WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
El Bebe Productions Ltd v. Domain Admin, Whois protection
Case No. D2017-2423
1. The Parties
The Complainant is El Bebe Productions Ltd of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Adlex Solicitors, United Kingdom.
The Respondent is Domain Admin, Whois protection of Prague, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <littlebabybum.net> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2018.
The Center appointed Ellen B Shankman as the sole panelist in this matter on January 17, 2018. 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.
4. Factual Background
The date of the Domain Name registration was confirmed by the Registrar to be May 23, 2016.
The Panel also conducted an independent search to determine that the Domain Name resolves to an active “parking page” landing webpage with sponsored links to baby kids songs, nursery rhymes and other baby and child related links.
The Complainant provided evidence of a number of registered trademarks for LITTLE BABY BUM including, inter alia, United Kingdom Trademark No. 3050803 (July 18, 2014) in Class 41 and European Union Trademark No. 13827282 (August 17, 2015) in Classes 9, 16, 25, 28 and 41 for a wide variety of goods and services related to toys, music and software for children.
The Complainant also provided evidence of an exchange of correspondence regarding the attempted purchase of the Domain Name for USD 100 that was rejected by the Respondent. The Complainant also provided evidence of a cease and desist letter that was sent to the Respondent to which the Respondent did not reply.
Since the Respondent did not respond to the Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant is a United Kingdom private limited company incorporated on May 16, 2013. The Complainant alleges that it has carried on the business of producing high-quality children’s nursery rhymes and other videos under the name “Little Baby Bum” since 2011. The Complainant has operated globally through its website at “www.littlebabybum.com” and, primarily through its YouTube channel, “LittleBabyBum” (“the Channel”) since August 29, 2011, which evidence showed that the Channel was the world’s fifth biggest YouTube channel by 2015, and as of November 16, 2017 the Channel had over 13 million subscribers. The Complainant provided evidence to show that there were over 14,275 million views of the Channel between August 29, 2011 and September 11, 2017. In addition, the Complainant currently operates six other YouTube channels in Spanish, Brazilian Portuguese, Russian, German, French and Japanese.
The Complainant further alleges that its videos are available on other well-known video platforms including Netflix, Sky TV and Ketchup TV, and provided evidence of following on other social media platforms such as Facebook. The Complainant even provided evidence of one of its nursery rhyme videos appearing in the Guinness Book of World Records 2017 as having achieved the highest number of views of an educational video of all time.
The Complainant alleges that at some point following the Complainant’s communication with the Respondent the redirect was removed and the website comprises a list of sponsored links all to websites featuring children’s nursery rhymes and music with compete with those of the Complainant, and the reference to “maybe for sale” was removed.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark LITTLE BABY BUM in respect of a wide range of child related goods and services and has broad common law rights by virtue of extensive use in the name. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic Top-Level Domain (“gTLD”) “.net” does not prevent a finding of confusing similarity. Therefore, the Domain Name <littlebabybum.net> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant also contends that the registration of the Domain Name under a ‘proxy’ registration, the landing page with sponsored links to similar goods of the Complainant and the offer for sale of the Domain Name in excess of out-of-pocket costs all support the finding that the Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for LITTLE BABY BUM. When disregarding the gTLD suffix “.net”, the Domain Name is identical to the Complainant’s trademark. Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets forth the consensus view that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <littlebabybum.net> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the evidence of the Complainant’s trademark and extensive reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark and uses it for the purpose of misleading and diverting Internet traffic.
The Panel agrees with the Complainant’s contentions that the registration of the Domain Name under a ‘proxy’ registration, the landing page with sponsored links to competing goods and services of the Complainant for commercial gain and the offer for sale of the Domain Name in excess of out-of-pocket costs all support the finding that the Domain Name was registered and is being used in bad faith. See e.g. Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc. WIPO Case No. D2002-0787.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Date: January 29, 2018