Natalie Hayes v. eStyle, Inc. c/o Laurie
McCartney
Claim Number: FA0510000571924
PARTIES
Complainant is Natalie Hayes (“Complainant”),
481 Randall Road, North Augusta, SC 29860.
Respondent is eStyle, Inc. c/o Laurie McCartney (“Respondent”), represented by James M. Donovan, of Law Offices of James
M. Donovan, 515 South
Figueroa Street, Suite 1000, Los Angeles, CA 90071-3327.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <babygiftideas.com>,
registered with Register.com, Inc.
PANEL
The undersigned certify 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.
Timothy D. O’Leary, Chairman, Sandra J. Franklin, and Paul M. DeCicco
as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 3, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 5, 2005.
On October 4, 2005, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <babygiftideas.com>
domain name is registered with Register.com, Inc. and that the Respondent is
the current registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On October 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 31, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@babygiftideas.com by e-mail.
A timely Response was received and determined to be complete on November
10, 2005.
Complainant’s additional submission and Respondent’s addition
submission were both timely filed.
On November 23, 2005, pursuant to Complainant’s
request to have the dispute decided by a Three-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary, Sandra J. Franklin, and
Paul M. DeCicco as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
I. Complainant’s
Contentions
A. Identical or Confusingly Similar
Respondent’s <babygiftideas.com> domain name is confusingly similar to Complainant’s BABY GIFT IDEA mark. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
Complainant
has established rights in the BABY GIFT IDEA mark (“Complainant’s mark”)
through registration of the mark with the United States Patent and
Trademark Office (“USPTO”) and through use of the mark in commerce since 1999.
In comparing
Complainant’s mark to the Domain Name, we request that the Panel ignore the
generic top-level domain, in this case ".com," because it is simply a
generic element and indeed a functional necessity.
Complainant’s and Respondent’s goods and subject matter are clearly
related, and even overlap, as both offer baby items for sale from like categories
(i.e. clothing, personalized gifts, décor, toys, etc.), as well as baby gift
registries and baby shower pages.
Internet users accessing Respondent’s online store located at <babygiftideas.com>
commonly believe they have located Complainant’s online store and services.
B. Rights or Legitimate Interests
Respondent should be considered as having no rights or legitimate
interests in respect of the domain name that is the subject of the complaint.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii). This assertion is due to the following:
Respondent’s use of the domain is not in connection with bona fide
offering of goods and services.
Relevant law states that no legitimate or bona fide use or interest in
the domain name can be found when a Respondent, who is selling competing goods
or services, is diverting consumers to its own website by using a Complainant’s
trademark in its domain name. Parties
are not engaged in bona fide activities when they sell goods or services while
benefiting from the goodwill associated with a competitor’s trademark.
Respondent’s use of the disputed domain name to redirect users to a
site offering services related to and competing with Complainant’s site cannot
be deemed a bona fide offering of goods or services. Respondent stands to benefit from that confusion, while
Complainant’s economic situation stands only to suffer from it, and
Complainant’s customers remain confused and misled.
Respondent has no legitimate rights or interests in the name in that it
is not Respondent’s personal name, Respondent is not known by that name, and
Respondent does not engage in any legitimate business under the domain
name. In addition, the domain name has
not been evidenced in company’s business communications. Respondent is not licensed to use the BABY
GIFT IDEA mark in a corresponding domain name.
Respondent engages in commerce under the company umbrella name of
eStyle, Incorporated, and also operates under the names of Babystyle, and
Kidstyle, which have nothing in common with the <babygiftideas.com>
domain name or Complainant’s mark.
C. Registration and Use in Bad Faith
The domain
name should be considered as having been registered and being used in bad
faith. ICANN Rule 3(b)(ix)(3); ICANN
Policy ¶ 4(a)(iii).
Respondent has 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 (i.e. “disrupting the business of a competitor”).
By the very action of knowingly registering a confusingly similar
domain name, and refusing to abandon the name after being notified of the
infringement on two separate occasions over a six-year period, Respondent has
intentionally barred Complainant from reflecting her BABY GIFT IDEA mark
through use of the corresponding and nearly identical domain name, <babygiftideas.com>. After receiving the formal Cease &
Desist Letter on April 18, 2005, Respondent did not reply and instead renewed
the disputed domain name, <babygiftideas.com>, on May 27, 2005 for
an additional five-year period. This action can be interpreted no other way
than as a deliberate attempt to continue to disrupt Complainant from conducting
business under the confusingly similar domain name.
By using the domain name, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to Respondent’s web site, by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or location
or of a product or service on Respondent’s web site or location.
Respondent registered and used the Domain Name in bad faith because
Respondent sought to gain financially by exploiting Complainant’s mark and thus
creating the false impression that Complainant was somehow connected with the
site (both parties engage in commerce which centers around baby items).
Complainant’s domain name, <babygiftidea.com>, was purchased on
April 1998 and internet store was launched in April of 1999. When Complainant went to purchase the
similar domain name, <babygiftideas.com>, in August 1999, she was
surprised to see that it had just been purchased on July 31, 1999 by eStyle,
Inc., a brand new online competitor whose store, babystyle.com, launched in
July 1999. Complainant promptly sent a
personal email to Respondent, pointing out that because Complainant’s web
statistics showed that Respondent’s eStyle network had accessed Complainant’s
site several times before the purchase of the confusingly similar domain,
<babygiftideas.com>, that Complainant felt that this must be a purposeful
act to confuse customers of babygiftidea.com.
Complainant requested an abandonment of the domain name by Respondent at
that time. Respondent’s emailed reply
stated that this act was, “part of our aggressive marketing campaign.” Complainant’s efforts to secure the
confusingly similar domain were rebuffed by Respondent.
Complainant did finally secure the trademark for BABY GIFT IDEA on
August 31, 2004. On April 15, 2005,
Respondent received a formal Cease & Desist letter and was given the
deadline of May 10, 2005 to surrender the <babygiftideas.com>
domain name. Respondent ignored the
request and subsequently renewed the very domain name in dispute on May 27,
2005 for an additional five-year period.
Respondent selected a domain name that posed a significant risk of
confusion with the name of an existing specialty baby items company,
particularly when its purpose in doing so was to provide registry services and
baby items for sale that overlap directly with Complainant’s business.
Even if it enters into dispute whether or not Respondent initially had
knowledge of the BABY GIFT IDEA mark when registering the <babygiftideas.com>
domain name, Respondent did nevertheless continue to renew the domain each
period before it expired, even after the date that the formal Cease &
Desist Letter was received.
II Respondent’s Contentions
A. Identical and/or Confusingly Similar
Respondent does business as “babystyle.” In June and July 1999, Respondent, to promote its “babystyle.com”
business, was actively registering numerous generic domain names. Complainant appears to have had practically
no ascertainable market presence at that time.
On July 31, 1999, eStyle registered the <babygiftideas.com>
Domain Name. Respondent has
continuously maintained and promoted the Domain Name and numerous other ones as
well in connection with “babystyle.com.”
More than five (5) years after Respondent commenced its continuous use
of the Domain Name, on or about August 31, 2004, Complainant was granted a
USPTO service mark, subject to a restrictive disclaimer, for
“babygiftidea.com.”
On May 27, 2005, as part of its ongoing Domain Name maintenance
protocol, Respondent renewed the Domain Name.
On April 15,
2005, Complainant made a written demand upon Respondent to transfer the Domain
Name unconditionally, without any consideration and with the reservation of the
right to commence extortionate litigation against Respondent.
There can be no confusion between the business operations, style and
market presence, of Complainant and Respondent. A potential shopper using “www.babygiftideas.com” is taken
directly to the “babystyle.com” website, which is lushly styled with top
quality and professional photography and graphics. Respondent’s babystyle.com website has always had distinctive
fonts and sophisticated upscale color palettes. On the other hand, Complainant’s website is completely different,
with a cozy, artsy, homespun feel, cottage crafts motif and pastel-toned
fields.
A person using <babygiftideas.com> is taken directly to
the “babystyle.com” website, which in no way can be confused with the website
of Complainant.
There are thrity-two current United States registrations that include
the words “baby” and “gift,” which demonstrates conclusively that Complainant’s
mark, such as it is, is but one mark in a crowded field of marks, using the
letter string “baby gift” to identify similar products and services.
“Baby Gift” is a pervasive common choice for any number of domain
names. According to the Google search
engine, a search for “baby gift ideas” indicated 21.4 million possible sites
and a search for “baby gift idea” indicated the possibility of approximately 17
million websites while a search for “baby gift” indicated 95.4 million possible
sites.
B. Rights or Legitimate Interest
The Domain Name is used legitimately and openly by Respondent to bring
potential customers to <babystyle.com>.
The registration of the Domain Name of Respondent was not for the
purpose of selling, renting, or otherwise transferring the Domain Name
registration to Complainant or for any improper or illegal purpose. At the time of the Respondent’s registration
of the Domain Name, Complainant did not have any mark registered. In fact, it would be more than five (5)
years later that the mark was registered.
While a mark registration gives rise to a presumption of priority, any
presumption is rebuttable. The argument that a mark registered with USPTO more
than five (5) years after Respondent commenced its continuous use of the Domain
Name has priority is not correct. As
set forth in the evidence, Complainant has a practice of allowing third parties
to make use of Complainant’s website, which allows users to directly access
competitive websites offering baby and apparel goods.
Complainant has not, and cannot, submit any evidence whatsoever that
Respondent registered the domain name in bad faith.
Complainant has not introduced any evidence whatsoever to support any
of the conclusionary allegations that Complainant has suffered any demonstrable
harm by Respondent’s use of the domain name.
C. Registration and Use in Bad Faith.
The generalized and conclusory allegations of
Complainant, that Respondent is using the domain name in bad faith, is without
any supporting admissible evidence, documentation or proof.
In a crowded field of marks, such as the field
for “baby gift,” the owner of one such mark is entitled to an extraordinarily
limited zone of protection for its mark because prospective purchasers are not likely
to be confused with the similarities between two marks in such a crowded field.
III. Respondent’s Contention that Complainant
has engaged in reverse domain
name
highjacking.
A. Respondent’s Contention.
Complainant had engaged in reverse domain highjacking
by instituting this proceeding, after all these years have passed. Respondent in good faith registered the <babygiftideas.com>
domain name on July 31, 1999. It was
not until a few months ago (April 15, 2005) that Complainant began its disruptive
and costly efforts to get the Domain Name for free while retaining the right to
launch crippling litigation against Respondent without any foundation.
There is no realistic likelihood that any
legitimate confusion or legitimate harm is involved. It was only after Complainant determined that it would not be
able to harass and intimidate Respondent into transferring the Domain Name for
free, while leaving itself exposed to additional extortion-like litigation,
that Complainant instituted the proceedings to attempt, by legal force, to get
what she was not entitled to in the first place.
B. Complainant’s Response.
Complainant has not acted in bad faith in
commencing these proceedings.
Complainant is a legitimate business woman who acted on a business idea,
formulated in 1997, of providing unique and specialty baby gifts in a unique
manner. Complainant runs a legitimately
registered business with an established market presence. Complainant has every right to conduct
business online, every right to register a service mark in order to ensure
protection against those who might seek to trade on the goodwill of her growing
company, and every right to bring any party who is infringing on her mark,
misleading her customers, or disrupting her business in an inappropriate way
into a proceeding such as this. The
formal Cease & Desist Letter that Respondent admits receiving on April 18,
2005, freed Respondent from any legal or financial actions in return for a
simple abandonment of the infringing domain (that they knew to be an
infringement). Respondent chose to
completely ignore the opportunity to escape litigation and punitive damages
and, out of what can only be interpreted as outright defiance, went just days
later and renewed the Domain in dispute for an unprecedented five year period
(Respondent’s usual renewal activity has always been in 1-2 year increments,
and never before has Respondent renewed the Domain for a full five year span).
Respondent’s allegation that “Complainant only
instituted this proceeding a few weeks ago as part of an admitted campaign to
get the Domain Name for free” is completely unfounded and without basis.
Complainant has not at any time engaged in
harassment or extortion of Respondent.
IV. Complainant’s
Additional Submission.
Complainant purchased the Baby Gift Idea domain
(<babygiftidea.com>) more than one year prior to this date, and was
already engaging in business while assessing and utilizing marketing efforts to
strengthen its identity for a period of four months prior to the July 31, 1999
domain registration date.
In the immediate timeframe prior to and including
the date of August 20, 1999 (the date when Complainant went to purchase the
Domain and found that it had been recently purchased by eStyle, Inc.),
Complainant leaned that members of the eStyle, Inc. network made exactly
thirty-four visits to the Baby Gift Idea web site located at
<babygiftidea.com>.
At the very least, it is established from Exhibit
D that eStyle, Inc. did have direct knowledge of the presence in commerce of
Baby Gift Idea during the exact time period in which the confusingly similar
Domain was registered. This proves that
Respondent engaged in “bad faith” business and also knowingly interrupted
Complainant’s ability to conduct “good faith” business in its full and entitled
capacity.
The Domain is, in fact, neither a primary nor an
essential means or method for attracting any good faith business to eStyle,
Inc. In fact, Respondent has avoided
demonstrating how exactly its use of the Domain contributes in any way to
eStyle’s vital functions besides crippling a competitor while simultaneously
directing the competitor’s leads to Respondent’s own online baby store.
The Domain is simply a conduit for funneling what
can only be estimated as anywhere from a steady to perhaps an exceptionally
high flow of traffic originally intended for Baby Gift Idea over to eStyle’s
<babystyle.com> landing page.
The only “inequity” that exists is the fact the
eStyle, Inc. persists in engaging in the bad faith business practice of
“typosquatting” in order to promote a confusingly similar baby gift-themed
landing page which craftily encourages anyone seeking baby gift ideas from Baby
Gift Idea to search for exactly what they are in the market for at eStyle, Inc.
instead.
Complainant had long established strong federal
and common law rights in its BABY GIFT IDEA mark prior to official granting of
its registered service mark on August 31, 2004. Baby Gift Idea had established these common law rights through
over five (5) years of continuous use of the BABY GIFT IDEA mark as the primary
source identifier for its offerings over the Internet.
V. Respondent’s
Additional Submission.
Respondent developed and initiated a sales development model for its
online business that included the purchase of specific existing domain names
and the registration of numerous additional generic domain names that did not
have secondary meaning, including “Baby Gift Ideas” which was then legitimately
available. The registration of numerous
generic domain names is not intended and does not in fact interfere with
businesses that have not established secondary meaning in the market.
Complainant’s Additional Submission fails to address or provide
evidence on the two (2) fundamental issues in these proceedings. Complainant has the burden of proof as to
two very specific points under the ICANN Policy ¶ 4(b):
Respondent’s bad faith
registration of the Domain Name; and
Respondent’s bad faith
use of the Domain Name.
In mid-1999
Complainant had not established the required secondary meaning to “baby gift
idea” or “baby gift ideas.”
In mid-1999, when
Respondent registered the Domain Name, Complainant had no recognized or
protectable rights in the Domain Name.
Complainant’s purchase of a domain name a year before mid-1999 does not,
in and of itself, vest any protected right without active and regular use over
an extended period of time that matures to secondary meaning. In August 1999, Complainant had no established
secondary meaning in connection with the Domain Name and therefore Respondent’s
registration of the available Domain Name in August 1999 cannot entail bad
faith.
Complainant’s 2004
United States Patent and Trademark Office registration does not relate back to
August 1999. Even then, the Mark of
Complainant is at best only generically descriptive and without secondary
meaning
Complainant’s
additionally submitted evidence does not prove any legitimate confusion between
Respondent and Complainant. Both
Declarants have only been employed but for a recently few months. Neither Declarant was employed in mid-1999
at the time of the registration of the Domain Name.
Because Respondent and
Complainant’s market presence is so dramatically different, there really is no
likelihood of confusion between Complainant and Respondent.
Respondent clearly
registered the Domain Name in good faith and has used the Domain Name in good
faith.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
The addition of the top-level
domain “.com” is irrelevant in determining whether the <babygiftideas.com> domain name
is confusingly similar to Complainant’s mark.
See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum Dec. 6, 2003). Respondent’s
<babygiftideas.com> domain name incorporates Complainant’s BABY
GIFT IDEA mark in its entirety and only deviates by the addition of the letter
“s.” Such a slight variation is
generally not enough to overcome the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y
v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001); see also
Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000). Respondent urges that the Panel consider the relevant market in
its comparative analysis. While the relevant market may be a consideration
regarding confusing similarity under traditional trademark infringement
analysis, it is not a relevant for the purposes of the UDRP. Therefore, Complainant’s mark and
Respondent’s domain name are confusingly similar.
Complainant has established rights in the BABY GIFT IDEA mark through registration with the United States Patent and Trademark Office (Reg. No. 2,878,607 issued August 31, 2004). Complainant first used the BABY GIFT IDEA mark in April 1999. The federal registration establishes a presumption that Complainant has rights in the mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004). However, Paragraph 4(a)(i) of the Policy requires the Complainant to have rights in a mark (registered or common law) before the disputed domain name is registered. China Daily News Group v. Rui Yang, FA 115042 (Nat. Arb. Forum Sept. 25, 2002). There is no dispute that at the time the domain name was registered, Complainant had not yet applied for federal registration and had only been using the mark in commerce for less than four months. The term “baby gift idea” is descriptive within the class of goods in which Complainant and Respondent trade. It is a stretch to suppose that such a descriptive mark acquired distinctiveness within four months of its first use. It is thus unlikely that Complainant had common law trademark rights in the at-issue mark at the time Respondent initially registered its domain name.
Therefore, Complainant has not demonstrated for the purposes of this proceeding that it has rights in a mark that is confusingly similar to Respondent’s domain name.
Respondent submits that it registered descriptive terms as domain names to direct traffic to its website at <babystyle.com>. If the at-issue mark is not used in a trademark sense, that is, to describe “what” the entity does, as opposed to “who” the entity is, such a descriptive use can be considered a legitimate “fair use.”
Furthermore, there is no direct evidence in the record suggesting that Respondent was aware that Complainant claimed trademark rights in the at-issue mark at the time it registered the at-issue domain name. Using a domain name consisting of common descriptive and generic terms as a portal to a business website, here “babystyle.com”, constitutes a bona fide offering of goods or services. Pursuant to Policy ¶ 4(c)(i), Respondent’s use of the descriptive <babygiftideas.com> domain name to direct traffic to its business website demonstrates that Respondent has rights and legitimate interests in the disputed domain name. See First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002).
Based on the foregoing, Respondent had legitimate rights in the domain name at the time of initial registration.
If Respondent was unaware that it might tread on Complainant’s trademark rights, or had a reasonable good faith belief that it would not do so in registering and using the domain name, then it is logically impossible for the requisite intent component of bad faith to be present and “bad faith” under the Policy is precluded. See, generally, Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc. (Marchex), FA 567039 (Nat. Arb. Forum Nov. 10, 2005). If Respondent is reasonably unaware of Complainant’s rights at the time of registration (or if Complainant had no rights), then there can be no finding of bad faith. Thus, Respondent must have actual, rather than constructive, knowledge of Complainant’s trademark rights to be found in bad faith. Here, there is no evidence to lead the Panel to find that Respondent had any actual knowledge of Complainant’s claimed rights. Respondent denies having knowledge of the mark prior to registration. Moreover, as discussed above, it is dubious that Complainant had any trademark rights in the at-issue mark at the time Respondent registered its domain name. Complainant mistakenly emphasizes that Respondent had knowledge of her mark at the time of subsequent registration of the domain name, but this Panel is bound to consider the situation at the time of the original domain name registration, which is when both parties’ rights were coming into being.
Based on the facially generic nature of the at-issue mark, Respondent’s denial of knowledge of Complainant’s trademark rights, lack of evidence that Complainant had trademark rights at the time the domain name was registered, and as otherwise discussed above, the Panel finds that Respondent had a good faith belief that it might register and use the at-issue mark in a domain name at the time of registration. Therefore, Respondent did not register and use the at-issue mark in bad faith.
Reverse Domain Name Hijacking
Respondent argues that Complainant is engaging in the practice of reverse
domain name hijacking. To prevail on its claim Respondent must show that
Complainant knew of Respondent’s rights and interests in the domain name and
that while there was clearly good faith registration and use of the domain
name, Complainant nevertheless brought the Complaint. Goldline Int’l v. Gold Line, D2000-1151 (WIPO Jan.
4, 2001). No persuasive evidence is
presented that supports such a finding. Even though the Complaint fails
on all of the Policy elements, Complainant reasonably and vigorously argued to
the contrary regarding each of them. Therefore, Complainant was not acting in bad
faith in filing the Complaint and Respondent’s claim of reverse domain name
hijacking is rejected.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Timothy D. O’Leary, Chairman
Sandra J. Franklin, and Paul M. DeCicco,
Panelists
Dated: December 14, 2005
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