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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

First Tuesday Limited v. The Startup Generator and Christopher Stammer

Case No. D2000-1732

 

1. The Parties

Complainant is First Tuesday Limited, a United Kingdom limited liability company, with its principal place of business at 44 Baker Street, London, W1U 7A1, United Kingdom.

Respondents are The Startup Generator and Christopher Stammer, whose given address is P.O. Box 10071, Arlington, Virginia 22210, U.S.A. The combined names "The Startup Generator - Christopher Stammer" appear as the registrant of the domain name as listed by the Registrar. The Response states that Christopher Stammer founded The Startup Generator LLC in January 2000, then, with colleagues, founded "WirelessWednesdays", later stopped all work associated with The Startup Generator and decided to pursue "WirelessWednesdays" fulltime. The Response is signed by Christopher Stammer, Managing Member, WirelessWednesdays.

In the Complaint, reference is made to "Respondents" in the plural, while in the Response, reference is made to "Respondent" in the singular. This inconsistency is reflected in the Administrative Panel Decision.

 

2. The Domain Name and Registrar

The domain name in dispute is wirelesswednesdays.com. The Registrar is Register.com, Inc.

 

3. Procedural History

3.1 The Center received Complainant’s Complaint by e-mail on December 12, 2000 and by hard copy on December 14, 2000. After receipt of the Complaint, in accordance with paragraph 4(a) of the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center stated it had verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules, and further that the payment in the required amount to the Center had been made by Complainant, and that the formal date of the commencement of this Administrative Proceeding is December 21, 2000.

3.2 On December 21, 2000, Notification of Complaint and Commencement of Administrative Proceeding was forwarded to Respondents, by post/courier with enclosures, and by facsimile and e-mail without attachments, at the addresses given on the Registrar’s listing of the domain name.

3.3 The Response dated January 9, 2001 was forwarded by e-mail to the Center on that day and was received by the Center in hard copy on January 15, 2001. The Response states that a copy thereof, along with a cover sheet as prescribed by the Supplemental Rules, was sent and transmitted to the Complainant on January 12, 2001 by e-mail, by facsimile and certified mail with return receipt requested. The addresses indicated to have been used are those which were given by Complainant in the Complaint.

3.4 On January 10, 2001, the Center acknowledged receipt of the Response and proceeded to appoint the Administrative Panel.

3.5 On January 26, 2001, the Center forwarded to Complainant and to Respondents Notification of Appointment of Administrative Panel and projected decision date. The Panel consisted of a single member, Joan Clark. The Panelist had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center .

 

4. Factual Background and Parties’ Contentions

The Complaint

The Complaint states that Complainant is an organization devoted to linking entrepreneurs and start-up companies to funding sources, business sources and news sources, and providing networking opportunities. It is stated that Complainant serves its clients by running monthly networking and focussed topical events in over one hundred cities across five continents, and performing numerous other similar services.

The Complaint further states that Complainant serves a truly global clientele, and that its online and in-person networking meetings and conferences are routinely held in Europe, the United States, Canada, the Middle-East, Africa, Australia and South America. Copies of what appear to be printouts of announcements on the Internet, under www.wirelesswednesday.com/EventDetail, which have been produced as Annex F, refer to events to take place on November 7, 2000 and at some later dates.

The Complaint states that more than five hundred entrepreneurs, business angels and venture capitalists have addressed Complainant’s audiences, hundreds of start-ups have found their financing and senior management through Complainant, and more than six thousand venture capitalists, business angels and private investors have attended its matchmaking events around the world. The Complaint states that Complainant has a global membership of over a hundred and twenty-five thousand subscribers, which is growing at a rate of nearly 20% per month.

The Complaint states that Complainant created its WIRELESS WEDNESDAY programme and launched it in March 2000. The Complaint states WIRELESS WEDNESDAY is a service of monthly on-line and in-person events designed to establish and nurture relationships between permanent and emerging mobile commerce market players by fostering a solid networking environment.

The Complaint avers that the first WIRELESS WEDNESDAY took place on March 22, 2000 at Kensington Town Hall in the United Kingdom, that seven hundred and fifty people were invited to attend, and that the launch drew almost five hundred attendees. The Complaint further states that the event was promoted on its web sites and by its proprietary e-mail lists.

The Complaint states that Complainant registered the domain name wirelesswednesday.com with Register.com on February 8, 2000. The Complaint states that that domain name had been used continuously since soon after registration to support a web site that promotes WIRELESS WEDNESDAY events and related services.

The Complaint further states that Complainant has filed applications to register the mark WIRELESS WEDNESDAY on five continents and in more than ten countries around the world. Data sheets supplied with the Complaint indicate that these applications were filed in September 2000.

The Complaint relies upon a much earlier filing date of February 8, 2000, being an application to register WIRELESS WEDNESDAY as a community trademark. There is no indication in the report of this application as to whether it were filed on the basis of proposed use, i.e. intent to use, or a use previously occurring, nor is there any requirement to indicate such basis in a community trademark application. The Complaint also states that this community trademark application was officially accepted and published for opposition on October 16, 2000. The Complaint further states that, if no opposition is filed by January 16, 2001, registration of the mark will issue.

A United States application in the name of First Tuesday, Inc. was filed on October 13, 2000 on the basis of Intent-To-Use. Since Complainant is relying upon this application, and the goods and services to be registered are similar to those in the community trademark application filed by First Tuesday Limited, the Complainant herein, the Panel accepts for the purpose of this hearing that Complainant would have the benefit of the October 13, 2000 filing in the United States of the mark WIRELESS WEDNESDAY.

The Complaint also relies upon Complainant’s extensive, global use of the WIRELESS WEDNESDAY mark and the wirelesswednesday.com domain name, as establishing common law trademark rights and substantial goodwill which precede Respondents’ registration of the domain name at issue.

The Complaint further states that the WIRELESS WEDNESDAY mark is used and has been used prominently since March 2000 on all of Complainant’s web sites, online, in its e-mail lists, as well as in advertising, publications, fliers, banners, nametags and other materials distributed at WIRELESS WEDNESDAY programmes. However, the only exhibits filed in support of this allegation bear dates no earlier than November and, in one case, October 2000.

The Complaint asserts that on July 29, 2000 Respondent Stammer added an "S" to the end of Complainant’s WIRELESS WEDNESDAY mark and proceeded to register it as wirelesswednesdays.com. The Complaint further asserts that adding an "s" and ".com" to an existing mark is not sufficient to distinguish a domain name from the trademark of another for purposes of paragraph 4(a) of the Policy.

The Complaint states that anyone conducting an Internet search for Complainant’s WIRELESS WEDNESDAY mark will find the disputed domain name leading to Respondents’ deceptively similar web site.

With regard to the question of bad faith, the Complaint asserts that Respondents knowingly and purposefully registered and are using a domain name virtually identical to Complainant’s well-known mark and domain name, to divert customers seeking Complainant’s web site and services for their own commercial gain.

The Complaint states that Respondents registered the domain name in dispute on July 29, 2000, a full four months after Complainant began its WIRELESS WEDNESDAY programme and five months after Complainant filed its domain name and trademark application to protect its WIRELESS WEDNESDAY mark. Further, the Complaint states that Respondents conduct business in the Internet start-up industry, that Complainant’s services are aggressively promoted via the Internet, and that it is highly likely that Respondents would have been aware of the existence of Complainant and the services it offers.

The Complaint states that :

"If, for some reason, Respondents were unaware of Complainant prior to seeking registration of the subject domain name, it is probable that Respondents would have become aware of the Complainant’s WIRELESS WEDNESDAY marks once the Respondents were in the process of registering their domain name. Logically one in Respondents’ position would have considered WIRELESSWEDNESDAY.COM as a possible domain name prior to registering WIRELESSWEDNESDAYS.COM."

Further, the Complaint asserts that Respondents have no legitimate rights to the mark WIRELESS WEDNESDAY or WIRELESSWEDNESDAYS.COM, which "not only subsumes First Tuesday’s mark - it virtually is the same mark."

The Complaint requests that the Administrative Panel determine that the domain name in dispute be transferred from Respondents to Complainant.

The Response

The Response states that in January 2000 Respondent Christopher Stammer in Arlington, Virginia founded The Startup Generator, LLC business incubator. To position The Startup Generator as the catalyst to growth of "wireless technology on the East Coast", a series of monthly get-togethers for application developers and leaders in the wireless industry was held.

The Response states that the "WirelessWednesdays" organization was founded, based upon the day of the week on which their events were held. As a result of the success of this organization, Respondent Stammer stopped all work associated with The Startup Generator and decided to pursue WirelessWednesdays fulltime.

More specifically, the Response states that WirelessWednesdays is a U.S. based "grass roots" organization founded in July 2000 with the mission "to create a connected community built around the people energizing the wireless Web". The Response devotes considerable space to describing the networking and "connectivity" which are provided by Respondent’s site, and states that WirelessWednesdays has enjoyed a tremendous amount of growth and a credible following in the wireless web and handheld computing industry in the United States.

The Response refers to a "premier" WirelessWednesdays networking event launched on August 23, 2000 at a location in Arlington, Virginia and in downtown Dallas, Texas.

The Response claims that "two networking happy hour events" were advertised under the disputed domain name, on July 29, 2000, to be launched a mere three weeks later. There is an announcement, on one of the web site printout pages produced as Annex J, that "the next WirelessWednesday will be held on 9 August 2000".

The Response contests Complainant’s statement that its domain name was being used continuously since soon after registration. The Response asserts that, when Respondent’s domain name was registered (July 29, 2000), Complainant’s domain name showed neither use nor demonstrable preparation to use in the offering of service or promotion of a good or service. Further, the Response states that, when the Complainant’s domain name was submitted (searched for) on the Internet, the server returned a message that stated "Unable to locate the server www.wirelesswednesday.com. Please check the server name and try it again".

The Response asserts that Complainant’s domain name wirelesswednesday.com is routed to the First Tuesday web site and offers no information that is different or unique from the First Tuesday web site. The Response further asserts that the services offered on the First Tuesday web site are distinctly different from those of the WirelessWednesdays site.

The Response asserts that Complainant has offered no supporting material to support the contention that Complainant has used the trademark WIRELESS WEDNESDAY "worldwide". However the Panel notes that, in Annex F to the Complaint, in an apparent printout of material available on www.wirelesswednesday.com, there are references to network events to be held in Amsterdam, in Johannesburg, in Dubai, in Eindhoven, in Helsinki, in Stockholm, in Tallinn, in Vancouver, in Warsaw, in Antwerp, in Kuala Lumpur, in London, and elsewhere. The Panel notes that, at least during the month of November 2000, evidence has been submitted by Complainant, as well as by Respondents, of the use of Complainant’s domain name for the purpose of advertising various networking services.

The Response emphasizes that there is no information about Complainant holding a Wireless Wednesday in the United States.

The Response states that "in order to have ‘Global usage’, it would be logical that a trademark be active in the United States". The Panel does not subscribe to this view. The Panel notes that it is possible for a party to have common law rights in the trademark, without that trademark ever having been used in the United States.

The Response avers that Respondent registered the domain name wirelesswednesdays.com on July 29, 2000. The Response states further:

"As a part of the domain name registration process, the Respondent conducted a thorough review of three critical pieces of information that would most likely reveal any conflicting trademark issues: 1) he checked the availability of the domain name; 2) he assessed the activity associated with a «taken» (but unused, unpopulated, undirected) domain name; and 3) conducted a thorough search of trademarks online at the United States Patent and Trademark Office".

The Response declares that Respondent checked the availability of the domain name wirelesswednesday.com and found it was unavailable. Respondent then checked with the browser on the web to see if the domain name wirelesswednesday.com would "hit" a site and found that it did not. A search at the United States Patent and Trademark Office did not reveal to Respondent any conflicting trademarks, except for an intent-to-use application filed by another company for goods and services stated by Respondent to be in a different class.

The Response states that Respondent maintains it currently retains the right of first use trademark protection in the United States and intends to continue to use the WirelessWednesdays name in the United States. The Response further asserts that Complainant cannot rely upon its community trademark application, filed on February 8, 2000, because Complainant did not submit the necessary trademark application within a six-month period of the international filing date.

The Response states that Respondent’s first use of his trademark predates Complainant’s filing of an intent-to-use application in the United States, which was filed on October 13, 2000.

As to the question of Respondent’s good faith, the Response states that, on the date Respondent’s domain name was registered, Complainant’s domain name showed neither use nor demonstrable preparation to use in the offering of service or promotion of a good or service.

The Response points out that Complainant’s site offers extensive use of the words "First Tuesday" and does not make mention of the conjoined word "WirelessWednesday". However, the Panel notes that wirelesswednesday.com is the name of the site. Respondent continues that its web site make no mention of the words "First Tuesday" but has a strong presence of the word "WirelessWednesdays".

The Response maintains that, at the time of registration of the disputed domain name, the domain "wirelesswednesday.com" was a dead link, was not being directed to the First Tuesday web site, and contained no content which would be considered similar to that of Respondents’ web site.

The Response further states that a trademark search indicated that no conflicting application or registration of the trademark "WIRELESS WEDNESDAY" in the United States had been submitted, and that Respondent was led to believe that he had and has rights of first use to the trademark and domain name.

The Response contends that, while Complainant’s WIRELESS WEDNESDAY programme was launched in Europe, it would be unreasonable to assume that an individual in the United States would be aware of a select event in one of Complainant’s foreign cities of operation. The Response asserts that it is possible to not be aware of a programme that had begun overseas.

The Response asserts that Respondent launched the WirelessWednesdays organizational web site on July 29, 2000, prior to notice of the dispute.

The Response asserts that, even if Respondent had been aware of Complainant’s trademark rights and events overseas, knowledge of those foreign rights does not alone establish bad faith in registration of the domain name.

As to Respondent’s claim to have legitimate rights and interests in the domain name, Respondent maintains it was never aware of Complainant’s use of the mark overseas until notice of the dispute.

The Response emphasizes the extent of use of WIRELESSWEDNESDAYS as a networking tool, and states Respondent has never made any overture to the Complainant to sell the disputed domain name.

The Response asks that Complainant’s request to have the domain name transferred be denied.

 

5. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondents be required to submit to a mandatory administrative proceeding:

(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and

(ii) Respondents have no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondents’ rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

Identity or confusing similarity of the domain name to a trademark or service mark in which the Complainant has rights

The Panel is of the view that the domain name in dispute, wirelesswednesdays.com, is confusingly similar to "WIRELESS WEDNESDAY". The addition of an "s" and the "running together" of the two words "wireless" and "Wednesday" are not sufficient to avoid confusion. It is noteworthy that, when Respondents attempted to register wirelesswednesday.com, and discovered that this domain name had already been taken, Respondents simply added an "s", changing the intended domain name to wirelesswednesdays.com which is indicative of the close relation at least in Respondents’ mind of the plural "wirelesswednesdays" to the singular "wirelesswednesday".

The addition of the suffix ".com" should not, in the opinion of the Panel, be taken into consideration in assessing the identical or confusingly similar character of a domain name to a trademark or service mark.

The question that arises in applying the criterion of paragraph 4 (a) (i) of the Policy is to identify the trademark or service mark in which Complainant has rights, and the date as of which those rights were acquired.

On February 8, 2000, Complainant registered the domain name wirelesswednesday.com and filed an application for registration as a community trademark of WIRELESS WEDNESDAY.

There is no evidence in the record that Complainant used the trademark or used the domain name as a trademark, prior to the date of February 8, 2000.

Complainant has asserted that it created its Wireless Wednesday programme and launched it in March 2000, and further that the first Wireless Wednesday (a service of online and in-person events), took place on March 22, 2000 at Kensington Town Hall in the United Kingdom. No documents have been submitted in support of the March date. Complainant avers that the domain name wirelesswednesday.com has been used continuously "since soon after registration to support a web site that promotes Wireless Wednesday events and related services". Complainant also maintains the WIRELESS WEDNESDAY mark has been used prominently since March 2000 on all of its web sites, on line, in its e-mail lists and in advertising, publications, fliers, banners, and other material distributed at Wireless Wednesday programmes. The documents submitted to support this statement, Annex F, appear to be printouts from Complainant’s web site, and the use of "Wireless Wednesday" only appears, as far as the Panel can ascertain, in the name of the web site, wirelesswednesday.com. Also, the documents found in Annex F relate mainly to the period of November 2000.

Complainant has filed trademark applications for WIRELESS WEDNESDAY, in certain particular countries, but these have all taken place in September 2000 or later. The application for registration of WIRELESS WEDNESDAY filed by First Tuesday, Inc. in the United States, was filed on the basis of Intent-To-Use, on October 13, 2000. Since Complainant has relied upon this application, and the listing of goods and services is virtually identical to those in Complainant’s community trademark application, the Panel assumes that there is a relationship between First Tuesday, Inc., the applicant in the United States, and Complainant herein First Tuesday Limited.

The Panel therefore concludes that Complainant, or its related company, had not, as of October 13, 2000, used the trademark WIRELESS WEDNESDAY in the United States.

The Panel does not consider that mere registration of the domain name wirelesswednesday.com, by itself, would constitute use of that domain name as a trademark.

Trademark rights are acquired by virtue of use of the trademark, or its registration based upon use or a priority document in another country. Accordingly, neither the United States application nor the community trademark application, nor the specific applications in particular countries, provide evidence in and of themselves of trademark rights having been acquired by Complainant in WIRELESS WEDNESDAY.

However, Complainant has asserted a use in March 2000 in the United Kingdom of WIRELESS WEDNESDAY in advertising, publications and other materials to promote the events, information and resources on Complainant’s web site. Although no documentary evidence has been supplied in support of this allegation, the Panel has no reason to doubt the veracity of the statement.

The Panel therefore concludes that, as of March 2000, Complainant had rights in the trademark and service mark WIRELESS WEDNESDAY, and that the disputed domain name wirelesswednesdays.com is confusingly similar thereto.

The criterion of paragraph 4(a)(i) of the Policy has therefore been met.

Rights or legitimate interests of Respondents in the domain name

One criterion for determining whether Respondents have rights or legitimate interests in the domain name, for purposes of paragraph 4(a)(ii), is whether Respondents have been commonly known by the domain name. Although there has been considerable advertising of WirelessWednesdays since its launch on July 29, 2000, the Panel does not consider that the evidence shows that Respondents have been commonly known by the domain name. According to the news item produced by Respondents as Annex R, "WirelessWednesdays is a group of wireless technology professionals who meet monthly in an informal setting to share ideas, network with one another, enhance their skills, and develop partnering opportunities relating to the mobile Internet." Respondent Stammer is mentioned in this news item as founder of WirelessWednesdays.

In the opinion of the Panel, this does not indicate that Respondent Stammer is commonly known by the domain name wirelesswednesdays.com. The launching of WirelessWednesdays by Respondents took place on July 29, 2000 and the evidence which it is proper to consider, in the view of the Panel, is evidence prior to and up to the date of the commencement of these proceedings, initiated by the filing of the Complaint with the Center on December 12, 2000.

Another criterion to be considered in determining whether Respondents have rights or legitimate interests in the contested domain name is whether, before any notice to Respondents of the dispute, Respondents made use of, or demonstrable preparation to use, the domain name in connection with the bona fide offering of goods or services.

The question that arises is whether the offer of goods or services by Respondents under the disputed domain name were made bona fide prior to any notice to Respondents of the dispute.

The notice Respondents did have, unquestionably, was that another party, Complainant herein, had registered the domain name wirelesswednesday.com. Respondents must have known that there could be a likelihood of confusion between their selected domain name wirelesswednesdays.com and the previously registered wirelesswednesday.com, even if the latter were not in use. As between registrants of two confusingly similar domain names, there may be a question of entitlement to the second registered domain name in view of priority of registration of the first registered domain name. This, however, is not an issue over which this Panel has jurisdiction.

In the Response, it is stated "On July 29, 2000 the Respondent checked the availability of the domain name WIRELESSWEDNESDAY.COM and found that it was unavailable." Respondent "went one step further to see if the domain name would «hit» a site should it be entered into a browser . It did not." The Response also states: "When the Complainant’s domain name was submitted, the server returned a message that stated "Unable to locate the server www.wirelesswednesday.com. Please check the server name and try it again."

The Response avers that Respondents also had a complete search done at the United States Patent and Trademark Office "to discover any conflicting marks to the WirelessWednesdays name". The search revealed only an intent-to-use application filed by another company for goods and services which Respondents claim were in a different class.

After obtaining the above information, Respondents proceeded to register the domain name wirelesswednesdays.com.

In view of the requirement set forth in paragraph 4(a)(i) of the Policy, a comparison must be drawn between the trademark or service mark of Complainant and the domain name in issue to ascertain identity or confusing similarity. Accordingly the dispute between the parties must relate to that comparison. Notice of the dispute relates to the comparison of Complainant’s trademark or service mark with the disputed domain name.

In the view of this Panel mere registration of a domain name, by itself, without use of the domain name in association with goods or services, does not create trademark rights in the domain name.

Although Complainant asserts that its domain name wirelesswednesday.com had been used continuously since soon after registration to support a web site promoting WIRELESS WEDNESDAY events and services, Complainant’s documentary evidence indicating use of its domain name on the Internet relates to a period subsequent to Respondent’s adoption of the disputed domain name. In any event, the Response states that Respondent could not locate the web site of Complainant on the Internet, despite several attempts and assessed it to be "unused". In addition, the Response states that Respondent had no knowledge of the trademark WIRELESS WEDNESDAY which Complainant states was previously used, as early as March 2000, in the United Kingdom.

The evidence fails to establish that, when Respondents registered and commenced use of the disputed domain name, they had knowledge of the trademark rights of Complainant in the trademark WIRELESS WEDNESDAY or knowledge of any trademark rights of Complainant flowing from any use it might have made of the domain name as a trademark.

In these circumstances, it has not been shown to the satisfaction of the Panel that Respondents had no rights or legitimate interests in respect of the domain name when they made use of the contested domain name after July 29, 2000 and prior to receiving notice of the present dispute.

In view of the provisions of paragraph 4(c)(i) of the Policy the Panel concludes that, for purposes of paragraph 4(a)(ii) of the Policy, Respondents have used the domain name in dispute in connection with the bona fide offering of goods or services before any notice to Respondents of the dispute, and accordingly, it has not been established that Respondents have no rights or legitimate interests in respect of the domain name.

 

6. Decision

The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, paragraph 4:

- that the domain name wirelesswednesdays.com is confusingly similar to Complainant’s trademark WIRELESS WEDNESDAY;

- that it has not been established that Respondents have no rights or legitimate interests in the domain name; and

- that, in view of the above, it is not necessary to determine whether the domain name was registered and is being used in bad faith.

The Panel accordingly denies the request to require the transfer of the domain name wirelesswednesdays.com to Complainant First Tuesday Limited.

 

 

Joan Clark
Sole Panelist

Dated: February 12, 2000