Lamprecht AG v. Registrant [1690]: com fma Future Media Architects, Inc.
Case No. D2009-1778
1. The Parties
The Complainant is Lamprecht AG of Regensdorf, Switzerland, represented by Lenz & Staehelin, Switzerland.
The Respondent is Registrant [1690]: com fma, Future Media Architects, Inc. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (the “UK”) represented by Kenyon & Kenyon LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bibi.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2009. On December 28, 2009, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the Domain Name. On December 29, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 6, 2010. 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 January 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2010. The Response was filed with the Center on January 27, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on February 12, 2010. 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.
Having regard to the unusual complexity of certain of the issues arising in the case, the time for the Panel to give its decision was initially extended (by Panel Order made on February 26, 2010)to March 5, 2010, and subsequently further extended to March 26, 2010.
4. Factual Background
The Complainant and its trademarks and domain names
The Complainant is a Swiss corporation, which produces and sells baby products under the trademark BIBI. According to the Complaint, the Complainant has been selling its BIBI products all over the world for more than 70 years. It listed a number of Asian, Middle Eastern, and European countries in which it has been selling its BIBI products for the “last ten to twenty years”, and one of those countries was the UK.
The Complainant asserted that its BIBI products are very well known. In support of that proposition, it produced the results of a Google search on “bibi” run on December 9, 2009 at the “www.google.ch” website, which was said to show a site offering the Complainant's products as the first hit. The Complainant's own website at “www.lamprechtag.com” was the fourth hit.
The Complainant is the registered proprietor of the mark BIBI in Switzerland and internationally. The international registration covers a variety of baby health and baby care products in International classes 3, 5, 8, 9, 10, 11, 12, 17, 18, 21, 24, 25, 27 and 28. It dates from February 21, 1994, and is registered for almost 50 countries, including the United States and most European countries.
There are two Swiss registrations in the record. The first is for a figurative BIBI mark, registered on August 26, 1993. The word mark BIBI was registered in Switzerland on November 28, 2006. Both registrations relate to baby health and baby care products.
The Complainant is also the owner of the following domain names: <bibi.ch>, <bibi-nuk.com>, <bibi.info>, <bibi-international.com>, and <bibi-baby.com>. The Complainant's partners in the UK, the Russian Federation, and the Netherlands, respectively own the domain names <bibi-uk.com> and <bibionlineshop.co.uk>, <bibi.rus.ru>, and <bibi.nl>.
Other Uses of the term “Bibi”
The Respondent produced evidence of a number of other parties, all unrelated to the Complainant, who use the term “bibi” in respect of services which are identical to those offered by the Complainant. The Respondent referred by way of example to the operations of a Brazilian company, Calcados Bibi Ltda (“Calcados”), whose products are marketed at the website “www.bibi.com.br”. The Respondent also produced extracts from the website of an online retailer based in New Jersey, United States, at “www.bibibabywear.com”. That retailer markets a range of “Bibi” baby products, and apparently has no connection with the Complainant. Another retail website, at “www.zappos.com”, markets “Bibi's” children's footwear. The text on this website indicates that “Bibi” is a line of children's footwear in Brazil, and that the “Bibi” footwear is now available in over 60 countries. The Brazilian “Bibi” manufacturer (presumably Calcados, although that was not made clear in the Response), was said to have been founded in 1949.
The Respondent produced documents from August 2000, showing that the Complainant had sought a letter of consent from Calcados when the Complainant attempted to register a BIBI mark with the United States Patent and Trademark Office (“the USPTO”). This evidence showed that Calcados was (and had been since January 12, 1996), the owner of a stylized BIBI mark in the United States. The Calcados BIBI registration covered “clothing and accessories, namely, shirts, sweat pats, and footwear, in International Class 25, and the evidence showed that there existed a co-existence agreement between the Complainant and Calcados (not produced by the Respondent), under which Calcados had undertaken not to object to the Complainant's use and registration of the Complainant's mark in any jurisdiction, and to issue a declaration of consent to registration when requested by the Complainant so to do.
The Respondent also referred to dozens of other trademark applications and registrations throughout the world that incorporate the term “bibi”. It produced evidence of some of at least 10 such registrations, all owned by separate parties (not being either the Complainant or Calcados). The Respondent also provided evidence establishing that “Bibi” is used as a person's name.
The Respondent's own Google search on “bibi”, run at the “www.google.com” website, returned a string of results unrelated to the Complainant. The Complainant's website was not listed among the early results on the search list.
The Respondent produced an extract from a business telephone directory which revealed that 55 businesses in the United States use the term “bibi”. There was, for example, “Bibi's Daycare” in Illinois, and “Bibi's Grooming” in Texas.
The Respondent and the Domain Name
The Domain Name was registered on June 21, 1997. At one point, shortly before the Complaint was filed, it resolved to a “landing page” website (the “Respondent's website”) which provided sponsored links to third party websites, including some offering baby products (baby shoes and baby clothes) produced and sold by the Complainant's competitors. At least two of these third party websites were in the “.ch” (Swiss) domain space.
It is common ground that the Respondent has no connection or affiliation with the Complainant.
According to the Response and the text on the Respondent's principal website at “www.fma.com”, the Respondent is an Internet development company with a global presence. It specializes in the development of its own Internet properties and technology, and it maintains over 100,000 domain names. However, according to a declaration provided by its founder and chief executive, it is not in the business of selling domain names, and it has never done so: it gradually develops some of its domain names into content-based websites, and advertises others for sponsorship of major events (e.g., the Respondent's <mp3.tv> domain name was used in sponsoring a motorsport event in 2002).
The Response stated that, in acquiring the Domain Name, the Respondent was motivated solely by the desire to acquire and use available generic four-letter domain names to market its online businesses. Four-letter domain names were said to have significant value, in large part because they are short and easy to remember. The Respondent said that it was motivated to acquire such domain names solely by its desire to “market its websites and in furtherance of its business goals”. The Respondent denied any intention to infringe, or free ride on the goodwill of any trademark, and stated that, had the Complainant contacted it before the present proceeding was commenced, it would have promptly instructed its hosting service to remove the sponsored links to which the Complainant objects.
As for its use of the Domain Name, the Respondent said that it has implemented plans to develop the Respondent's website as a website dedicated to individuals with the name “Bibi”, including by the provision of “bibi” vanity email addresses (i.e., email addresses in the form “[name]@bibi.com”, which will be marketed to individuals who share the name “Bibi”). The Respondent asserted that “Bibi” serves as both a first name and a surname for both men and women, and that the most recent United States Census Report shows that nearly 1,000 United States residents have the surname “Bibi”. The Respondent referred to this service as “FMA's new vanity email service”, and it was said to be ready for launch.
The Respondent provided a declaration from Mr. A. Tupper, a principal of the company which advises the Respondent on web development and online business strategy. Mr. Tupper confirmed that his company is in the process of developing the Respondent's website as a website which will feature famous individuals with the name “Bibi”, and as a vanity email website. Mr. Tupper attached some “current development sketches”, which appeared to support that statement. However, it was not made clear when Mr. Tupper's company was briefed to do this work.
The parked page from the Respondent's website which the Complainant produced, with its sponsored links to third party websites, was claimed by the Respondent to be only temporary: the Respondent stated that prior to the actual development of its domain names, it uses parked pages to hold the places for the planned websites. It said that the particular sponsored links to which the Complainant referred were not chosen by it, but were chosen (in accordance with the normal practice of registrars who offer monetization services for individuals or businesses) by the Respondent's registrar/hosting service, using a computer program. As the Respondent put it, “this click-through advertising is controlled by the registrar, not the registrant.” However, a Moniker document produced by the Respondent appeared to show that the registrar's terms allowed the Respondent to modify its landing pages, giving the Respondent “the flexibility to target different key words on each domain”.
The Respondent added that the Domain Name has not always resolved to a parking page of the kind produced by the Complainant – it has in the past resolved to the Respondent's branded search engine at “www.oxide.com”.
The Respondent's founder and chief executive stated that the Respondent has never offered to sell the Domain Name to the Complainant or to anyone else, and that neither he nor anyone else associated with the Respondent was aware of the Complainant or its BIBI mark before the present Complaint was filed.
5. Parties' Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is identical to the Complainant's international and Swiss-registered BIBI marks. The “.com” suffix is disregarded in assessing identity and/or similarity (citing Mediaset S.p.A. v Antonio Esposito, S.C.A. Service Controll Access, Amata International Network Co. Limited,
WIPO Case No. D2009-0026).
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent is not commonly known by the Domain Name.
(ii) The Respondent does not own any trademark or other rights in the Domain Name.
(iii) The Respondent has no connection with the Complainant, and the Complainant has not licensed the Respondent to use its trademarks.
(iv) The Respondent does not use the Domain Name to operate a proper website for its own business purposes. On the contrary, the Domain Name is used for a website providing sponsored links to other websites, including websites offering baby products produced and sold by third party competitors of the Complainant. The Respondent uses the Domain Name for the sole purpose of diverting and misleading consumers by directing them to such third party websites.
3. The Respondent has registered, and uses, the Domain Name in bad faith. The Complainant relies on the following matters:
(i) The Complainant's international trademark was registered more than three years prior to the registration of the Domain Name by the Respondent.
(ii) The Respondent must have known of the Complainant's trademarks prior to the registration of the Domain Name. International trademarks are easily searchable online, and in addition, the Complainant and its BIBI products are the first items shown in the Google hit list when searching for the word “bibi”.
(iii) The sponsored links to sites offering products of the Complainant's competitors demonstrate that the Respondent's intention has been to take unfair advantage of the obvious confusion between the Domain Name and the Complainant's trademarks.
B. Respondent
The Respondent contends:
1. The Complainant has no exclusive right to the expression “bibi”, and there is no likelihood of confusion. There are numerous other entities using the term “bibi”, including several in connection with the same services offered by the Complainant without confusion. At least one of them is using the term “bibi” as part of a domain name. “Bibi” is also a common name for people. Because consumers are accustomed to seeing so many uses of “bibi” by numerous different entities in a variety of contexts, they can easily distinguish between them. No likelihood of confusion exists.
2. The Respondent does have rights or a legitimate interest in the Domain Name. The Respondent has plans to develop the Respondent's website as a website dedicated to individuals with the name “Bibi”, and to provide vanity email services.
Vanity email services have been widely accepted by UDRP panels as representing a legitimate interest on the part of the domain name holder (citing Empresa Municipal Promoción Madrid SA v Easylink Servs. Corp.,
WIPO Case No. D2002-1110, Sallie Mae, Inc v Michele Dinoia,
WIPO Case No. D2004-0648, and Markel Corporation v Tucows.com Co,
WIPO Case No. D2007-1750), and the Respondent's own vanity email service has been recognized by a UDRP panel as qualifying as a bona fide use of the relevant disputed domain name (see GM Communications Limited v com, fma, Future Media Architects, Inc,
WIPO Case No. D2009-0267).
3. The Respondent does use the Domain Name to operate a proper website for its business purposes. The Respondent's temporary use of a parked web page in connection with a non-distinctive domain name to redirect traffic is a legitimate and bona fide offering of goods and services (citing Mess Enterprises v. Scott Enterprises, Limited,
WIPO Case No. D2004-0964, and The Knot, Inc v. Ali Aziz,
WIPO Case No. D2007-1006).
4. The links on the Respondent's website which the Complainant finds objectionable were not placed on the website because of any affirmative act on the part of the Respondent.
5. The Domain Name was not registered or used in bad faith. First, the Domain Name was acquired over 12 years ago, and the Respondent had never heard of the Complainant or its alleged use of the term “bibi” until the Complaint in this proceeding was filed. The Complainant's assertion that the Respondent must have known of the Complainant's trademarks prior to registration of the Domain Name because of the Complainant's registration of an international trademark, is unsupported by any case law and is patently false. The Respondent has no meaningful ties to the Swiss community, and would have had no reason to conduct any searches on Swiss registers or on Google's Swiss website. Moreover, the Complainant has offered no evidence that its alleged BIBI mark was appearing in any searches in 1997, when the Respondent registered the Domain Name. The Complainant has failed to prove any of the required factors as of the time registration of the Domain Name.
6. The Respondent had no intent to trade off the Complainant's name or reputation, or to sell the Domain Name. Without a finding that the Respondent intended to infringe or free-ride on the goodwill of the Complainant's trademark, there can be no finding of bad faith (referring to YIT Corp v. Future Media Architects Inc,
WIPO Case No. D2007-0588, where the panel found that “Complainant has not proved bad faith registration” even where “the Respondent has made a business practice of registering as many three-letter domain names as it can acquire”).
7. As to the Complainant's allegations of bad faith use, the presence of click-through sponsored links on the Respondent's website which are controlled by the Registrar, should not be construed against the Respondent.
8. The Complainant has provided no explanation for why it waited over a decade to try to obtain the Domain Name. That delay calls into question the Complainant's arguments: even a significantly shorter delay may compel a finding of no bad faith (referring to The Knot Inc v. Ali Aziz, supra).
9. The Complainant has brought this proceeding in bad faith. Its true intent was to gamble the relatively minimal filing fee in the hope that the Panel would order a transfer of the Domain Name. The Respondent relies on the non-distinctive nature of the term “bibi”, the Complainant's delay in filing the present proceeding, and the Complainant misleading the Panel with regard to its claimed rights. Where there are numerous third party users of a disputed domain name, it is unlikely to follow as night follows day that a user of the name in question has been “targeting” the Complainant (citing Smart Design LLC v. Carolyn Hughes,
WIPO Case No. D2000-0993). Taking those factors into account, it was unreasonable for the Complainant to have brought the Complaint.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It has shown that it is the registered proprietor of the word mark BIBI in Switzerland and under the Madrid system of international registration of trademarks, and that is enough to establish rights in the mark BIBI for the purposes of paragraph 4(a)(i) of the Policy. It is irrelevant to the paragraph 4(a)(i) enquiry that other parties may have rights in the expression “Bibi” in other jurisdictions – that may be a relevant matter under paragraph 4(a)(iii) if the Policy, but under paragraph 4(a)(i), proof that a complainant holds a registered trademark in one jurisdiction is sufficient proof of a relevant trademark right (see in that regard the Center's online document “WIPO Overview of WIPO Panel views on selected UDRP Questions,” at paragraph 1.1).
The Domain Name is identical to the Complainant's BIBI mark, as the generic suffix “.com” is not taken into account in the comparison.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is identical to the Complainant's trademark, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise. It is not suggested that the Respondent or any business operated by it has been commonly known by the Domain Name (such that the Respondent might have claimed a right or legitimate interest under paragraph 4(c)(ii) of the Policy), and there is no evidence which would support a right or legitimate interest under paragraph 4(c)(iii) of the Policy (legitimate non-commercial or fair use of a disputed domain name, without intent for commercial gain …). In this case, the principal use of the Domain Name appears to have been commercial, namely to host a landing page designed to produce pay-per-click revenue from the sponsored links thereon.
The foregoing circumstances sufficiently establish a prima facie case, so that the evidentiary onus shifts to the Respondent to show that it has a right or legitimate interest in the Domain Name.
The Respondent endeavoured to establish that it has a right or legitimate interest under paragraph 4(c)(i) of the Policy on, three separate grounds. The principal ground alleged, was that it is developing the Respondent's website as some sort of tribute site to people who do or have gone by the name “Bibi”, and to provide a vanity email service for such people.
The Respondent has failed to make out this ground. To succeed on this ground the Respondent would have had to establish that it had made “demonstrable preparations” to use the Domain Name for the claimed purpose, before it had notice of the present dispute. At latest, that would have been when the Respondent received the Complaint in this proceeding. The evidence of the Respondent's chief executive and of Mr. Tupper certainly shows that demonstrable preparations have been made to use the Domain Name for the purposes claimed, but there is nothing in the evidence to tell the Panel when that work was done. For all the Panel knows, the Respondent may have asked Mr. Tupper's company to do the web design work, on an urgent basis, immediately after the Respondent became aware of the Complaint. The onus is on the Respondent on this point, and the Respondent has failed to prove that the relevant design work was carried out before the Respondent had notice of the present dispute.
The Panel has other concerns about the claimed vanity email defense. First, it is not the first time that the Respondent has asserted a legitimate interest in a disputed domain name on the basis of a claimed intention to use the same for a vanity email service. In the GM Communications Limited v. com, fma, Future Media Architects Inc. case (supra), in which the panel gave its decision on April 28, 2009, the Respondent appears to have run precisely the same argument in respect of the disputed domain name <miki.com>1 In that case, the respondent claimed to have a bona fide intention to use the disputed domain name as part of a vanity email program it was then advertising on certain websites operated by it. Declarations were provided by the same individuals who have provided declarations in this case, and the panel reproduced in its decision much of the declaration which had been provided by the Respondent's chief executive. The text of much of that declaration was identical to that filed in the present proceeding. For example, the Respondent's chief executive declared in the GM Communications Limited case the following:
“10 FMA is working with its web developer to create the interface and logistical
infrastructure (eg. billing, sign-up) for its vanity email address project.
11 These development projects take a significant amount of time. Therefore, FMA cannot develop all of its domain names at once. Prior to active use of the domain names, a parked page holds the place of a website.”
The same words were reproduced verbatim in the declaration submitted by the Respondent's chief executive in this case.
The GM Communications Limited case shows that in April 2009 the Respondent was advertising a proposed new vanity email service through its principal website at “www.fma.com”, but that none had by then been established. The evidence in this case shows that, roughly ten months later, that remains the position: the December 2009 printout from the website at “www.fma.com”, which the Complainant produced, contained the statement: “Coming soon: Have Your Own Vanity Email Address”, and a similar statement appeared on a webpage from the “www.oxide.com” website, printed on January 19, 2010, which was annexed to the Response.
The second point is that even if the Respondent had undertaken some general preparatory work to set up a vanity email service before the present proceeding was notified to it, there is no evidence that any steps had then been taken to use the Domain Name in connection with any such service. Paragraph 4(c)(i) of the Policy requires that the relevant demonstrable preparations must be shown to have been made in respect of the particular domain name which is in dispute, not in respect of other domain names which a respondent might happen to hold. In a case such as the present, where the Respondent holds over 100,000 domain names, there is no basis for the Panel to infer that any general preparatory work which may have been undertaken towards the setting up of a vanity email business, was undertaken with the Domain Name in mind. The Respondent has not suggested that it intends to deploy all of its domain names in the proposed new business.
It is this Panel's concern that it would be all too easy for a respondent, on receipt of a complaint under the Policy, to scan the telephone books and directories of the world to see if the disputed domain name happened to be a surname in some country, and then use that material to form the basis of an “intended vanity email service” defense, when the respondent in fact had no legitimate interest in the disputed domain name. It is not necessary to make any finding as to whether that has occurred in this case, and the Panel refrains from doing so. The point is simply that it is not uncommon for cybersquatters to run a so-called “intended vanity email service” defense, and panels need to be vigilant in requiring clear evidence that the respondent has in fact established the service (or at least made demonstrable preparations to do so), before the respondent had notice of the dispute (and, of course, that the actual or proposed service is a bona fide service).
The remaining bases on which the Respondent asks the Panel to find that the Respondent has a right or legitimate interest are (i) the Respondent's use of the Domain Name as a pointer to its search engine website at “www.oxide.com”, and (ii) the Respondent's use of the Domain Name to point to a landing page website through which the Respondent derives pay-per-click advertising revenue. In either case, the Respondent must persuade the Panel that its use of the Domain Name has been bona fide.
As a preliminary matter, the Panel notes that the Respondent does not appear to have had any significant connection with anyone or anything called “Bibi” when it registered the Domain Name – the only reason it has offered for acquiring the Domain Name was the Domain Name's perceived attractiveness as a short, easy to remember, domain name. On its own account, the Respondent has not since used the Domain Name in connection with the supply of any “Bibi”-related goods or services of its own. Rather, it has placed the Domain Name in the hands of a party or parties providing monetization services, so that the Respondent could derive pay-per-click revenue from sponsored links (including at times links related to the Complainant's field of business) placed by those parties on the Respondent's website.
On balance, the Panel is satisfied that deriving pay-per-click revenue was probably the primary purpose for the registration of the Domain Name, and not some subsidiary, or interim purpose. The Respondent claimed that its business model is to establish site-specific content at its websites, or at least use them for sponsorship or other business purposes. It said that the parking of its domain names with monetization service providers is only a temporary expedient. But the Panel can hardly fail to note that the Respondent holds over 100,000 domain names, and that the Domain Name has been “parked”, allegedly in this “temporary” mode, for over 12 years. In the Panel's view, it beggars belief that anyone would acquire a domain name with the intention of developing a website at it, and then leave that domain name in a “temporary” mode for such a period of time. The sheer number of domain names in the Respondent's portfolio, and the vague and unsatisfactory description of its business model which the Respondent offered – e.g., “FMA has been gradually developing its domain names into content-based websites and developing other business uses for the domain name extensions” – leaves the Panel with little doubt that what was claimed to be a temporary expedient is in fact a substantial part, if not the principal part, of the Respondent's business.
As for the pointing of the Domain Name to the Respondent's “www.oxide.com” website, the Respondent has not provided any evidence of when that was first done, or for how long the Domain Name may have resolved to that website. The Respondent's chief executive barely mentioned the “www.oxide.com” website, saying simply that many of the Respondent's domain names, including the Domain Name, “temporarily resolve to FMA's OXIDE search engine”. Certainly the Domain Name pointed to that website when the Response was filed, but when the Complaint was filed, the evidence shows that the Domain Name was pointing to the Respondent's website, and contained a number of sponsored links relating to the Complainant's field of business. As noted above, the evidentiary onus in this part of the Complaint is on the Respondent, and the Respondent has failed to prove that the Domain Name has been used, prior to the filing of the Complaint, in connection with any bona fide offering of goods or services through the website at “www.oxide.com”.
Turning to consider the “landing page” use of the Domain Name, the Panel accepts the conclusion reached by the Panel in the GM Communications Limited case (when discussing the respondent's business model), that “there is no issue that a business of the type that [the respondent's founder] describes is not per se objectionable under the Policy”. However, the panel in GM Communications Ltd went on to observe:
“However, where an entity registers and acquires multiple domain names… and it focuses on valuable four-letter domain names, the onus is clearly on that business to satisfy itself that such domain names are available, in the sense that they will not be identical or confusingly similar to existing third party trademarks. Where registered trademarks are concerned, it is not a matter of great difficulty or expense to search the Registers in major jurisdictions, such as the United States, the European Union's Community Trademark and Japan.
Clearly, use of a domain name will be neither bona fide nor fair for the purposes of the Policy if it conflicts with established third party trademark rights and the user of the domain name has taken no, or no adequate, steps to check availability of the domain name in advance….
The fact that the owner of the domain name parked with a hosting service has no control over the choice of the website links for which his domain name is used has the consequence that it puts the owner on risk that such use may include a field of use where there are third party trademark rights. Put shortly, in such a situation, the domain name owner cannot assert bona fide [use] of the disputed domain name on the basis that ‘I don't have any control over the use'. See, Trade Me Limited v. Vertical Axis Inc. (
WIPO Case No. D2009-0093).”
The Panel agrees with those conclusions expressed by the experienced panel in the GM Communications Limited case. They appear to the Panel to be substantially consistent with numerous panel decisions which have now held that a professional domain name registrant cannot avoid a finding of bad faith registration by willfully closing its eyes to the possibility that third party trademark rights might exist in the disputed domain name, at least where the disputed domain name is not a dictionary word or a generic expression (See, for example, Mobile Communications Service Inc. v. WebReg, RN (
WIPO Case No. D2005-1304), Media General Communications Inc. v. RareNames, WebReg, (
WIPO Case No. D2006-0964), mVisible Technologies Inc. v. Navigation Catalyst Systems Inc.,
WIPO Case No. D2007-1141, and Grundfos A/S v. Texas International Property Associates,
WIPO Case No. D2007-1448.) Such a respondent must show that it has made good faith efforts to avoid registering and using as a domain name a trademark owned by some other party (see, for example, Media General Communications Inc. v RareNames, WebReg, and Grundfos A/S, supra).
An important factor underpinning that interpretation of the Policy, is that by paragraph 2 of the Policy, a domain name registrant is deemed to have represented and warranted to the Registrar that … “to [the registrant's] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party …”. Paragraph 2 goes on to provide that: “It is [the registrant's] responsibility to determine whether [the registrant's] domain name registration infringes or violates someone else's rights.”
Applying that approach to the present case, the Panel notes first that the Domain Name does not appear to be a dictionary word or a generic expression, at least in the English language, which is the language of the Respondent's website.
Secondly, the Respondent has provided no evidence whatsoever of any enquiries made by it before it registered the Domain Name, to ascertain whether or not any third parties might have trademark rights in the expression “bibi”. The Respondent simply asserted that it registered the Domain Name because of its attractiveness as a four-letter expression.
That is a completely inadequate justification for registering a non-dictionary word without undertaking at least some bona fide enquiry to determine whether a third party trademark might be identical to the domain name. In the Panel's view, there is no principle that very short alphanumeric strings are per se “fair game” for domain name registrations, without regard to the good faith of the registrant when registering and using the domain name. Trademarks may themselves compromise short alphanumeric strings, no doubt for similar commercial reasons to those mentioned by the Respondent in respect of short-string domain names – short alphanumeric strings are attractive because they are easy to remember. Interpreting the Policy in the manner for which the Respondent contended would leave an owner of a short trademark with no redress under the Policy even where its mark had been the subject of bad faith “targeting” by a domain name registrant who had no right or legitimate interest in that domain name. That could not be correct.
Thirdly, the Domain Name is not one in respect of which it might have been reasonably considered improbable that some third party might hold an identical trademark. The Domain Name consists of two easy-to-say, repeated, syllables, which phonetically might stand for the letters “BB”. In the Panel's view, the chances of an identical third party trademark being out there somewhere should reasonably have been regarded as quite high, and should certainly not have been disregarded.
Fourthly, the fact that “Bibi” can be a person's name cannot per se be a justification for the registration: numerous trademarks consist of a person's name, often the name of the proprietor of the trademark. In any event, the Respondent has not claimed that, when it registered the Domain Name, it turned its mind to the possibility that “Bibi” might be someone's name, or that it might somehow use the Domain Name in connection with that possibility.
Weighing the evidence, the Panel is satisfied that, even if the Respondent had not heard of the Complainant or its mark when it registered the Domain Name, the Respondent was “willfully blind” to the substantial possibility that the Domain Name might correspond to another's trademark: on the evidence produced, it appears to have proceeded completely without regard to that possibility.
Following the reasoning articulated by the panel in GM Communications Limited (in the passage quoted above), the Panel considers that the Respondent should at very least have carried out basic trademark searches in major jurisdictions before registering the Domain Name. Had the Respondent searched either the International register of trademarks or the database maintained by the USPTO, it would have learned of the Complainant and its BIBI mark (the International trademark registration was effected in 1993, and the Complainant's evidence shows that the United States was one of the designated countries).
The evidence of the Respondent's use of the Domain Name shows that the Domain Name resolved, as recently as December 12, 2009, to a landing page website which contained a number of click-on categories, including (separately) “Baby Shoes”, and “Baby Clothes”. Following the “Baby Clothes” link, the Complainant was taken to a number of third party websites, including two Swiss websites operated by the Complainant's competitors. The only reason those links would have been present would have been to take advantage of Internet users who arrived at the Respondent's website looking for the Complainant, and, not finding the Complainant, decided to follow the “Baby Clothes” link to see what was there. They would then have found, among the first few links, websites operated by two of the Complainant's Swiss competitors.
Numerous UDRP panels have rejected claims to a right or legitimate interest in such circumstances – see for example Sanofi-Aventis v. Abadaba SA,WIPO Case No. D2006-1611, which was followed by this Panel in Sanofi-Aventis v. Keyword Marketing, Inc,
WIPO Case No. D2007-0075.
In the Panel's view, it does not help the Respondent that there are other parties, apart from the Complainant, who hold BIBI trademarks, or use the name “Bibi” in their businesses or other activities. Rather, the existence of other such parties supports the Panel's view that the Respondent should have recognized that the term “Bibi” would likely be attractive as a trademark, and be registered as such. The Respondent does not claim to have the consent of any of those other parties, or otherwise to derive rights or a legitimate interest through one or more of them. The critical question is not whether there might be others with a right or legitimate interest in the expression “Bibi”, but whether the Complainant has been targeted in some (non-bona fide) way by the Respondent's use of the Domain Name. In this case, the click-on category “Baby Clothes”, and the particular links (under the “Baby Clothes” heading) to the websites of the Complainant's Swiss competitors, persuade the Panel that there has been such a (non-bona fide) targeting.
As the panel noted in GM Communications Limited, it is not a justification recognized under the Policy to say that the links were the work of the Respondent's web hosting service (see also in that regard, numerous UDRP panel decisions to similar effect, including Express Scripts, Inc v. Windgather Investments Limited/Mr. Cartwright,WIPO Case No. D2007-0268, Grisoft, s.r.o.v. Original Web Ventures Inc.,WIPO Case No. D2006-1381, Masai S.A. v. Peter Coleman,
WIPO Case No. D2007-0509 and the decision of this Panel in NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ,
WIPO Case No. D2007-1079.) The Respondent cannot escape responsibility for those links by blaming its webhosting service for them.
In all the foregoing circumstances, the Respondent has failed to satisfy the Panel that its use of the Domain Name prior to receiving notice of the present dispute has been bona fide.
The Respondent not having advanced any other argument for a right or legitimate interest, the Complainant has made out its case on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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] website or location or of a product or service on [the respondent's] website or location.
Essentially for the same reasons as are set out in the preceding section of this decision, the Panel is satisfied that the Respondent registered the Domain Name in bad faith.
In this case, the evidence shows that in June 1997 the Complainant did have a BIBI trademark registered under United States law, and there is nothing in the evidence to suggest that the Respondent then owned any relevant trademark, or that it had used the name “Bibi” prior to the grant of the Complainant's international and United States trademark registrations.
On the Respondent's own evidence, it appears to have registered the Domain Name without regard to the possible existence of rights of third party trademark owners in the identical expression. In any event, it has not claimed that it conducted any trademark register or other searches. In the Panel's view, and having regard to cases such as Mobile Communication Service Inc., Media General Communications Inc., mVisible Technologies Inc., and Grundfos A/S, the Respondent could not properly have represented at the time of registration that the Domain Name did not infringe any third party intellectual property rights without having first undertaken such searches and satisfied itself that what it was representing was in fact true2. To refrain from doing so was to be “willfully blind”, and that is sufficient to establish that the registration was made in bad faith.
In a case such as this, where the bad faith lies in substantial part in the making of a representation to the registrar with reckless disregard as its truth or otherwise, it is not necessary that the Respondent must have had this particular Complainant in mind at the time of registration. The decision to make no enquiry, while at the same time representing that no third party intellectual property rights will be infringed, is enough. (If that were not the position, every domain name registrant who acquired a domain name using an automated process could successfully claim that “it did not have the complainant in mind”, and thereby render itself immune to any claim under the Policy. The Panel does not believe that that could have been the intention of the framers of the Policy.)
The Panel is also satisfied that the Respondent has been using the Domain Name in bad faith. The pages which the Complainant produced from the Respondent's website as it stood on December 12, 2009, make it clear (from the selection of the search category “Baby Clothes”, and the existence of the sponsored links thereunder to the websites of the Complainant's Swiss competitors), that the Respondent had the Complainant and its BIBI mark in mind, and expected that some Swiss and other Internet users interested in the Complainant's baby clothes would mistakenly arrive at the Respondent's website. If that was the website creator's expectation, it must also have been the intention, and in those circumstances the use falls squarely within the example of bad faith registration and use which is set out at paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's BIBI mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
That would be enough to resolve the case in the Complainant's favour, if it were not for two matters, which have caused the Panel some difficulty. The first is the length of time it has taken for the Complainant to bring this Complaint. It is over 12 years since the Domain Name was registered, and at some point in that period the Complainant must have become aware that someone else held the Domain Name. (The Panel finds it highly unlikely that it did not occur to the Complainant until December 2009, to wonder who held the domain name in the <.com> gtld which would most clearly reflect the Complainant's BIBI mark.)
The point is troubling. However, the panel decisions under the Policy appear to universally uphold the position that there is no defense of “laches”, or unreasonable delay – see for example The Jennifer Lopez Foundation v Jeremiah Tieman,
WIPO Case No. D2009-0057, where the delay in question was nine years. The panel in that case noted that the remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services (citing The Hebrew University of Jerusalem v Alberta Hot Rods,
WIPO Case No. D2002-0616, The E W Scripps Company v Sinologic Industries,
WIPO Case No. D2003-0447, and Tom Cruise v Network Operations Center/Alberta Hot Rods,
WIPO Case No. D2006-0560).
Of course numerous UDRP panels have noted that, while long delay in bringing a complaint does not of itself provide a defense to a claim under the Policy, the delay may nevertheless prove fatal to the complaint because the passage of time since the disputed domain name was registered frequently makes it impossible for the complainant to prove that the respondent acted in bad faith many years earlier at registration time. But no such argument is available to the Respondent in this case, as it has volunteered that it registered the Domain Name in circumstances which the Panel has found amount to bad faith registration.
The Panel notes that the Domain Name has apparently only been used for the generation of pay-per-click advertising revenue, which use has included riding on the back of the Complainant's goodwill in its BIBI mark. There is no question of damages, or other backward-looking relief: any decision favorable to the Complainant must be limited to granting one or other of the remedies of transfer or cancellation. The Respondent has not been able to point to anything emanating from the Complainant which might have been categorized as an express or implied consent to the Respondent's continued ownership and use of the Domain Name. Taking all of those factors into account, the Panel concludes that there is no reason for it to depart from the consensus view of UDRP panels described above, and that the Complainant's long delay in bringing the present Complaint cannot provide the Respondent with a defense.
The other matter which has caused the Panel some pause, is the fact that there appear to be numerous other owners of BIBI trademarks, in a variety of international classes and jurisdictions, apart from the Complainant, as well as numerous other users of the expression “Bibi”. One or more of them might have just as a strong a claim to the Domain Name as the Complainant. The concern would be highlighted if it were the case that the Respondent has been targeting some of these other BIBI trademark owners, in addition to the Complainant – for example, Calcados in respect of BIBI baby shoes.
As a general principle, the Policy at paragraph 4(a)(i) sets a particular threshold on the question of standing to file a complaint. It does not preclude the possibility that more than one party might have standing because it holds a relevant trademark right. Once a complainant has shown that it has the necessary rights in a trademark or service mark which is identical or confusingly similar to the disputed domain name, the focus switches to the respondent's registration and use of the disputed domain name. Has the respondent some right or legitimate interest of its own in the domain name? If not, has the respondent registered the domain name in bad faith, and used it in bad faith in some way against the particular complainant?
Once the Policy is read that way, it is clear that, in a given set of circumstances, there might be more than one trademark owner who could bring a UDRP complaint. In light of the Panel's findings that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy, the question for the Panel becomes one of remedy, and whether the panel should order a transfer of the Domain Name or, having regard to the existence of numerous other holders of “Bibi” trademarks, order that the Domain Name be cancelled.
The remedy of cancellation appears to be seldom used by UDRP panels, at least when transfer is requested by the complainant. No doubt that is because it is not regarded as providing a practical solution in most cases. An order for cancellation can result in a respondent who has been found guilty of bad faith registration and use getting the disputed domain name back again if that respondent is the fastest party to respond when the cancelled domain name again becomes available.3
Would cancellation produce an unfair result for the Complainant, who has gone to the trouble of filing the present Complaint and bringing the Respondent to book? The Panel considers that it is entitled to take all matters into account in deciding what remedy best fits the circumstances of this case4, including the apparent rights of at least ten third party trademark holders in the expression “Bibi”. The Panel has come to the view that, in the unusual circumstances of this case, cancellation (instead of transfer) is the appropriate remedy. The Panel has come to that view for the following reasons:
1. This is not a case where a complainant's trademark has been combined with some clearly identifiable third party's trademark to form the disputed domain name. In such cases, the circumstances can often be met by requiring the complainant to produce evidence that the third party trademark owner has no objection to an order being made transferring the disputed domain name to the complainant. Here, Exhibit G to the Response shows that there are at least 10 third party owners of BIBI trademarks, in addition to the Complainant.
2. The use of the “Baby Shoes” sponsored link category heading on the Respondent's website suggests that other owners of BIBI trademarks may have been targeted by the Respondent, in addition to the Complainant. (From the limited evidence available in the record, the most prominent supplier of BIBI baby shoes in many jurisdictions appears to be Calcados, not the Complainant.) The particular sponsored links which appear on a “landing page” website often depend on the location of the Internet user, and given the number of BIBI marks which are held by other parties (ie neither the Complainant nor Calcados) in various jurisdictions around the world, it is at least possible that those trademark owners might also have been “targeted” by the Respondent.
3. This is not a case where a complainant has been surprised by an unexpected reference in a response to some third party holder of a trademark which is identical to the one upon which the complainant relies. Here, the USPTO documents produced by the Respondent show that the Complainant was well aware of Calcados, at least.
4. The Complainant appears to have sat on its hand for a very long time, taking no action to recover the Domain Name for over 12 years after the registration date. During that time it must have become aware of the Respondent's registration of the Domain Name. As the Complainant trades in numerous countries, the probability is that it must also have become aware of at least some of the numerous other commercial users of the expression “Bibi” to which the Respondent referred.
5. In the circumstances described above, the essential question is why the Complainant should be preferred over other potential claimants to the Domain Name who, on the limited evidence available, might have just as strong a claim to the Domain Name as the Complainant. That seems to the Panel to be a matter for its discretion, and in the Panel's view there is no good reason to prefer the Complainant. The justice of the case is best met by an order for cancellation. In coming to that view, the Panel notes that this is a very unusual case, in that there appear to be numerous other potential claimants to the Domain Name whose claims might be as good as the Complainant's claim. The Panel notes also that this is not a case where the Respondent's “laches” argument has prevailed: the Panel's decision to order cancellation is primarily founded on the existence of numerous other potentially meritorious claimants to the Domain Name.
It remains only to note that if (post-cancellation) the Respondent were to acquire the Domain Name again, the Complainant would not be precluded from bringing any new complaint under the Policy which it might consider justified on the facts as they then stood. In such an event, the question of bad faith registration would be assessed accordingly.
E. Reverse Domain Hijacking
The Complainant having succeeded with the Complaint, the Respondent's allegation of reverse domain name hijacking is rejected.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bibi.com> be cancelled.
Warwick Smith Sole Panelist
Dated: March 26, 2010
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