The Complainant is Baby Factory (N.Z.) Limited, New Zealand, represented by Holdstock Law, Australia.
The Respondent is Sydney’s Baby Kingdom Pty Ltd., Australia represented by Gorton IP, Australia.
The disputed domain names <babyfactory.com.au> and <thebabyfactory.com.au> are registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2020. On July 14, 2020, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On August 4, 2020, Melbourne IT Ltd 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 proceeding commenced on August 6, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2020. The Response was filed with the Center on August 26, 2020.
On September 10, 2020, the Center received an email communication from the Complainant stating that the Complainant wished to seek leave to file a statutory declaration in reply to the Response. The Center sent a response on the same date, referring to paragraphs 10 and 12 of the Rules, and notifying the Parties that if the Center were to receive any Supplemental Filing from the Complainant beyond the Complaint, it would transmit it to the Panel (when appointed), and it would be in the Panel’s sole discretion to consider and/or admit it in rendering its decision, and whether to order further procedural steps, if any. On the same date, the Respondent sent an email to the Center advising that it strongly objected to the filing of further evidence.
On September 26, 2020, the Complainant filed two statutory declarations, one from its company director, and another from a person employed by the Complainant between April 2007 and April 2010 (the “Declarations”). On the same date, the Respondent sent an email to the Center setting out its grounds of objection to the filing of the Declarations.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 23, 2020. 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 a company incorporated in New Zealand and a leading retailer in New Zealand of babywear and nursery furniture under the trade marks THE BABY FACTORY and BABY FACTORY, operating for over 25 years, with 25 stores and an online shopping service operated under the domain name <babyfactory.co.nz>.
The Complainant is the owner of Australian trade mark registration number 1332711 for the trade mark THE BABY FACTORY, registered since November 23, 2009 (the “Trade Mark”).
Since 2010, the Complainant has been doing business in Australia by delivering goods ordered through its New Zealand website to customers in Australia.
The Respondent is a company incorporated in the State of New South Wales in Australia. The Respondent began retailing baby goods in Australia under the trade mark BABY KINGDOM in 1995. The Respondent operates three retail stores in the Sydney region and operates an online shopping service under the domain name <babykingdom.com.au>.
The Respondent is the owner of Australian trade mark registration number 1247728 for the trade mark BABY KINGDOM, registered since June 23, 2008.
The disputed domain names were registered on July 11, 2006.
The disputed domain names have not been used.
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered or subsequently used in bad faith.
The Respondent contends that there is no evidence that the Complainant had a registered trade mark or established common law rights in THE BABY FACTORY in Australia between, before and during the period June 11, 2006 to November 23, 2009; the Respondent has rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have not been registered or subsequently used in bad faith. The Respondent also requests the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant.
6.1 Supplemental Filing
Paragraph 12 of the Rules provides that, in addition to the complaint and the response, the panel may request or permit, in its sole discretion, further statements or documents from either of the parties.
The Complainant seeks leave to file and rely upon the Declarations, for the following reasons:
“These statutory declarations are important to the Applicant’s case, as they show that the Respondent was aware of the existence of the brand in around 2007 and afterwards, when they renewed the registrations every two years.”
The Respondent’s objections to the Complainant’s filing of and reliance upon the Declarations are as follows:
“We strongly disagree and object to any additional evidence being allowed to be submitted by the Complainant for the following reasons:
(1) The Complainant had plenty of time in which to obtain this evidence to include in their original submissions (if this evidence was so important, they would have made great efforts to include in original submissions);
(2) The Complainant's lawyers state: ‘In our submission, these statutory declarations are important to the Applicant's case, as they show that the Respondent was aware of the existence of the brand in around 2007 and afterwards, when they renewed the registrations every two years.’ We note that the Respondent registered the domain names in good faith back in 2006;
(3) The subsequent renewal of the domain names does not equate to bad faith;
(4) One of the Declarations state that the alleged meeting took place around 2006-2007 but then states that the alleged meeting took place on April 2, 2007 (well after the Respondent had registered the domain names in good faith);
(5) The same wording has been used in both of the Declarations;
(6) There is no actual evidence from the Complainant about what the parties discussed nor was any great detail mentioned in the Complainant's original submissions;
(7) The Complainant has waited well over ten years in which to file a domain name dispute against the Respondent in light of the subsequent renewals of the domain names;
(8) If the Complainant was upset by the registration of the domain names by the Respondent, they would have filed a domain name dispute earlier. No correspondence was sent to our client about the domain names between the period 2007 to 2019. The first correspondence received by the Respondent about the domain names was from the Complainant's lawyers in 2020; and
(9) No further time should be provided. We seek permission to file further submissions on the above points before a decision is made on the matter of the acceptance of additional evidence.”
The Panel determines that it will, exceptionally, allow the Supplemental Filing for the following reasons:
(1) The Respondent relies upon the statutory declaration made by its director and annexed to the Response (the “Respondent’s Declaration”), deposing to the fact that he was not aware of the Complainant at the time of registration of the disputed domain names on July 11, 2006; and that he registered the disputed domain names in good faith as the Complainant did not have any presence in Australia until 2009/2010;
(2) Although the Policy and the Rules do not expressly contemplate the filing of submissions and evidence in reply, the Complainant seeks to rely upon the Declarations to address the point raised in the Response (and confirmed in the Respondent’s Declaration);
(3) The question of the Respondent’s knowledge of the Complainant and of its Trade Mark is central to the Panel’s determination of the third limb under the Policy in the present proceeding; and
(4) The Respondent has not objected to the content of the Declarations and has not sought leave to file any further evidence in reply to address the content of the Declarations.
6.2 Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The fact the Complainant did not obtain its rights in the Trade Mark until after the date of registration of the disputed domain names is immaterial for the purposes of the first limb under the Policy – the Complainant must demonstrate its relevant rights are in existence at the time of filing of the Complaint.
Disregarding the country code Top-Level Domain (“ccTLD”) <.com.au> and, in the case of the disputed domain name <babyfactory.com.au>, the omission of the word “the”, the disputed domain names are identical to the Trade Mark. The Panel also notes that the evidence demonstrates that the Complainant possesses common law or unregistered rights in the brand BABY FACTORY for the purpose of this Policy (and this evidence is not contested by the Respondent).
Accordingly, the Complainant has fulfilled the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark in New Zealand which precede the Respondent’s registration of the disputed domain names by many years, although it did not file its application for registration of, and commence use of, the Trade Mark in Australia until November 23, 2009, and 2010, respectively. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent’s submissions in respect of this issue can be summarised as follows:
(1) The Respondent registered the disputed domain names almost three years before the Complainant decided to start business in Australia and four years before the Complainant started delivering goods into Australia via its New Zealand website, or applied to register its Trade Mark in Australia;
(2) The Respondent did not know that the Complainant existed when it registered the disputed domain names;
(3) The Complainant has provided no evidence to suggest that the Respondent was aware of the Complainant’s business before the Respondent registered the disputed domain names, nor should the Respondent have been reasonably expected to know in 2006 of a business operating in New Zealand, when the Respondent is based elsewhere, in Australia;
(4) A person will have a legitimate interest in a domain name if it comprises descriptive words and it is used in connection with the meaning of the descriptive words (The Crown in Right of the State of Tasmania trading as "Tourism Tasmania" v. Gordon James Craven, WIPO Case No. DAU2003-0001);
(5) Domain names are registered on a “first come, first served” basis and a registered trade mark does not confer any better entitlement to a domain name than a registered company or business name (Ogio International Inc. v. Ogio Pty Ltd, WIPO Case No. DAU2019-0011);
(6) Under the 2012-04 - Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs, Eligibility and Allocation Rules for COM.AU, it is possible to be eligible to register a “.com.au” domain name if it is otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the 2012-2015 Guidelines on the Interpretation of Policy Rules for the Open 2LDs (“the Guidelines”). Paragraph 10.2 of the Guidelines states that “the purpose of the close and substantial connection rule is to allow some flexibility for registrants who do not want to license a domain name that is directly related to their name (or cannot do so, because the domain name has already been licensed by another registrant with the same or similar name)”;
(7) The Respondent chose the disputed domain names because of the association with the Respondent’s business in Australia;
(8) The words “baby factory” are generic words and words that, at the time of registration of the disputed domain names, would be easily associated with the Respondent, given the common use of the word “baby” along with the extension to the word “factory” and the existence of the Respondent’s name BABY KINGDOM;
(9) The Respondent chose an extension of its name that legitimately is associated with the retailing services it provides, the word “baby” along with a word that represents a type of building structure – “kingdom” and “factory”;
(10) The words “factory” and “kingdom” have connotations of being locations where there is an abundance of a type of good or service when used in conjunction with a generic word or target market;
(11) As a retailer in the baby goods retail industry it is not a stretch for the Respondent to be legitimately able to register generic words as an extension of its baby retailing business;
(12) The Respondent chose the disputed domain names because of their association with its business and not for commercial gain;
(13) The Respondent registered the disputed domain names in 2006 to provide for the expansion of its business and trading name, as well as in the meantime, divert a consumer in Australia generally searching for any type of location descriptor for baby and child related products, to the Respondent’s business, BABY KINGDOM; and
(14) The Respondent has renewed the disputed domain names since registering the domain names in 2006. The first renewal occurred around April 2008 (well before the Complainant filed its application for registration of the Trade Mark in Australia).
The Panel considers that the first three grounds relied upon by the Respondent are more relevant to determination of the third limb under the Policy. The principles set out under grounds four and five are trite, but on the facts herein, the Respondent has not been using the disputed domain names in connection with their meaning. To the contrary, the disputed domain names have not been used at all.
Irrespective of the Respondent’s reasons for registering the disputed domain names, it is difficult for the Respondent to establish rights or legitimate interests in the disputed domain names in circumstances where it has made no use of the disputed domain names at all.
In all the circumstances, the Panel finds that the Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. The disputed domain names, despite having been registered since July 11, 2006, have never been used. Nor is this a case where the Respondent chose to register the disputed domain names because it was unable to register a domain name comprising its trade mark, BABY KINGDOM.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
Accordingly, the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy.
Perhaps the most important distinction between the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) and the Policy, is that the third limb under the UDRP requires complainants to establish the conjunctive requirement that the disputed domain name “has been registered and is being used in bad faith”; whereas the equivalent provision under the Policy is disjunctive, requiring complainants to establish that the disputed domain name “has been registered or subsequently used in bad faith”.
The Panel is bound to accept the sworn evidence of the director of the Respondent that, when the disputed domain names were registered on July 11, 2006, he (and, by extension, the Respondent) was not aware of the Complainant.
The Panel accordingly finds that, in all the circumstances, there is insufficient evidence to support a finding that the disputed domain names were registered in bad faith.
The Panel also accepts the (uncontested) evidence set out in the Declarations that representatives of the Complainant met with representatives of the Respondent at the Respondent’s shop in Canterbury, Bankstown in April 2007.
It is the Respondent’s evidence that it first renewed its registrations for the disputed domain names in April 2008 and that it subsequently renewed the registrations every two years.
There can be no question therefore that the Respondent was aware of the Complainant and of its rights in the Trade Mark prior to the Respondent’s renewals of the disputed domain names from at least 2010 onwards.
The Respondent fairly accepts that, although the Respondent was not aware of the Complainant at the time of registration of the disputed domain names, the Respondent was aware of the Complainant and of its Trade Mark at the very least from the time of the second renewal of the disputed domain names, in 2010.
The Respondent has not made any use of the disputed domain names in connection with their descriptive meaning, nor has the Respondent made any noncommercial use of the disputed domain names. The Respondent has also not provided evidence of any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
The Respondent has operated under the trade mark BABY KINGDOM for many years, including online via its <babykingdom.com.au> domain name.
The Panel considers that the reference to subsequent use in the third limb of the Policy must also extend to “passive use” in accordance with established jurisprudence under the UDRP and under the Policy. In this regard, the Panel also considers that, had the Respondent commenced use of the disputed domain names by linking or redirecting the disputed domain names to its <babykingdom.com.au> website subsequent to its renewals of the disputed domain names, such conduct would likely, in all the circumstances, have amounted to subsequent use of the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that, in all the circumstances, the Respondent’s passive use of the disputed domain names, together with the factors outlined above, are sufficient to amount to bad faith use for the purposes of the third limb under paragraph 4(a) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain names have been subsequently used in bad faith. Accordingly, the Complainant has fulfilled the third condition of paragraph 4(a) of the Policy.
6.3 RDNH
The Panel has found in favour of the Complainant and ordered transfer of the disputed domain names. There is accordingly no basis for a finding of RDNH against the Complainant.
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 names <babyfactory.com.au> and <thebabyfactory.com.au> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 14, 2020