WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Knot, Inc. v. Julia Bitton, The Nest
Case No. D2006-0377
1. The Parties
The Complainant is The Knot, Inc., New York, New York, United States of America, represented by the law firm Kenyon & Kenyon, United States of America.
The Respondent is Julia Bitton, The Nest, New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thenestny.com> is registered with Schlund + Partner, Karlsruhe, Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2006. On March 24, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On March 28, 2006, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2006.
On April 21, 2006, the day following the Center’s notification of Respondent’s default, Respondent sent an email message to the Center, stating that “when [she] first received the notification about the filing of the complaint, [she] was under the impression the [she] must not take any actions until further notice,” and requesting the opportunity to submit a Response. Complaint’s representative, who had been copied on this email, replied the next business day, April 24, 2006, requesting the opportunity formally to contest Respondent’s request for a late filing. The Center referred Respondent’s request to the Panel.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 4, 2006. 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. The Panel finds that it was properly constituted and has jurisdiction over this proceeding.
4. Respondent’s Request for Leave to File a Response Out of Time
Accepting untimely filings is a matter for the Panel’s discretion under paragraphs 10(b) and 12 of the Rules. Because Policy procedures were designed to expedite resolution of a limited class of disputes, panels may decide not to allow submissions not expressly authorized by the Rules, including filings out of time, absent either demonstrated circumstances justifying an exception (for example, permitting a complainant to reply to material in a response that could not reasonably have been anticipated when the complaint was filed) or when the extraordinary submission will result in minimal prejudice to the Panel and the non-requesting party (for example, accepting a filing a day or two after it is formally due). See Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994. The present proceeding presents neither of these circumstances. Respondent cites only her misreading of the Rules and the Center’s communications as an excuse for not filing in the twenty-day period prescribed by the Rules, and asks for an indefinite extension. The Panel therefore denies Respondent’s request.
5. Factual Background
Complainant is in the business of providing planning and advisory services to engaged and newlywed couples; its counsel describes Complainant as the “leading wedding content provider” to a number of Internet service providers, including AOL. Complainant claims to have used the trademark THE NEST since October 2004 “in connection with providing information of special interest to newlywed couples.” Complainant also asserts that it is the owner of two United States trademark applications for THE NEST that are currently pending in the United States Patent and Trademark Office (PTO).
Complainant has its own website at <thenest.com>, at which it offers products and services of interest to newlywed couples. This site includes numerous links to Complainant’s principal site at <theknot.com>.
Respondent is an individual residing in New York City, New York, United States of America. In August 2005, she created the disputed domain name and at some point began using it as a commercial website in connection with educational activities and classes for young children. From the Panel’s review of Respondent’s website, it appears that a prospective customer cannot order goods or services online; rather he or she is encouraged to visit Respondent’s New York City store or submit an inquiry by telephone or email.
6. Parties’ Contentions
The Panel summarizes the Complainant’s contentions as follows:
Similar to a Mark in which the Complainant has Rights. The disputed domain name differs from Complainant’s mark THE KNOT only by the addition of NY, the universal abbreviation for “New York,” and the .com top-level domain identifier. The addition of a common suffix and a top-level domain identifier do not obviate similarity with the Complainant’s mark and are obviously confusing with it.
Rights or Legitimate Interests. Under clauses 4(b)(iii) and (iv) of the Policy; Respondent’s use of the domain name is not legitimate or bona fide because of the name’s similarity to Complainant’s mark and the fact that the services Respondent offers at her website compete directly with Complainant. To quote from the Complaint, “Respondent was almost certainly aware of the inauguration of Complainant’s website under www.THENEST.com as a link to the website features prominently and Complainant’s other website at <theknot.com> because “Complainant’s website at <theknot.com> is the most trafficked wedding website on the internet, with over 2.1 million visitors a month...”1 Respondent has a sponsored link on Google which appears right beside a link to Complainant’s website. (Complaint, Exhibit E)
Bad faith. The same factual allegations Complainant uses to support its charges that Respondent’s use of the dispute domain name is not legitimate also serve to establish Respondent’s bad faith by showing that “Respondent has attempted to attract, for commercial gain, internet users who, being familiar with Complainant’s site and trademark, would be confused as to the source, sponsorship or endorsement of Respondent’s website or the products or services offered by Respondent.” (Policy 4(b)(iv)). There is an intent to trade on Complainant’s good will “because it is likely that consumers would be confused into believing that Respondent’s [website], and the goods and services offered there, is [sic] simply a website related to Complainant, which markets such goods and services in a manner particularly appealing and appropriate to New Yorkers.”
As noted, Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Respondent’s default does not automatically result in a decision for Complainant, nor does it require the Panel to accept as true all factual allegations in the Complaint. Complainant must still carry its burden of proof under each element of the Policy with competent evidence. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), ¶4.6.
A. Identical or Confusingly Similar to a Mark in which Complainant has Rights.
Complainant has established this element of the Policy. The geographical suffix and top-level main identifier do not obviate similarity with the Complainant’s mark, and confusion is likely. Common law rights, which are all that Complainant now possesses, are sufficient to invoke the Policy.
B. Rights or Legitimate Interests; Bad Faith
As is often the case under Policy proceedings, these two Policy elements turn on the same factual findings or inferences. See, e.g., Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com, Inc., WIPO Case No. D2004-0359. That is especially true when the respondent is operating a business that is “legitimate” in the everyday sense of the word, i.e. the business is more than just use of the domain name. If Respondent selected the name because of similarity to the Complainant’s mark, the use of the domain name is not “legitimate” under paragraph 4(a)(ii) and selection of it is proof of bad faith in registration under paragraph 4(a)(iii). Conversely if the domain name were chosen for independent reasons, bad faith in registration is lacking and Respondent’s use is legitimate.
Complainant’s argument under these elements of the Policy depends upon its allegations that (i) Respondent was aware of the Complainant’s mark when she registered the disputed domain name, and (ii) she is using the disputed domain name as Complainant’s competitor in bad faith to divert internet users seeking Complaint’s site by means of a website address confusingly similar to Complainant’s mark. Complainant’s argument is sound as a matter of decisional practice under the Policy;2 the issue is whether Complainant has established the factual underpinnings necessary to sustain its desired legal conclusion. Respondent’s actual knowledge and intent, of course, cannot be determined with direct evidence, particularly since the Policy allows no hearing, discovery, or other opportunity for cross-examination. For this reason panels are permitted to make inferences on these issues based upon the evidence in the record. Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
Respondent’s placing a sponsored link next to Complainant’s name on Google is certainly evidence of Respondent’s using the disputed domain name in bad faith. And in some circumstances use in bad faith can be a basis for a panel’s inferring registration in bad faith.3 Brooke Bollea, supra. In this case, however, none of the other factors from which that inference could be made is present.
First, Complainant does not allege that its THE NEST mark is famous, so that Respondent could not convincingly deny knowledge of it or the Panel would be justified in inferring that Respondent knew of it at the time of registration. Nor could it, since so far as the record indicates its only use is as one of Complainant’s web addresses.4 The PTO record indicates that examiner’s first actions on Complainant’s applications were initial refusals to register and requests for additional information. The mark has not been published for opposition, so even if the Panel were to import from trademark law a notion of “constructive notice”5 there is no basis for a finding that Respondent knew of it. Complainant’s argument is rather that Respondent must or should have been aware of Complainant’s use of a similar domain name that links to Complainant’s better known THE KNOT mark and <theknot.com> website. The disputed domain name is not confusingly similar to this mark.
Second, Complainant’s trademark rights exist in a common colloquial phrase used to indicate a household, and of two very common words. In trademark parlance, the mark is descriptive of the goods and services Complainant offers. Complainant’s rights to exclude others under trademark law and the Policy are accordingly limited considerably.6 The PTO records and a Google search indicate widespread use of these two words for many different goods and services.
If in fact Respondent offered identical or closely competing goods and services, the Panel might be permitted to infer a deliberate attempt to trade off Complainant’s mark. But that is not the case. Respondent’s website offers goods and services related to care, rearing, and education of young children, for example toys, parent-child classes, and parenting advice. Complainant’s website at <thenest.com> offers goods and services for enhancement of the relationship between newly married couples, for example financial planning, entertaining, vacations, and time together. Complainant’s only reference to children found on the Panel’s examination was a chat room (one of several) entitled “Babies on the Brain;” there was no reference to any service or product competitive with those described on Respondent’s site. Nothing on Complainant’s first page referred to children or children-related services. While there may be a tiny overlap in target audience or products offered, each site’s focus differs significantly from the other. It is also significant that Respondent does not sell goods or services online, instead using her website to generate inquiries to her New York City store. Complainant has offered no evidence that any of its customers was actually confused.
Finally, the record reveals none of the species of activity ordinarily associated with cybersquatting: warehousing (no use of the domain name for a lengthy period); holding the domain name out for sale; use entirely for click-through revenues; or other conduct in which ownership or use of the domain name, rather than ordinary business activity, is the linchpin. While the absence of such activity does not alone establish legitimate use or good faith, it underscores the absence of any factual foundation for Complainant's confident allegation that "Respondent was almost certainly aware of Complainant's website" when she registered the disputed domain name.
There is thus nothing in the record to suggest that Respondent was actually aware of the pending mark application or Complainant’s use of THE NEST when she registered the disputed domain name. Neither the sparse evidence submitted by Complainant nor the Panel’s own investigation7 yields convincing proof that Respondent elected the disputed domain name to take advantage of the goodwill (limited as it then was) of Complainant’s common law THE NEST mark. On this record it is just as likely that Respondent’s selection of this common phrase for the disputed domain name was made without actual knowledge of Complainant’s mark for the same reason as Complainant selected its mark - after all, nests often have chicks - rather than as an intentional attempt to free ride on it.
The combination of (i) Complainant’s use of a weak mark, (ii) that is descriptive and (iii) incorporates a common phrase made of two everyday words does not entitle the mark owner to a presumption of registration in bad faith (or illegitimate use) when (iv) the owner of the disputed domain name is not an obvious competitor. On the evidence in the record, the Panel finds that Complainant has not met its burden of proof.
The Complaint is denied due to lack of evidence of the second and third element of the Policy. 8
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: May 9, 2006
1 Complainant provides no evidence to support these factual allegations.
2 E.g., The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., WIPO Case No. D2005-1318, and cases cited.
3 Paragraph 4(a)(iii) of the Policy requires both registration and use in bad faith, and if there was no bad faith in registration Respondent’s use is legitimate.
4 Strictly speaking there is no evidence at all of Complainant’s use until March 2006, the date of Exhibit C to the Complaint. For purposes of this proceeding, however, the Panel will accept as true counsel’s unsworn allegation that Complainant first used THE NEST in a website in October 2004.
5 The prevailing view is against use of this presumption. Overview, ¶3.4.
6 The Panel is mindful that many cybersquatters often argue that any use of common words is permissible (see, e.g., National Retail Federation, Inc. v. Luigi Marruso, WIPO Case No. D2006-0275; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin WIPO Case No. D2002-0635), and does not intend the language above to be a departure from or exception to the consensus view (Overview, ¶2.2) that marks incorporating generic words are ordinarily sufficient under the Policy.
7 Consistent with the consensus view (see Overview, ¶4.5) the Panel limited its investigation to the public record: each party’s website and the PTO’s public search engine.
8 The Panel's decision of course is not in any way intended to prejudge or influence any subsequent court proceedings between the parties. Should such proceedings ensue, the court will have available an evidentiary record developed through discovery and cross-examination, and perhaps a different legal standard. See Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805, at note 17.