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									                   WIPO Arbitration and Mediation Center

                          ADMINISTRATIVE PANEL DECISION

     Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited
        Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc

                                      Case No. D2007-0795




1.     The Parties

       The Complainants are Bright Horizons Family Solutions Inc. of Watertown,
       Massachusetts, United States of America, Allmont Limited, of Dublin, Ireland, Bright
       Horizons Limited Partnership, of Watertown, Massachusetts, United States of
       America, and Bright Horizons Family Solutions Ltd, of Markham, Canada, all
       represented by F.R. Kelly & Co., Ireland.

       The Respondent is Vertical Axis, Inc, of Yongin-si, Gyeonggi-do, Republic of Korea,
       represented by ESQwire.com Law Firm, United States of America.


2.     The Domain Name and Registrar

       The disputed domain name <brighthorizon.com> (the “Domain Name”) is registered
       with Nameview Inc. (the “Registrar”).


3.     Procedural History

       The Complaint was filed with the WIPO Arbitration and Mediation Center (the
       “Center”) by email on May 31, 2007 and in hardcopy on June 5, 2007. The original
       Complaint identified the respondent as “BRIGHTHORIZON.COM c/o Whois Identity
       Shield” in accordance with the publicly available information on the Registrar’s Whois
       database.

       The Center transmitted its request for registrar verification to the Registrar by email on
       June 1, 2007. The Registrar responded by email on June 13, 2007, confirming that it
       had received a copy of the Complaint, that it was the Registrar of the Domain Name,
       that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the
       registration, that the Domain Name would remain locked during this proceeding, and
       that the registration agreement was in English and contained a submission to the
       jurisdiction of the courts at the location of its principal office. The Registrar stated that

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     the respondent as named in the original Complaint was not the registrant and provided
     the full contact details in respect of the Domain Name on its Whois database,
     identifying the Respondent.

     The Center informed the Complainants on June 15, 2007, and again in a follow-up
     email on July 12, 2007, that the Registrar had identified the Respondent as the actual
     registrant of the Domain Name, and invited them to amend the Complaint accordingly.
     The Complainants submitted by email on July 17, 2007, and in hard copy on
     July 19, 2007, an amended Complaint which identified the Respondent and made
     further submissions based on its identity.

     The Center verified that the Complaint together with the amendment to the Complaint
     satisfied the formal requirements of 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”).

     In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
     Respondent of the Complaint, and the proceedings commenced July 20, 2007. In
     accordance with the Rules, paragraph 5(a), the due date for Response was
     August 9, 2007. The Response was filed with the Center by email on August 7, 2007
     and in hardcopy on August 14, 2007.

     The Respondent elected in the Response to have the dispute submitted to a three-
     member Panel in accordance with paragraph 5(b)(iv) of the Rules. On
     September 11, 2007, the Center notified the parties of the appointment of the Hon.
     Carolyn Marks Johnson and David E. Sorkin as Panelists. On September 28, 2007, the
     Center appointed Jonathan Turner as the Presiding Panelist. Each member of 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. The Panel finds that it was correctly constituted.


4.   Procedural Rulings

     As mentioned above, the amended Complaint not only corrects the identification of the
     Respondent, but also contains additional submissions based on the identity of the
     Respondent. Paragraph 4(b) of the Rules requires a complainant to correct an
     administrative deficiency notified by a dispute-resolution service provider, but does not
     permit a complainant to make additional submissions.

     Indeed, under the Policy and the Rules, parties have no right to submit additional
     arguments or evidence. On the other hand, the Panel may, in its sole discretion, request
     further statements or documents from the parties under paragraph 10 of the Rules; and
     a party’s request to make an additional submission may be regarded as an invitation to
     the Panel to exercise this discretion. Additional submissions have been admitted in
     exceptional cases, such as where the party could not reasonably have known the
     existence of the further material when it made its primary submission.

     The Panel accepts that the Complainants could not reasonably have known of the
     further material previously since they could not identify the registrant of the Domain
     Name. Furthermore, the admission of these submissions does not occasion any
     prejudice to the efficient conduct of the proceeding, since it has not given rise to any
     delay or any need for a supplementary submission by the Respondent. In the
     circumstances, the Panel admits the additional submissions in the amended Complaint

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     pursuant to paragraph 10 of the Rules.


5.   Factual Background

     The first Complainant is the parent of the other Complainants.

     The Complainants have registered BRIGHT HORIZONS as a trademark in the United
     States of America and the European Community in relation to books and other printed
     materials, stationery, educational services for pre-school children and the provision of
     nurseries. They have also registered BRIGHT HORIZONS FAMILY SOLUTIONS
     and device marks including the words BRIGHT HORIZONS in various countries in
     relation to these goods and services.

     The Domain Name resolves to a website displaying sponsored links to commercial
     websites. Prior to May 24, 2006, the website prominently displayed names used by the
     Complainants such as “Bright Horizons Daycare”, “Bright Horizons Child Care
     Center”, “Bright Horizon Family Solutions” and “Bright Horizons Nursery”. On
     May 24, 2006, the Complainants sent the Respondent a “cease and desist” letter.
     Shortly after this date, these references were removed from the website.


6.   Parties’ Contentions

     A.    Complainants

     Identical or Confusingly Similar to Mark in which Complainant has Rights

     The Complainants submit that the Domain Name is identical or confusingly similar to
     their registered marks, in that the only differences are the omission of the letter “s” and
     the addition of gTLD suffix.

     Respondent’s Rights or Legitimate Interests

     The Complainants contend that the Respondent does not have rights or legitimate
     interests in the Domain Name. They argue that the virtual identity between the Domain
     Name and their marks preclude any possibility of preparation for a bona fide offering of
     goods or services. Further, the Respondent has not been commonly known by the
     Domain Name and has not been authorized by the Complainants to use the mark.

     According to the Complainants, the parking of the domain name at a website displaying
     sponsored links is not a legitimate non-commercial or fair use. The Complainants point
     out that when a search is conducted on the website for their main services, childcare,
     sponsored links to the Complainant’s competitors appear.

     Registered and Used in Bad Faith

     The Complainants allege that the Respondent registered and is using the Domain Name
     in bad faith. They maintain that by registering the Domain Name, the Respondent is
     preventing the Complainant from reflecting its mark in a corresponding Domain Name.
     They also contend that the Respondent seeks to disrupt their business by attracting their
     potential customers and creating difficulties for existing customers who may stumble
     on the Respondent’s website when seeking the Complainants’. The Complainants say
     that the Respondent has intentionally attempted to attract Internet users to its website

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for commercial gain, in the form of click-through commissions, by creating a likelihood
of confusion with their marks.

The Complainants also cite the Respondent’s use of a privacy service as evidence of
bad faith. Having identified the Respondent, they point out that it has been held to have
registered and used domain names in bad faith in a number of other cases. They submit
that the registration of these domain names indicates a pattern of conduct of registering
domain names with a view to preventing the owners of corresponding marks from
reflecting them in corresponding domain names and selling the domain names to the
owners for consideration in excess of expenses.

The Complainants draw attention to the fact that before they sent their “cease and
desist” letter, the Respondent’s website displayed various of their marks, indicating that
the Respondent knew of the Complainants when it registered the Domain Name. The
Complainants submit that the Respondent’s failure to reply to the “cease and desist”
letter is a further indication of bad faith.

B.    Respondent

Identical or Confusingly Similar to Mark in which Complainant has Rights

The Respondent does not appear to dispute that the Complainants have rights in the
mark BRIGHT HORIZONS, but submits that the Domain Name is not confusingly
similar to it, on the ground that small differences suffice to distinguish descriptive
marks.

Respondent’s Rights or Legitimate Interests

The Respondent contends that the registration of the Domain Name ipso facto
establishes a legitimate interest since it contains common descriptive terms. The
Respondent further contends that its legitimate interest is bolstered by its use of the
Domain Name to post generic advertising links.

Registered and Used in Bad Faith

The Respondent avers that it had no knowledge of the Complainant’s mark when it
registered the Domain Name, and that the Respondent registered it on account of its
descriptive content after the previous registrant had failed to renew it. These averments
are substantiated by a signed declaration of a manager of the Respondent.

According to the Respondent, the fact that the Domain Name had not been renewed by
the previous registrant was an indication that it had been abandoned and could be
registered in good faith.

The Respondent submits that the findings against it in other domain name disputes are
irrelevant, but that if they are taken into account, findings in its favour in a greater
number of cases, where it had registered descriptive domain names in good faith,
should also be taken into account.

The Respondent adds that failure to respond to a “cease and desist” letter is not
evidence of bad faith.




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7.   Discussion and Findings

     In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the
     Complainants must prove (A) that the Domain Name is identical or confusingly similar
     to a mark in which they have rights, (B) that the Respondent has no rights or legitimate
     interests in respect of the Domain Name, and (C) that the Domain Name was registered
     and is being used in bad faith. These requirements will be considered in turn.

     A.    Identical or Confusingly Similar to Mark in which Complainants have
           Rights

     It is clear and not apparently disputed that the Complainants have registered rights in
     the mark BRIGHT HORIZONS.

     It is necessary to consider whether the Domain Name is confusingly similar to this
     mark. As the Respondent observes, small differences often suffice to distinguish
     descriptive marks. However, in this case, the mark is not wholly descriptive and the
     differences are very small. In these circumstances, the Panel considers that the
     differences are insufficient to distinguish.

     The first requirement of the Policy is satisfied.

     B.    Rights or Legitimate Interests

     It appears that the Respondent has only used the Domain Name for a website
     containing automatically generated links to other websites. Here, in the Panel’s view,
     this does not constitute use in connection with a bona fide offering of goods of services
     within the meaning of paragraph 4(c)(iii) of the Policy. Such use is not apt to confer
     any goodwill under a domain name on its registrant and there is no reason to suppose
     that it has done so in this case.

     It is not disputed that the Respondent is not commonly known by the Domain Name or
     that it has not engaged in any non-commercial use.

     It does not appear to the Panel that the Respondent can claim a right or legitimate
     interest in the Domain Name on any other basis. In these circumstances, the Panel
     concludes that the Respondent does not have rights or legitimate interests in the
     Domain Name, and that the second requirement of the Policy is satisfied.

     C.    Registered and Used in Bad Faith

     The Complainants have provided no evidence of the nature or extent of their reputation
     under the mark either at the date of registration of the Domain Name or the present
     date. In these circumstances, the Panel does not have the material required to assess
     whether the Respondent’s use of the Domain Name was and is likely to attract Internet
     users to its website by creating a likelihood of confusion with the Complainants’ mark
     as to its source, sponsorship, affiliation, endorsement or otherwise.

     Even if it be correct to hold the Respondent responsible for the natural and probable
     consequences of directing the Domain Name to a page of automatically generated links,
     the Complainants have not shown that these consequences would amount to bad faith
     use in this case.



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     The Panel is not satisfied that the Respondent registered the Domain Name in order to
     prevent the Complainants from reflecting their mark in a corresponding domain name.
     Even if, contrary to its denial, the Respondent knew of the Complainants when it
     registered the Domain Name, there was no reason for it to suppose that the
     Complainants would have wanted to use the Domain Name, which is not identical to
     their mark. The case does not fall within paragraph 4(b)(ii) of the Policy.

     The Panel does not regard the use of a privacy service as evidence in itself of bad faith.
     The Respondent’s record in domain name disputes indicates that he registers a large
     number of domain names, some in bad faith and some in good faith. In the Panel’s
     view, this record does not establish that the Domain Name in this case was registered in
     bad faith.

     Failure to reply to a “cease and desist” letter may in some circumstances be relevant to
     the assessment of whether a domain name was registered and is being used in bad faith.
     For example, it could undermine the credibility of an explanation proffered at a later
     stage which one might have expected to have been given earlier, if true. However, in
     this case, the Panel does not consider that the Respondent’s failure to reply to the
     Complainants’ “cease and desist” letter is sufficient to ground a finding of bad faith.

     It is clear from the wording of the Policy that it is for the Complainants to prove that
     the Domain Name was registered and is being used in bad faith. The Complainants
     have not discharged this burden in this case. In all the circumstances, the Panel finds
     that the third requirement of the Policy has not been satisfied.


8.   Decision

     For all the foregoing reasons, the Complaint is denied.




                              ___________________________
                                     Jonathan Turner
                                    Presiding Panelist

     ____________________________                        _______________________
       Hon. Carolyn Marks Johnson                             David E. Sorkin
              NAF Panelist                                       Panelist

                                  Dated: October 12, 2007




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