The Complainant is Lamprecht AG of Regensdorf, Switzerland, represented by Lenz & Staehelin, Switzerland.
The Respondent is Emily Dubberley of London, United Kingdom of Great Britain and Northern Ireland, internally represented.
The disputed domain name <bibibaby.com> is registered with Gandi SARL.
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 Gandi SARL a request for registrar verification in connection with the disputed domain name. On December 29, 2009, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 December 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2010. The Response was filed with the Center on January 19, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on February 5, 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.
The Complainant is an established manufacturer of baby products under the BIBI trade mark and owns various device mark and word mark registrations for or incorporating BIBI in a range of jurisdictions dating from 1932. These registrations include the word mark BIBI under registration number 55049 in Switzerland. The Complainant or its licensees also own a range of domain names incorporating its trade mark including, <bibi.info>, <bibi-international.com>, <bibi.ch>, <bibi-uk.com> and <bibi-baby.com>. The latter domain name was registered on December 15, 2009.
The Respondent registered the Disputed Domain Name in 1992 which subsequently resolved to a dating website for bi-sexual women. Currently it does not operate its own website at the Disputed Domain Name but permits the Disputed Domain Name to resolve to a place keeper website operated by the registrar Go-Daddy.
The Complainant says that it has a range of device and word mark registrations dating back to 1932 which incorporate or are in respect of its mark BIBI. The Complainant says that it has used this mark extensively in many countries worldwide in relation to baby products and as a consequence its products are very well known and its various websites at domain names incorporating its mark are some of the first “hits” that come up in undertaking an Internet search for the mark or term BIBI. It submits that the Disputed Domain Name is confusingly similar to its mark because it incorporates its BIBI mark and the common word “baby” which is effectively descriptive of the Complainant's products.
Further the Complainant says that it has not authorised the Respondent's use of its mark and has no affiliation with the Respondent and the Respondent does not appear to be commonly known by the Disputed Domain Name. Nor does the Respondent operate a website at the Disputed Domain Name and the Complainant submits in the Complaint that there is no explanation as to the reason for the Respondent's registration of the Disputed Domain Name or that it ever made preparations to use it in connection with a bona fide offering of goods and services. Accordingly, the Respondent has no legitimate rights or interests in the Disputed Domain Name.
The Complainant says that as its International trade mark registration was made more than 8 years prior to the registration of the Disputed Domain Name and because of the primacy of its various websites in Internet searches that it is reasonable to infer that the Respondent knew of the Complainant's BIBI mark and business and acted purposefully and in bad faith in registering the Disputed Domain Name. In addition the Respondent's conduct in not having used the Disputed Domain Name itself for more than 7 years and in failing to respond to the Complainant's various attempts at communication is indicative of a passive holding of the Disputed Domain Name in bad faith.
The Respondent submits that although the Complainant has trade mark rights in its BIBI mark that the Disputed Domain Name is not confusingly similar to the Complainant's trade mark. This is because the term “bibibaby” is in fact a word play in English referring both to bisexuality and to the well known song “Byebye Baby”, the term “bibibaby” is not used in commerce by the Complainant and the Complainant only registered the domain name <bibi-baby.com> a week prior to the date of this Complaint and it currently only resolves to a Go-Daddy parking page.
Further and in support of its contention that there is no confusing similarity, the Respondent says that Google search results do not show any pre-eminent results for the Complainant's websites and the first result is well down the search result list and is owned by a United Kingdom subsidiary which did not exist until 5 years after the registration of the Disputed Domain Name. In addition there are numerous unrelated sites which come up as a consequence of this search.
The Respondent says that it does have a legitimate interest in the Disputed Domain Name by virtue of the fact that after registration of the Disputed Domain Name it used it to resolve to a dating website for bi-sexual women. The Respondent has provided original screenshots from this site using the way-back machine and says that it had to remove the website when it discovered that there were security related bugs in the website software. The Respondent notes that neither this use nor the place keeper site to which the Disputed Domain Name now resolves has any association with the Complainant or baby products similar to the Complainant's products.
As far as bad faith is concerned the Respondent submits that in addition to the above the Complainant has failed to demonstrate that registration of the Disputed Domain Name was made with knowledge, purposefully with intent to apply leverage against the Complainant or its trade marks, or in relation to any products or services that compete or have an association with the Complainant's products. The Respondent says that it never contacted the Complainant in an attempt to sell the Disputed Domain name at a profit and that it was in fact the Complainant that initiated contact through commercial channels and when it could not obtain the Disputed Domain Name by these means then resorted to making this Complaint. For this reason and based on the Complainant's conduct in seeking to register the <bibi-baby.com> domain name only a week before making this Complaint the Respondent says that in bringing this Complaint, the Complainant has engaged in reverse domain name hi-jacking.
The Panel finds that the Complainant has demonstrated clearly that it has registered trademark rights in its BIBI trade mark. In the circumstances that the word “baby” is a commonly used word in the English language, that the Complainant's products are baby products and taking into account the prominence and distinctiveness of the term “bibi” in the Disputed Domain Name, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
This is so in the Panel's view even if the Swiss Complainant's BIBI trade mark may be pronounced differently by non-native English speakers than the Disputed Domain Name which in English may have a phonetic pronunciation of “bye bye baby” which, as the Respondent submits, appears to be a play on the well known song of the same title. The likelihood remains that on a side by side comparison, people seeing the Disputed Domain Name may well confuse it as having some association with the complainant's trade mark and therefore there is a likelihood of confusion between the Disputed Domain Name and the Complainant's trade marks and the Complaint succeeds in relation to the first element of the Policy.
The onus is upon the Complainant to demonstrate a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to provide evidence to rebut this case.
The Complainant has submitted that there is no explanation as to the reason for the Respondent's registration of the Disputed Domain Name or that it ever made preparations to use it in connection with a bona fide offering of goods and services. However the Respondent says that it registered the Disputed Domain Name for the purposes of promoting a dating site for bi-sexual women and that it chose the name as a play on words based on the popular song as described above. The Respondent has provided evidence of the website that it originally developed, in particular screenshots which appear to date from 2002. It says that the website had to be taken down because of bugs in the website software pending replacement with alternative software, but makes no comment as to why the site has not subsequently been reinstated.
As the Respondent has provided a legitimate explanation for its initial registration of the Disputed Domain Name, the Panel finds that it has rebutted the Complainant's claim that it has no legitimate interest in the Disputed Domain Name and therefore the Complaint does not succeed in relation to the second element of the Policy.
Although based on the Panel's finding in relation to the second element of the Policy it is not strictly necessary to address the third element, even if the Complaint did succeed under the second element of the Policy, the Panel notes that it would not succeed under the third element. This is because it is a fundamental requirement under the Policy that the Disputed Domain is both registered and used in bad faith and the Complainant has at the least failed to demonstrate registration in bad faith.
As described above the Panel accepts that the Respondent initially had a legitimate purpose for registration of the Disputed Domain Name and in fact used it for this purpose. There is no evidence to support an inference that the Respondent acted purposefully or in bad faith. In fact the Respondent's website and business operated in a completely different field of activity from the Complainant's and at no time competed with the latter's business or website. Nor, in these circumstances, could the Respondent have possibly sought to trade off any goodwill or association with the Complainant's trademark. There being no evidence of registration in bad faith the Panel finds that the Complaint can also not succeed in relation to the third element of the Policy.
This is a classic case in which the parties operate in separate fields of activity and where the Respondent has acted independently and legitimately to register the Disputed Domain Name for a real business activity. Although, the Complainant may be concerned that people might, at least initially, associate it with the Disputed Domain Name or with the Respondent, the Policy was only designed to address circumstances of cybersquatting and not complaints of possible tarnishment. Although the Complainant appears to have sat on its hands for a number of years it only initiated this Complaint after the Respondent failed to respond to its attempts to acquire the Disputed Domain Name. Further, the Panel is not satisfied that the Complainant was aware at the time of filing of the Respondent's initial website and business offering. Accordingly the Panel declines to make a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: February 14, 2010