The Complainant is Dominique Tillen of Alresford, Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Chapman IP, United Kingdom.
The Respondent is Administrator Administrator of Oregon, United States of America (“United States”).
The disputed domain name <brush-baby.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, On September 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 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 October 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2018.
The Center appointed John Swinson as the sole panelist in this matter on October 29, 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.
The Complainant is Dominique Tillen, an individual of the United Kingdom. The Complainant is the owner of Brush‑Baby, a business which provides dental products for children. The Complainant operates its business from a website at <brushbaby.co.uk>.
The Complainant is the owner of a number of registered trade marks for BRUSH‑BABY, the earliest of which is United Kingdom registered trade mark number 2466672, filed on September 12, 2007 and registered on April 11, 2008 (the “Trade Mark”)
The Respondent is Administrator Administrator, of Oregon. The Complainant submits that the underlying Respondent is Chau Jye Yang, of Etos-Scientific. The Complainant has provided evidence of a memorandum of understanding (“MOU”) regarding a distribution agreement between Etos-Scientific and the Complainant. The MOU is dated around the same time as the Disputed Domain Name was registered, and Mr. Yang also resides in Oregon (the same state listed on the WhoIs search for the named Respondent). The Panel proceeds on the basis that Mr. Yang is the person who controls the Disputed Domain Name.
The Respondent did not file a Response, and consequently little information is known about the Respondent. The Respondent registered the Disputed Domain Name on August 7, 2009. At the time of the Complaint, the Disputed Domain Name resolved to a page hosted by the Registrar with a notice that “This domain has been redirected”.
The Complainant makes the following submission.
Identical or confusingly similar
The Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety and no additional terms have been added.
Rights or legitimate interests
The Respondent registered the Disputed Domain Name during negotiations between the Complainant and the Respondent in relation to distribution rights of the Complainant’s products.
The Respondent proceeded to register the Disputed Domain Name without consent or authorization from the Complainant. The Respondent is not commercially affiliated with the Complainant and was not authorized to use the Complainant’s branding or distribute its products at the time of registration of the Disputed Domain Name.
Registered and used in bad faith
The Complainant considers that the Respondent registered the Disputed Domain Name for the primary purpose of disrupting the business of competitors and the Complainant, following the conclusion of distribution negotiations in 2009.
The Complainant considers that the Respondent has maintained the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website. The Complainant’s searches reveal that there has not been any commercial activity on the website at the Disputed Domain Name.
The Respondent was aware of the Trade Mark when registering the Disputed Domain Name as the Respondent has past business dealings with the Complainant and therefore has knowledge of the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case the Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety and no additional words have been added.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers that the Complainant has made out a prima face case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been using the Disputed Domain Name to sell the Complainant’s product, whether as an authorized distributor or unauthorized distributor.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant alleges that the Respondent registered the Disputed Domain Name when it was negotiating a distribution agreement for the Complainant’s products in the United States. The Complainant has provided an MOU regarding this distribution arrangement, which refers to a full distribution agreement which was yet to be drafted. The MOU provided in the Complaint is not signed by either party. The Complainant states that the distribution arrangement did not proceed. As such, the Panel assumes that the full distribution agreement was never prepared.
Without express permission from the Complainant, the preparation of an MOU did not give the Respondent the right to register the Disputed Domain Name. Even if the MOU had been signed, it would be open for the Panel to consider that the Respondent only had permission to use the Trade Mark (including in the Disputed Domain Name) during the term of the distribution arrangement. If that arrangement had been terminated, then the outcome is clear: the Respondent would no longer have rights or legitimate interests in the Disputed Domain Name. This was recently confirmed by the panel in ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd., WIPO Case No. DAU2015-0014.
Without a signed MOU (or other agreement), the Panel must conclude that the Respondent is not an authorized distributor or reseller for the Complainant. In certain circumstances, a third party may legitimately sell a trade mark owner’s products via a domain name which incorporates the relevant trade mark without the trade mark owner’s permission (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). However, there is no evidence that the Respondent has used the website at the Disputed Domain Name to distribute any goods of the Complainant.
The Respondent had the opportunity to provide evidence of its rights or legitimate interests in the Disputed Domain Name but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
The Complainant has been using the Trade Mark and operating its business since 2007. The Respondent registered the Disputed Domain Name in 2009. The Complainant has provided evidence that the Complainant and the Respondent had some (ultimately unsuccessful) business dealing around the time the Respondent registered the Disputed Domain Name. As such, the Panel accepts the Complainant’s submission that the Respondent registered the Disputed Domain Name with the Complainant in mind.
According to the Complaint, no distribution arrangement was ever entered into by the parties. In any event, the Respondent has not used the website at the Disputed Domain Name for a legitimate distribution service (whether as an authorized or unauthorized distributor or reseller).
The examples provided at paragraph 4(b) of the Policy provide a non-exclusive list of circumstances, if found by the Panel to be present, to be evidence of the registration and use of the Disputed Domain Name in bad faith. Bad faith may otherwise be found on consideration of the totality of the circumstances of the case. Here, the Disputed Domain Name was registered during the course of, but before the formal establishment of, any agreement between the Parties. In light of the absence of any authorization by the Complainant to allow the Respondent to register a domain name identically matching the Complainant’s mark, and the lack of any explanation by the Respondent as to its motivation in taking such seemingly objectionable action, the Panel finds on balance that the Respondent was aware of the Complainant’s mark and undertook to register the Disputed Domain Name in bad faith to increase its leverage over the Complainant or to disrupt the Complainant’s business. Its continued holding of the Disputed Domain Name under these circumstances furthermore constitutes use in bad faith. The Panel notes that its findings may have been different with the benefit of the Respondent’s account, but absent such the Panel finds the Complainant has sustained its case under this element.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <brush-baby.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: November 12, 2018