The Early Learning Centre is a well-known toy retailer in the UK
with registered trade marks in the words “Early Learning Centre”
and shops in 16 countries outside the UK.
It filed its complaint against Hanoi resident Kiansu Thoi in
June, only eight and a half months after Kiansu had registered the
domain. Kiansu had made no use of the name and did not respond to
the complaint, but panellist Warwick Smith of the World
Intellectual Property Organisation (WIPO) still found in his
favour.
The crucial factor, said Smith, was that the Early Learning
Centre had not proved bad faith on the part of Kiansu. The Early
Learning Centre had failed to show that Kiansu was aware of either
the Early Learning Centre or its registered trade mark, or that the
mark was generally well-known in Vietnam.
The argument that the domain name describes a facility or
service that might be related to the retailing of toys was not
relevant either. According to Smith:
“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.”
Nor could the company argue that a person registering an English
language .com domain name should be presumed to have checked the US
trade mark register and so be aware of the mark, in Smith's
opinion. Such an argument only really applies where both sides of a
dispute reside in or have substantial connections with the US, he
said.
Even Kiansu’s failures to respond to the complaint, or to carry
out any activity in relation to the domain, were not conclusive
proof of bad faith.
According to the panellist, inactivity by a domain name holder
can be evidence of bad faith in a limited number of circumstances,
but has to be considered in the light of the facts of the
particular case. He explained:
“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 trade mark or service mark rights
in the expression 'Early Learning Centre'.”
The length of time between registration and complaint was also
relevant. Eight and a half months is “too short to provide much
assistance” to the Early Learning Centre, said the panellist. The
domain had not been lying unused for years, and it was possible
that it could take over eight months for a business or website to
be set up and start trading.
Smith concluded that he was in too much doubt to uphold the
complaint.
“A finding of bad faith would be inappropriate, even in the
absence of a Response,” he said, and he refused to transfer the
domain.
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