DECISION

Live-Right, LLC v. Domain Administrator / Vertical Axis Inc.

Claim Number: FA1506001622960

PARTIES

Complainant is Live-Right, LLC (“Complainant”), represented by Nancee Tegeder, California, USA. Respondent is Domain Administrator / Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <babybanana.com>, registered with Fabulous.com Pty Ltd.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Diane Thilly Cabell, Beatrice Onica Jarka, and Hon. Karl V. Fink (Ret.) (Chair) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 5, 2015; the Forum received payment on June 5, 2015.

On June 8, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <babybanana.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@babybanana.com. Also on June 11, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on June 30, 2015.

Complainant’s Additional Submission was received and determined to be complete on July 6, 2015.

Respondent’s Additional Submission was received and determined to be complete on July 10, 2015.

On July 8, 2015, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Diane Thilly Cabell, Beatrice Onica Jarka, and Hon. Karl V. Fink (Ret.) (Chair) as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

Complainant

Complainant owns the United States Patent and Trademark Office registration for the BABY BANANA mark (Reg. No. 3,747,206, first use Oct. 26, 2007, filed May 30, 2007, registered Feb. 9, 2010), demonstrating its rights in the mark. Respondent’s <babybanana.com> domain name incorporates the mark fully, eliminates the space between words, and adds the generic top-level domain (“gTLD”) “.com”, making the name confusingly similar to Complainant’s mark.

Respondent has no rights or legitimate interests in the <babybanana.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has not utilized the <babybanana.com> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. The resolving page merely displays click-through advertisements and an offer to sell the domain name.

Respondent registered and uses the <babybanana.com> domain name in bad faith. Respondent has attempted to offer the disputed domain name for sale in excess of out-of-pocket costs as evident through Complainant’s exhibits and a link included on the domain’s resolving page stating “This domain is listed at Mark.com” with subsequent links “BUY IT” and “RENT IT”.

Respondent

Complainant alleges a first use in commerce of December 6, 2007. Complainant’s first application for a trademark was filed in May, 2007 and registered in 2010. Respondent registered the <babybanana.com> domain name in February 2006, prior to Complainant’s alleged first use of the BABY BANANA mark, after the prior owner allowed the registration to lapse (the disputed domain was originally registered in 1999).Complainant has therefore failed to demonstrate its Policy ¶ 4(a)(i) rights.

The disputed domain name is a common English term, subject to third-party use. Respondent is a generic domain-name reseller who owns thousands of common word domain names, including many other domain names with the words “banana” or “baby”. See Wilfred-Boyce Aff., at ¶ 6, provided in Respondent’s exhibits. Respondent registered the Disputed Domain for the same reason it registered many other common and descriptive term domain names; it is an inherently valuable domain name. Respondent uses the disputed domain name to provide advertising services, and profits from pay-per-click revenue as a business model. Respondent’s offer to sell the disputed domain name as part of its business model is a bona fide offering of goods or services as per Policy ¶ 4(c)(i).

Additional Submission from Complainant

Complainant provides information which establishes a secondary meaning of the BABY BANANA mark.

Complainant cites the following cases in which panels have found subsequent registration renewals as constituting a new registration: Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO Mar. 1, 2010). (“Paragraph 2 does not distinguish among the initial date of registration and subsequent requests for renewal – the undertaking by its terms applies as of all such dates.”); Playworld Systems, Inc. v. Domain Manager/Giant Distributors Inc., FA 1613470 (Nat. Arb. Forum May 21, 2015) (Respondent was aware of the Complainant’s trademark and found that the “renewal of a domain name is, by reference to paragraph 2 of the Policy, equivalent to a new registration in certain circumstances…The Policy provides clearly that there is a responsibility that a domain name registrant has, namely to determine whether the domain name registration infringes or violates someone else’s right.”).

Additional Submission from Respondent

The fact that the disputed domain name was registered and used by Respondent at least one year prior to Complainant’s alleged first use of its trademark and at least four years prior to registration of its trademark is fatal to its claim of targeting and bad faith registration. These facts warrant a denial of the claim and a finding of reverse domain name hijacking.

Complainant chose to brand itself with a common name and knew that the “.com” version was already owned and in use since 1999 (over 8 years prior to its alleged formation). Respondent could not have known about Complainant’s specialized products in 2006 because, per Complainant’s representations, they did not use the alleged trademark until 2007 and did not finalize their trademark registration until 2010.

The undeniable evidence is that Respondent registered the disputed domain name along with numerous others with the intent to sell those registrations to willing purchasers because of the inherent value in a generic or descriptive word domain name. Therefore, for this reason alone, Respondent has rights and a legitimate interest in the domain name and the claim must be denied.

It is settled that the plain language of paragraph 4(a)(iii) of the Policy requires a conclusion that the domain name has been registered and used in bad faith. Respondent registered the disputed domain name in good faith long prior to the existence of Complainant and its purported mark.

FINDINGS

For the reasons set forth below, the Panel finds Complainant is not entitled to the requested relief of transfer of the <babybanana.com> domain name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant owns the United States Patent and Trademark Office registration for the BABY BANANA mark (Reg. No. 3,747,206, first use Oct. 26, 2007, filed May 30, 2007, registered Feb. 9, 2010), and argues that its registration demonstrates its rights. The Panel finds that Complainant has rights in the BABY BANANA mark under Policy ¶ 4(a)(i).

Complainant argues that Respondent’s <babybanana.com> domain name is confusingly similar to Complainant’s mark, as it incorporates the mark fully, eliminates the space between words, and adds the gTLD “.com”. Panels have found such alterations as insufficient in overcoming a finding of confusing similarity per Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that Respondent’s <babybanana.com> domain name is confusingly similar to the BABY BANANA mark under Policy ¶ 4(a)(i).

Respondent contends that the <babybanana.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, however, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i), as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Complainant has proved this element.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant argues that Respondent has no rights or legitimate interests in the <babybanana.com> domain name. Respondent is not commonly known by the disputed domain name as per the relevant WHOIS information, and other information on the record. Complainant contends that Respondent has not utilized the <babybanana.com> domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use as the resolving page merely displays click-through advertisements. Complainant also states that Respondent has attempted to sell the disputed domain name.

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

Respondent registered the <babybanana.com> domain name in February 2006, prior to Complainant’s trademark filing date of May 20, 2007. Respondent states that it is a generic domain-name reseller which owns thousands of common word domain names, and that it registered the disputed domain name as part of its legitimate business. Respondent alleges that it uses the disputed domain name to provide advertising services, and as it provides these services it profits from pay-per-click revenue as a business model. Past panels have found that generic domain-name reselling is a legitimate business model. See Alphalogix Inc. v. DNS Servs., FA 491557 (Nat. Arb. Forum. July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”). The Panel finds that Respondent’s business of creating and subsequently selling generic domain names is a legitimate business endeavor, and finds that Respondent has established its rights and legitimate interests in the <babybanana.com> domain name under Policy ¶ 4(a)(ii).

Respondent argues that the terms of the <babybanana.com> domain name are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees and finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

Respondent argues that its offer to sell the disputed domain name as part of its business model is a bona fide offering of goods or services as per Policy ¶ 4(c)(i). There is precedent which holds an offer for sale demonstrates a bona fide offering of goods or services per Policy ¶ 4(c)(i). See Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy). The Panel finds that Respondent’s offer to sell the domain name is a bona fide offering of goods or services under Policy ¶ 4(c)(i).

Complainant has not proved this element.

Registration and Use in Bad Faith

Complainant argues that Respondent has attempted to offer the disputed domain name for sale in excess of out-of-pocket costs and that this is evidence of Respondent’s bad faith use. The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

The Panel has found that Respondent’s offer to sell the <babybanana.com> domain name is a bona fide offering of goods or services per Policy ¶ 4(c)(i), and therefore finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

The Panel further finds that Respondent has not registered or used the <babybanana.com> domain name in bad faith as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

Respondent argues that the <babybanana.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s BABY BANANA mark. Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms, and therefore finds that Respondent did not register or use the <babybanana.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

Doctrine of Laches

Respondent argues that since it first registered the disputed domain name in February 2006 and Complainant provides no explanation as to why it waited so long (nearly a decade) to initiate these proceedings. The Panel has not considered Respondent’s discussion of laches, as this is a legal argument not covered by the Policy. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).

Reverse Domain Name Hijacking

Although the Panel has found that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent). The Panel finds Complainant did not act in bad faith since there is some authority to support its bad faith renewal argument.

Respondent has not proved Reverse Domain Name Hijacking.

DECISION

As Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is ORDERED that the <babybanana.com> domain name REMAIN WITH Respondent.

__________________________________________________________________

Hon. Karl V. Fink (Ret.) (Chair), as Panelist

Diane Thilly Cabell, as Panelist

Beatrice Onica Jarka, as Panelist

Dated: July 16, 2015

BABYBANANA.com

DECISION

PARTIES

PANEL

PROCEDURAL HISTORY

RELIEF SOUGHT

PARTIES’ CONTENTIONS

FINDINGS

DISCUSSION

Identical and/or Confusingly Similar

Rights or Legitimate Interests

Registration and Use in Bad Faith

Reverse Domain Name Hijacking

Respondent has not proved Reverse Domain Name Hijacking.

DECISION

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