DECISION

 

Baby List, Inc. v. Domain Admin / TotalDomain Privacy Ltd

Claim Number: FA2407002107108

 

PARTIES

Complainant is Baby List, Inc. ("Complainant"), represented by Matthew Passmore of Cobalt LLP, California, USA. Respondent is Domain Admin / TotalDomain Privacy Ltd ("Respondent"), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <babyllist.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 19, 2024; Forum received payment on July 19, 2024.

 

On July 20, 2024, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <babyllist.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2024 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@babyllist.com. Also on July 22, 2024, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant is a company based in California, operating a website located at <babylist.com>. Complainant owns the trademark BABYLIST for use in connection with online retail store services featuring maternity goods and products for infants and children, and related products and services. Complainant owns numerous trademark registrations and common law rights for the BABYLIST trademark in the United States and internationally.

 

Respondent registered the domain name <babyllist.com> on January 3, 2017, roughly 6 years after Complainant first began using the BABYLIST trade name and the BABYLIST trademarks.

 

Respondent's <babyllist.com> domain name is confusingly similar and legally

identical to Complainant's BABYLIST trademarks and Complainant's own <babylist.com> domain name. The disputed domain name contains the BABYLIST trademark in its entirety, and merely misspells "babylist" by adding an extraneous letter "l" in the word "list." 

 

Respondent has no rights or legitimate interests in the term or trademark BABYLIST or the domain name at issue here.  WHOIS information for the domain name shows Respondent's name is hidden. Relevant UDRP decisions have found that when a registrant's information is hidden, it may be inferred that Respondent is not commonly known by the trademark.

 

Respondent is not affiliated with Complainant, nor has Respondent ever been licensed or permitted to use Complainant's BABYLIST trademarks or any domain names incorporating this trademark.

 

Furthermore, Respondent not making a bona fide offering of goods or services. Respondent, in fact, is advertising links to other baby registry services, which offer baby clothes and products for new moms, identical to Complainant's goods. Such activity does not confer legitimate rights in a domain pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Respondent registered and is using the domain name in bad faith. Respondent registered the domain <babyllist.com> and used it to promote links to baby registry services that directly compete with Complainant's services, all in an effort to capitalize on hurried or clumsy Internet users who accidentally misspell Complainant's legitimate <babylist.com> domain name by adding a letter.

 

Furthermore, given that Respondent appears to be using the domain name to promote services identical to Complainant's services, Respondent makes clear it had actual (and constructive) knowledge of the BABYLIST trademarks prior to registering the Domain Name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 5,867,842 BABYLIST (word), registered September 24, 2019 for services in Intl Class 35;

No. 6,847,857 BABYLIST (word), registered September 13, 2022 for goods and services in Intl Classes 9 and 41;

No. 6,726,311 BABYLIST (word), registered May 24, 2022 for services in Intl Classes 35, 41 and 45;

No. 5,867,857 BABYLIST (word), registered September 24, 2019 for services in Intl Class 35.

 

The disputed domain name <babyllist.com> was initially registered on January 3, 2017.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The Complainant claims rights to the BABYLIST trademark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the BABYLIST trademarks (e.g., Reg. No. 5,867,842, registered September 24, 2019). Therefore, the Panel finds that Complainant has rights in the BABYLIST trademark per Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name is confusingly similar to Complainant's BABYLIST trademarks as the disputed domain name contains the BABYLIST trademark in its entirety, and merely misspells "babylist" by adding an extraneous letter "l" in the word "list." 

 

Misspelling of a trademark and the addition of a gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("The [<morganstonley.com> and <morganstainley.com>] "Domain Names are confusingly similar to Complainant's marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain ("gTLD") '.com.'"); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."). 

 

As noted, the disputed domain name incorporates a misspelling of the trademark by adding an extra letter "l". Therefore, the Panel find the disputed domain name is confusingly similar to Complainant's BABYLIST trademark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

Complainant argues that Respondent does not have rights or legitimate interests in the <babyllist.com> domain name, because Respondent is not affiliated with Complainant, nor has Respondent ever been licensed or permitted to use Complainant's BABYLIST trademarks or any domain names incorporating the trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant's trademark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as "Domain Admin / TotalDomain Privacy Ltd". Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

As shown by Complainant, Respondent is not using the domain name in connection with a bona fide offering of goods or services. Rather, <babyllist.com> resolves to a parked web page with sponsored, click-through links. Such use can never be the base of legitimate interest.

 

Thus, the Panel find that Respondent does not provide a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that the disputed domain name is registered in bad faith, for the goal to "capitalize on hurried or clumsy Internet users who accidentally misspell Complainant's legitimate <babylist.com> domain name by adding a letter".

 

However, the Panel notes that the disputed domain name <babyllist.com> was initially registered on January 3, 2017, whereas the US trademark registration of BABYLIST first come into force almost three years later - on September 24, 2019. Having said that, it is also noted that the said initial US trademark registration is claimed to have been commercially used since April 2, 2011 – almost six years before the disputed domain name. Although no further evidence of use from that period is provided by the Complainant, the Respondent has failed to use the opportunity to argue in support of Respondent's prior rights. This, in connection with the fact that the disputed domain name is obviously used to take advantage of the similarities between <babyllist.com> and the trademark BABYLIST is a clear indication that at least the Respondent had clear knowledge of the Complainant's unregistered trademark rights at the time Respondent registered the disputed domain name.

 

Registration and use of a disputed domain name with the intent to attract and divert Internet users to the corresponding websites for its own benefit and commercial gain by creating a likelihood of confusion with Complainant's trademark is a clear indication of bad faith. See Google LLC v. Nanci Nette / Name Management Group / Nette, Nanci, FA 1970614 (Forum Dec. 7, 2021) ("The Panel recalls [c]omplainant's screenshots of the disputed domain names' resolving websites, which offered pay-per-click links and/or redirects to unrelated third-parties. Therefore, as the Panel agrees, it finds [r]espondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).").

 

The same situation is found in the present case, and the Panel therefore agrees with Complainant's conclusion, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <babyllist.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Petter Rindforth, Panelist

Dated: August 27, 2024