UDRP complaint for EuroBaby.com denied at WIPO – John Berryhill doesn’t ask for RDNH

This could have been a Reverse Domain Name Hijacking (RDNH) case but it seems that John Berryhill didn’t ask for a RDNH finding. He might have thought that the two pending CTM applications that were filed in May 2012 would have made the Panel to dismiss a RDNH claim. Or maybe he didn’t ask for a RDNH ruling because it brings no consequences to the Complainant. But as the Panel was uncertain if the Complaint failed or not on the first element of the UDRP (Identical or Confusingly Similar) this could have been a possible RDNH case.

The Complaint was filed with the WIPO Arbitration and Mediation Center on October 1, 2012. The Complainant was Liam Sutcliffe, Eurocycles & Eurobaby and Eurotrek Group Limited of Dublin, Ireland and the Respondent was Marchex Sales, Inc – Brendhan Hight of Las Vegas, Nevada, United States of America, represented by John Berryhill. The Center appointed Andrew Brown QC, James Bridgeman and Richard G. Lyon as panelists in this matter on November 29, 2012.

The Respondent registered the disputed domain name EuroBaby.com on September 26, 2000.

Complainant owns the domain name eurocycles.com and uses it as it’s official website for selling bicycles. Eurocycle.com was registered in 1997 and is owned by a third party.

Liam Sutcliffe applied as a physical person for two (EU) Community Trade Marks (CTM): “EUROCYCLES EUROBABY” as a word trademark and “EUROBABY” as figurative trademark. The filling date is 15/05/2012 and of course the trademarks are not yet registered. The trademarks were published for opposition on 09/08/2012. There are no Irish trademarks registered for “eurobaby” or any trademarks by Liam Sutcliffe in Ireland.

The Complainants, who are all based in Dublin, Ireland, claim rights in both the registered and unregistered trademarks EUROBABY EUROCYCLES and EUROBABY in respect of, inter alia, bicycles, car seats, children’s car seats, prams, strollers (and the like) and baby clothing. The Complainants’ Eurotrek Group Limited and Eurocycles & Eurobaby claim to have been trading in Ireland since 1999/2000.

The Respondent claims to be a successor through reorganization to MDNH Inc and is a wholly-owned subsidiary of Marchex Inc, a publicly-traded US corporation. It claims, without evidentiary support, to have acquired the disputed domain name as part of its acquisition of a large number of domain names from the Ultimate Search portfolio “in late 2004”. No more precise date has been provided by either party. The Panel treats this as the relevant date for the purpose of ascertaining whether the disputed domain name was registered in bad faith.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

[…] As the Complaint fails under another Policy head, the Panel need not determine whether the Complainants have satisfied paragraph 4(a)(i). The Panel does note, however, that the Complainants’ evidence of the extent of their claimed unregistered trademark rights, even in 2012, lacks detail and corroboration.

B. Rights or Legitimate Interests

Because of its finding on bad faith registration in the next section of this decision, the Panel need not consider this question.

C. Registered and Used in Bad Faith

The Complainants have not made out an essential aspect of this third requirement, i.e. that as at the relevant date in late 2004 when the Respondent claims to have acquired the disputed domain name as part of a portfolio of other domain names, the Respondent registered the disputed domain name in its name in bad faith.

To establish registration in bad faith in 2004, the Complainants must demonstrate trademark rights as of that date. In order for the Panel to make a finding that the Complainants have unregistered trademark rights in EUROBABY prior to late 2004, it is incumbent on the Complainants to provide corroborative or supporting evidence showing use and advertising of the mark such that reputation and goodwill has been created. The Respondent obviously could not know of a mark that did not then exist. Although the Complainants have asserted that they have spent considerable time, effort and money advertising or promoting their goods, there is no evidence as to what sums of money have been spent, nor even a single copy of an advertisement. There is no evidence that, as at the relevant date, the Respondent (an entity based in the United States) knew of or had notice of the Complainants or any reputation or goodwill in their unregistered trademark EUROBABY.

The Complainants have not provided any evidence corroborating their bare assertion claiming use of the unregistered trademark EUROBABY in Ireland prior to late 2004 sufficient to enable the Panel to make a finding that the Complainants enjoyed a significant reputation and goodwill in EUROBABY. Further, there is no evidence that, even if the Complainants had achieved a reputation and goodwill in that unregistered trademark, that this reputation was ever likely to have come to the notice of the Respondent so as to render its acquisition and registration of the disputed domain name in late 2004 to be a registration in bad faith.

As a result of this finding, the Panel need not consider the question whether the disputed domain name is being used in bad faith.

Decision

So the complaint failed at the third element of the UDRP. The Panel didn’t decide on the other two elements. The Panel dismissed the Complaint.