Settlement privilege was found to apply to certain documents filed with a Complaint in a recent CDRP proceeding and, therefore, not considered when assessing the alleged bad faith of the domain name registrant. In Williams-Sonoma Inc v Bensabath, (October 12, 2018), (CDRP, BCICAC) (<potterybarnbaby.ca>), the sole Panelist found that other admissible facts did show that the Registrant, Gad Bansabath, who owns and operates a Montreal-area business selling baby products, Boutique Pinkiblue, registered the contested domain name in bad faith, that he had no legitimate interest in the domain name, and that it was confusingly similar to the Complainant’s (Williams-Sonoma) registered trademarks, including for POTTERY BARN. The Panelist ordered that the domain name be transferred to the Complainant.
The Panelist’s decision to “disregard” correspondence between parties marked “without prejudice” or that was argued to be settlement privileged, but that was submitted by the Complainant as evidence, is consistent with the finding of a 2014 CDRP panel in Tucows.com Co v Interex Corporate Registration Services Inc (2014) 118 CPR (4th) 472 (CIRA, Resolution Canada). In that case, the Panel held:
Of note in Williams-Sonoma, despite finding that certain email correspondence between the parties was settlement privileged and could not be considered, the Panelist nonetheless proceeded to summarize the substance of those emails in the context of his findings. This would seem to be contrary to the purpose of affording such correspondence protection under settlement privilege, as stated in the Tucows.com decision, where the content of the settlement-privileged documents was not discussed.
Further, the Panelist in Williams-Sonoma went on to find that because he could not consider the privileged correspondence, the Complainant was unable to show the Registrant acquired the domain name for the purpose of transferring it to the Complainant or a competitor for a value in excess of the actual costs in registering the domain name, which is one way to demonstrate a registrant’s bad faith. In particular, even though the remaining (admissible) evidence indicated that the Registrant attempted to sell the domain name to Williams-Sonoma, because it did not indicate whether the amount offered was in excess of what it cost to register the domain name, it was not enough to make out that particular ground of bad faith.
Also of interest, despite the failure of Williams-Sonoma to show this particular kind of bad faith registration, the Panelist found the evidence filed showed there was bad faith registration for other reasons. Namely, the Registrant engaged in a pattern of domain name registrations that showed bad faith, in particular because they were similar to other third party domain names and brands connected with the baby and children’s products industry, including <babyjoggerstrollers.ca>, <babybjornbouncers.ca>, <ergobabycarries.ca>, <buybuybaby.ca>, and <westcoastkid.ca>. This pattern of registering domain names that are confusingly similar to third party competitor websites offering children’s products also contributed to the Panelist’s finding that the Registrant registered the <potterybarnbaby.ca> domain name to capitalize on confusion between this domain name and Williams-Sonoma’s POTTERY BARN business and brand, and drive internet users to the Registrant’s website at the domain name:
