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WIPO Domain Name Decision: D2000-1797
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
First Conferences Ltd. v. Ecorp.com
Case No. D2000-1797
1. The Parties
The Complainant is First Conferences Ltd., of 3rd Floor, Black Lion House, 45 Whitechapel Rd., London E1 1DU, United Kingdom.
Represented by H2O Henry Hepworth Organisation, of 5 John Street, London WC1N 2HH, United Kingdom.
The Respondent is Ecorp.com, of 3620 N Washington Blvd., Indianapolis, IN 46205, United States of America.
Represented by Jonathan A. Becker, of Becker Law Office, 3303 Crickwood Dr., Indianapolis, IN 46268, United States of America.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <internetcontent.com>.
The Registrar with which the domain name is currently registered is Tucows.com, Inc. of 96 Mowat Avenue , Toronto, ON M6K 3M1, Canada.
3. Procedural History
3.1 The Complaint was filed electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 22 and December 29, 2000, respectively.
3.2 On January 9, 2001, the Registrar verified:
(i) that the domain name is registered with it;
(ii) that the current registrant of the domain name is the Respondent;
(iii) that the Policy applies to the domain name;
(iv) that the domain name is currently on hold;
(v) Respondent's Administrative Contact Billing Contact and Technical Contact is Chad Folkening, of 3620 N Washington Blvd., Indianapolis IN 46205, United States of America.
(vi) the record was created on October 23, 1998.
3.3 On January 12, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On January 12, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by courier and by e-mail to Respondent, the Administrative Contact, Billing Contact and Technical Contact;
(ii) by e-mail to the postmaster at the domain name.
3.5 The Administrative Proceeding commenced on January 12, 2001 and the Response was due on January 31, 2001. The Response was filed on
January 31, 2001.
3.6 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole panelist on February 9, 2001.
3.7 On February 20, 2001, Complainant filed a request to submit further evidence in reply to Respondent's Response. This Request was communicated to Respondent and on March 10, 2001 respondent filled a reply to this further evidence.
4. Complainant's Request to File Further Evidence and Respondent’s Reply
4.1 The Response includes submissions and legal argument in relation to the validity of Complainant's claim to its trade mark rights and also includes an allegation that the Complaint constitutes an attempt at "reverse domain name hijacking."
4.2 Complainant, by its request filed February 20, 2001, requested the right to file further evidence in relation to its use and promotion of its trade mark, Respondent's offer for sale of the domain name and the allegation of reverse domain name hijacking.
4.3 It is well-settled by decisions of several Panels that it is within the Panel's discretion, properly exercised, to accept or refuse further submissions submitted
by the parties. It is also well settled that consistent with the Policy's objective of providing a simple and speedy process for the resolution of cases this should occur only in exceptional circumstances. See for example, Rapido TV Limited v. Jan Duffy-King, WIPO No. Case No. D2000-0449 (August 27, 2000); Gordon Sumner p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596,
(July 20, 2000); and Document Technologie, Inc., v. International Electronic Communications, Inc,. WIPO Case No. D2000-0270, (June 6, 2000).
The Panel has considered the request and is of the opinion that no special circumstances have been made out. The Panel is further of the opinion that it would not be materially assisted in its decision by the further material sought to be admitted by Complainant and Respondent.
4.4 The Panel therefor refuses the request and rejects the further evidence by the Complainant and the Respondent's reply.
5. Factual Background
5.1 Complainant is a corporation incorporated under the laws of England and Wales and asserts it has carried on the business of running conferences that are advertised under the name "Internet Content." Complainant asserts that it commenced trading under the name in February 1999; that its first "Internet Content" conference was held in San Francisco in September 1999; and, that two subsequent conferences were held in Los Angeles in July 2000 and in New York in October 2000. Complainant asserts that it advertises and markets the "Internet Content" events through a large number of different mediums and had a turnover in the year 2000 of US$2,350,000 and projects a figure of US$4,000,000 for the year 2001 associated with its "Internet Content" brand.
5.2 Complainant is the Applicant for registration of the following trade marks:
- Community Trade Mark Application 001961374 "Internet Content" filed
November 17, 2000 in classes 16, 35, 41 and 42; and,
- US Trade Mark Application 76/173257 "Internet Content" filed November 29, 2000 in classes 16, 35, 41 and 42 – see Complaint, Annex 4.
5.3 Complainant asserts that it has tried, on several occasions, to contact Respondent's Mr Chad Folkening to discuss purchase of the domain name, but has received no response.
5.4 Respondent asserts that its business strategy is the building and interlinking of numerous web-based businesses and that it has developed and operates a number of websites including <ecorp.com>, <dsl.com>, <sohodirectory.com>, <handiman.com>, <the vibe.com>, <applyonline.com> and <satellitetv.com>. The Respondent asserts that it is a strategic global web communications holding, development and management company. Respondent asserts its intention that its <internetcontent.com> site will operate "as a targeted site interlinking other websites in the family." The site is to be used as an online industry portal service and will link to sites that Respondent is in the business of developing. Currently, the site links to Respondent's <DSL.com> site.
6. Applicable Dispute
6.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
6.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
7. Parties' Contentions
7.1 Complainant contends that it has established rights in the trade mark "Internet Content" and that the domain name is identical to its trade mark.
7.2 Complainant contends that Respondent has no rights or legitimate interests in the domain name. Complainant contends that Respondent appears to have no interest in the domain name and has not been using it or carried out any business activity under it since it was registered on October 23, 1998.
7.3 Complainant contends that Mr Chad Folkening, who is Respondent's Technical and Billing Contact, is a cybersquatter who registers trade mark-related domain names and cites in support the decisions of Administrative Panels in Home Director, Inc v. HomeDirector-WIPO Case No. D2000-0111, (April 11, 2000), Europay International S.A. v. Eurocard.com, Inc and Others-WIPO Case No. D2000-0173, (May 22, 2000) and The Southern Company v. Chad Doms a/k/a Chad Folkening- WIPO Case No. D2000-0184, (May 8, 2000).
7.4 Respondent objects to the jurisdiction of WIPO Center (and presumably, by implication, of the Panel) asserting that WIPO is without authority "because of the illegal nature of the Policy and the 'contract' giving rise to the alleged authority of the Policy." Respondent cites in support of its contention the US case of Weber-Stephen Products Co. v. Armitage Hardware and Building Supply Inc., 54 U.S.P.Q. 2d 1766, (N.D. Ill. 2000).
7.5 Notwithstanding its objection to jurisdiction, Respondent requests the Panel to make a finding of reverse domain name hijacking.
7.6 Respondent contends that Complainant has failed to establish the threshold requirement of rights in a trade mark which is identical or confusingly similar to the domain name. Respondent asserts that Complainant has no registered trade mark and has produced no proof that Complainant's alleged trade mark, consisting of two common descriptive words, has acquired a secondary meaning as indicating the goods or services of Complainant. Respondent cites the case of Porto Chico Stores Inc. v. Otavio Zambon – WIPO Case No. D2000-1270, (November 15, 2000) and 2E Corporation v. IMAGYSIS Inc.-Case AF0162. Respondent further asserts that the businesses of Complainant and Respondent are separate and distinct and cites Credit Management Solutions, Inc. v. Collex Resource Management-WIPO Case No. D2000-0029, (March 17, 2000).
7.7 Respondent asserts that the evidence establishes that it has a legitimate interest in the domain name based on its business strategy outlined in paragraph 5.4 above.
7.8 Respondent contends that Complainant has failed to establish that the domain name has been registered and is being used in bad faith and in response to Complainant's citation of cases which have been decided against Mr Folkening or interests with which he is associated, cites cases in which the complaint has failed – Safmarine v. Network Management – WIPO Case No. D2000-0764, (October 23, 2000) and Eplan Software and Service GmbH and Co. K.G. v. Chad Folkening et al- WIPO Case No. D2000-0806, (September 28, 2000).
7.9 Respondent further contends that Complainant has failed to prove bad faith, that there is no evidence that the domain name was registered for the purpose of resale to Complainant, or that it was registered for the purpose of disrupting Complainant's business, diverting internet users to its website by creating confusion, or preventing Complainant from reflecting its trade mark in a corresponding domain name.
7.10 Complainant contends the Complaint was filed in bad faith and constitutes reverse domain name hijacking. Respondent points to Complainant's applications for registration of the trade mark shortly before the filing of the Complaint and cites the decision in Shermak's Retail Ltd. v. CES Marketing Group Inc.-Case AF-0104 where the Panel found bad faith to exist, "if the Complainant has an obvious interest in obtaining the Respondent's domain name for its own use, yet lacks even a plausible argument on each of the elements set forth in paragraph 4(a) of the ICANN Policy."
7.11 Respondent requests the Panel to make a finding pursuant to paragraph 15(e) of the Rules and to award attorney's fees and costs to it.
8. Discussion and Findings
Identical or Confusingly Similar Domain Name
8.1 The Panel finds that Complainant has demonstrated that it has rights in the trade mark "Internet Content". The fact that the mark consists of common and aptly descriptive words means that Complainant faces more than the usual onus of
showing such rights. However, accepting Complainant's assertions, its use of the trade mark, though short in time, has been fairly substantial and probably
sufficient to establish a reputation in the limited field in which it works. Its trade mark applications are pending and, if those applications are successful, substantial rights, presently inchoate, will be established. For the purposes of the Policy, it is not necessary for Complainant to show that its rights are such that it would succeed in an action for statutory infringement or common law passing off or that its business is the same or of the same description as that of Respondent.
8.2 Save for the running together of the two words "Internet" and "Content" the operative part of the domain name is identical with the trade mark. The Panel therefore finds that the domain name is identical to the trade mark "Internet Content" in which Complainant has rights.
Respondent's Rights or Legitimate Interests
8.3 The onus of proof in establishing absence of rights or legitimate interests and registration and use in bad faith is on Complainant, see paragraph 4(a) of the Policy. Though the burden of proof is a shifting one – see John Swire & Sons Ltd v. David Huang – WIPO Case No. D2000-1106, (December 5, 2000) the primary burden is on Complainant.
8.4 The domain name comprises two commonly used descriptive terms and it is not unlikely that others may legitimately wish to use these words as an identifier of goods or services or of a web site. Complainant has submitted that because Respondent or its principal owns many domain names and has been involved, directly or indirectly, in many domain name disputes and offers domain names for sale, it falls within paragraph 4(a)(ii) of the Policy. This submission is not sustainable. Complainant has not produced any evidence to support its assertion that the domain name was for sale. Respondent asserts, and has produced evidence to confirm (Respondent Exhibits 2 – 4), that it operates a number of websites and that it offers internet business and telecommunications services through them. It may be that those services include the sale of domain names but that alone is not enough to bring the matter within paragraph 4(a)(ii) or 4(a)(iii) of the Policy. It is well established that mere offering of a domain name for sale is neither illegal nor contrary to the Policy – see for example J. Crew International, Inc. v. crew.com – WIPO Case No. D2000-0054, (April 20, 2000); Meteor Mobile Communications v. Frank Dittmar – WIPO Case No. D2000-0524, (July 17, 2000); and, John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray – WIPO Case No. D2000-1403, (December 13, 2000). Thus, absent circumstances establishing otherwise, the offering of a domain name for sale, either alone or in conjunction with other services, may constitute a legitimate interest.
8.5 The Panel, therefore, finds that the Complainant has failed to discharge the prima facie onus which is on it to show that Respondent has no rights or legitimate interests in the domain name.
Bad Faith Use and Registration
8.6 In light of the finding in paragraph 8.3, it is unnecessary to consider whether
Complainant has established bad faith use and registration as required by paragraph 4(a)(iii) of the Policy. However, for the record and in view of Respondent's submission with respect to reverse domain name hijacking, the Panel deals briefly with that issue.
8.7 Respondent denies that it had any knowledge of Complainant or its trade mark before it registered the domain name. This must be accepted. The domain name was registered on October 23, 1998 (Complaint, Annex 1), but the earliest use of the trade mark asserted by Complainant is February 1999. Its first conference in the USA was in September 1999 and Complainant's trade mark applications were not filed until November 2000. It is therefore difficult to imagine how Respondent's conduct could fall within any of the circumstances enumerated in paragraph 4(b) of the Policy or otherwise be in bad faith. This case is distinguished from the cases cited by Complainant and referred to in paragraph 7.3 above. As stated by the Panel in the Eurocard Case, "It is of fundamental importance that Complainant's trade marks were famous at the time that the domain names were registered." (Decision para 7.17). That clearly is not the situation here. The Panel must decide each case on its own merits. The decisions in previous cases concerning the same or related parties may provide guidance, but they cannot be determinative.
8.8 The Panel, therefore, finds that Complainant has failed to show that the domain name has been registered and is being used in bad faith.
Bad Faith Complaint
8.9 The fact that, on Complainant's own evidence, Respondent's registration of the domain name preceded use of the trade mark by Complainant and Complainant has produced no evidence to dispute this, raises the question of how Complainant could, in good faith, assert bad faith conduct on the part of Respondent. On balance, however, the Panel is unable to find, on the record, sufficient evidence to establish that the Complaint was brought in bad faith or primarily to harass Respondent. The Panel, therefore, declines to make a declaration pursuant to Rule 15(e) of the Rules. As to Respondent's request for an award of costs in its favour, the Panel could not, in any event, make such an award as there is no power in the Policy or the Rules to do so.
9.1 Respondent has objected to the jurisdiction of the Panel. The basis for the Panel's jurisdiction is the Policy and the contract between Respondent and the Registrar. It is not for the Panel to entertain objection either to the Policy or to the contract. The Panel therefor proceeds to its decision.
9.2 The Panel finds and decides:
(i) The domain name is identical or confusingly similar to a trade mark in which Complainant has rights;
(ii) Complainant has failed to establish that Respondent has no rights or
legitimate interests in respect of the domain name;
(iii) Complainant has failed to establish that the domain name has been registered and is being used in bad faith;
(iv) The Complaint is therefore dismissed.
Dated: March 23, 2001