Domain name cancelled in "unfair" decision for complainant

International
In Lamprecht AG v Registrant [1690]: com fma Future Media Architects Inc (Case D2009-1778, March 26 2010), a World Intellectual Property Organization (WIPO) panel has ordered that the domain name 'bibi.com' be cancelled.
 
Lamprecht AG, a Swiss company manufacturing baby products, recently lost a complaint filed with WIPO in relation to the domain name 'bibibaby.com' under the Uniform Domain Name Dispute Resolution Policy (UDRP) (for further details please see "UDRP complainant fails to prove respondent's lack of legitimate interests").
 
Lamprecht had also filed a WIPO complaint for the recuperation of the domain name 'bibi.com'. The complaint was filed against com fma, Future Media Architects Inc, a company based in the British Virgin Islands.
 
To obtain a favourable ruling, Lamprecht had to convince the panel that the three cumulative requirements set out in Paragraph 4(a) of the UDRP were fulfilled, namely that:
  • the domain name registered by the respondent was identical, or confusingly similar, to a trademark or service mark in which Lamprecht had rights;
  • the respondent had no rights or legitimate interests in respect of the domain name; and
  • the domain name had been registered and was being used in bad faith.
Lamprecht is the holder of a Swiss trademark registration in the term 'bibi', as well as an international trademark in the same term registered in almost 50 countries. It is also the registrant of 'bibi.ch', 'bibi-nuk.com', 'bibi.info', 'bibi-international.com' and 'bibi-baby.com'.
 
The respondent registered the domain name 'bibi.com' on June 21 1997 and directed it to a website which provided sponsored links to third-party websites, some of them offering baby products by Lamprecht's competitors.
 
To satisfy the first limb of the UDRP, Lamprecht contended that the domain name was identical to its international and Swiss trademarks. The respondent submitted that Lamprecht had no exclusive right in the term 'bibi' because numerous other entities used it. Moreover, several of these entities were using the term in relation to baby products. The respondent also argued that the term 'bibi' was a common nickname. On these grounds, there could be no likelihood of confusion between the domain name and Lamprecht's marks.
 
The panel considered that it was irrelevant that other parties may have rights in the expression 'bibi' since "proof that a complainant holds a registered trademark in one jurisdiction is sufficient proof of a relevant trademark right". The panel pointed out that the generic suffix '.com' was not taken into account in the comparison and found that the domain name was identical to Lamprecht's BIBI mark.
 
For the purposes of establishing the second limb of the UDRP, Lamprecht relied on the following facts:
  • The respondent was not commonly known by the domain name and did not own any rights in the domain name;
  • The respondent had no connection with Lamprecht and had not been licensed to use Lamprecht's marks; and
  • The respondent had used the domain name for the sole purpose of diverting and misleading consumers by directing them to third-party websites.
The respondent argued that it had plans to develop a website dedicated to individuals with the name Bibi and to provide vanity email services. The respondent cited a previous case in which it had been involved (GM Communications Limited v com fma Future Media Architects Inc (Case D2009-0267)), where the use of a domain name for a vanity email service had been accepted as a good-faith use.
 
In the present case, the panel was concerned by the fact that the respondent had already asserted a legitimate interest in a four-letter disputed domain name, 'miki.com', on the basis of a claimed intention to use it for a vanity email service. The panel considered that, even if the respondent had undertaken some general preparatory work to set up a vanity email service, there was no evidence that any steps had been taken to use the domain name 'bibi.com' in connection with any such service. The panel thus found that the respondent had failed to show that its use of the domain name prior to receiving notice of the dispute had been a good-faith use.
 
With regard to the third limb of the UDRP, Lamprecht mainly argued that the respondent must have known of its marks prior to the registration of the domain name. The respondent stated that it had never heard of Lamprecht or its alleged use of the term 'bibi' before the filing of the UDRP complaint. The respondent further alleged that it had no intent to trade off Lamprecht's name or reputation and was interested only in acquiring a four-letter domain name.
 
The panel determined that the respondent should have inquired into the possibility that third parties had rights in the term 'bibi' before registering the domain name. Consequently, it was clear that the respondent had Lamprecht and its BIBI mark in mind " expected that some Swiss and other internet users interested in [Lamprecht]'s baby clothes would mistakenly arrive at the respondent's website".
 
Based on the foregoing, it appeared reasonable to expect that the panel would conclude that the three requirements had been satisfied and decide to order the transfer of the domain name to Lamprecht. However, the panel noted two "troubling" matters:
  • the length of time it had taken for Lamprecht to bring the complaint (13 years); and
  • the fact that there appeared to be numerous other owners of BIBI marks.
The panel noted that, although Lamprecht appeared to have "sat on its hand" for a very long time, numerous UDRP panels had noted that long delay in bringing a complaint did not, in and of itself, provide a defence to a claim under the UDRP. The panel thus considered that the crux of the matter was why Lamprecht should be preferred over other potential claimants to the domain name. Based on the evidence presented, the panel felt there was no reason why the domain name should be transferred to Lamprecht, as it appeared to have no stronger claim to the domain name than any of the other holders of BIBI marks.      
 
In light of this, it appeared to the panel that cancellation of the domain name was the appropriate remedy.
 
When a panel decides to cancel a domain name, this domain name becomes available for registration by anyone. The problem is that a respondent that was found guilty of bad-faith registration and use could be quicker than the complainant in submitting an application to register the domain name again, and this may be an unfair result for the complainant.
 
According to the panel in this case, if the respondent was to reacquire the domain name post-cancellation, Lamprecht would not be precluded from bringing a new complaint under the UDRP "which it might consider justified on the facts as they then stood", and the question of bad-faith registration would be assessed accordingly.
 
The decision reached by the panel in this case is somewhat unusual and could be regarded as an unfair outcome for Lamprecht, which has gone to the effort and cost of filing the complaint in order to protect its IP rights. From the point of view of Lamprecht, a more satisfactory and just outcome would have been the transfer of the domain name. Lamprecht would then have been free to defend its ownership of the domain name against any of the third parties that also have trademark rights in the term 'bibi'.
 
It will be interesting to see how this decision is used in the future by UDRP complainants, respondents and other panellists.
 
David Taylor, Hogan Lovells LLP, Paris

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