The domain name NaturallyBorn.com was saved in a UDRP today
The domain holder was represented by John Berryhill
Here are the relevant facts and findings by the three member panel:
Complainant made the following contentions.
1. Complainant established the website <naturallyborn.net> in December 2010. This website provides information about natural methods of child birthing and breastfeeding, as well as online reviews of natural childbirth and breastfeeding support providers.
2. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the NATURALLY BORN mark (Reg. No. 4,205,152 filed January 18, 2012; registered September 11, 2012).
3. Respondent’s <naturallyborn.com> domain name is identical to Complainant’s NATURALLY BORN mark.
Respondent made the following contentions.
1. Respondent registered the disputed domain name two years before Complainant’s registration date for the NATURALLY BORN mark and two years before Complainant established any common law rights in the mark.
2. Respondent established rights and legitimate interests in the disputed domain name by using the resolving website to publish a blog describing the pregnancy and childcare experiences of Respondent’s wife.
3. Respondent’s use of the disputed domain name is entirely noncommercial and does not compete with Complainant’s business.
4. Complainant has admitted that Respondent acquired the disputed domain name before Complainant had any rights in the NATURALLY BORN mark, thus precluding a finding of bad faith registration.
FINDINGS
· Complainant established the website <naturallyborn.net> in December 2010 to provide information about natural methods of child birthing and breastfeeding.
· Complainant filed for the registration of the NATURALLY BORN mark on January 18, 2012, and the mark was registered on September 11, 2012.
· Respondent registered the <naturallyborn.com> domain name on November 18, 2010.
· Respondent currently uses the <naturallyborn.com> domain name to promote its own “Baby Marohn” blog.
· The parties have been involved in negotiations regarding the sale of the <naturallyborn.com> domain name, during which Respondent offered to sell the domain name for US$ 2,000.
Respondent’s registration of the disputed domain name predates Complainant’s registration of the mark. Therefore, an analysis of trademark infringement is not relevant to this Panel’s decision under the Policy.
Complainant has demonstrated that it owns a registered trademark for the term NATURALLY BORN.
Evidence of the registration of a trademark with the USPTO is sufficient to establish rights in the mark.
To satisfy ¶ 4(a)(i), the disputed domain must be identical or confusingly similar to Complainant’s mark. Here, the only differences between Complainant’s registered mark and the disputed domain name are (1) the elimination of a space and (2) the addition of a generic, top-level domain. These differences are insufficient to distinguish the registered mark from the disputed domain name.
Respondent repeatedly notes that its registration of <naturallyborn.com> predates Complainant’s registration of the mark, but such an inquiry is irrelevant to the “identical or confusingly similar” analysis, and is addressed under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. The Panel thus concludes that Complainant has satisfied the first element of the Policy.…
