The domain name NaturallyBorn.com was saved in a UDRP today

The domain holder was represented by John Berryhill

Here are the relevant facts and findings by the three member panel:

Complainant made the following contentions.

1.    Complainant established the website <naturallyborn.net> in December 2010.  This website provides information about natural methods of child birthing and breastfeeding, as well as online reviews of natural childbirth and breastfeeding support providers.

2.    Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the NATURALLY BORN mark (Reg. No. 4,205,152 filed January 18, 2012; registered September 11, 2012).

3.    Respondent’s <naturallyborn.com> domain name is identical to Complainant’s NATURALLY BORN mark.

Respondent made the following contentions.

1.    Respondent registered the disputed domain name two years before Complainant’s registration date for the NATURALLY BORN mark and two years before Complainant established any common law rights in the mark.

2.    Respondent established rights and legitimate interests in the disputed domain name by using the resolving website to publish a blog describing the pregnancy and childcare experiences of Respondent’s wife.

3.    Respondent’s use of the disputed domain name is entirely noncommercial and does not compete with Complainant’s business.

4.    Complainant has admitted that Respondent acquired the disputed domain name before Complainant had any rights in the NATURALLY BORN mark, thus precluding a finding of bad faith registration.

FINDINGS

·        Complainant established the website <naturallyborn.net> in December 2010 to provide information about natural methods of child birthing and breastfeeding.

·        Complainant filed for the registration of the NATURALLY BORN mark on January 18, 2012, and the mark was registered on September 11, 2012.

·        Respondent registered the <naturallyborn.com> domain name on November 18, 2010.

·        Respondent currently uses the <naturallyborn.com> domain name to promote its own “Baby Marohn” blog.

·        The parties have been involved in negotiations regarding the sale of the <naturallyborn.com> domain name, during which Respondent offered to sell the domain name for US$ 2,000.

Respondent’s registration of the disputed domain name predates Complainant’s registration of the mark.  Therefore, an analysis of trademark infringement is not relevant to this Panel’s decision under the Policy.

Complainant has demonstrated that it owns a registered trademark for the term NATURALLY BORN. 

Evidence of the registration of a trademark with the USPTO is sufficient to establish rights in the mark. 

To satisfy ¶ 4(a)(i), the disputed domain must be identical or confusingly similar to Complainant’s mark.  Here, the only differences between Complainant’s registered mark and the disputed domain name are (1) the elimination of a space and (2) the addition of a generic, top-level domain.  These differences are insufficient to distinguish the registered mark from the disputed domain name. 

Respondent repeatedly notes that its registration of <naturallyborn.com> predates Complainant’s registration of the mark, but such an inquiry is irrelevant to the “identical or confusingly similar” analysis, and is addressed under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.  The Panel thus concludes that Complainant has satisfied the first element of the Policy.

 Rights or Legitimate Interests

Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain. 

A complainant must assert a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain. 

Once a prima facie case has been made, the burden shifts to the respondent to introduce evidence of rights or legitimate interests.  See Neusiedler Aktiengesellschaft v. Kulkami, Case No. D2000-1769 (WIPO Feb. 5, 2001).  The Panel concludes that Complainant has failed to assert a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.  

Respondent registered the disputed domain name well before the Complainant acquired rights in the NATURALLY BORN mark, and is thus the senior user. 

The disputed domain <naturallyborn.com> is comprised of generic, descriptive terms.  Such terms are “legitimately subject to registration as domain names on a ‘first come, first served’ basis.” 

Additionally, the Panel concludes that Respondent’s registration of the disputed domain name was intended for use in connection with the disputed domain’s generic meaning, and could not have been intended to trade off of Complainant’s later-arising trademark rights.  Furthermore, Complainant acknowledges that the disputed domain at least occasionally redirected to Respondent’s “Baby Marohn” blog.  This purpose is logically related to the generic disputed domain name.  Consequently, Complainant has failed to make out a prima facie case under ¶ 4(a)(ii) of the Policy. 

Registration and Use in Bad Faith

As Complainant has failed to satisfy ¶ 4(a)(ii) of the Policy, there is no need to discuss registration and use in bad faith. 

For purposes of completeness, the Panel analyzed ¶ 4(a)(iii) and concluded that Complainant has failed to demonstrate bad faith registration of the disputed domain. 

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that “the domain name has been registered and is being used in bad faith.”  Nevertheless, Complainant admits that Respondent “acquired the domain first and fairly.”  

Although Complainant has advanced several arguments as to how ¶ 4(a)(iii) has been satisfied, the Panel finds that there is no indication that the Respondent registered the disputed domain name in bad faith.  T

The fact that the parties were involved in negotiations regarding the sale of the disputed domain name does not show that the disputed domain name was registered with the intent of selling the domain name to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

Complainant alleges that Respondent renewed the registration of the disputed domain name in bad faith. 

By the time of the renewal, Respondent was aware that Complainant had secured trademark rights in the disputed domain name. 

Some Panels have held that a bad faith renewal may be treated as a de facto bad faith registration.  

In the instant case, Complainant was aware of Respondent’s ownership of naturallyborn.com, yet still chose to develop and promote an identical mark. 

Complainant assumed the risk of developing a mark for which a pre-existing domain name had already been registered. 

Accordingly, the Policy does not allow Complainant any remedy.

Complainant also argues that ¶ 4(a)(iii) is not a conjunctive requirement, in that a complainant does not need to show both bad faith registration and bad faith use.

Complainant bases this argument on two recent Panel decisions: Eastman Sporto Group and Mummygold.  Eastman Sporto Group LLC v. Jim & Kenny, Case No. D2009-1688 (WIPO March 1, 2010) (equating bad faith renewal to bad faith registration for purposes of satisfying ¶ 4(a)(iii)); City Views Ltd. v. Moniker Privacy Servs./Xander, Jedeyu, ALGEBRALIVE, Case No. D2009-0643 (WIPO July 3, 2009) (“Mummygold”) (permitting bad faith registration to be established “retroactively” by subsequent bad faith use).  Eastman Sporto Group and Mummygold exhibit a significant departure from a settled rule of decision that had been in place for nearly a decade. 

Furthermore, these decisions represent a minority interpretation of ¶ 4(a)(iii) that many subsequent Panels have declined to follow.  

Complainant presents a stronger argument that Respondent is using the disputed domain name in bad faith.

Complainant alleges that Respondent is intentionally misleading Internet users who intend to visit Complainant’s naturallyborn.net domain name.  

Respondent may in fact be “piggybacking” off of the success of the NATURALLY BORN mark to promote its own “Baby Marohn” blog. 

However, as Complainant has failed to demonstrate bad faith registration, the Panel declines to decide whether this subsequent conduct constitutes bad faith use.