Amy Phillips v. Namecheap.com
Claim Number: FA1309001519139
Complainant is Amy Phillips (“Complainant”). Respondent is Namecheap.com (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naturallyborn.com>, registered with ENOM, INC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as the Chair of the three-member Panel, along with Flip Jan Claude Petillion and Honorable Bruce E. Meyerson (Ret.).
Complainant submitted a Complaint to the National Arbitration Forum (“Forum”) electronically on September 12, 2013; the Forum received payment on September 11, 2013.
On September 16, 2013, ENOM, INC. confirmed by e-mail to the Forum that the <naturallyborn.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2013, by which Respondent could file a Response to the Complaint via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@naturallyborn.com. Also on September 23, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 15, 2013.
A timely Additional Submission was received from Complainant on October 21, 2013, and deemed compliant.
On October 25, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert as the Chair of the Panel along with Flip Jan Claude Petillion and Honorable Bruce E. Meyerson (Ret.).
A timely Additional Submission was received from Respondent on October 28, 2013, and deemed compliant.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant established the website <naturallyborn.net> in December 2010. This website provides information about natural methods of child birthing and breastfeeding, as well as online reviews of natural childbirth and breastfeeding support providers.
2. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the NATURALLY BORN mark (Reg. No. 4,205,152 filed January 18, 2012; registered September 11, 2012).
3. Respondent’s <naturallyborn.com> domain name is identical to Complainant’s NATURALLY BORN mark.
4. Respondent does not have any rights or legitimate interests in the disputed domain name.
5. Respondent is not commonly known by the disputed domain name, and Respondent does not use the disputed domain name to make a bona fide offer of goods or services.
6. Respondent registered and is using the disputed domain name in bad faith.
7. Respondent was aware of Complainant and its rights when it renewed the registration to the disputed domain name in October 2012.
8. Respondent is using the disputed domain name to attract Internet users to Respondent’s website by intentionally creating a likelihood of confusion with Complainant’s mark.
9. Respondent engaged in bad faith negotiations with Complainant for the sale of the disputed domain name.
10. Respondent’s use of the disputed domain name infringes upon Complainant’s NATURALLY BORN mark.
B. Respondent
Respondent made the following contentions.
1. Respondent registered the disputed domain name two years before Complainant’s registration date for the NATURALLY BORN mark and two years before Complainant established any common law rights in the mark.
2. Respondent established rights and legitimate interests in the disputed domain name by using the resolving website to publish a blog describing the pregnancy and childcare experiences of Respondent’s wife.
3. Respondent’s use of the disputed domain name is entirely noncommercial and does not compete with Complainant’s business.
4. Complainant has admitted that Respondent acquired the disputed domain name before Complainant had any rights in the NATURALLY BORN mark, thus precluding a finding of bad faith registration.
C. Complainant’s Additional Submissions
Complainant made the following contentions.
1. Respondent’s lack of bad faith when initially registering the disputed domain name does not absolve the Respondent from future misconduct.
2. The renewal date for a disputed domain name can function as a de facto registration date for purposes of establishing bad faith registration.
D. Respondent’s Additional Submissions
Respondent made the following contentions.
1. The Policy requires both bad faith domain name registration and bad faith use.
2. Previous Panel decisions questioning the conjunctive requirement of both bad faith registration and bad faith use express a minority view and have been subsequently rejected.
· Complainant established the website <naturallyborn.net> in December 2010 to provide information about natural methods of child birthing and breastfeeding.
· Complainant filed for the registration of the NATURALLY BORN mark on January 18, 2012, and the mark was registered on September 11, 2012.
· Respondent registered the <naturallyborn.com> domain name on November 18, 2010.
· Respondent currently uses the <naturallyborn.com> domain name to promote its own “Baby Marohn” blog.
· The parties have been involved in negotiations regarding the sale of the <naturallyborn.com> domain name, during which Respondent offered to sell the domain name for US$ 2,000.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issues
Complainant raises several issues in its Complaint and Additional Submission which are beyond the scope of the Panel’s decision-making authority. Complainant alleges that Respondent has engaged in bad faith negotiations concerning the sale of the disputed domain name. A claim of bad faith negotiation goes beyond the scope of examination under the UDRP. Additionally, Complainant alleges that Respondent’s use of the disputed domain infringes upon Complainant’s NATURALLY BORN mark. However, Respondent’s registration of the disputed domain name predates Complainant’s registration of the mark. Therefore, an analysis of trademark infringement is not relevant to this Panel’s decision under the Policy.
Complainant has demonstrated that it owns a registered trademark for the term NATURALLY BORN. Evidence of the registration of a trademark with the USPTO is sufficient to establish rights in the mark. See F. Hoffman-La Roche AG v. Relish Enters., Case No. D2007-1629 (WIPO Dec. 17, 2007); see Paisley Park Enters. v. Lawson, Case No. FA 384834 (Nat. Arb. Forum Feb. 1, 2005).
To satisfy ¶ 4(a)(i), the disputed domain must be identical or confusingly similar to Complainant’s mark. Here, the only differences between Complainant’s registered mark and the disputed domain name are (1) the elimination of a space and (2) the addition of a generic, top-level domain. These differences are insufficient to distinguish the registered mark from the disputed domain name. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (holding that the addition of a space is insufficient to distinguish a mark, “as spaces are impermissible in domain names”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (holding that the addition of a generic top-level domain does not distinguish a mark). Respondent repeatedly notes that its registration of <naturallyborn.com> predates Complainant’s registration of the mark, but such an inquiry is irrelevant to the “identical or confusingly similar” analysis, and is addressed under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. The Panel thus concludes that Complainant has satisfied the first element of the Policy.
Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain. A complainant must assert a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain. Once a prima facie case has been made, the burden shifts to the respondent to introduce evidence of rights or legitimate interests. See Neusiedler Aktiengesellschaft v. Kulkami, Case No. D2000-1769 (WIPO Feb. 5, 2001). The Panel concludes that Complainant has failed to assert a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name well before the Complainant acquired rights in the NATURALLY BORN mark, and is thus the senior user. The disputed domain <naturallyborn.com> is comprised of generic, descriptive terms. Such terms are “legitimately subject to registration as domain names on a ‘first come, first served’ basis.” See Asphalt Research Tech., Inc. v. Nat’l Press & Publ’g., Inc., Case No. D2000-1005 (WIPO Nov. 13, 2000). Additionally, the Panel concludes that Respondent’s registration of the disputed domain name was intended for use in connection with the disputed domain’s generic meaning, and could not have been intended to trade off of Complainant’s later-arising trademark rights. Furthermore, Complainant acknowledges that the disputed domain at least occasionally redirected to Respondent’s “Baby Marohn” blog. This purpose is logically related to the generic disputed domain name. Consequently, Complainant has failed to make out a prima facie case under ¶ 4(a)(ii) of the Policy.
As Complainant has failed to satisfy ¶ 4(a)(ii) of the Policy, there is no need to discuss registration and use in bad faith. For purposes of completeness, the Panel analyzed ¶ 4(a)(iii) and concluded that Complainant has failed to demonstrate bad faith registration of the disputed domain.
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that “the domain name has been registered and is being used in bad faith.” Nevertheless, Complainant admits that Respondent “acquired the domain first and fairly.” Although Complainant has advanced several arguments as to how ¶ 4(a)(iii) has been satisfied, the Panel finds that there is no indication that the Respondent registered the disputed domain name in bad faith. The fact that the parties were involved in negotiations regarding the sale of the disputed domain name does not show that the disputed domain name was registered with the intent of selling the domain name to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
Complainant alleges that Respondent renewed the registration of the disputed domain name in bad faith. By the time of the renewal, Respondent was aware that Complainant had secured trademark rights in the disputed domain name. Some Panels have held that a bad faith renewal may be treated as a de facto bad faith registration. See Houlberg Dev. v. Adnet Int’l, FA 95698 (Nat. Arb. Forum Oct. 27, 2000) (holding that the respondent renewed a domain name in bad faith because it had actual knowledge of the complainant’s asserted rights in a trademark at the time of renewal). In the instant case, Complainant was aware of Respondent’s ownership of <naturallyborn.com>, yet still chose to develop and promote an identical mark. Complainant assumed the risk of developing a mark for which a pre-existing domain name had already been registered. Accordingly, the Policy does not allow Complainant any remedy.
Complainant also argues that ¶ 4(a)(iii) is not a conjunctive requirement, in that a complainant does not need to show both bad faith registration and bad faith use. Complainant bases this argument on two recent Panel decisions: Eastman Sporto Group and Mummygold. Eastman Sporto Group LLC v. Jim & Kenny, Case No. D2009-1688 (WIPO March 1, 2010) (equating bad faith renewal to bad faith registration for purposes of satisfying ¶ 4(a)(iii)); City Views Ltd. v. Moniker Privacy Servs./Xander, Jedeyu, ALGEBRALIVE, Case No. D2009-0643 (WIPO July 3, 2009) (“Mummygold”) (permitting bad faith registration to be established “retroactively” by subsequent bad faith use). Eastman Sporto Group and Mummygold exhibit a significant departure from a settled rule of decision that had been in place for nearly a decade. Furthermore, these decisions represent a minority interpretation of ¶ 4(a)(iii) that many subsequent Panels have declined to follow. See, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., Case No. D2010-0470 (WIPO May 19, 2010); Camon S.p.A. v. Intelli-Pet, LLC, Case No. D2009-1716 (WIPO March 12, 2010); Torus Ins. Holdings Ltd. v. Torus Computer Res., Case No. D2009-1455 (WIPO Jan. 10, 2010). This Panel is not convinced that Eastman Sporto Group and Mummygold were correctly reasoned, and thus follows the majority view that ¶ 4(a)(iii) must be interpreted to require both bad faith registration and bad faith use.
Complainant presents a stronger argument that Respondent is using the disputed domain name in bad faith. Complainant alleges that Respondent is intentionally misleading Internet users who intend to visit Complainant’s <naturallyborn.net> domain name. Respondent may in fact be “piggybacking” off of the success of the NATURALLY BORN mark to promote its own “Baby Marohn” blog. However, as Complainant has failed to demonstrate bad faith registration, the Panel declines to decide whether this subsequent conduct constitutes bad faith use.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <naturallyborn.com> domain name REMAIN WITH Respondent.
Michael A. Albert as the Chair of the three-member Panel along with Flip Jan Claude Petillion and Honorable Bruce E. Meyerson (Ret)
Dated: November 5, 2013
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