Vertical Axis Inc beat back a challenge, from a trademark holder to successfully defend a UDRP on BabyEssentials.com.
Its an impressive win since the complainant seems to have mulitple trademarks on the term in several different classes and the domain name was parked.
Here are the fact of the case as laid out by the 3 member panel:
“The Complainant describes itself as a source of well-designed and priced products supplied to mass-merchandising retailers in the United States of America (“United States” or “US”). The Complainant’s business dates back more than 50 years.”
“Among the products made by the Complainant are what they describe as a wide variety of consumer goods for use by infants and their parents.”
“Such products are sold under or by reference to the trademark BABY ESSENTIALS which the complainant 10 trademarks on the term Baby Essentials in different classes.”
“The disputed domain name was created on May 25, 2002 and was registered by the Respondent in August 2006 after it was deleted.”
“The Respondent is also the registrant of more than 60 domain names which incorporate one of the words constituting the disputed domain name. Such domain names include babyneeds.com; babyseats.com; babyshoes.com; babygift.org; babyideas.com; babyutensils.com; babybooties.com; babytotebags.com; babycovers.com; artessential.com; autoessentials.com; bridalessentials.com; danceessentials.com; and homeessentials.com”
“The disputed domain name is hosted by the Respondent with Hitfarm.com a service which places pay-per-click advertising links, based on a Yahoo advertiser feed, on hosted domains.”
“The Respondent shares the advertising revenue with the other domain name holders. The disputed domain name has been linked variously over the years since it was registered by the Respondent on August 2006 to generate pay-per-click revenue advertising baby and children goods and services with links to “baby”, “baby checklist”, “baby clothes”, “baby crib”, “new baby essentials”, “first baby essentials”, “baby monitors” and such like.”
“The Respondent says that the Complainant purchased an earlier filed BABY ESSENTIALS trademark (US Reg. No. 1917345) from a third party (Primex International Corporation) on May 16 2003 for USD 30,000. That trademark was registered in September 1995. However, according to the Complainant’s filing with the US Patent and Trademark Office (USPTO), it did not commerce use of the mark until September 1, 2005. Consequently, the Respondent submits that no use was being made of the BABY ESSENTIALS mark by the Complainant or its predecessor in title to the 1995 BABY ESSENTIALS trademark registration between May 16, 2003 and September 1, 2005.”
Here are the relevant parts of the panel’s findings:
“The Complainant clearly has registered trademark rights in BABY ESSENTIALS which date back to 1995”
“The Respondent’s evidence is that the first knowledge it had of the Complainant’s BABY ESSENTIALS trademark was when it received this Complaint.”
“The Respondent says the words are descriptive, they are widely used by third parties and the disputed domain name is only one of a large number of descriptive domain names registered by the Respondent which incorporate the words “baby” and “essentials”. According to the Respondent, its use of the disputed domain name since October 2006 has, and continued to be, in connection with a bona fide offering of baby goods and services.”
“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.”
“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.”
“Without repeating the facts summarized above, it is apparent that the Complainant has not demonstrated any of the circumstances of paragraph 4(b) of the Policy which evidence bad faith registration and use by the Respondent, nor does the Complaint contain any other evidence upon which a bad faith finding on the part of the Respondent could be based.
“For all the foregoing reasons, the Complaint is denied.”
In this case the panel looked to the actual date the trademark went into use, rather than the date of filing, to conclude that the domain which was created in 2002 predated the actual use, although the domain holder did not even own the domain when the trademark began to be used in 2005.
Ari Goldberger represented Vertical Axis.
Its a great decision for domain holders but one that will no doubt be heavily criticized by trademark holders.
“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.”
That’s great news and the way it should be, if not then any johny come lately can get a TradeMark for a few bucks then go after domains worth hundreds of thousands.
It’s a good win for common sense 🙂
What is it that some seem to think if there is a previous UPRP/WIPO loss against your name (ustream.com UDRP) …that somehow they will hold it against you..
Obviously hasn’t affected VA in this case
Unless I am mistaken, the FILING DATE of the TM is the important date where all rights first date back
It takes at least 10 months – often longer for most countries – from the filing date to the Registration date, assuming there are no objections
I guess small victories should be enjoyed, but the entire UDRP system has no basis in any sort of procedural underpinning. It’s liable to the capriciousness and whimsy of whatever arbiter you happen to draw. As such, there’s no consistency in anything. It’s Kangaroo Court.
Had they drawn an ‘anti-domainer’ arbiter, they would’ve lost.
What was the UDRP decision a while back, where the arbiter made some incoherent, nonsensical ramble about how UDRP decisions weren’t liable to precedent laid out by preceding UDRP decisions? It was shocking- how his words amounted to completely meaningless, hollow prattle along the lines of what one might expect from a babbling Alderman who was just asked a pointed question he didn’t want to give a straight answer to.
Wins mean a lot to the winning party, but they mean nothing to anyone else, since they don’t hold themselves to any sort of central standard. The system is about as consistent as smoke in the wind.
@ LS Morgan
You said what i was about to say ONLY BETTER!
With no case precedent to weigh in upon,
with no Shepherds’ Citations of Case Law (equivalent reference)
to be refereed to upon, its just a whimsical farce, with the luck of the draw.
This also a embarrassing disgrace upon the legal profession inthat
to allow this monetary legal hustle to involve possible legal members
of the bar partake.
It could be implied that participating in any form implies coercion perhaps?
Lastly, The Cut N Paste by IN- STAFFERS of hearing decisions
prior to defendants presence IS NOT the same as a law clerk’s
case preparation which is based on facts and law, it is prepared
by A -IN STAFFERS- PERSONAL EMOTION AND BIAS.
A Congressman /Senator is the right person to influence justice and consistency.
ANYONE KNOW THE NAME OF THE MEMEBER OF CONGRESS THAT IS SCHEDULED TO BE PRESENT AT THE UPCOMING IMPORTANT DOMAINERS MEETING,SHORTLY?
Trademarks have to be the benchmark for company legitamacy. Although I am absolutely for domain owners, this decision makes no sense. It denigrates the TM protection codes. So where do we begin to protect ourselves? Which kind of registry can we trust to identify our companies as legitimate and to protect those rights. These arbitrary decisions by underqualified people are quite alarming.
When you understand a bit more how trademarks work, it’s terrifying that a domain can be taken by sole virtue of a TM (and TM abuse- If I recall correctly, there was significant TM abuse to hijack certain primo keywords when the .in TLD was liberalized)
In the US, you can TM almost any term for use in any channel of commerce. Tomorrow, I could start up “Cherry Hockey Sticks”, get a TM for the use of the word “Cherry” in hockey sticks, then make a claim at Cherry.com.
Obviously, extreme example; pretty sure the owner would fight tooth and nail in court for a name like that even if the hijacker won @ WIPO, but what about a $10K or $20K name? How much do you spend to “defend” a $8000 name after a shitty UDRP decision?
The dispute system as it stands is just so, so broken. There is no standard for best practices, there is no prevailing ideology to govern the decisions, there is nothing. Anyone who understands how it works knows it deserves no credibility whatsoever. A dispute system is needed, but a bare-bones overhaul of the existing one is needed before it approaches anything resembling respectability.
this is good to see.
it was this same respondent who previously was punished by a udrp panel because they had conflicting evidence about date of domain registration (i.e. the ustream decision).
records of these dates are very important.
good too see they had the proper evidence to present this time around.
for all we know, they probably should have won that ustream case, despite how well known ustream.tv has become.
i don’t understand em’s comment.
if someone is using the a desired mark (e.g. “babyessentials”) commercially as a domain name for an ad-sponsored landing page for several years (and continually getting many 1000’s of hits), then a TM applicant who comes along later should have to disclose that to the uspto. do you think the uspto should grant them the mark? is someone else is already using it commercially? what do you think?
if a company wants a mark, then it stands to reason they need to 1. be the first to file for it or 2. the first to start using it in commerce. preferably both.
“Had the Complainant’s BABYESSENTIALS been widely used, and hence widely known…”
“Bad faith *only* arises where a domain name is registered with the intention of selling it to the trademark owner at a profit.”
While that is the classic definition of cybersquatting, I think that’s a very narrow view of bad faith. It’s certainly not one that is adopted consistently by all panelists. These UDRP decisions are a great source of randomness indeed. A roll of the dice.
One thing it does show is how hiring a good domain attorney can help your cause. Not a given, but does help. Not sure if this is a domain worth “Hundreds of Thousands” but good enough to warrant a legal pro. Keep up the good Karma!
“Not sure if this is a domain worth “Hundreds of Thousands” but good enough to warrant a legal pro.”
Me neither but I meant in theory businesses could spend a little money on a TM and then try and go after big dollar domains that have been registered for many years.
If they don’t “already own” the domain WHEN THEY APPLY for a new trade mark then they should have no legal rights to go after the domain via UDRP.
If the domain is such an important part of their marketing stategy and they don’t own it then they should pick another name to Trade Mark!
JMO
Gazzip +1
Sometimes the marks at issue in cases like these are “old”, i.e. they were reg’d before people were thinking as much about the www and dn’s as they do today (which still, among the mainstream, isn’t that much). For those marks, I see no reason not to go after dn holders.
But for “newly” registered or newly acquired marks, I’m not convinced this is the right thing to do.
Going after dn holders who were around years before the business began using their “new” mark is of questionable ethical basis. I’m not sure what the answer is, but I don’t see anyone opposing the principle of “reverse hijacking” as being a valid concern. People seem to agree that a “first to file” system is fair.
Perhaps it’s easier to for a business to resolve to go after “infringing websites” after they have a TM (because their legal advisors say now they must protect it, and the www is an easy target) than it is for them to take a deeper look at the www as part of their mktg strategy *before* they register or acquire TM’s. Obtaining TM’s is something businesses are compelled to do- it’s an entrenched concept. Obtaining dn’s is not, per se. For most businesses, it’s certainly not a first priority, and, in fact, it’s optional. Not everyone in a company is as interested in the www *as a commercial opportunity* as we are.
Sometimes people attack what they don’t understand (and hence cannot benefit from). The www might be such a thing.