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WIPO Arbitration and Mediation Center

The Complainant is Document Technologies, Inc. (also known as dTech), a New York corporation, of 14 Wall Street, New York, New York, USA 10005, represented by Law Offices of Stephen J. King. The Respondent is International Electronic Communications, Inc. (also known as IEC), a Texas corporation, of 1200 Post Oak Boulevard 426, Houston, Texas, USA 77056, represented by Baker Botts LLP.

The domain name in issue is "htmlease.com" (the "Domain Name"). The Domain Name registrar is Network Solutions, Inc. ("NSI").

The WIPO Arbitration and Mediation Center (the "Center") received on April 6, 2000 by e-mail, and on April 10, 2000 by mail, the Complaint. On April 13, 2000, Complainant amended its Complaint. The Center verified that the Complaint, as amended, satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Complainant made the required payment to the Center.

On April 10, 2000, the Center sent an e-mail to NSI requesting a registrar verification in connection with this case. On April 11, 2000, NSI sent an e-mail to the Center confirming that the registrant is the Respondent.

On April 17, 2000, the Center formally commenced this proceeding, and set a response date of May 6, 2000. Respondent timely responded on May 5, 2000. In its Response, the Respondent requested a three-member Administrative Panel and paid the required fee.

On May 24, 2000, after considering the parties’ preferences and screening for potential conflicts, the Center appointed David H. Bernstein, Andrew Frederick Christie and Christopher Peter Tootal as the panelists in this matter (the "Panel").

On May 25, 2000, the Complainant submitted a Proposed Supplemental Submission. That Proposed Supplemental Submission was received in hard copy by the Center on May 28, 2000 and faxed to the Panel on May 29, 2000. On May 31, 2000, Respondent submitted a letter to the Center objecting to Complainant’s Proposed Supplemental Submission and urging the Panel to disregard it. Because of time delays, this letter was not sent to the Panel until June 2, 2000, after the Panel already had issued the following Interim Order, dated June 1, 2000, in which it declined to accept the Proposed Supplemental Submission:

"Rule 12 of the Rules unambiguously provides that only the Panel may request further submissions: ‘In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.’ There is no provision in the Rules for a party to file an additional submission without leave of the Panel. Nevertheless, without receiving a request from the Panel or seeking leave from the Panel to file a further statement, Complainant submitted its Proposed Supplemental Submission.

"Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges. See CRS Technology Corp. v. CondeNet, Inc., File No. FA#0002000093547 (NAF Mar. 28, 2000). At the same time, ICANN provided the Panel with the flexibility to seek additional submissions if the Panel feels that it cannot rule on the record submitted.

"If a Party wishes to submit a further statement, the better practice under the Rules would be to first seek consent from the Panel, with an explanation of why a further statement is warranted. Appropriate reasons may include the existence of new, pertinent facts that did not arise until after the submission of the complaint, or the desire to bring new, relevant legal authority to the attention of the Panel. E.g., Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000). The Panel would then be in a position quickly to rule on the request and, if it determines that a further statement is warranted, set a schedule that is fair to both parties and provides each party with an opportunity to supplement the record. This procedure also would save the Parties the expense of preparing further statements that the Panel decides not to accept. See generally Plaza Operating Partners, Ltd. v. Pop Data Technologies and Joseph Pillus, Case No. D2000-0166 (WIPO June 1, 2000).

"In this case, after consideration of Complainant’s Proposed Supplemental Submission, the Panel has concluded that there is no basis for supplementing the record. First, exercising its discretion, the Panel has concluded that it can decide this case on the record submitted, and that it does not require any further submissions from the Parties. Second, none of the factual allegations submitted in Complainant’s Proposed Supplemental Submission constitute new facts that either were not available at the time of the Complaint or were not included because Complainant had no basis for believing they would be relevant to the proceeding. Id. The Affidavit of John O’Connor, for example, discusses the important issue of when Complainant first established trademark rights in the mark HTML EASE, but does so by reciting facts and referencing documents that date back to 1999 and thus could have been submitted with the Complaint. Third, Complainant’s new legal arguments are based on old precedents rather than breaking developments. To the extent Complainant seeks to provide this additional argument for the purpose of replying to the Response, that is an insufficient basis for permitting supplemental submissions in light of the abbreviated procedures set forth in the Rules.

"For all these reasons, the Panel declines to accept Complainant’s Response and will not consider it for any purpose in fashioning its decision. In light of this holding, Respondent should not submit any sur-reply or other supplemental submission as contemplated in footnote 1 of the Proposed Supplemental Submission. Should there be any new developments that a party believes warrants submission of any further document or statement, the party shall first seek leave from the Panel, with an explanation of the reasons it seeks to supplement the record."

The Complainant filed an application with the U.S. Patent and Trademark Office on February 3, 2000 to register the trademark HTML EASE in International Class 9 for the following goods: "Computer software for use in converting, editing and preparing financial and technical documents for viewing on global, wide area and/or local computer networks, and/or filing electronically with government agencies." In the application, the Complainant claimed that the trademark was first used in August 1998 and was first used in commerce in May 1999.

The Respondent registered the Domain Name on April 15, 1999.

The grounds set out in the Complaint can be summarized as follows:

The Complainant is a nationally known leader in the field of document conversions, training, software and related services. It is particularly well-known for its EDGAR EASE software application, which has since 1993 been widely used in relation to the filing of documents with the United States Securities and Exchange Commission ("SEC"), pursuant to the SEC’s Electronic Data Gathering and Retrieval System ("EDGAR"). The Complainant is the owner of the domain name "edgarease.com", and claims rights in an "Ease" family of software application products.

The Complainant began advertising and promoting its HTML EASE software application in August 1998. That activity consisted of enclosing a two-sided promotional insert about HTML EASE with all copies of its EDGAR EASE software application sold to customers. One side of the insert contained the statement "Need to put financial documents on the Web? HTML Easeä is on the horizon"; the other side contained the statement, "HTML Easeä will be on the Web what EDGAR Ease is to EDGAR. Are You Ready? dTech. Document Technologies, Inc." Complainant also included substantially similar information about HTML EASE on its website since approximately August 1998.

Complainant avers that the Respondent has at all relevant times been a competitor, and is aware of the Complainant and its stature and reputation in the parties’ industry. Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:

• Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor has it ever had plans to do so.
• As a result of the Complainant’s senior rights in the trademark HTML EASE, any use of that mark by the Respondent would be actionable as trademark infringement and unfair competition.
• The Respondent has not been commonly known by the Domain Name.
• The Respondent has not made any legitimate non-commercial or fair use of the Domain Name.

Complainant further asserted that the Respondent registered and is using the Domain Name in bad faith for the following reasons:

• Because the Respondent registered the Domain Name on April 15, 1999, only weeks before the Complainant began selling its HTML EASE software product and eight months after the Complainant had been promoting the same to prospective customers, and because the Respondent has no product or service of its own for sale or lease, it appears that the Respondent registered the Domain Name for the purpose of disrupting the business of a competitor. The Complainant avers on information and belief that the Respondent knew of Complainant’s HTML EASE product at the time it registered the Domain Name, and that the Respondent must have known that its registration of the Domain Name would disrupt and interfere with the Complainant’s ability to make use of its own trademark on the Internet.
• The Respondent is acting merely as a passive holder of the Domain Name. There can be no plausible, legitimate business purpose of the Respondent’s registration and passive use of the Domain Name.
• Given that the Respondent has never used the Domain Name and cannot show that it has "been commonly known by the domain name," one may infer a lack of good faith.

By its Response, the Respondent denies that the Complainant can satisfy any of the three elements of paragraph 4(a) of the Policy. The following is a summary of Respondent’s main points:

Complainant did not establish any trademark rights in respect of HTML EASE mark by the mere advertising or promotion of the mark in the period from August 1998 to May 1999.

Because the Respondent registered the Domain Name in April 1999, before Complainant’s May 1999 first sale of and first use in commerce of the mark HTML EASE, and because the Respondent registered the Domain Name nearly ten months before the Complainant applied to register the trademark HTML EASE, the Respondent has superior rights in and to the Domain Name.

Although one of the Respondent’s services (SEC EDGAR filing services) overlaps with those of the Complainant, the Respondent does not intend to use the Domain Name in connection with such services, and did not register the Domain Name with such intent.

In support of the Response, the Respondent has filed an affidavit of its President, Nicholas C. Neblett, whose sworn statement included the following statements:

"3. IEC offers multiple services, in addition to providing SEC EDGAR filing services. These additional services include Web site design services and remote on-line monitoring services.

"4. Since 1997, IEC’s Web Design Group has provided a wide range of Web site services, including full HTML-development, Web site hosting and support, Web-based secure transaction processing, and customized Web applications.

"5. IEC registered the domain name "htmlease.com" with Network Solutions, Inc. in April 1999. IEC has held the "htmlease.com" domain name with the intent to use it in connection with its Web design services, including the business operations of its Web Design Group.

"6. At the time IEC registered "htmlease.com," had no knowledge of dTech’s intent to use "HTML EASE" as a trademark, as described in its Complaint, and IEC, Inc. registered the domain name in good faith. [sic] 1

"7. IEC has registered multiple domain names, in anticipation of its legitimate business needs. IEC’s lack of use of the Domain Name reflects legitimate business planning rather than a bad faith attempt to disrupt dTech’s business. IEC has never sold or even offered to sell a single domain name to another party.

"8. Before filing the complaint in this proceeding, dTech offered to pay IEC for the "htmlease.com" domain, but IEC was not interested in selling the domain."

In arguing that the mark HTML EASE is "not so distinctive that it is inconceivable that parties could independently decide to use it," the Respondent made the following points:

• HTML is simply an acronym for Hypertext Markup Language.
• 265 domain names registered through NSI begin with the prefix HTML.
• 194 such domain names begin with the prefix EASE. [Respondent did not, however, provide information on domain names with the suffix EASE, which would be more relevant given Complainant’s argument that it has or is establishing a family of {something}-EASE trademarks.]
• 30 pending or registered U.S. trademarks include an HTML component. These are mainly in International Class 9.
• 776 pending or registered U.S. trademarks, spread over a very wide range of Classes, incorporate an EASE (or phonetic equivalent) component.

In such a crowded field, any trademark rights that the Complainant may have are limited to those services in relation to which the Complainant uses HTML EASE, and not to all Internet-related goods and services.

The Complainant’s attempt to rely on its rights in EDGAR EASE is improper because a single mark does not constitute a "family".

So far as sub-paragraph 4(a)(ii) and (iii) of the Policy are concerned, the Respondent denies the Complainant’s allegations, relies on the affidavit of Mr. Neblett, and points to the lack of any evidence to support the Complainant’s allegations.

In order to succeed in its claim, Complainant must demonstrate that three elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") have been satisfied:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) that the Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) that the Respondent has registered and is using the domain name in bad faith.

1. The Domain Name is Confusingly Similar to Complainant’s Trademark.

The Domain Name "htmlease.com" is confusingly similar to Complainant’s trademark HTML EASE. The Domain Name consists of exactly the same sequence of letters and, except for the elimination of the space between words and the ".com" generic top-level domain, is identical to the Complainant’s trademark.

The Panel also finds that Complainant has trademark rights in the mark HTML EASE. Complainant has a pending trademark application and has used the mark in commerce since May 1999. From the evidence submitted, the mark appears to be suggestive and not, as Respondent asserts, merely descriptive. That a number of marks and domain names include the words HTML and EASE does not dictate a different result, as these two words create a distinct impression when combined and when used in connection with Complainant’s software products. Thus, Complainant appears to have trademark rights in the United States that date back to at least May 1999. These trademark rights are senior to any rights Respondent may have because the mere registration of a domain name does not establish trademark rights, and Respondent has not shown any use of the domain name or trademark in connection with the offering or sale of any goods or services.

That this priority date is after the registration of the Domain Name is of no moment. The issue under this first factor is whether the Complainant has rights as of the time of the Complaint. Respondent’s lack of knowledge of Complainant and its trademark rights at the time of the registration of the domain name may, in appropriate cases, be relevant to the second and third factors (legitimate interest and bad faith), but it is not relevant to the analysis of the first factor which looks solely at the question of whether the Complainant has trademark rights and whether the domain name is identical or confusingly similar to that mark. Significantly, the Policy does not require the Complainant to prove that it had rights in a trademark "as of the date of the domain name registration."

Even if the relevant time period were the date of the Domain Name registration, Complainant still has shown sufficient use to create trademark rights. Complainant began publicly promoting its HTML EASE software both on its website and in mailings to customers in August 1998, eight months before the Respondent registered the Domain Name. This use was sufficient to establish trademark rights. See Marvel Comics Ltd. v. Defiant, a division of Enlightened Entertainment Ltd., 837 F. Supp. 546 (S.D.N.Y. 1993) (pre-sale promotional efforts sufficient to establish trademark priority). 2

2. Respondent Has No Rights to or Legitimate Interests in the Domain Name.

Complainant has made a prima facie showing that Respondent has no rights to or legitimate interests in the Domain Name. Complainant has established that Respondent is its direct competitor, that any use of the Domain Name by Respondent for similar goods or services would likely constitute trademark infringement, and that the Respondent has neither been known by the name HTML EASE nor has it used or planned to use the name in connection with the bona fide sale of goods or services.

Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name. This "burden shifting" is appropriate given that Paragraph 4(c) of the Policy, which is entitled "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint," discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name. The burden of proof, however, does not shift as the Policy makes clear that "the complainant must prove that each of these three elements are [sic] present." Policy, ¶ 4(a).

In this case, the Respondent has failed to meet that burden. Although Respondent’s President states in his affidavit that Respondent registered the domain name "with the intent to use it in connection with its Web design services," Respondent has not provided any documentary evidence whatsoever to substantiate that assertion. Given that Paragraph 4(c)(i) of the Policy requires Respondent to show "demonstrable preparations to use" the Domain Name "in connection with a bona fide offering of goods or services," the Panel concludes that the mere assertion of such an intention is insufficient. Instead, once Complainant makes a prima facie showing, Respondent must submit concrete evidence of at least demonstrable preparations in order to rebut Complainant’s showing that Respondent has not used, nor does it plan to use, the domain name in connection with the bona fide sale of goods or services.

Nor has Respondent shown that its use of the Domain Name is a legitimate noncommercial or fair use. By its own admission, it intends to use the Domain Name to promote its own Web design services. Given the overlap in these services and those Complainant offers under the HTML EASE trademark, Complainant has shown, on this record, a likelihood that consumers would be confused and misleadingly would be diverted to Respondent’s website.

3. Complainant Failed to Establish Bad Faith Registration and Use.

The final factor is whether the Respondent registered and is using the Domain Name in bad faith. The Complainant has not satisfied its burden of proving this factor.

Seeking to prove that Respondent registered and is using the Domain Name in bad faith, the Complainant referred to the circumstances listed in paragraphs 4(c)(i) and (ii) of the Policy. These circumstances are (i) that the Respondent, before any notice of the dispute, used or prepared to use the domain name in connection with a bona fide offering of goods or services, and (ii) the Respondent has been commonly known by the domain name, even if it has not acquired trademark or service mark rights in it. The Complainant argued that, because neither of those circumstances applied in this case, it could be inferred that the Respondent had registered and was using the Domain Name in bad faith.

These allegations reflect a misunderstanding of the kind of proof required to show bad faith. Bad faith is not proven by showing that Respondent lacks any rights to or legitimate interests in the Domain Name. That is a separate and distinct factor, with its own proof requirements. If the Panel adopted Complainant’s approach, it would have the practical effect of conflating the second and third requirements. Such an approach is not supported by the clear wording of the Policy, which separates the requirements in Paragraph 4(a) into three distinct elements, and provides separate examples (Paragraphs 4(b) and 4(c)) of how to satisfy the second and third factors.

More relevant to the bad faith issue is Complainant's allegation, albeit on information and belief, that Respondent knew of Complainant's trademark rights in the mark HTML EASE at the time it registered the Domain Name. If correct, and given that the parties are direct competitors, this fact would go far to suggest bad faith. In reply, the Respondent asserts in a sworn statement that it "had no knowledge of dTech's intent to use HTML EASE as a trademark". The Panel does not consider that this assertion, of itself, compels it to conclude that the Respondent did not register in bad faith. If the evidence discloses circumstances that are consistent with a complainant's allegation that the respondent registered the domain name in bad faith, a finding of bad faith may be made notwithstanding a sworn statement from the respondent that it did not know of the complainant's trademark, or did not know that complainant intended to use its mark as a trademark. In this case, however, the Complainant has not shown evidence of such circumstances. For example, there is no documentary evidence that someone from the Respondent actually did visit, or is likely to have visited, the Complainant's website in the period prior to the registration of the Domain Name, or that the Complainant's promotional literature actually was, or is likely to have been, received by the Respondent during that period. Accordingly, the Panel must credit Respondent's statement as true. If Complainant believes that cross examination of Respondent's evidence would successfully prove bad faith registration and use, it will need to resort to a forum, like a United States court, that permits for a more probing, searing search for the truth. See Eauto L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000). This proceeding is not conducive to such credibility determinations given the lack of discovery and, in the normal course, the lack of live testimony.

Although the Domain Name is confusingly similar to a trademark in which the Complainant has rights, and although the Complainant made out a prima facie case (not rebutted by Respondent) that Respondent lacks rights to or a legitimate interest in the Domain Name, the Panel finds that Complainant has failed to demonstrate that Respondent registered and is using the Domain Name htmlease.com in bad faith. Accordingly, the Panel concludes that the Domain Name should not be transferred to the Complainant Document Technologies, Inc.

David H. Bernstein
Presiding Panelist

Andrew Frederick Christie Christopher Peter Tootal
Panelists

Dated: June 6, 2000

1. Although Mr. Neblett’s declaration omits the pronoun in this important sentence (and thus one does not know whether he personally lacked such knowledge or whether all those involved in the registration of the Domain Name lacked such knowledge), the Response itself, which is a certified document and may also be treated as sworn testimony, asserts that "IEC did not know of dTech’s intent to use HTML EASE at the time IEC registered the domain name."

2. Because the parties are both United States companies, and because the trademark rights at issue arise in the United States, it is appropriate to consider United States legal principles and caselaw. See Home Director, Inc. v. HomeDirector, Case No. D2000-0111 (WIPO Apr. 11, 2000).