UDRP complainant fails to prove respondent's lack of legitimate interests

Lamprecht AG, a Swiss company manufacturing baby products, has lost a complaint filed with the World Intellectual Property Organization in relation to the domain name 'bibibaby.com' under the Uniform Domain Name Dispute Resolution Policy (UDRP) (Case D2009-1777, February 14 2010).
Lamprecht started operations in 1932 and owns various trademarks in the term 'bibi' in a number of jurisdictions. It also owns the domain names 'bibi.info', 'bibi-international.com', 'bibi.ch', 'bibi-uk.com' and 'bibi-baby.com'. Lamprecht discovered that an individual, Emily Dubberley, had registered the domain name 'bibibaby.com'. Lamprecht attempted on various occasions to communicate with Dubberley, but in vain. It thus decided to file a UDRP complaint.
In order to be successful in a UDRP procedure, a complainant must establish that:
  • the domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • the registrant has no rights or legitimate interests in the domain name; and
  • the domain name has been registered and is being used in bad faith. 
Shortly after being registered in 1992, the domain name 'bibibaby.com' was pointing to a dating website for bisexual women. The domain name then became inactive for more than seven years and, at the time of the dispute, was pointing to a holding page.
Lamprecht argued that it had used the trademark BIBI extensively in many countries in relation to baby products and that, as a consequence:
"its products [were] very well known and its various websites at domain names incorporating its mark [were] some of the first 'hits' that [came] up in undertaking an internet search for the mark or term BIBI".
Lamprecht thus submitted that the domain name was confusingly similar to its mark and the common word 'baby', which was descriptive of its products.
Dubberley argued that the term 'bibibaby':
  • was a play on words referring both to bisexuality and to the well-known song "Bye Bye Baby"; and
  • was not used in commerce by Lamprecht.
The panel considered that Lamprecht had trademark rights in the term 'bibi' and that, due to the prominence and distinctiveness of that term in the domain name at issue, the domain name was confusingly similar to Lamprecht's mark. Lamprecht had thus established the first element of the UDRP.
Turning to the second element, Lamprecht pointed out that:
  • it had never authorized the use of its mark by Dubberley; and
  • Dubberley was not commonly known by the domain name 'bibibaby.com'.
Dubberley said that she did have a legitimate interest in the domain name, as she had used it to set up a dating website for bisexual women. Screen captures from the Internet Archive Wayback Machine was attached to Dubberley's response, showing that in 2002 the website associated with the domain name provided a dating site for bisexual women. Dubberley further stated that the website had to be taken down because of bugs in the software, but that neither the dating website nor the holding page to which the domain name resolved at the time of the complaint had any association with Lamprecht or baby products similar to Lamprecht's goods.
The panel explained that, when assessing whether a respondent has rights or legitimate interests in a domain name, the onus is upon the complainant to demonstrate a prima facie case that the respondent has none. It is then for the respondent to provide evidence to rebut this case. In the present case, as Dubberley had provided a legitimate explanation for her initial registration of the domain name, the panel found that she had rebutted Lamprecht's claim. The panel thus found that Lamprecht had not succeeded in relation to the second element of the UDRP. Lamprecht's statement that it had never authorized the use of its mark by Dubberley did not pass muster as it was irrelevant.
In light of the panel's conclusions concerning the second element of the UDRP, it was not necessary to determine whether the domain name had been registered and was being used in bad faith, but the panel still decided to consider the third element.
With respect to the third element, Lamprecht argued that, as it had registered an international trademark in the term 'bibi' eight years prior to the registration of the domain name, it was "reasonable to infer that the respondent knew of [Lamprecht]'s BIBI mark and business, and acted purposefully and in bad faith in registering the domain name". Lamprecht further argued that, by not using the domain name for more than seven years, Dubberley had passively held the domain name in bad faith. Dubberley denied any allegation of bad faith and rather alleged that Lamprecht had committed reverse domain name hijacking because it brought the complaint further to its unsuccessful attempt to initiate contact with Dubberley by commercial means.
In the panel's view, "[Dubberley]'s website and business operated in a completely different field of activity from [Lamprecht]'s and at no time competed with the latter's business". Furthermore, in these circumstances, Dubberley could not have possibly sought to trade off any goodwill or association with Lamprecht's mark. Finally, there was no compelling evidence supporting Lamprecht's inference that Dubberley most likely was aware of the trademark and sought to exploit it illegitimately. The transfer of the domain name was thus denied. 
The panel did not find that there was reverse domain name hijacking on Lamprecht's part since, although "[Lamprecht] appear[ed] to have sat on its hands for a number of years", filing a complaint further to unsuccessful attempts to contact a respondent did not constitute reverse domain hijacking.
Although Lamprecht held strong prior rights in the trademark included in the domain name, it should have been more careful when asserting whether Dubberley had any legitimate rights or interests, especially as the parties operated in different fields of activity. The decision shows the need to set a strategy regarding domain names of importance to a business, as acting promptly to recover a domain name may avoid decisions against brand owners.
David Taylor, Lovells LLP, Paris

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