In a UDRP dispute resolved by the panel on June 29, 2011, one thing is clear: Babies can have the real 411. Babies411.com, that is…
Denise Fields d/b/a Windsor Peak Press (“Fields”) joined by her husband, both located in Colorado and the owner of baby411.com, brought a UDRP action against Babies411 LLC (“LLC”). Fields is the co-author of a series of books that included the term “411″ in the title (including the book, Baby 411).
According to the UDRP action, “The Complaint states that “411” is used in these book titles because it suggests “information” to North American readers, since that number has long been used for telephone directory information services across the United States and Canada.”
Oops. As a complainant, you don’t want to go around saying that the alleged unique common element of that you’re relying in is really not that unique.
Another oops… In the various ’411′ books, Fields failed to accompany the claimed mark “411″ by the “TM” symbol that would have at least asserted her unregistered trademark rights.
LLC’s position was that Fields had no claim for common law trademark protection. LLC also denied that it had prior knowledge of Fields or the various 411 books, and it also denied that it had any “intent to trade on the Complainants’ reputation.”
LLC asserted it only claim of legitimacy in its interest in domain name, babies411.com as it has a business known by that same name.
Also disclosed by LLC is that there is a pending trademark dispute between Fields and LLC, which is before the USPTO, therefore the UDRP should not be used to resolve the rights questions between the parties. Apparently the Panel disagreed because it did reach a conclusion.
The Panel held that
On balance, it appears more likely that the Domain Name was chosen for its generic value for a parenting website with “the 411” (information) about babies, rather than for the possibility of misleading Internet users seeking information about the Complainants’ Baby 411books. The fact that visitors to the Respondent’s website can find and purchase books about parenting, including the Complainants’, through Amazon.com links does not suffice to establish that the Respondent targeted the Complainants’ unregistered mark in selecting and using the Domain Name.
The burden of proof on this issue, as with each of the elements of the Complaint, is on the Complainant. In a UDRP proceeding, there is no opportunity to conduct discovery, cross-examine witnesses, or assess their demeanor. On the available record, the Panel is presented with a credible, certified Response denying prior knowledge of the Complainants’ asserted mark, accompanied by ample evidence of the generic value and use of the Domain Name. Based on that record, the Panel finds that neither the second nor third elements of the Complaint have been established.
The Panel denied the Complaint.
Don’t overlook the very interesting comment about usage of the disputed domain, when the Panel said:
The fact that visitors to the Respondent’s website can find and purchase books about parenting, including the Complainants’, through Amazon.com links does not suffice to establish that the Respondent targeted the Complainants’ unregistered mark in selecting and using the Domain Name.
That comment will be very important to other domain name owners who register a name with a legitimate purpose in mind, then face a UDRP for post-registration linking that would otherwise appear to be for trading off of the unregistered mark.
Here is a link to the full decision:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0688
