered the disputed domain name on July 20, 2007.
On September 10, 2013, the Complainant, through its attorneys, sent a cease-and-desist letter to the Respondent via email challenging the Complainant’s registration and use of the disputed domain name. In response, the Respondent flatly denied any wrongdoing on his part; asserted that he had the legal right to own, use, and sell the disputed domain name, as well as to park links on the disputed domain name’s associated web page; and offered the Complainant the opportunity to purchase the disputed domain name for USD2,000. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its UNI BABY trademark by virtue of the former’s wholesale incorporation of that trademark.
The Complainant contends that the Respondent lacks any rights or legitimate interests in respect of the disputed domain name. The Complainant avows that, when it first became aware of the disputed domain name’s existence, the disputed domain name resolved to a website that displayed a number of links, the majority of which directed Internet users to the websites of companies that produce baby care products that compete directly with the Complainant’s products and to secondary websites that contained paid advertising and related links. (The Complainant did not, though, submit a copy of the website at issue to the Panel.) The Complainant infers from this fact that the Respondent operates the disputed domain name as a pay-per-click landing page, from which the Respondent derives a significant commercial benefit. The Complainant further maintains that a notice located on the website to which the disputed domain name now resolves lists the domain name as “for sale”; that fact, and the fact that the Respondent’s offer to sell the disputed domain name to the Complainant for USD2,000, allegedly demonstrate that the Respondent evinces no real interest in the disputed domain name.
The Complainant contends that the Respondent registered or used the disputed domain name in bad faith, citing many of the arguments made earlier with reference to the Respondent’s purportedly absent rights or legitimate interests in respect of the disputed domain name. Beyond these claims, however, the Complainant alleges that the Respondent removed the pay-per-click links from the website to which the disputed domain name resolved shortly after responding to the Complainant’s cease-and-desist letter and that this action alone constitutes bad faith on the Respondent’s behalf. B. Respondent
The Respondent opposes the Complainant’s request for transfer of the disputed domain name on several grounds and requests that a finding of reverse domain name hijacking be made against the Complainant.
The Respondent contends that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. Although the Respondent acknowledges that the Complainant is the owner of the trademarks listed on the Turkish Patent Institute’s registry rolls, he notes that the Complainant only registered the trademark UNI BABY in July 2013, nearly six years after the Respondent created the disputed domain name. In addition, the Respondent notes that he did not register his domain name in the ccTLD for Turkey, which, he claims, is an indication of his well-meaning intent.
The Respondent contends that he has rights or legitimate interests in respect of the disputed domain name. In addition to reemphasizing the gap in time separating the registrations of the disputed domain name and the UNI BABY trademark, the Respondent justifies his selection of the disputed domain name by explaining that “[u]nibaby consists of uni and baby” and that “[u]ni is a common prefix and short term, meaning one direction, universe, university etc.”
The Respondent contends that the disputed domain name was not registered or being used in bad faith. The Respondent asserts his purported right to offer up the disputed domain name for sale or to develop the website to which it resolves for any purpose that he may choose. The Respondent further alleges that he had never heard of the Complainant prior to his receipt of the cease-and-desist letter and that, in China, other companies – not the Complainant – are listed as the registrants of trademarks featuring the name UNI BABY. (A screenshot confirming the registration and ownership of these trademarks is attached to the Response.) 6. Discussion and Findings
To prevail in an administrative proceeding under the UDRP, a complainant must show that all of the elements in paragraph 4(a) of the Policy have been satisfied:
(i) [the respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) [the respondent] ha[s] no rights or legitimate interests in respect of the domain name; and
(iii) [the respondent’s] domain name has been registered and is being used in bad faith.
The Complainant bears the burden of proof with respect to each of the aforementioned elements. A. Identical or Confusingly Similar
The Complainant must demonstrate that (1) it has rights in the UNI BABY marks and (2) the disputed domain name is identical or confusingly similar to those marks. See Advance Magazine Publishers Inc. v. Rede XL,WIPO Case No. D2012-0314.
The Complainant has proffered satisfactory evidence of its rights in the UNI BABY marks. The Complainant is a purveyor of baby care products whose ten trademarks containing and/or consisting of UNI BABY are registered with the Turkish Patent Institute. The disputed domain name consists of the UNI BABY trademark, without the space, which makes the disputed domain name identical to the Complainant’s UNI BABY trademark for purposes of the Policy, Cartiere Fedrigoni S.p.A. v. JK Plex Pte. Ltd,WIPO Case No. D2010-0491, and confusingly similar to its various other trademarks comprised of the term UNI BABY plus additional words (such as UNI BABY WORLD and UNI BABY ŞEKIL ).
Accordingly, the Complainant has prevailed under the first factor. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the following three non-exhaustive factors that may be relevant to the assessment of whether a respondent can be said to have rights to or legitimate interests in a disputed domain name:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trademark or service mark rights; or
(iii) [the respondent] [is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant is charged with making a prima facie showing that the Respondent has no rights or legitimate interests in respect of a disputed domain name. Once that showing is made, the burden of production shifts to the Respondent, who needs to come forward with some evidence to rebut that prima facie showing, though the burden of proof always remains on the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Complicating the assessment of the Complainant’s allegations is that the Complainant has not submitted a screenshot showing the website to which the disputed domain name resolved at the time that the website reportedly contained links to the websites of the Complainant’s competitors and to paid advertising sites. (At present, the links hosted on the website simply redirect web traffic to a Chinese domain marketplace.) The Panel has been unable to find a copy of that website using tools such as the Internet Archive. Without any verifiable documentary evidence, the Panel is unable independently to assess the veracity of the Complainant’s representation of the website’s former state. Even so, the Complainant’s authorized representative, in signing his name to the Complaint, certified that “the information contained in [the] Complaint is to the best of the Complainant’s knowledge complete and accurate.” Moreover, the Respondent has not objected to the allegations raised in the Complaint; to the contrary, he implicitly conceded them to be accurate in his response to the Complainant’s cease-and-desist letter. Thus, on this record, the Panel is inclined to credit the Complainant’s representation of the website’s former state, cf. Google Inc. v. Rohini Kharma / Ranjan Narula Assocs.,WIPO Case No. D2009-1730 (ordering transfer where, inter alia, the respondent did not contest the complainant’s claim in correspondence that “the Respondent’s activities misrepresented his service as being authorized by the Complainant,” even though the complainant had failed to provide a screenshot to substantiate its allegations), though the Panel notes that the better practice would have been for the Complainant to include the relevant screenshot with its Complaint.
Accepting the Complainant’s factual allegations as true, there is, then, no indication that the Respondent ever used, or prepared to use, the disputed domain name in connection with a bona fide offering of goods or services, and the Respondent has not offered any contradictory evidence in his Response. The operation of a website as a pay-per-click landing page is not per se illegitimate. See, e.g., O2 Holdings Ltd. v. Profile Grp., DNS Manager,WIPO Case No. D2013-1340. However, if the links and advertisements on such a page are keyed to the trademark value of a domain name – rather than to the descriptive value of the words used to make up the domain name – then the operation of that page cannot be said to constitute a bona fide offering of goods or services. See Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; Asian World of Martial Arts Inc. v. Texas Internaltional Property Associates.,WIPO Case No. D2007-1415. The Respondent denies any intention to trade off the value of the UNI BABY marks, but he does not persuasively explain why “uni” had to be part of the disputed domain name and how the links on the website were relevant to the descriptive nature of “unibaby.” Instead, all he states is that “[u]nibaby consists of uni and baby” and that “[u]ni is a common prefix and short term, meaning one direction, universe, university etc.” It is not clear to this Panel how that is relevant to the links that were shown on the website (which the Respondent also has not submitted to the Panel). Had the links on the website directed users to websites that sold astronomical instruments for children (universe baby), or early childhood education services (university baby), then the Respondent’s justifications might have been deemed plausible. That is not, though, what the Respondent appears to have done. Instead, as best as the Panel can tell from the limited evidence submitted, the Respondent appears to have used the “www.” website to provide pay-per-click links to the websites of baby products manufacturers that compete with the Complainant. As that use is entirely unrelated to any of the justifications provided in the Response, the Panel concludes that the Respondent has not satisfied his burden of producing evidence capable of rebutting the Complainant’s prima facie showing.
Similarly, the Respondent has put forth no evidence to suggest that he, or any business with which he may be associated, has ever been commonly known by the disputed domain name.
Finally, the Respondent cannot claim that he is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The very nature of a pay-per-click page that diverts consumers from the brand owner to competitors is commercial and illegitimate.
Accordingly, the Complainant has sustained its burden of showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth a set of non-exhaustive grounds which may evidence bad-faith registration and use of a domain name:
(i) circumstances indicating that [the respondent] ha[s] registered or [the respondent] ha[s] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent] ha[s] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent] ha[s] engaged in a pattern of such conduct; or
(iii) [the respondent] ha[s] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.
None of these grounds applies here. The only arguable bad faith is the Respondent’s offer to sell the disputed domain name, but on this record, that is not the kind of bad-faith registration and use prohibited by the Policy. Rather, the Respondent has persuasively argued that he had no awareness of the Complainant or its trademark prior to this dispute, and that he registered the disputed domain name not because of any knowledge of the Complainant or its trademark, but rather because it was an amalgamation of the common prefix “uni-” and the common word “baby.”
It is true that, having registered that disputed domain name, the Respondent then put it to a non-legitimate use by allowing pay-per-click links to websites selling products that compete with the Complainant’s. But that does not lead to an automatic finding of bad-faith registration and use, as the second and third factors of the Policy are independent. Rather, the Panel must assess separately whether the Respondent, in registering the disputed domain name, did it with knowledge of and bad faith towards the Complainant, and whether he then used the disputed domain name in bad faith against the Complainant.
The Complainant has failed to sustain its burden of making that showing. It has not, for example, submitted any evidence showing that the Respondent was in fact aware of the Complainant (e.g., there is no evidence of prior contact between the parties), and it has not submitted any evidence showing the renown of its mark in China where the Respondent is located. On this record, the Respondent’s assertion that it never heard of the Complainant prior to this challenge is credible to this Panel, and if that is the case, it is axiomatic that bad-faith registration cannot be established.
It is worth pausing to consider the impact of paragraph 2 of the Policy on this analysis. That paragraph requires prospective domain name registrants to represent and warrant to the registrar that, to the best of their knowledge, “the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and that they “will not knowingly use the domain name in violation of any applicable laws or regulations.” The Respondent appears to have satisfied that obligation, as he certified to the Panel that he was not aware of the Complainant when he registered the disputed domain name, and thus the representation appears to have been true “to the best of [his] knowledge.” There is no evidence in this record that UNI BABY was sufficiently well known in China that the Respondent should have known of its existence, Etam, plc v. Alberta Hot Rods,WIPO Case No. D2000-1654 (crediting a Canadian respondent’s contention that it had no knowledge of the complainant’s trademark at the time of registration of the disputed domain name because “Complainant’s mark is not registered in Canada, nor did Complainant provide any evidence that its mark is otherwise known in that country”), nor is there any evidence that this trademark was acquired by a domainer as part of a portfolio of trademarks or through automated registration systems (which are contexts in which UDRP Panels have required respondents to conduct searches to ensure that the portfolio does not contain domain names that impermissibly infringe third-party rights, see, e.g., Grundfos A/S v. Texas International Property Associates.,WIPO Case No. D2007-1448; Texican Natural Gas Company v. Robert Barrett,WIPO Case No. D2010-0454)).
The Complainant also asserts that bad faith can be found in the fact that the Respondent changed his website to discontinue the pay-per-click links after receipt of the Complainant’s letter. That the Respondent discontinued the pay-per-click links does not clean the slate; he is still responsible for what was posted prior to the letter, and indeed the Panel has concluded that the Respondent did not have a legitimate interest in the disputed domain name based on that prior use. But the discontinuation, on its own, does not separately evidence bad-faith registration or use.
The offer to sell the disputed domain name for USD2,000 to the Complainant may be bad faith use. It is a close question on this record. Ultimately, the Panel need not reach a final decision on that point because the Panel has found that there is no bad faith registration in this case. In some cases, the registration of a domain name that is obviously a trademark, or with willful blindness as to whether it is a trademark, coupled with efforts to sell that domain name for a price in excess of the registration cost, can be evidence of bad-faith registration and use. Here, though, because the Panel has credited the Respondent’s assertion that he never heard of the Complainant at the time he registered the disputed domain name, the subsequent offer to sell the disputed domain name cannot evidence bad-faith registration.
Accordingly, on this record (which is quite limited given the thinness of the Complaint and the paucity of evidence submitted by the Complainant), the Panel finds that the Complainant has failed to prove by a preponderance of the evidence that the Respondent registered the disputed domain name in bad faith, and that is fatal to the Complainant’s ability to show that Respondent registered and is using the domain name in bad faith. D. Reverse Domain Name Hijacking
Pursuant to paragraph 15(e) of the Rules, the Panel may find reverse domain name hijacking “[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith.” Bad faith is shown where “it should have been clear to a Complainant that it could not prove one of the essential elements under the Policy, or where there has been an apparent attempt to mislead the Panel or to bully a Respondent into handing over a domain name.” Planate Mgmt. Grp. LLC v. Vertical Axis, Inc. / WhoIs Privacy Servs. Pty Ltd,WIPO Case No. D2011-1535.
This is not such a case. The Complainant prevailed on the first and second elements of the UDRP analysis; although it did not prevail on the third factor, it was a close issue on the facts (largely because neither party submitted much by way of evidence, leaving the Panel to decide this issue on the thin record provided). This case is not an example of a bad-faith effort by the Complainant. Furthermore, there is no indication that the Complainant ever attempted to mislead the Panel or inappropriately coerce the Respondent to transfer the disputed domain name. Therefore, the Panel declines to make a finding of reverse domain name hijacking in this case. 7. Decision
For the foregoing reasons, the Complainant’s request for transfer of the disputed domain name is denied.
David H. Bernstein
Sole Panelist
Date: December 10, 2013
1 Neither party provided any translation of the word şekil. A Google Translate query suggests that “şekil” is most likely the Turkish word for “shape,” “figure,” “form,” or “image.”
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