WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
El Bebe Productions Ltd v. Rachid Zouad
Case No. D2018-0469
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 Rachid Zouad of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <littlebabybum.stream> (the "Disputed Domain Name") is registered with Hosting Concepts B.V. d/b/a Openprovider (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2018, 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 March 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 11, 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 Complainant is a United Kingdom private limited company that was incorporated on May 16, 2013. The Complainant has produced high-quality children's nursery rhyme and other videos under the name "Little Baby Bum" since 2011 and has operated globally through its official website at "www.littlebabybum.com" as well as through its YouTube channel, "LittleBabyBum". The Complainant operates six other YouTube channels in Spanish, Brazilian Portuguese, Russian, German, French and Japanese.
The Complainant owns a number of registered trademarks for the word mark "LITTLE BABY BUM" in various jurisdictions, including United Kingdom trademark 3050803, registered on July 18, 2014, in International Class 41; European Union trademark 13827282, registered on August 17, 2015, in International Classes 09, 16, 25, 28 and 41; United States Trademark Registration No. 5,099,550, registered on December 13, 2016, in International Class 28; and United States Trademark Registration No. 5,258,552, registered on August 8, 2017, in International Classes 9, 16, and 41 (collectively, the "LITTLE BABY BUM Mark").
The Disputed Domain Name <littlebabybum.stream> was registered on April 26, 2017 by the Respondent. The generic Top-Level Domain ("gTLD") ".stream" is intended for sites, such as the Complainant's, whose primary purpose is disseminating streaming media. The Respondent does not own a website that disseminates streaming media nor does the Disputed Domain Name resolve to an active website.
On February 1, 2018, the Complainant's solicitor sent a cease and desist letter to the Respondent by email. The Complainant never received a response from the Respondent.
According to a reverse WhoIs website, the Respondent currently owns 53 domain names, several of which incorporate well-known trademarks such as <barbiemovies.stream> and <disneymovies.stream>.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the LITTLE BABY BUM Mark based on its many years of use and its registered trademarks in several countries worldwide. The Disputed Domain Name <littlebabybum.stream> consists of the LITTLE BABY BUM Mark followed by the gTLD ".stream".
The Panel finds that the Disputed Domain Name <littlebabybum.stream> is identical to the Complainant's LITTLE BABY BUM Mark as the Disputed Domain Name incorporates the Complainant's LITTLE BABY BUM Mark in its entirety. Moreover, the addition of a gTLD such as ".stream" in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the passive use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant's LITTLE BABY BUM Mark for commercial gain.
Second, the Respondent knew or should have known of the Complainant's rights in its widely-used LITTLE BABY BUM Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name years after the Complainant first used and obtained its trademark registrations for the LITTLE BABY BUM Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its LITTLE BABY BUM Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Third, the Respondent has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. The Panel conducted a reverse WhoIs search and found that the Respondent has registered 53 domain names, many of which infringe well-known trademarks. Such pattern of cybersquatting is strong evidence of bad faith.
Finally, by using the Disputed Domain Name passively and having no content on its web page, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. "The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy." Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <littlebabybum.stream> be transferred to the Complainant.
Lynda M. Braun
Date: April 11, 2018