Vertical Axis Inc beat back a challenge, from a trademark holder to successfully defend a UDRP on BabyEssentials.com.
Its an impressive win since the complainant seems to have mulitple trademarks on the term in several different classes and the domain name was parked.
Here are the fact of the case as laid out by the 3 member panel:
“The Complainant describes itself as a source of well-designed and priced products supplied to mass-merchandising retailers in the United States of America (“United States” or “US”). The Complainant’s business dates back more than 50 years.”
“Among the products made by the Complainant are what they describe as a wide variety of consumer goods for use by infants and their parents.”
“Such products are sold under or by reference to the trademark BABY ESSENTIALS which the complainant 10 trademarks on the term Baby Essentials in different classes.”
“The disputed domain name was created on May 25, 2002 and was registered by the Respondent in August 2006 after it was deleted.”
“The Respondent is also the registrant of more than 60 domain names which incorporate one of the words constituting the disputed domain name. Such domain names include babyneeds.com; babyseats.com; babyshoes.com; babygift.org; babyideas.com; babyutensils.com; babybooties.com; babytotebags.com; babycovers.com; artessential.com; autoessentials.com; bridalessentials.com; danceessentials.com; and homeessentials.com”
“The disputed domain name is hosted by the Respondent with Hitfarm.com a service which places pay-per-click advertising links, based on a Yahoo advertiser feed, on hosted domains.”
“The Respondent shares the advertising revenue with the other domain name holders. The disputed domain name has been linked variously over the years since it was registered by the Respondent on August 2006 to generate pay-per-click revenue advertising baby and children goods and services with links to “baby”, “baby checklist”, “baby clothes”, “baby crib”, “new baby essentials”, “first baby essentials”, “baby monitors” and such like.”
“The Respondent says that the Complainant purchased an earlier filed BABY ESSENTIALS trademark (US Reg. No. 1917345) from a third party (Primex International Corporation) on May 16 2003 for USD 30,000. That trademark was registered in September 1995. However, according to the Complainant’s filing with the US Patent and Trademark Office (USPTO), it did not commerce use of the mark until September 1, 2005. Consequently, the Respondent submits that no use was being made of the BABY ESSENTIALS mark by the Complainant or its predecessor in title to the 1995 BABY ESSENTIALS trademark registration between May 16, 2003 and September 1, 2005.”
Here are the relevant parts of the panel’s findings:
“The Complainant clearly has registered trademark rights in BABY ESSENTIALS which date back to 1995”
“The Respondent’s evidence is that the first knowledge it had of the Complainant’s BABY ESSENTIALS trademark was when it received this Complaint.”
“The Respondent says the words are descriptive, they are widely used by third parties and the disputed domain name is only one of a large number of descriptive domain names registered by the Respondent which incorporate the words “baby” and “essentials”. According to the Respondent, its use of the disputed domain name since October 2006 has, and continued to be, in connection with a bona fide offering of baby goods and services.”
“Had the Complainant’s BABY ESSENTIALS trademark been widely used and, hence, well-known in August 2006 when the Respondent registered the disputed domain name, there might have been basis for the Complainant’s case under paragraph 4(a)(ii) of the Policy. However, the facts are that the mark, although registered, is descriptive of the goods to which it is applied, that the words comprising the trademark are widely used by other parties dealing in such goods, and the Complainant appears to have only begun to use the BABY ESSENTIALS trademark in September 2005, less than 12 months before the Respondent acquired the disputed domain name in August 2006.”
“Further the disputed domain name was first registered in May 2002, some 3 years prior to the date when the Complainant began using BABY ESSENTIALS registered trademark in September 2005. Still further, the other BABY ESSENTIALS registered trademarks upon which the Complainant relies were all registered many years after the disputed domain name was first registered.”
“The preponderance of the evidence points to the Respondent having rights and legitimate interests in the disputed domain name, which it has used consistently and without objection from the Complainant for almost 4 years.”
“Without repeating the facts summarized above, it is apparent that the Complainant has not demonstrated any of the circumstances of paragraph 4(b) of the Policy which evidence bad faith registration and use by the Respondent, nor does the Complaint contain any other evidence upon which a bad faith finding on the part of the Respondent could be based.
“For all the foregoing reasons, the Complaint is denied.”
In this case the panel looked to the actual date the trademark went into use, rather than the date of filing, to conclude that the domain which was created in 2002 predated the actual use, although the domain holder did not even own the domain when the trademark began to be used in 2005.
Ari Goldberger represented Vertical Axis.
Its a great decision for domain holders but one that will no doubt be heavily criticized by trademark holders.