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March 10, 2011 / Nate Harris

Betty Bossi’s 11 year delay leads to denial of UDRP on bettybossi.com

Summary of Betty Bossi Verlag AG v. SinoSwiss Co., Ltd.

(WIPO Case No. D2010-2264)

Filed: December 23, 2010; Decided: February 22, 2011 (Panelist: Sir Ian Barker)

Disputed domain name: <bettybossi.com>

bettybossi.com

The Parties

 

Complainant Betty Bossi Verlag AG (“Bossi”) is “a Swiss corporation which publishes books and magazines on cooking, nutrition, decoration, gardening and healthy living. It also offers classes on cooking and nutrition on television and sells convenience food products.” Bossi takes its name from a fictional cook who was created in the 1950’s. [Who would want to learn cooking and nutrition from a “Bossi” cook?] The Bossi name began being used on a magazine in 1972, and the mark BETTY BOSSI was registered in Switzerland in 1993.

Respondent SinoSwiss Co., Ltd. (“SinoSwiss”) registered the disputed domain in 1999. It is engaged in “management, testing, coaching and recruitment services in the Asia-Pacific region,” which services it promotes to women using the BETTY BOSSI mark. SinoSwiss owns Thai registrations dating to 2000 for the marks BETTY BOSSI and BETTYBOSSI.COM. According to SinoSwiss, the disputed domain name is based a combination of the first name of its administrator and the first letters of the phrases “Be unique”; “Open-minded”; “Sincere”; “Service minded”; “Initiative”.

Identical or Confusingly Similar

“There can be no doubt that the disputed domain name is identical to the Complainant’s registered Swiss trademarks.”

Rights or Legitimate Interests

Bossi relies on the fact that, before notice of the dispute, it was using the disputed domain in connection with a bona fide offering of goods and services. In the Panel’s view, “[t]he available evidence shows that the Respondent has been using the disputed domain name for 11 years in connection with its apparently legitimate business of offering career-enhancement for women.”

Bad Faith

The Panel highlights Bossi’s delay in taking action against the disputed domain:

This is a case where the Complainant has apparently gone to sleep on its rights for a long period. It complains about a domain name some 11 years after it had been registered. No explanation was offered by the Complainant for its delay in filing a complaint. Whilst the equitable doctrine of laches does not apply under the Policy, the longer the interval between registration of the disputed domain name and the filing of a complaint under the Policy, the harder it becomes for a complainant to prove bad faith registration and bad faith use. Both need to be proved.

In the present case, the Complainant’s difficulties [in proving bad faith] are exacerbated by the difficulty for the Panel in being able to infer that the mark of a company which seemingly trades almost exclusively in Switzerland in selling cooking publications and associated products would have been known in Thailand in 1999 by a company which markets self-improvement courses for women in South-East Asia.

The only indication of bad faith registration is that one of the founders of the Respondent appears to have Swiss origins. In that light, the Panel must confess to a certain skepticism about the narrative relating to the choice of name for the Respondent’s operations. However, these misgivings are not enough to create an inference of bad faith registration, given the unexplained delay of 11 years by the Complainant in asserting its rights. It is unnecessary for the Panel to rule on bad faith, since the Respondent has established a defence under paragraph 4(c)(i) of the Policy.

Decision

The complaint is denied.

Commentary

Parts of this decision leave my scratching my head. The Panel notes that one of the founders of SinoSwiss is (surprise!) Swiss, and that Bossi’s BETTY BOSSI mark is “well-known.” Then why does the Panel have “difficulty . . . in being able to infer” that Bossi’s well-known mark would be known to a company whose founder was Swiss? The fact that he moved to Thailand doesn’t change anything.

Furthermore, the Panel asserts that, while laches does not apply to UDRP proceedings, “the longer the interval between registration of the disputed domain name and the filing of a complaint under the Policy, the harder it becomes for a complainant to prove bad faith registration and bad faith use.” This may be true as a practical matter, as witnesses and evidence fade away, but the Panel seems to imply that the burden of proof grows as a matter of law over time. That’s just not the case. Bad faith is bad faith anytime you can prove it, whether it occurred 11 years ago or 11 days ago. This “gradual laches” concept is not applicable.

Looking at the evidence of bad faith with a fresh eye, a company with a Swiss founder has selected a fanciful mark that is identical to a well-known Swiss mark. I share the Panel’s “certain skepticism about the narrative relating to the choice of name for the Respondent’s operations” involving self-improvement courses for women. A quick visit to the Wayback Machine increases those suspicions. In 2001, the disputed domain pointed to a page entitled “Asian Wedding Giftstore” offering “PERSONALIZED GIFT OR REMEMBRANCE ITEMS: ATTRACTIVE FACTORY PRICES!” By 2007, the disputed domain pointed to a placeholder “under construction” page. It seems as though the self-improvement courses for women are a relatively new development. At the least, the domain was clearly not selected based on the acronym of empowering phrases I listed above, which changes the analysis under the rights-or-legitimate-interests prong and the bad faith prong.

Unfortunately, I think the Panel got hoodwinked.

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