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October 15, 2010 / Nate Harris

A.D. Sutton & Sons, Inc. v. BABYESSENTIALS.COM

Summary of A.D. Sutton & Sons, Inc. v. BABYESSENTIALS.COM c/o Nameview Inc. Whois IDentity Shield / Vertical Axis Inc.
(WIPO Case No. D2010-1125)

Filed: July 7, 2010; Decided: September 22, 2010 (Panelists: David Perkins, Steven Auvil, and the Hon. Neil Brown QC)

Disputed domain name: <babyessentials.com>

babyessentials.com

The Parties

Complainant A.D. Sutton & Sons, Inc. (“Sutton”) has been in business for more than 50 years. It sells a wide variety baby-related goods under the trademark BABY ESSENTIALS. Sutton owns several U.S. trademark registrations for the mark BABY ESSENTIALS. The earliest of those marks dates to 1995, though Sutton only acquired it in 2005. (The mark having the next earliest priority date was registered in 2005.)

Respondent BABYESSENTIALS.COM c/o Nameview Inc. Whois IDentity Shield / Vertical Axis Inc. (“Nameview”) acquired the disputed domain name in 2006, though it was first registered by someone else  in 2002. The domain, along with sixty other baby-related domains owned by Nameview,  points to a click-through website advertising baby products.

Identity or Confusing Similarity

“[Sutton] clearly has registered trademark rights in BABY ESSENTIALS which date back to 1995 . . . and the disputed domain name is identical to that trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.”

Rights or Legitimate Interests

Sutton asserts that the click-through website at the disputed domain conflicts with Sutton’s prior use (and registration) of the BABY ESSENTIALS mark. Nameview argues that it had never heard of Sutton or its mark until it received the complaint. It argues the phrase BABY ESSENTIALS is descriptive, and offers evidence of thousands of websites and a handful of trademark registrations incorporating the words “baby” and “essentials.” Nameview further claims that its use of the disputed domain since 2006 to link to baby-related products constitutes a bona fide offering of goods.

The Panel sides with the Complainant:

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.

In the circumstances, 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. The first registration of the disputed domain name dates back still further to May 2002. Accordingly, the Complaint fails to fulfill the requirement of paragraph 4(a)(ii) of the Policy.

Bad Faith

For the same reasons discussed above, Sutton has failed to prove bad faith registration and use.

Decision

The complaint is denied.

Commentary

I’ve read and re-read the Panel’s discussion of rights or legitimate interests at least two dozen times now, and I’m still not sure I follow it. Essentially, the Panel seems to find that  Sutton’s mark, though it was registered in 1995 by a third-party (and the registrations was acquired by Sutton in 2005) is nonetheless descriptive. Furthermore, according to the Panel, Sutton’s mark had no acquired distinctiveness at the time the disputed domain was registered by Nameview, and certainly not when the disputed domain was first registered (i.e., by someone else). The Panel also seems to recognize a laches defense by noting that Sutton didn’t complain about the disputed domain for four years. Because, in the Panel’s view, BABY ESSENTIALS is descriptive, it cannot be shown that Nameview has no rights in the disputed domain.

This raises an interesting question of whether the mark was well-known prior to its acquisition by Sutton in 2005. If it was, then could Nameview have rights or legitimate interests in the mark? As I understand it, the identity of the complainant is irrelevant to the “rights or legitimate interests” prong. In other words, I think a well-known mark could preclude a respondent’s rights or legitimate interests in a disputed domain, even if the complainant was not the owner of the mark. Actually, the complainant here is the successor in title to the mark, meaning it should step into the prior owner’s shoes.

Also, why does the Panel keep referencing the first registration of the disputed domain in 2002? For purposes of the UDRP, “registration” occurred in 2006 when Nameview acquired the domain. Anything that happened before that is irrelevant. (Of course, the applicability of laches to UDRP proceedings is also questionable, but that’s an equitable doctrine for a different day.)

Epilogue

<babyessentials.com> still points to a click-through site. It allows visitors to “click here to make an offer on this domain name.”

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