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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N2COM v. Whois Privacy Services / Domain Admin, Xedoc Holding SA

Case No. D2017-1220

1. The Parties

The Complainant is N2COM of Uccle, Belgium, represented by Laetitia Domb, Belgium.

The Respondent is Whois Privacy Services of Pyrmont, Australia / Domain Admin, Xedoc Holding SA of Luxembourg, Luxembourg, represented by Law.es, Spain.

2. The Domain Name and Registrar

The disputed domain name <babyboom.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email to the Center on June 28, 2017 and filed an amended Complaint on July 2, 2017.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. On July 21, 2017, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed with the Center on July 28, 2017.

The Center appointed Steven A. Maier, Yijun Tian and Karl V. Fink as panelists in this matter on August 21, 2017. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant is a public liability company incorporated under the laws of Belgium. It operates a website at “www.babyboom.be” providing information and merchandise relating to pregnancy, childbirth and parenthood.

The Complainant is the owner of the following trademark registrations:

- Benelux trademark number 469204 for BABY BOOM registered on October 31, 1989 in Classes 16, 35 and 41 for goods and services including publications, advertising, education and entertainment.

- Benelux trademark number 585201 for BABY BOOM registered on October 31, 1989 in Classes 35 and 41 for goods and services including the organization of exhibitions.

- Benelux trademark number 944367 for BABYBOOM registered on November 12, 2013 in Classes 16, 35, 38 and 41 for goods and services including publications, advertising, telecommunications and teaching.

The disputed domain name was registered on August 25, 2003.

The Complainant has exhibited evidence that, on May 22, 2017, the disputed domain name resolved to a website at “www.babyboom.com” which appeared to be a “parking page” website, offering a variety of links relating primarily to babies’ and children’s clothing.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has collaborated for many years with the largest companies in the early childhood sector and has communicated with new and expectant parents under its BABYBOOM brand. It refers to its trademark registrations mentioned above and to its registration of the domain name <babyboom.be> on June 18, 1998 and to other domain names including <babyboom.mx>. The Complainant states that it has delivered packages for babies since 1982 and that it currently has approaching two million subscribers. The Complainant contends that, because it operates in areas of the world including Europe, South America and Central America, it has “a legitimate interest to request” the disputed domain name, as this designates commercial activity which is not constrained to a specific geographical region.

The Complainant submits that the disputed domain name is identical or confusingly similar to its trademarks BABY BOOM and BABYBOOM.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its trademark for the purposes of a domain name or otherwise and that the Respondent has not commonly been known by the disputed domain name. The Complainant denies that the Respondent has made any bona fide commercial use of the disputed domain name and contends that it has used the disputed domain name only for the purposes of a pay-per-click website until it could be sold. While acknowledging that a registrant may use a domain name consisting of a “dictionary” word for pay-per-click links relating to that dictionary meaning, and that the term “baby boom” has a dictionary meaning relating to an increased birth rate, the Complainant contends that its trademark is a “fanciful denomination” which does not denote this dictionary meaning, but refers instead to the Complainant’s baby-related goods and services.

The Complainant submits that the disputed domain name was registered and has been used in bad faith.

The Complainant contends in particular that bad faith is to be inferred from the fact that the disputed domain name wholly incorporates the Complainant’s trademark.

The Complainant contends that the Respondent was, or should have been, aware of the Complainant’s trademarks at the time it registered the disputed domain name. The Complainant states that its trademarks were registered some 14 years before the disputed domain name, that a simple trademark search would have revealed the Complainant’s trademark, and that the Respondent should be deemed to have “constructive knowledge” of the Complainant’s trademark: in this regard the Complainant submits that there is an increased duty of enquiry upon a registrant who is a professional domainer (e.g., European Handball Federation v. domain admin, Xedoc Holding SA / Whois Privacy Services Pty Ltd, WIPO Case No. D2016-0057).

The Complainant submits that the Respondent has repeatedly tried to sell the disputed domain name to the Complainant for sums of up to EUR 65,000, which it says is unreasonable and in excess of the Respondent’s out-of-pocket costs associated with the registration (see paragraph 4(b)(i) of the Policy). The Complainant states that the Respondent is in the business of selling domain names and exhibits correspondence with a domain name broker whom it says acted insistently in attempt to conclude a sale. The Complainant also points to other cases under the UDRP in which the Respondent has been involved.

The Complainant also contends that the Respondent has used the disputed domain name misleadingly to divert Internet users to its pay-per-click websites (paragraph 4(b)(iv) of the Policy). The Complainant says that those websites include baby products and baby-related articles including those supplied by the Complainant’s competitors (although specifics of this allegation are not provided).

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent states that it acquired the disputed domain name in 2003 at auction and that it consists of a combination of two common English words. It states that it has used the disputed domain name for the purpose of pay-per-click advertising related to the definitional meaning of the term “baby boom”, which legitimately includes baby clothes and goods, and not for the purpose of targeting the Complainant’s goodwill.

The Respondent denies that any party seeing the term “babyboom” would assume that it related to the Complainant. It denies that the Complainant or its business are widely known and disputes the evidence that the Complainant has provided. It states in particular that the Complainant has failed to provide evidence of marketing expenditure, sales or third party recognition and asserts that its trademark is weak. The Respondent notes that the Complainant’s trademarks are limited to Benelux registrations and that its markets are limited and alleges that the Complainant accounts for only 0.00015 percent of Google search results against the term “babyboom”. It also asserts that there are 11,706 domain names which include the term “babyboom” that are not owned by the Complainant.

The Respondent states it has used the disputed domain name consistently for 14 years in connection with the pay-per-click pages referred to above and that it has done nothing to compete with the Complainant or to seek to capitalize upon its goodwill. The Respondent states that an Internet user would find the same links by typing “babyboom” into a search engine as those found on the Respondent’s website and reiterates that the term is not distinctive of the Complainant.

The Respondent denies having registered the disputed domain name in bad faith. The Respondent denies that it had actual knowledge of the Complainant when it acquired the disputed domain name and disputes that “constructive knowledge” of the Complainant’s trademark should be imputed as the Complainant contends. The Respondent states that it acquired the disputed domain name as part of a portfolio in 2003, which constituted its first domain name investment, and denies that it was under any duty at that date that would have required it to identify the Complainant’s trademark. It states that it did not learn of the existence of the Complainant until 2007 when it received “cease and desist” correspondence from the Complainant’s representatives. It adds that, having replied to that correspondence in 2007 rejecting the Complainant’s claim, it did not hear from the Complainant again until 2012 when the Complainant offered to purchase the disputed domain name. The Respondent exhibits copies of the correspondence referred to.

The Respondent denies having used the disputed domain name in bad faith for similar reasons as set out above. It repeats that there is nothing distinctive about the term “baby boom” and contends that, in any event, the Complainant’s trademarks and business are geared more to the provision of information than the supply of products. The Respondent specifically rejects the contention that the disputed domain name diverts Internet users away from the Complainant’s website and states that the Complainant has produced no evidence to that effect.

The Respondent further denies that its attempts to sell the domain name to the Complainant are an indication of bad faith. The Respondent states that the disputed domain name was first offered for sale in 2011 via an agency, that no sales activities were targeted at the Complainant and that the offer price of USD 65,000 was fair: the Respondent provides screen print from online valuation sites suggesting a value in excess of USD 100,000. The Respondent states that the Complainant approached it in about July 2012 offering USD 1,000 for the disputed domain name, made no allegation of infringement and said that it had “other options available”. The Respondent says that it did not hear from the Complainant again until 2015 and exhibits evidence of an extensive exchange of emails culminating in the Complainant offering USD 5,000 in December 2016, which the Respondent rejected.

The Respondent submits that there is nothing inherently illegitimate about offering to sell a domain name at a high price (Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493) and that, where a party registers attractive names for the purpose of future sales to other interested parties, that practice will not constitute bad faith unless the registrant knew of and was intentionally targeting a complainant’s trademark rights at that time (Hopscotch v. Perfect Privacy LLC/Joseph William Lee, WIPO Case No. D2015-1844). The Respondent denies any such targeting.

The Respondent further specifically denies having registered the disputed domain name as a blocking registration against the Complainant or in order to disrupt the Complainant’s business. The Respondent further contends that other UDRP cases in which the Respondent may have been involved have no bearing on this case.

The Respondent submits that it acquired the disputed domain name 14 years ago and that the Complainant first complained about it ten years ago. The Respondent states that it has used the disputed domain name openly and with the Complainant’s knowledge since that time and that the Complainant’s delay in bringing this proceeding both amounts to a complete defense and evidences bad faith on the part of the Complainant.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of Benelux registered trademarks for BABY BOOM and BABYBOOM dating from 1989. The disputed domain name <babyboom.com> is essentially identical to both such trademarks. While the Panel does not consider the Complainant’s trademarks to be highly distinctive, the Panel nevertheless finds the disputed domain name to be identical or confusingly similar to a trademark in which the Complainant has rights for the purposes of threshold test under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In this case, the considerations relating to the second and third elements under paragraph 4(a) of the Policy are closely related.

The Panel finds that the term “baby boom” is an expression in common usage to denote a period of an increased birth rate. A registrant may have rights or legitimate interests in a domain name reflecting an expression of this kind where it registers and uses the domain name in connection with its “dictionary” meaning and not for the purposes of targeting the goodwill in another party’s trademark. While the Panel finds that the Complainant had been trading for some years at the date of the Respondent’s registration of the disputed domain name, the Panel finds there to be no evidence that the Respondent was aware of the Complainant or its trademarks at that date or that it ought to have been so aware: the Panel specifically rejects the Complainant’s submission that the Respondent had “constructive notice” of the Complainant’s trademarks (see section 3.2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Furthermore, even if the Respondent had been aware of the Complainant or its trademarks that awareness would not of itself imply an intention to target the Complainant’s trademarks, given the non-distinctive nature of the term “baby boom”.

Nor does the Panel conclude that the Respondent has used the disputed domain name in a manner calculated to take unfair advantage of the Complainant’s trademark. The disputed domain name has been used to offer pay-per-click links to products including baby clothes and similar items, which in the view of the Panel represent goods and services predictably and legitimately related to the dictionary meaning of the disputed domain name. While the Complainant states that the links include its competitors, no particulars of this allegation are provided and, even if this were coincidentally the case, the Complainant would still have failed to show an intention on the part of the Respondent to target the Complainant or its trademarks.

In the circumstances, the Panel concludes that the Respondent registered and has used the disputed domain name in connection with its dictionary meaning and not for the purpose of targeting the Complainant or its trademarks. The Complainant has therefore failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

For similar reasons as discussed above, the Panel is not of the view that the disputed domain name was registered or has been used by the Respondent in bad faith. Neither the nature of the disputed domain name nor its use require bad faith to be imputed and the Complainant has failed to establish dishonest intent on the Respondent’s part. Concerning the attempted sale of the disputed domain name, the Panel notes that the disputed domain name was not expressly offered for sale until 2011. It appears that it was the Complainant who contacted the Respondent’s broker concerning the name in July 2012 and a number of the subsequent communications refer to the Complainant having enquired about the name. In any event, for the reasons advanced by the Respondent, it is not of itself illegitimate to offer to sell a generic domain name at a high price and the Complainant appears to have engaged in a negotiation for the purchase of the disputed domain name without complaint (at that time at least) that the Respondent’s use of the name was infringing.

In the circumstances, the Complainant has failed to establish that the Respondent registered the disputed domain name primarily for the purpose of selling in to the Complainant or a competitor for an excessive price or that it has otherwise registered and used the disputed domain name in bad faith. The Complainant has therefore failed to demonstrate that the disputed domain name has been registered and is being used in bad faith.

7. Reverse Domain Name Hijacking

Under paragraph 15(e) of the Rules:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Complainant in this case is legally represented and, in the view of the Panel, should have been aware in the circumstances set out above that this Complaint was misconceived. The Panel also notes that in February 2007 the Respondent’s representatives sent a detailed letter of rebuttal to the Complainant’s “cease and desist” letter, which stated at the end: “If we do not hear from you within the next 10 days we will consider this matter closed.” The Panel accepts the Respondent’s evidence that it did not hear from the Complainant again until the Complainant sought to purchase of the disputed domain name in 2012 and that the Complainant did not make further allegations of infringement at that time. This proceeding having been commenced a few months after those negotiations were unsuccessfully concluded, the Panel finds on balance that the Complaint was brought in bad faith and constitutes an abuse of the administrative process.

8. Decision

For the foregoing reasons the Complaint is denied. In accordance with paragraph 15(e) of the Rules, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative process.

Steven A. Maier
Presiding Panelist

Yijun Tian
Panelist

Karl V. Fink
Panelist
Date: September 7, 2017

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