WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KinderCare Learning Centers LLC v. PrivacyProtect.org

Case No. D2011-1890

1. The Parties

1.1 The Complainant is KinderCare Learning Centers LLC of Portland, Oregon, United States of America, represented by Cozen O’Connor, United States.

1.2 The Respondent is PrivacyProtect.org of Queensland, Australia.

2. The Domain Name and Registrar

2.1 The disputed domain name <kindercarelocations.com> (the “Domain Name”) is registered with Bargin Register Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 4, 9, 10 and 21, 2011, the Center emailed the Registrar requests for registrar verification in connection with the Domain Name. The Registrar did not respond to any of these requests. Therefore, the Center proceeded on the basis of the information gathered from the Complaint and the publicly available WhoIs database.

3.2 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”).

3.3 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 November 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2011.

3.4 The Center appointed Matthew Harris as the sole panelist in this matter on December 21, 2011. 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.

3.5 On reviewing the file it appeared to the Panel that one of the Annexes appended to the Complaint had been submitted in error, seeming to relate to a different domain name. Accordingly on January 5, 2012 the Panel issued the Administrative Panel Procedural Order asking the Complainant to clarify whether that Annex had been submitted in error, and if it had, providing the Complainant with an opportunity to replace the same. It also extended the time for the issuing of a decision in this matter to January 12, 2012. That same day and pursuant to the above Procedural Order, the Complainant submitted a replacement Annex.

4. Factual Background

4.1 The Complainant has for forty years provided child care education and child care services in the United States. It has since January 1996 or thereabouts provided information in relation to its activities from a website operating from “www.kindercare.com”. It currently provides its services in 38 states of the United States.

4.2 It is the owner of various United States registered trade marks that comprise or incorporate the term “kindercare”. These include:

(i) registered trade mark no. 1,224,603 for the word mark KINDER-CARE in Classes 41 and 42 registered on January 18, 1993; and

(ii) registered trade mark no. 1,594,176 for the word mark KINDERCARE in Class 38 registered on May 1, 1990.

4.3 According to the publically available WhoIs database for the Domain Name, the Domain Name was registered on June 22, 2011¹. The WhoIs database also record the current registrant of the Domain Name as “PrivacyProtect.org”. This is obviously a “domain name privacy service” and presumably this is the domain name privacy service offered by the Registrar. As the Registrar has not responded to the Center’s verification request, the identity of the person or entity that actually controls the Domain Name is not known.

4.4 The web page displayed from the Domain Name both prior to the filing of the Complaint and as at the date of this decision primarily comprises text that purports to talk about child care services. A flavour of that website can be obtained from the first two paragraphs of the text that appears on that website and which read as follows:

“Working parents have common difficulties in trying to manage housework, kids, career, being a mom and wife all together. It is difficult to seek help when you got no one to take care of the kids while you are out to work. So parents search for alternatives and end up with KinderCare facilities to leave their children under care.

It needs a smart choice to make a decision in leaving your kids in KinderCare while you are out for work. There are things to consider before you chose a particular facility. The most important thing is KinderCare reviews. You need to gather facts about the particular KinderCare. Some things you need to know is to search for these KinderCare facilities near you, and the hassle free to do this, is searching via the internet. List all the KinderCare facilities near your area or near your work place where it would be easier for you to just drop off your child or pick them up after work.”

4.5 However, the page operating from the Domain Name has at all relevant times also displayed what look like Google generated “pay per click advertisements”. Prior to filing the Complaint the page displayed an advertisement for educational services provided by “Children of America”.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant refers to its registered trade marks and also claims “significant common law trade[]mark and other rights in its family of ... marks, through their use, advertising and promotion”. So far as confusing similarity is concerned, it claims that the Domain Name “incorporates” the entirety of its marks.

5.2 The Complainant denies that the Respondent has rights or legitimate interests, relying in this respect on the “anonymously registered” Domain Name. Further, it claims that the Domain Name is being used for “link farm” purposes and citing various cases asserts that “the use of domain names identical or similar to a complainant’s trade[]mark” in this manner does not confer a “legitimate right to or interest in” [sic] the Domain Name.

5.3 So far as bad faith registration and use are concerned it alleges “wilful infringement of [the] Complainant’s prior rights” and asserts that the “Respondent has attempted to take commercial advantage of the Complainant’s trade[]marks and commercial reputation and to trade off [the] Complainant’s goodwill”. In this respect, it refers in some detail to the way in which the pay-per-click page operates. It also refers to various pre-action correspondence sent to the Respondent that it claims was ignored.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a response.

6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

6.4 Before addressing each of these requirements, the Panel will address the question of the Registrar’s conduct in this case.

A. Registrar Conduct

6.5 As has already been recorded in the Procedural History section of this decision, the Registrar has in this case ignored both the original verification request and no less than four additional chaser emails from the Center thereafter. Any failure to respond, and any delay in responding, to a verification request plays into the hands of cybersquatters, particularly if the cybersquatter is using the domain name concerned for the purposes of pay-per-click advertising.

6.6 The Internet Corporation for Assigned Names and Numbers (ICANN)’s Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution of December 2008 suggests that registrars should respond to UDRP provider verification requests within two days. The two day deadline is, if anything, generous to registrars given the requirement under paragraph 4 of the Rules for a UDRP provider to perform a compliance review in relation to a domain name within three days and the fact that this will usually be conducted after the relevant registrar has responded to the provider’s verification request. There is no excuse for a registrar ignoring such a request entirely.

6.7 Unfortunately, the Registrar’s failure in this case is not a one off incident. An analysis of cases in which the Registrar has been involved and which is summarised in the table below, shows that in many cases it has ignored verification requests from the Center, and in those cases where it has responded to a regquest, it has very rarely responded within the two day period suggested by ICANN in the Draft Advisory. Indeed, the Panel has only been able to identify two out of twenty cases where the Registrar has responded in a timely fashion.

6.8 In two of the twenty cases identified above, the Registrar’s conduct so concerned the panel that it requested that the Center bring the Registrar’s conduct to the attention of ICANN to take such further steps as ICANN considered appropriate (i.e. Onduline v. Private Registration Do, WIPO Case No. D2011-1129 and Petroleo Brasileiro S.A - PETROBRAS v. Private Registration, WIPO Case No. D2011-1250). The basis for doing so was discussed by this Panel in Four Seasons Hotels Limited v. Internet bs Corporation/ Private Whois Service, WIPO Case No. D2009-1657 and LEGO Juris A/S v. Whois Privacy Protection Service, Inc./ Domains Secured, LLC, WIPO Case No. D2011-1857. Sadly, the fact that this has happened twice already seems to have no impact on the Registrar’s conduct.

6.9 It is the present Panel’s usual (but not invariable) practice where it is likely to make comments in a publically available decision that is critical of a registrar and/or to suggest to the Center that the registrar’s conduct be referred to ICANN to issue a procedural order providing the registrar with an opportunity to respond to those potential criticisms (see, for example, the LEGO Juris A/S decision supra). This opportunity has been offered as a matter of procedural fairness. However, in this case the Panel did not issue such an order. The Registrar’s conduct is apparent from a large number of cases over a two year period. Further, there appears to be little point in attempting to engage with the Registrar when in this case it has steadfastly ignored all other communications. The progress of these proceedings has already been delayed long enough by the Registrar’s failure to respond to verification requests. The Complainant should not have to wait even longer while the Panel awaits a further submission of the Registrar that is likely to add little and which is unlikely to come at all.

6.10 In the circumstances, the Panel invites and requests that the Center bring this decision and the Registrar’s conduct to the attention of ICANN. This is with a view to ICANN making such further investigation and imposing such sanctions on the Registrar as it considers appropriate to maintain the integrity of the Policy. It is hoped by this Panel that ICANN investigates the Registrar’s behaviour as a matter of some urgency,

B. Identical or Confusingly Similar

6.11 The Panel accepts the Complainant’s contention that it is the holder of registered trade rights in KINDER-CARE and KINDERCARE and that the Domain Name incorporates the second of these marks in its entirety and the first of these marks with the exception of the hyphen. The issue of what constitutes confusing similarity for the purposes of the Policy was considered in detail by this Panel in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227. In that same case the Panel also explained why it is that usually (although not invariably) the inclusion of a mark in its entirety in a domain name is likely to satisfy this test. The Complainant has easily satisfied the test of confusing similarity on the basis of its registered marks and has thereby made out the requirements of paragraph 4(a)(i) of the Policy. It is, therefore, not necessary to consider the Complainant’s assertion that the Domain Name is confusingly similar to claimed unregistered trade mark rights.

C. Rights or Legitimate Interests

6.12 As is described in greater detail under the heading bad faith below, although the web page operating from the Domain Name is not a typical of a “pay-per-click” or “link farm” page, the Panel is persuaded on the balance of properties that the Domain Name is primarily being used to generate revenue from sponsored links.

6.13 It is possible for use of a domain name for a parking website with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267). Indeed, such a finding is a positive indicator of the fact that no right or legitimate interest exists (see Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).

6.14 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?

6.15 Again this is a question that is addressed in greater detail by the Panel when assessing the question of bad faith. For the reasons that are explained under that heading below, the Panel has reached the conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant’s trade marks. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

6.16 For the avoidance of doubt, in coming to that conclusion the Panel has not found the Complainant’s allegations of trade mark infringement of any assistance. The reasons for this are discussed in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372 and 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461.

D. Registered and Used in Bad Faith

6.17 At first sight the website operating from the Domain Name would appear to offer information in relation to child care. However, on a more careful inspection it is clear that the text is platitudinous and there does not appear to be any real business operating from the website. Ultimately, therefore, the Panel accepts, in the absence of any argument or evidence to the contrary, the Complainant’s contention that the primary actual and intended use of the Domain Name is to display advertising and pay-per-link links with a view to generating revenue for the registrant.

6.18 The generation of revenue from domain name parking or pay-per-click activities is not necessarily activity in bad faith. It is legitimate to use a domain name for such purposes where the registrant is seeking to take advantage of any generic or descriptive reading of the Domain Name. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to a page that displays advertisements or pay-per-click links (see, for example, Express Scripts, Inc., supra).

6.19 The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his or her Internet browser). It does not matter that when the Internet user arrives at the pay-per-click website that it then becomes clear that the website is unconnected with the trade mark holder.

6.20 Although, this is not addressed in the Complaint, the Panel cannot help but take notice of the fact that the word “kinder” is the German word for children, and that at least one German words containing that term (i.e. “kindergarten”) has also made its way into English. It is, therefore, not entirely fanciful that the word might have been chosen as part of a domain name used for a website that trades either off the meaning of the word “kinder” or alternatively as part of a name for some other business that is child related. Neverthless, “kinder care” is not an ordinary English phrase and “kindercare” is not an ordinary English word. In the text on the website operating from the Domain Name the Respondent attempts to use the term “KinderCare” in a generic sense, for example, in the sentence “List all the KinderCare facilities near your area”, but that usage is forced and unnatural. Further, the use of the capitalised letters “K” and “C” give the game away as to the Respondent’s intentions. It seems reasonable clear that the use of the term “KinderCare” throughout that text is not really generic at all but a reference to the Complainant’s business.

6.21 In the circumstances, it appears reasonably clear to the Panel that the Respondent has registered and used the Domain Name in the hope and expectation that that similarity with the Complainant’s marks would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to its website. Such registration and use are in bad faith. The Complainant has therefore made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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 <kindercarelocations.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Dated: January 10, 2012

¹ The Complaint has appended to its Complaint a WhoIs database print out for a domain name that is different from the Domain Name in issue in these proceedings. However, the recorded creation date for the Domain Name is stated in the body of the Complainant and the Panel has verified that it is accurate.