11th Jul 2008
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Babytel Inc. v. Babytel.com c/o WHois Identity Shield/CKV, Domain Admin
Case No. D2008-0588
1. The Parties
The Complainant is Babytel, Inc., Montréal, Quebec, Canada, represented by Heenan Blaikie S.E.N.C.R.L., SRL/LLP, Canada.
The Respondent is Babytel.com c/o Whois Identity Shield/CKV, Domain Admin, Hong Kong, SAR of China, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <babytel.com> is registered with Nameview, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2008. On April 17, 22, 25, 30 and May 2, 2008 the Center transmitted by email to Nameview, Inc. a request and reminders for registrar verification in connection with the domain name at issue. On May 2, 2008, Nameview, Inc. transmitted by email to the Center its verification response stating that the Disputed Domain Name’s registrant is different to the entity named in the Complaint as Respondent and that the Disputed Domain Name’s Registrant Contact Information is CKV Domain Admin. On May 5, 2008 the Center invited the Complainant to file an amendment to the Complaint based on this new information. On May 7, 2008, the Complainant filed the Amendment with the Center. On May 9, 2008, the Center verified that the Complaint and the Amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was May 29, 2008. The Respondent filed the response on May 29, 2008.
The Center appointed Alistair Payne, Carol Anne Been and David E. Sorkin as panelists in this matter on June 26, 2008. 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 Babytel, Inc. (The Complainant was formerly known as Voice & Data Systems Inc. but changed its name to Babytel, Inc. in January 2008). Babytel Inc. is incorporated pursuant to the laws of Quebec, Canada. The Complainant’s main area of business is Internet telephony services. The Complainant has provided evidence of registrations for the trade mark BABYTEL in Canada and in the United States of America for Internet telephony services and related services. The Complainant also operates a website at “www.babytel.ca” which provides information about Babytel, its products and services.
The Disputed Domain Name <babytel.com> was registered on August 11, 2003 when it expired and became available for registration. The Respondent is using the Disputed Domain Name in connection with a directory website. The links on the website are placed by a domain name parking service, whose software automatically generates the links based on the contextual meaning of the domain name. The Respondent earns a share of the advertising revenue generated from sponsored links.
The Complainant’s solicitor, on January 21, 2008 and April 9, 2008, wrote to the Respondent through the links provided by the registrar’s Identity Shield service, offering to purchase the Disputed Domain Name but received no response. The Complainant’s solicitor also attempted to contact the Respondent through the Nameview website and directly through the Disputed Domain Name but was also unsuccessful in his attempts.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
The Complainant states that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks. In particular, the Complainant notes that the Disputed Domain Name wholly incorporates the BABYTEL trademark, adding only the generic top-level domain “.com”.
The Complainant further claims that the Respondent’s website provides links to the same kind of Internet telephony services as those associated with the BABYTEL trademark. This enhances the confusion between the Disputed Domain Name and the registered trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant asserts that the Disputed Domain Name does not refer to any business nor is it used in connection with a bona fide offering of goods or services.
The Complainant’s solicitor made offers to purchase the Disputed Domain Name via a number of websites but the Respondent could not be reached. The Complainant asserts that this demonstrates that <babytel.com> consists of nothing more than a directory site with no supporting entity affiliated to the Disputed Domain Name. The Complainant further asserts that the Disputed Domain Name reverts to a directory site and that the nature of the site itself suggests a lack of rights or legitimate interests.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith despite the fact that the registration of the Disputed Domain Name predates the registration of the trademark. The Complainant states that the only use of the Disputed Domain Name is to identify a directory website that exists solely for commercial gain and has no other purpose. Meanwhile, the Complainant actively employs the trademark BABYTEL in relation to its goods and services and to its business as a whole. The Complainant also states that the fact that the Respondent conceals its identity creates a presumption of bad faith.
The Respondent’s main contention is the fact that the Disputed Domain Name has been registered prior to the trade mark filing date. Therefore, the Complainant does not have any enforceable trade marks rights against the Disputed Domain Name.
The Respondent further claims that it has rights and legitimate interests in the Disputed Domain Name due to the fact that “www.babytel.com” contains the descriptive terms “baby” and “tel” in which the Complainant has no exclusive rights. The Respondent further states that the links displayed on the <babytel.com> website appear because of automated software which selects links based on the contextual meaning of the words in the relevant domain name. “Tel” is obviously an abbreviation for telephone which is why links related to telecommunications services appear on the Respondent’s website.
The Respondent also asserts that the Complainant has not demonstrated the requirements of registration and use in bad faith. The Respondent maintains that there is no way it could have had knowledge of the Complainant’s trademark at the time of the registration of the Disputed Domain Name. The Respondent claims that it is impossible to prove bad faith registration and use since the Disputed Domain Name was registered before the Complainant’s trade mark even existed.
Finally, the Respondent claims that this is a case of Reverse Domain Name Hijacking. The Complainant should have known it could not prove bad faith registration since the Disputed Domain Name was registered more than two years before the Complainant commenced use of its trade mark.
6. Discussion and Findings
A. UDRP Elements
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Complainant has shown in evidence that it is the proprietor of the registered trade mark BABYTEL in Canada and the United States of America.
The Panel notes that the Disputed Domain Name contains the BABYTEL mark in its entirety. In the Panel’s opinion, the addition of the generic top-level domain “.com” is not enough to negate the view that the Disputed Domain Name is identical to the Complainant’s BABYTEL trademark.
However, the Disputed Domain Name was registered on August 11, 2003 which predates the Complainant’s application for the BABYTEL trademark in Canada and the United States of America. From the evidence submitted, the Complainant has failed to prove that it acquired any rights in the trademark BABYTEL prior to the registration of the Disputed Domain Name.
The question now for the Panel to decide is whether trademark rights created after the registration of a domain name are able to satisfy Paragraph 4(a)(i) of the Policy. In Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, the panel stated:
“The Complainant has provided the registration documents for its DIGITAL VISION marks, within the USA and the EU. Registration for these marks postdate the domain name registration; however, Paragraph 4.a.(i) does not require that the trade mark be registered prior to the domain name. This may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below. I conclude therefore that the Complainant has satisfied the first requirement of Paragraph 4.a.(i).”
While in Firstgate Internet A.G. v. David Soung, WIPO Case No. D2000-1311, the panelist notes that:
“there is nothing in the Policy, which requires the Complainant’s trademark rights to be in existence when the domain name was registered. Indeed, paragraph 4(a) uses the present tense verb which is consistent with only requiring trademark rights upon filing the Complainant, but not necessarily earlier (“your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”). If trademark rights were to be required at the time of the domain name registration, paragraph 4a(i) would have read: “in which Complainant had rights at the time the domain name was registered.”
The Panel agrees with the previous panel’s dicta on the issue. The fact that the Complainant did not have rights in the trade mark BABYTEL prior to the registration of the Disputed Domain Name is not relevant for the assessment of Paragraph 4(a)(i) of the Policy.
For the foregoing reasons, the Panel is satisfied that the Disputed Domain Name is confusingly similar to the Complainant’s BABYTEL trade nark.
Therefore, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The second element set out in Paragraph 4(a) of the Policy requires a complainant to prove that the respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel is divided on the question of whether the Complainant in this case has satisfied this burden. Accordingly, and because the Complaint must fail based upon the Panel’s conclusion as to the third element set out in Paragraph 4(a), the Panel declines to reach a finding as to the second element.
D. Registered and Used in Bad Faith
In order to satisfy the third element of Paragraph 4(a), a complainant must demonstrate both bad faith registration and use. The Respondent states that the Disputed Domain Name was registered on August 11, 2003, which was prior to the Complainant’s trademark applications filed in December 2003 or its first declarations of use occurring almost two years later. Further, there is no allegation that the Disputed Domain Name had trademark significance in August 2003 at the time of registration.
In the Panel’s view the Respondent’s arguments have merit. There is no evidence to suggest that the Respondent was aware or could have been aware of the Complainant’s trademark interests in August 2003. Even though it is unclear from the evidence whether the Respondent was in fact the registrant of the Disputed Domain Name in 2003 (as opposed to acquiring it from a prior registrant at some later date), there is nothing to suggest that this was not the case. Accordingly, the Panel is prepared to assume that this was the case.
Based on the timing of the registration of the Disputed Domain Name and the lack of evidence that the Respondent acted in bad faith when registering the Disputed Domain Name, the Panel finds that there is nothing to demonstrate registration in bad faith. Neither is there evidence to support an inference that any of the circumstances in Paragraph 4(b) of the Policy apply.
Therefore, the Complainant has not met the requirement of Paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Although the Panel accepts the Respondent’s assertions that a finding of reverse domain name hijacking is warranted where “the Complainant knew or should have known at the time it filed the Complaint that it could not prove the domain name was registered in bad faith,” the Panel does not consider that such a finding is warranted in this case.
The Complainant demonstrated in evidence that it made numerous attempts through its solicitor to contact the Respondent with a view to purchasing the Disputed Domain Name or discussing the matter. The Respondent did not respond to any of these communications and in the Panel’s opinion it was in these circumstances reasonable for the Complainant to commence these proceedings.
For the above reasons the Respondent’s claim for Reverse Domain Name Hijacking is dismissed.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Carol Anne Been
David E. Sorkin
Dated: July 11, 2008