Marcus & Joy LLC v. BABYLIFE
Claim Number: FA0703000937081
PARTIES
Complainant is Marcus
& Joy LLC (“Complainant”), 480
Gate 5 Road,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <babylife.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on March 13,
2007; the National Arbitration Forum received a hard copy of the
Complaint on March 19, 2007.
On March 14, 2007,
Network Solutions, Inc. confirmed by
e-mail to the National Arbitration Forum that the <babylife.com> domain name is registered with Network Solutions, Inc. and that Respondent is
the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions,
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 March 20, 2007, the National Arbitration Forum advised
Complainant that the Complaint was deficient, in that Complainant was not
consistently named; no telephone number was listed for Complainant’s authorized
representative; a copy of the ICANN Policy was not appended to the Complaint;
and the filing fee of $1,300 was not supplied. Complainant rectified the
deficiencies within the required five calendar day time period.
On March 26, 2007,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of April 16, 2007 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@babylife.com by e-mail.
A timely Response was received and determined to be
complete on April 20, 2007.
On April 30, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Carol M. Stoner, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
Respondent requests that pursuant to ICANN Rule 15
(e), that the Panel make a finding of reverse domain
name hijacking.
PARTIES’ CONTENTIONS
A. Complainant
Complainant filed for the trademark BABYLIFE on
January 12, 2006 in international classes 10 and 28, for the respective goods
and services of “cups adapted for feeding babies and children and infant
toys”. Complainant presents no evidence
that the application has matured into a registration and offers only the date
of publication of August 23, 2006 and the Notice of Allowance Date of October
05, 2006. Marcus and Joy LLC, of which
Pam Marcus is a partner, was incorporated in
Complainant filed for trademark registration with the
stated intent to sell baby products and apparel. Shortly after starting the business,
Complainant hired Sedo (the leading marketplace [per Complainant] for buying
and selling domain names and websites) at the recommendation of Network
Solutions. Complainant proffers an
Appraisal for
<babylife.com> in which the conclusion is that the domain name of <babylife.com>
is valued at $2,750.00. Complainant decided to pursue the domain
through Sedo, to launch Complainant’s website.
Complainant attached a report from <sedo.com> regarding the
acquisition of the name from the owner.
Complainant admits that Respondent did not register
the domain in order to prevent the owner of the trademark to register the
domain, nor for the purpose of disrupting the business of a competitor.
However, Complainant alleges that Respondent had
abandoned the BABYLIFE trademark on August 26, 1997, and is not making a
legitimate non-commercial or fair use of the domain, as it has been parked with
tetranet for 11 years.
Complainant further states that Respondent is not
commonly known by the disputed domain, because neither a Yellow Page search nor
a Google Search produce a connection to Respondent.
Complainant states that Respondent is retaining the
domain in hopes of selling it to a future trademark owner, yet has rebuffed any
attempts for Complainant to purchase the disputed domain name at a reasonable
price.
B. Respondent
Respondent admits that its domain name of <babylife.com>
is the same or similar of that of Complainant’s trademark. However, he asserts that the trademark rights
should be narrow in scope due to Complainant’s narrow description of goods and
services as “cups adapted for feeding babies and children and infant toys.”
Respondent alleges that Complainant was aware of
Respondent’s ownership and use of the domain, before Complainant was
incorporated, or filed for its trademark, or filed any other domain name
registration. Complainant applied for
its trademark on January 12, 2006, more than 10 months after becoming aware
that Respondent was making use of this domain name and was not interested in
selling the domain name.
Respondent alleges that Complainant has a less than
business like website, accessed under the name of <visitbabylife.com>,
noting its absence of a marketing front page, a root directory without much
linkage, other than with counterfeit ownership pictures of Hillary Clinton and
Frank Lloyd Wright with the partnership bios.
The <babylife .com> domain namehas been registered and used as an online
service and website address in conjunction with the promotion of baby-proofing
houses and selling products and services that enhance the life of children.
Respondent states that it prefers to
retain ownership of the disputed domain name and thus has never marketed the name. However, Respondent did rebuff a vague and
unsubstantiated offer of less than $3000.
And for purposes of instant arbitration,
Respondent hired a financial expert who evaluated the
worth of the disputed domain name to be $250,000.
In support of its request that Panel make a finding on
reverse domain name hijacking, Respondent further alleges as follows:
That Complainant attempted to
purchase a domain name which was valid in its use and registration for an under
market price, for the sole purpose of reaping a profit when selling it to a
competitor.
That Complainant is not commonly known by the disputed
name in that it posted a website (March 20, 2007) only in conjunction with
filing of the Complaint; that website is hastily done and does not evince a
legitimate business purpose of selling products consistent with the scope of
its trademark; and further, that Complainant’s company name is neither found in
the Yellow Pages, nor produced as a product of a Google search.
That if Complainant was sincere in its purpose to
launch and promote a babylife website, it could have availed itself of the
currently available domain name of <babylife.biz>.
FINDINGS
(1) The domain name registered by Respondent is not
identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has rights or legitimate interests in respect
of the domain name;
and
(3) Respondent has not registered the domain name <babylife.com>, nor used said domain name, in bad
faith.
(4) Complainant is not guilty of reverse domain name
hijacking.
DISCUSSION
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 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;
(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.
Complainant provides only limited
evidence of its use of the BABYLIFE mark, including a trademark registration
application for the mark and an assertion in the Complaint that it began using
the mark in 2006. The Panel finds that
Complainant has not provided enough evidence to show its mark has acquired the
secondary meaning necessary for it to establish common law rights in the mark
under Policy ¶ 4(a)(i). See Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14,
2005) (finding no common law rights where the complainant did not present any
credible evidence establishing acquired distinctiveness); see also
Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that
the complainant did not establish common law rights in the BEAR BUILDER or BEAR
BUILDER marks because the evidence it submitted was insufficient to show the
mark had acquired any secondary meaning).
Moreover, Respondent claims that
it registered the <babylife.com> domain name long before
Complainant began using the BABYLIFE mark.
The WHOIS information indicates that Respondent registered it on January
15, 1996, ten years before Complainant alleges it first began using the mark. As a result, the Panel finds that Complainant cannot establish rights in
the mark that predate Respondent’s registration of the disputed domain name, in
which case Complainant has failed to satisfy Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“[Policy
¶ 4(a)(i)] necessarily implies that the Complainant’s
[trademark] rights predate the Respondent’s registration and use of the Domain
Name. Any other interpretation would
allow a junior trademark user to challenge a prior domain name registration, a
possibility that is obviously contrary to the intent of the Policy and to
trademark law generally”); see also EU Prop. Portfolio
Ltd. v. Salvia Corp.,
FA 873726 (Nat. Arb. Forum
Feb. 7, 2007) (finding that the complainant could not establish rights in the
<eupp.com> domain name where its use of the EUPP mark did not predate the
respondent’s registration of the domain name).
The Panel concludes that
Complainant has failed to satisfy Policy ¶ 4(a)(i) because it does not have
rights in the BABYLIFE mark that predate Respondent’s registration of the <babylife.com>
domain name,
The Panel would be within its
rights to decline to
analyze the other two elements of the Policy.
See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002) (finding that because the complainant must prove all three elements
under the Policy, the complainant’s failure to prove one of the elements makes
further inquiry into the remaining element unnecessary); see also Trujillo
v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As
Complainants have not shown that their rights pre-date Registrant's domain
name, Complainants have not satisfied paragraph 4(a)(i)
of the Policy.”). However, as Respondent
has entered a request for a finding of reverse domain name hijacking, this
Panel believes that a more extensive threshing of the evidence is warranted.
Rights or Legitimate
Interests
Respondent asserts that
Complainant is incorrect in its allegation that Respondent has never used the <babylife.com>
domain name. Respondent alleges that it
has used the <babylife.com> domain name in the past to promote its
baby-proofing business, in conjunction with its other domain name,
<childproofers.com>. Respondent
also claims that it never received an offer from Complainant to buy the <babylife.com>
domain name. The Panel finds that
Respondent’s use of the <babylife.com> domain name to market its
business is a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i). See
Am. Online, Inc. v. West, FA
638005 (Nat. Arb. Forum Mar. 20, 2006) (finding that the respondent was making
a bona fide offering of goods or services at the <aol-city.com>
domain name where it had used the domain name for over five years in connection
with a real estate business in the UK and there was little chance of consumer
confusion); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb.
Forum June 2, 2003) (finding that the respondent’s operation of a bona fide
business of online prop rentals for over two years was evidence that the
respondent had rights or legitimate interests in the disputed domain name); see
also Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006) (finding it a
persuasive factor that the respondent had used the disputed domain name for
over seven years in concluding that the respondent had rights or legitimate
interests in the disputed domain name).
The WHOIS information lists
“BABYLIFE” as the registrant of the <babylife.com> domain name, and Respondent has provided evidence that it has used
the BABYLIFE mark in the past in connection with its business. As a result, this Panel holds that Respondent
is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Avnet,
Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding
that the respondent was commonly known by the <avnet.net> domain name
because the respondent submitted “evidence that it was known by the name AVNET
for at least ten years prior to its domain name registration”); see also
Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO
Mar. 1, 2000) (finding that the respondent was commonly known by the
<six.net> and <sixnet.com> domain names even though the complainant
had registered the SIXNET trademark because the respondent demonstrated that
its customers associated the respondent’s company with the domain names).
Moreover, Respondent registered
the <babylife.com> domain name ten years prior to Complainant’s
alleged first use of the BABYLIFE mark.
This constitutes additional evidence that Respondent has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb.
Forum July 12, 2000) (denying transfer of the domain name because the respondent’s
use of the PARACHUTE mark and the domain name in question preceded any use of
the service mark by the complainant); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002)
(finding that the respondent had rights or legitimate interests in a domain
name when its registration of that domain name occurred before the complainant
had established rights in its alleged mark).
The Panel holds that Respondent
has rights or legitimate interests in the <babylife.com> domain name pursuant to Policy ¶ 4(a)(ii), and therefore, the Panel also finds that Respondent did not register or use the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See
Respondent contests Complainant’s
allegation that it asked for $80,000 in exchange for transferring the <babylife.com>
domain name registration to Complainant.
Respondent claims that it never even received an offer from Complainant,
and that it has only ever received one offer, for $75,000, several years
ago. Respondent claims it has no
intention to sell the disputed domain name and that its own third-party appraisal
values the <babylife.com> domain name at $250,000. The Panel finds that Respondent’s assertions
are credible and therefore, the Panel also finds that it has not violated
Policy ¶ 4(b)(i).
See PRIMEDIA Special Interest Publ’ns Inc. v.
Treadway, D2000-0752 (WIPO
Aug. 21, 2000) (finding that the respondent did not register the domain names
in bad faith where there is no evidence that the respondent intended to sell
the domain names and actually refused several offers from third parties); see
also Gen. Mach. Prod.
Respondent claims that it registered the <babylife.com> domain
name in good faith, for
it registered it in 1996, ten years before Complainant’s first use of the
BABYLIFE mark, and therefore it could not have been aware of Complainant at the
time it registered the disputed domain name.
The Panel also finds that Respondent’s registration of the disputed
domain name long before Complainant’s first use of the mark indicates that
Respondent did not register the disputed domain name in bad faith according to
Policy ¶ 4(a)(iii).
See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO
Dec. 11, 2000) (finding no bad faith where the respondent registered the domain
name in question before application and commencement of use of the trademark by
the complainant); see also Interep Nat'l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith
where the respondent registered the domain prior to the complainant’s use of
the mark).
The Panel also finds that Respondent has not registered or used the
disputed domain name in bad faith because it finds that Respondent has not
violated any of the remaining Policy ¶ 4(b) factors. See Goldmasters Precious
Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000)
(finding no bad faith use, even though the respondent’s ownership and purported
use of the domain name frustrated the complainant’s business efforts, because
nothing indicated that the respondent intended to prevent the complainant from
reflecting its mark in a corresponding domain name, to disrupt the
complainant’s business, or to intentionally attract the complainant’s customers
to the respondent’s site by creating a likelihood of confusion); see also
Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb.
19, 2001) (finding that the respondent successfully rebutted the complainant’s
averments that it registered and used the domain name at issue in bad faith and
that the complainant produced no credible evidence of bad faith on the part of
the respondent).
Reverse Domain Name Hijacking
Based upon a review of all the
evidence, the Panel is satisfied that Complainant brought this action in good
faith, based upon a faulty understanding of the legitimacy of its own rights,
such as they exist in a complex area of the law.
Complainant makes a layman’s case
for believing that Respondent’s disputed domain name was dormant and/or
abandoned. Their request to purchase the
name was based upon good faith, research, and an appraisal, as suggested by
Network Solutions. Complainant’s
resultant disappointment at being rebuffed, and the
filing of the instant action may have been based upon naiveté, or even an
inflated sense of entitlement. But there
is not sufficient evidence to indicate that the sole motive in seeking the
purchase was to seize Respondent’s goodwill for their own,
or to flip the name for substantial profit.
This Panel rules that the bar for
achieving a ruling of reverse domain name hijacking should be set at such a
formidable height, that Complainant is not deterred or chilled in exercising
its rights in an approved Forum to seek a determination of domain name
ownership, even in an arguably close case.
See also Renaissance Hotel Holdings, Inc. v. The Renaissance
Thus, the Panel
makes no finding of reverse domain name hijacking.
DECISION
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that Complainant's request for relief shall be DENIED.
Accordingly, it
is Ordered that the <babylife.com> domain name
SHALL NOT BE TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Sole
Panelist
Dated: May 14, 2007
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