12th Oct 2007

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc

Case No. D2007-0795

1. The Parties

The Complainants are Bright Horizons Family Solutions Inc. of Watertown, Massachusetts, United States of America, Allmont Limited, of Dublin, Ireland, Bright Horizons Limited Partnership, of Watertown, Massachusetts, United States of America, and Bright Horizons Family Solutions Ltd, of Markham, Canada, all represented by F.R. Kelly & Co., Ireland.

The Respondent is Vertical Axis, Inc, of Yongin-si, Gyeonggi-do, Republic of Korea, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <brighthorizon.com> (the “Domain Name”) is registered with Nameview Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on May 31, 2007 and in hardcopy on June 5, 2007. The original Complaint identified the respondent as “BRIGHTHORIZON.COM c/o Whois Identity Shield” in accordance with the publicly available information on the Registrar’s Whois database.

The Center transmitted its request for registrar verification to the Registrar by email on June 1, 2007. The Registrar responded by email on June 13, 2007, confirming that it had received a copy of the Complaint, that it was the Registrar of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction of the courts at the location of its principal office. The Registrar stated that the respondent as named in the original Complaint was not the registrant and provided the full contact details in respect of the Domain Name on its Whois database, identifying the Respondent.

The Center informed the Complainants on June 15, 2007, and again in a follow-up email on July 12, 2007, that the Registrar had identified the Respondent as the actual registrant of the Domain Name, and invited them to amend the Complaint accordingly. The Complainants submitted by email on July 17, 2007, and in hard copy on July 19, 2007, an amended Complaint which identified the Respondent and made further submissions based on its identity.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 July 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2007. The Response was filed with the Center by email on August 7, 2007 and in hardcopy on August 14, 2007.

The Respondent elected in the Response to have the dispute submitted to a three-member Panel in accordance with paragraph 5(b)(iv) of the Rules. On September 11, 2007, the Center notified the parties of the appointment of the Hon. Carolyn Marks Johnson and David E. Sorkin as Panelists. On September 28, 2007, the Center appointed Jonathan Turner as the Presiding Panelist. Each member of 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. The Panel finds that it was correctly constituted.

4. Procedural Rulings

As mentioned above, the amended Complaint not only corrects the identification of the Respondent, but also contains additional submissions based on the identity of the Respondent. Paragraph 4(b) of the Rules requires a complainant to correct an administrative deficiency notified by a dispute-resolution service provider, but does not permit a complainant to make additional submissions.

Indeed, under the Policy and the Rules, parties have no right to submit additional arguments or evidence. On the other hand, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request to make an additional submission may be regarded as an invitation to the Panel to exercise this discretion. Additional submissions have been admitted in exceptional cases, such as where the party could not reasonably have known the existence of the further material when it made its primary submission.

The Panel accepts that the Complainants could not reasonably have known of the further material previously since they could not identify the registrant of the Domain Name. Furthermore, the admission of these submissions does not occasion any prejudice to the efficient conduct of the proceeding, since it has not given rise to any delay or any need for a supplementary submission by the Respondent. In the circumstances, the Panel admits the additional submissions in the amended Complaint pursuant to paragraph 10 of the Rules.

5. Factual Background

The first Complainant is the parent of the other Complainants.

The Complainants have registered BRIGHT HORIZONS as a trademark in the United States of America and the European Community in relation to books and other printed materials, stationery, educational services for pre-school children and the provision of nurseries. They have also registered BRIGHT HORIZONS FAMILY SOLUTIONS and device marks including the words BRIGHT HORIZONS in various countries in relation to these goods and services.

The Domain Name resolves to a website displaying sponsored links to commercial websites. Prior to May 24, 2006, the website prominently displayed names used by the Complainants such as “Bright Horizons Daycare”, “Bright Horizons Child Care Center”, “Bright Horizon Family Solutions” and “Bright Horizons Nursery”. On May 24, 2006, the Complainants sent the Respondent a “cease and desist” letter. Shortly after this date, these references were removed from the website.

6. Parties’ Contentions

A. Complainants

Identical or Confusingly Similar to Mark in which Complainant has Rights

The Complainants submit that the Domain Name is identical or confusingly similar to their registered marks, in that the only differences are the omission of the letter “s” and the addition of gTLD suffix.

Respondent’s Rights or Legitimate Interests

The Complainants contend that the Respondent does not have rights or legitimate interests in the Domain Name. They argue that the virtual identity between the Domain Name and their marks preclude any possibility of preparation for a bona fide offering of goods or services. Further, the Respondent has not been commonly known by the Domain Name and has not been authorized by the Complainants to use the mark.

According to the Complainants, the parking of the domain name at a website displaying sponsored links is not a legitimate non-commercial or fair use. The Complainants point out that when a search is conducted on the website for their main services, childcare, sponsored links to the Complainant’s competitors appear.

Registered and Used in Bad Faith

The Complainants allege that the Respondent registered and is using the Domain Name in bad faith. They maintain that by registering the Domain Name, the Respondent is preventing the Complainant from reflecting its mark in a corresponding Domain Name. They also contend that the Respondent seeks to disrupt their business by attracting their potential customers and creating difficulties for existing customers who may stumble on the Respondent’s website when seeking the Complainants’. The Complainants say that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, in the form of click-through commissions, by creating a likelihood of confusion with their marks.

The Complainants also cite the Respondent’s use of a privacy service as evidence of bad faith. Having identified the Respondent, they point out that it has been held to have registered and used domain names in bad faith in a number of other cases. They submit that the registration of these domain names indicates a pattern of conduct of registering domain names with a view to preventing the owners of corresponding marks from reflecting them in corresponding domain names and selling the domain names to the owners for consideration in excess of expenses.

The Complainants draw attention to the fact that before they sent their “cease and desist” letter, the Respondent’s website displayed various of their marks, indicating that the Respondent knew of the Complainants when it registered the Domain Name. The Complainants submit that the Respondent’s failure to reply to the “cease and desist” letter is a further indication of bad faith.

B. Respondent

Identical or Confusingly Similar to Mark in which Complainant has Rights

The Respondent does not appear to dispute that the Complainants have rights in the mark BRIGHT HORIZONS, but submits that the Domain Name is not confusingly similar to it, on the ground that small differences suffice to distinguish descriptive marks.

Respondent’s Rights or Legitimate Interests

The Respondent contends that the registration of the Domain Name ipso facto establishes a legitimate interest since it contains common descriptive terms. The Respondent further contends that its legitimate interest is bolstered by its use of the Domain Name to post generic advertising links.

Registered and Used in Bad Faith

The Respondent avers that it had no knowledge of the Complainant’s mark when it registered the Domain Name, and that the Respondent registered it on account of its descriptive content after the previous registrant had failed to renew it. These averments are substantiated by a signed declaration of a manager of the Respondent.

According to the Respondent, the fact that the Domain Name had not been renewed by the previous registrant was an indication that it had been abandoned and could be registered in good faith.

The Respondent submits that the findings against it in other domain name disputes are irrelevant, but that if they are taken into account, findings in its favour in a greater number of cases, where it had registered descriptive domain names in good faith, should also be taken into account.

The Respondent adds that failure to respond to a “cease and desist” letter is not evidence of bad faith.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainants must prove (A) that the Domain Name is identical or confusingly similar to a mark in which they have rights, (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (C) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Mark in which Complainants have Rights

It is clear and not apparently disputed that the Complainants have registered rights in the mark BRIGHT HORIZONS.

It is necessary to consider whether the Domain Name is confusingly similar to this mark. As the Respondent observes, small differences often suffice to distinguish descriptive marks. However, in this case, the mark is not wholly descriptive and the differences are very small. In these circumstances, the Panel considers that the differences are insufficient to distinguish.

The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

It appears that the Respondent has only used the Domain Name for a website containing automatically generated links to other websites. Here, in the Panel’s view, this does not constitute use in connection with a bona fide offering of goods of services within the meaning of paragraph 4(c)(iii) of the Policy. Such use is not apt to confer any goodwill under a domain name on its registrant and there is no reason to suppose that it has done so in this case.

It is not disputed that the Respondent is not commonly known by the Domain Name or that it has not engaged in any non-commercial use.

It does not appear to the Panel that the Respondent can claim a right or legitimate interest in the Domain Name on any other basis. In these circumstances, the Panel concludes that the Respondent does not have rights or legitimate interests in the Domain Name, and that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Complainants have provided no evidence of the nature or extent of their reputation under the mark either at the date of registration of the Domain Name or the present date. In these circumstances, the Panel does not have the material required to assess whether the Respondent’s use of the Domain Name was and is likely to attract Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to its source, sponsorship, affiliation, endorsement or otherwise.

Even if it be correct to hold the Respondent responsible for the natural and probable consequences of directing the Domain Name to a page of automatically generated links, the Complainants have not shown that these consequences would amount to bad faith use in this case.

The Panel is not satisfied that the Respondent registered the Domain Name in order to prevent the Complainants from reflecting their mark in a corresponding domain name. Even if, contrary to its denial, the Respondent knew of the Complainants when it registered the Domain Name, there was no reason for it to suppose that the Complainants would have wanted to use the Domain Name, which is not identical to their mark. The case does not fall within paragraph 4(b)(ii) of the Policy.

The Panel does not regard the use of a privacy service as evidence in itself of bad faith. The Respondent’s record in domain name disputes indicates that he registers a large number of domain names, some in bad faith and some in good faith. In the Panel’s view, this record does not establish that the Domain Name in this case was registered in bad faith.

Failure to reply to a “cease and desist” letter may in some circumstances be relevant to the assessment of whether a domain name was registered and is being used in bad faith. For example, it could undermine the credibility of an explanation proffered at a later stage which one might have expected to have been given earlier, if true. However, in this case, the Panel does not consider that the Respondent’s failure to reply to the Complainants’ “cease and desist” letter is sufficient to ground a finding of bad faith.

It is clear from the wording of the Policy that it is for the Complainants to prove that the Domain Name was registered and is being used in bad faith. The Complainants have not discharged this burden in this case. In all the circumstances, the Panel finds that the third requirement of the Policy has not been satisfied.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Jonathan Turner
Presiding Panelist

Hon. Carolyn Marks Johnson
NAF Panelist

David E. Sorkin
Panelist

Dated: October 12, 2007