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Early Learning Centre Limited v. Kiansu Thoi [2005] GENDND 1454 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Early Learning Centre Limited v. Kiansu Thoi

Case No. D2005-0692

1. The Parties

The Complainant is Early Learning Centre Limited, Swindon, United Kingdom of Great Britain and Northern Ireland, represented by Urquhart-Dykes & Lord LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Kiansu Thoi, Hanoi, Vietnam.

2. The Domain Name and the Registrar

The disputed domain name <earlylearningcentre.com> (the “Domain Name”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2005. On June 30, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

The Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2005.

The Center appointed Warwick Smith as the sole panelist in this matter on August 4, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Because the Respondent did not submit any response, the Panel has considered whether the Center has discharged its obligation to “employ reasonably available means calculated to achieve actual notice [of the complaint]” to the Respondent. The Panel is satisfied that the Center has discharged that obligation. The Center sent a hard copy of the Complaint by courier to the Respondent’s address provided by the Registrar and listed in the Whois report for the Domain Name. The courier pack was returned marked “Incorrect address”, although it appears that the address used by the courier was the same as that provided in the Whois report and confirmed by the Registrar. Likewise, an attempt at an electronic transmission of the Complaint to “postmaster” email address was unsuccessful. No fax number was provided by the Respondent, and the Domain Name does not appear to resolve to any active website.

However the copy of the Complaint sent to the Respondent at the email address provided in the Whois report does appear to have been successfully transmitted; at least the Center did not receive any notice of failure of that transmission.

The Panel is satisfied that the Center sent the Complaint to each of the applicable addresses listed in paragraph 2(a) of the Rules, and therefore met the requirement of Paragraph 2(a) of the Rules that it “employ reasonably available means calculated to achieve actual notice” of the Complaint to the Respondent.

4. Factual Background

The Complainant

The Complainant is based in Swindon, United Kingdom of Great Britain and Northern Ireland. It is a retailer of toys, games, and playthings designed to promote child development. It says that it has been trading under the mark EARLY LEARNING CENTRE since 1974, and that it has a worldwide reputation for its retail operations. It was formerly known as John Menzies (UK) Limited, but changed its name to Early Learning Center Limited on October 1, 2001.

The Complainant registered the domain name <earlylearningcentre.co.uk> on September 30, 1996. It operates a website at that address, to which the domain name <elc.co.uk> also appears to resolve. The website contains the statement “Welcome to Early Learning Centre, the Online Shop for Children’s Toys and Gifts”. Children’s toys and gifts are advertised on the website under various categories, and there is a section showing that the Complainant has stores in some 16 countries outside the mainland of the United Kingdom of Great Britain and Northern Ireland. None of those stores appear to be in Vietnam.

The Complainant’s Trademarks

The Complainant has provided evidence that it is the registered proprietor of the word mark EARLY LEARNING CENTRE (the “mark”) in numerous countries, including the United Kingdom of Great Britain and Northern Ireland, Singapore, the European Community, Canada, and the United States of America. By way of example, the mark has been registered in the United Kingdom of Great Britain and Northern Ireland, with effect from April 23, 1996, in International Class 28 in respect of “toys, games and playthings; gymnastic and sporting articles; all included in Class 28”. In Singapore the mark has been registered in Class 28 with effect from December 12, 2003, with a similar specification. The European Community registration of the mark (in a number of international classes) dates from May 1999.

The Complainant has also registered the mark in various countries in other International Classes including Classes 9 and 16 – it is not necessary to describe the specifications or refer to those other countries. In the European Community, the Complainant has registered the mark in International Class 42 in respect of “crèche, childminding and baby sitting services”, but it appears from the Complaint (page 6) that the Complainant’s actual use of the mark has been limited to goods in International Classes 9, 16, 25, and 28, and the provision of services in class 35 (retail services).

The Respondent and the Domain Name

The Complainant says that the Respondent has made no attempt to use the Domain Name since it was registered on October 18, 2004. The Complainant produced a printout showing the results of its attempts (on June 28 and June 29, 2005) to log on to any website at the Domain Name. No website was found. The June 28, 2005, response on the computer search read: “We can’t find <earlylearningcentre.com>”. The same result was obtained when the search was run on June 29, 2005.

The Complainant produced a Google search on “Early Learning Centre”. There were apparently over 7,000,000 results, and the Complainant has produced the first 10 of those, none of which appear to relate to the Respondent.

There was no evidence of the Complainant making any attempt to contact the Respondent at the email address provided in the Whois information for the Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows:

1. The Domain Name is identical to the mark.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has made no attempt to use the Domain Name since it was registered on October 18, 2004, and to the best of the Complainant’s knowledge, the Respondent has never been known by the trading name “Early Learning Centre”, or traded under that name. The Domain Name was chosen by the Respondent because of the Complainant’s business and reputation, with a view to trading off the Complainant’s fame and reputation.

3. The Domain Name was registered and is being used in bad faith for the following reasons:

(i) The fact that the Respondent has not used the Domain Name and that there is no history of the Respondent trading under the name “Early Learning Centre”, illustrates that the Respondent does not have a legitimate interest in the Domain Name, or in any identical trademark.

(ii) It is therefore reasonable to assume that the Domain Name was chosen purely because of the fame of the Complainant and the Complainant’s reputation in the mark. If that was the reason for the Respondent registering the Domain Name, the Respondent’s purpose must have been to sell, rent, or otherwise transfer the Domain Name to the Complainant or a competitor of the Complainant, for valuable consideration – an act of bad faith.

(iii) Alternatively, the Domain Name was intended to be used for the Respondent’s own site, in an attempt to take Internet traffic from the Complainant’s site. That would be an act, without due cause, designed to take unfair advantage of, or be detrimental to, the Complainant’s reputation or the distinctive character of the mark. Under United Kingdom trademark law (section 10(3) of the Trade Marks Act 1994), that would be an act constituting trademark infringement.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

General Principles under the Policy and the Rules.

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 15(a) of the Rules requires the Panel to:

“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.

If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (by filing a response), as the Panel considers appropriate.

A. Identical or Confusingly Similar

The Complainant has clearly proved this part of the Complaint. It is the registered proprietor of the mark in a number of countries, and the Domain Name is clearly identical to the mark.

B. Rights or Legitimate Interests

Because the Panel takes the view that the Complaint must be dismissed because the Complainant has not proved that the Respondent registered and has used the Domain Name in bad faith, it is not necessary to rule on this part of the Complaint.

C. Registered and Used in Bad Faith

The first question is whether the Panel can reasonably infer that the Respondent was aware of the Complainant or the mark, when the Domain Name was registered in October 2004. If he was not aware of the Complainant or the mark at that time, he could not have acted in bad faith in registering the Domain Name.

The Respondent appears to reside in Hanoi, Vietnam. The mark is evidently not registered in that country, and there is no evidence of the Complainant selling its goods in Vietnam, or of its marketing activities extending to Vietnam.

Given those circumstances, the question is whether the following factors, considered in combination, are enough to justify a conclusion that the Respondent must have been aware of the Complainant or the mark when he registered the Domain Name:

(i) the unsubstantiated statement in the Complaint that the Complainant enjoys a “worldwide reputation in the retail of toys, games and playthings, specifically for the promotion of child development”;

(ii) the Complainant’s impressively large turnover figure for total sales in the period 1999–2004;

(iii) The fact that the Domain Name describes a facility or service which might be regarded as related to or associated with the Complainant’s primary field of activity (retailing toys);

(iv) the fact that the Domain Name consists of an English language expression registered in the “.com gtld” with a United States-based registrar; and

(v) the Respondent’s failure to file any Response to this Complaint.

Looking at each of these factors in turn:

(i) The unsubstantiated statement in the Complaint about the “worldwide reputation” in the retail of toys, games and playthings, must be read in its context – the Complaint also refers to the Complainant having “worldwide registered trademark rights” in the mark, but goes on to state that the mark is registered in only a limited number of countries, which do not include Vietnam. In those circumstances the Panel is not prepared to accept the “worldwide reputation” statement as evidence that the Complainant enjoyed that reputation in Vietnam.

(ii) The Complainant’s very substantial sales figures are equally unhelpful: there is no evidence of where the sales have been made, or anything to indicate that someone living in Hanoi would have been aware of Complainant or its products.

(iii) This is perhaps the strongest point in the Complainant’s favor, but it has to be said that the mark is a relatively weak one, being essentially descriptive of ordinary crèche or other pre-school child-minding facilities which offer some education element. The Complainant’s case would have been very much stronger if the mark had consisted of an invented word, or a particularly distinctive or unusual expression. In fact, the Domain Name is exactly the kind of name one might choose to describe a pre-school facility, without any knowledge of the Complainant or the mark.

(iv) It might perhaps be argued that anyone registering an English language domain name in the “.com gtld”, should be presumed to have checked the register of the United States Patent and Trademark Office to see whether anyone had existing trademark rights in respect of the proposed domain name, and should therefore be deemed to have known of any trademark on that register.

Such a theory of “constructive notice” of United States registered trade marks has been upheld in some WIPO panel decisions, but generally only in circumstances where both complainant and defendant reside in (or have substantial connections with) the United States of America. See for example The Sportsmen’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305, where the panel accepted that “such a concept may be generally valid, especially in the situation when the Complainant and the Registrant of the disputed domain name are located in the US.” See also Kate Spade, LLC v. Darmstadter Designs WIPO Case No. D2001-1384, where the panel said: “Since both parties are from the United States and since the trademark application and registration were made with the US PTO, it is fair to apply United States principles of constructive notice to this situation: Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.”

In this case, there is no evidence of the Respondent having any connection with the United States of America, or with any other country where the mark is registered.

(v) On the issue of a respondent’s failure to file any response, the Panel respectfully agrees with and adopts the view of the panel in Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, where the learned Panelist said:

“Panelists’ inferring factual or legal conclusions from complainants’ unsupported allegations coupled with no response are occasionally necessary (and appropriate), because matters involving a respondent’s motive, intent, purpose, and other subjective factors determinative under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct proof, at least without the discovery and cross-examination that are unavailable to a complainant or a panelist in proceedings under the Policy. A complainant must often prove such matters with a prima facie showing that, when unchallenged, a panelist can accept.

In contrast, renown or goodwill of a mark is an objective matter entirely within the knowledge of and documentation available to a complainant. Every plaintiff in an infringement action must prove as an affirmative aspect of his case that his mark has commercial recognition at the date of infringement; a complainant under the Policy must do so to show that the domain name was registered in bad faith. In this proceeding such proof from 2002 – if it exists – could have been found and submitted by Complainant without the need to obtain anything from Respondent. Compare Pierce Brosnan v Network Operations Center, supra (providing statistics on the number of motion pictures complainant starred in as well as the total box office sales from those motion pictures). In these circumstances no favorable inference is justified from a naked allegation of a legal conclusion, even in the absence of a denial from Respondent.”

In this case, it was open to the Complainant to produce evidence of the renown or goodwill of the mark in Vietnam, but it has not done so. Nor has the Complainant produced evidence of the renown or goodwill of the mark in any other country with which the Respondent has some proven connection, (The only information the Panel has been given about the Respondent’s domicile is the Whois information showing the Hanoi, Vietnam address. Reference in the Complaint to a Google search on the Respondent’s name was not helpful, as the result of the Google search itself was not attached, and the Complainant did not say what the result was.)

In the circumstances discussed at subparagraphs (i) to (v) above, the Panel is left in some doubt as to whether the Respondent was aware of the mark when he registered the Domain Name. However, it is not necessary to decide the “bad faith” issue solely on the basis of insufficient proof of the Respondent’s knowledge of the mark. There is another issue to be considered.

If the Respondent was aware of the mark when he registered the Domain Name, the Complainant faces the difficulty that the Domain Name has not been used at all.

A respondent’s “inaction” can, in certain circumstances, constitute bad faith registration and use under paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.) But those circumstances are limited.

The question of when inactivity by a respondent is to be regarded as ‘bad faith use”, is a question which cannot be answered in the abstract, and can only be dealt with in respect of the facts of a specific case. In the Telstra case, the Panel took into account the strength of the complainant’s trademark, the absence of any evidence of actual or contemplated good faith use of the domain name by the respondent, the fact that the respondent had concealed his true identity by operating under a name that was not his own (and had provided false contact details in breach of his registration agreement), and the fact that the Complainant’s mark consisted of an invented word which was famous in the country where both complainant and respondent were domiciled. The panel in Telstra went on to say: “… taking into account all of the above, it is not possible to conceive of any plausible active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under the trademark law.” The panel went on to conclude that the domain name was being used in bad faith.

The requirement (for a finding of “passive” bad faith registration and use) that there be no plausible way in which the domain name might be used legitimately, was noted by a separate WIPO panel in the later panel decision of Telstra Corporation Limited v. David Whittle, WIPO Case No. D2001-0434. See also Alberto – Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757, where the panel noted: “The Complainant has provided no evidence that its mark is so well known that any registration (without use) of a domain name cannot help but lead to the conclusion that the Respondent registered with mala fides.”

In this case, the simple descriptive nature of the Domain Name significantly affects the critical question of whether the Panel can conceive of any plausible actual or contemplated use of the Domain Name which would not be illegitimate. In the end, the Panel does not believe it can safely conclude that no legitimate use is conceivable. Expatriate English-speaking communities in cities such as Hanoi might well be interested in pre-school facilities for small children, and there may be other countries where the English language is commonly spoken and the Complainant has no trademark or service mark rights in the expression “Early Learning Centre”. Nor is the Panel satisfied, on the evidence produced, that use of that expression in connection with a creche or other pre-school facility would necessarily infringe the Complainant’s rights in the mark in jurisdictions where the mark is registered, but only in respect of toys, playthings etc. (or similar goods), and not in respect of childminding or pre-school education services. (Infringement in such a jurisdiction might well require a finding that use of “Early Learning Centre” in connection with such services would be likely to cause deception or confusion, and there is just not enough evidence for the Panel to determine that issue in this administrative proceeding.) The onus of proof remains on the Complainant, and the Panel is not satisfied that it can rule out the possibility of the Respondent making some legitimate use of the Domain Name.

In its submissions, the Complainant relied on the fact that the Domain Name has not yet been used, and that there is no history of the Respondent having traded under the name “Early Learning Centre”. First, this is not a case of a domain name having been unused for years – this Complaint was filed approximately 8½ months after the Domain Name was registered, and that period is too short to provide much assistance for the Complainant’s argument. The same point applies equally to the apparent absence of any evidence of trading by the Respondent under the name “Early Learning Centre” – it is not inconceivable that a legitimate trader might take eight months after registration of a domain name to get a website operating at that domain name. The Complainant submitted that those matters make it “reasonable to assume” that the Domain Name was chosen purely because of the fame of the Complainant and its reputation in the mark, but the Panel finds that the evidence is insufficient to justify that assumption.

Taking all these matters into account, the Panel is left in too much doubt for it to uphold this complaint. The Respondent may have been aware of the mark, and may have registered the Domain Name with the bad faith intention of trading off the mark’s reputation in other jurisdictions, or attempting to sell the Domain Name at a profit to the Complainant or to one of its competitors. But the weak nature of the mark, the absence of proof that the Complainant or the mark has any reputation in the Respondent’s country, and the fact that only eight and a half months have passed since the Domain Name was registered (too short a period to justify any inference adverse to the Respondent), combine to persuade the Panel that a finding of bad faith would be inappropriate, even in the absence of a Response.

In summary, the Panel finds that the Complainant has failed to prove this part of the Complaint, for a combination of the following reasons:

1. The Respondent appears to be domiciled in Vietnam. There is no evidence of the Complainant’s mark being registered in that country, and insufficient evidence of its advertising or general reputation extending to that country.

2. The Panel is not prepared to apply any doctrine of “constructive knowledge” of the mark based on the registration of the mark in countries with which the Respondent has no proven connection.

3. Although the Complainant’s mark has no doubt become distinctive of certain goods and services supplied by it in some jurisdictions, the mark is equally capable of being purely descriptive of a common enough service, namely the provision of education facilities for pre-school or other young children.

4. Although the Respondent has failed to submit any Response, and the Panel is entitled to draw such inferences from that failure as it may consider appropriate, the existence or otherwise of a reputation and goodwill in the mark in Vietnam was a matter clearly within the knowledge of the Complainant. The Panel respectfully agrees with the Panelist in the Brooke Bollea case, that panels deciding cases under the Policy should not normally treat a respondent’s failure to respond to the complaint as proof of such matters.

5. The Domain Name has not so far been used, and the period of approximately eight and a half months between the registration of the Domain Name and the commencement of this proceeding is too short for the Panel to draw any useful inferences about the Respondent’s intentions for the use of the Domain Name.

6. There are none of the other common indicia of bad faith registration and use, such as false names or contact information provided in the Whois registration details. (While the Respondent’s physical address provided in the Whois details for the Domain Name appears to have changed, that is not enough on its own to indicate any bad faith desire on the part of the Respondent to avoid contact. If that had been his intention one might have expected him to provide a fictitious email address, but he appears not to have done so.)

7. Having regard to the factors listed 3, 5, and 6 above, the Panel is unable to say that any use of the Domain Name by the Respondent would necessarily be unlawful or otherwise male fide. Accordingly, this is not a case for a finding of bad faith registration and use by passive holding of a domain name under the principles discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel concludes that the Complainant has failed to prove this part of the Complaint, and the Complaint must therefore be dismissed.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick Smith
Sole Panelist

Dated: August 12, 2005