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.
