Respondent does not address the 1998 correspondence, and instead indicates that Complainant initiated harassing communications with Respondent around June 2001. As a result, Respondent claims that the company discontinued some activities in order to avoid further harassment from Complainant. As part of this process, Respondent indicates that the name of the business was changed.[2]

Respondent does not dispute "the fact that Respondent has renewed the domain name registration and has parked the domain name," but asserts that it is irrelevant.

As noted above, in a letter dated May 12, 1998, prior counsel for Respondent represented that in order to avoid litigation, Respondent would change the name of its web page and catalog. Further, in a letter dated July 11, 1998, Respondent (Ms. Overton) confirmed that the company was not using the <echohome.com> domain name for its website. In a letter dated August 31, 1998, Respondent further represented that the company no longer had a website, and that if the company chose to set up a website in the future that it would use <ehome-garden.com> as a domain name.

Respondent claims that Complainant has failed to provide any proof that Respondent lacks a legitimate interest in the domain name. Respondent further asserts that it does have legitimate rights in the domain name since it was using the domain name in connection with a bona fide offering of goods and services prior to notification of the dispute. Further Respondent indicates that it has been commonly known by the domain name since 1993. Respondent claims that the company provided vintage and vintage inspired items thus generating the idea for using the term Echo in connection with the business.

Finally, Respondent claims that Susan Overton, the President of Respondent, is planning and preparing to use the domain name in ways that will not infringe on any trademark rights of Complainant. As evidence of this assertion Respondent has provided proof of Susan Overton's enrollment in interior design and architectural consulting classes. Respondent does not specify the use that will be made of the domain name, but merely claims that the website using the <echohome.com> domain name will include an express disclaimer and a link to Complainant’s website.

Respondent disputes Complainant’s assertion that the domain name was registered and is being used in bad faith. Respondent claims that Complainant has offered no evidence that Respondent acquired the domain name primarily for the purpose of offering it for sale. Respondent asserts that Respondent began using the name Echo Home Furnishings in 1993 and was using the domain name in connection with the business until Respondent discontinued use of the domain name after continued solicitations by Complainant. Respondent claims that it only considered selling the domain name after being contacted by the Complainant.

Respondent claims that there is no proof that it registered the domain name with the intent of disrupting the business of a competitor. Further Respondent claims that the temporary nonuse of the domain name does not constitute evidence of bad faith, particularly where there was use of the domain name at one time. Respondent asserts that it did not register the domain name for the purpose of selling the name, to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, for the purpose of disrupting the business of Complainant or any competitor, to create any likelihood of confusion as to source, or to misleadingly divert consumers.

Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,

(ii) that the Respondent has no legitimate interests in respect of the domain name; and,

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

Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has U.S. and foreign trademark rights to the mark ECHO for home goods such as draperies, curtains, sheets, pillow cases, bedspreads, lamp shades, and rugs, as well as other items such as scarves, jewelry, paper products, leather goods, and bags. Complainant also provided evidence of several other trademarks incorporating the term ECHO such as ECHO ORIGINATIONS, ECHO BELTS, and ECHO SOFT. Complainant has not asserted any trademark rights in the term "Echo Home."

The domain name <echohome.com> incorporates Complainant’s mark ECHO in its entirety, but adds a generic term "home" to the mark. The addition of the generic term "home" does not eliminate confusion with Complainant’s mark. The term merely describes many of the goods covered by Complainant’s mark–home products such as draperies and bedspreads.

On these facts, where the disputed domain name incorporates the ECHO mark in its entirety and the addition of the generic term does not help differentiate or eliminate confusion, this Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights.

Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant’s rights or legitimate interests in the name. One such circumstance is showing that Respondent is commonly known by the domain name. In this case, Respondent registered the domain name that corresponded to a trade name it had used since 1993 and was using at the time the domain name was registered.

Respondent may also demonstrate a legitimate interest in the domain name by demonstrating use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The evidence indicates that Respondent offered home goods for sale at its website prior to notice of any dispute. A simple offering of any goods or services does not necessarily constitute a bona fide offering of goods or services. This is particularly true if it appears that a domain name registrant is acting in bad faith and is merely attempting to circumvent the Policy. That does not appear to be the case in this situation. At the time of the registration, Respondent owned and operated a retail store that sold home products, had been using the trade name related to the domain name in connection with the store since 1993, and was selling home goods at the website corresponding to the domain name. This Panel finds, therefore, that Respondent had a legitimate interest in the domain name at the time it was registered.

The complexity arises in this case because in 1998, the Respondent, in response to Complainant's demands, ceased using the trade name and ceased using the domain name in connection with a bona fide offering of goods or services. Complainant asserts, therefore, that Respondent has no existing legitimate interest in the domain name because Respondent agreed to make no further use of the ECHO trademark.

Because this Panel determines (below) that the Complainant has not shown that Respondent registered and used the domain name in bad faith, this Panel does not address the issue of whether or not Respondent continued to have a legitimate interest in the domain name after the 1998 correspondence.

Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain name has been registered and used in bad faith. In this case, the Panel finds that Complainant has not provided sufficient evidence that the domain name was registered in bad faith at the time of registration. As noted, at the time of registration Respondent registered a domain name that corresponded to a trade name Respondent had been using for four years. Further, Respondent was using the domain name to sell goods related to its retail store which was also known by the corresponding trade name.

Complainant claims that because Respondent’s President had worked at Macy's, Respondent must have known of Complainant's trademark prior to her registration of the domain name. Complainant does not indicate, however, that Respondent worked in a department where Complainant's goods were sold or provide any other evidence that Respondent was aware of Complainant’s mark. Respondent’s President asserted in her July 11, 1998 correspondence that she had never heard of Complainant or its mark prior to Complainant's initial 1998 letter. This Panel notes, however, that Respondent’s President did not repeat this assertion in her affidavit submitted with the response. Nevertheless, the other evidence of legitimate interest at the time of registration outweighs the mere assertion by Complainant that Respondent’s President might have known of Complainant's marks. Accordingly, this Panel finds that Complainant has not offered sufficient evidence that Respondent registered the domain name in bad faith.

Complainant alleges that Respondent acted in bad faith by renewing its registration of the domain name. Under the Policy, however, the Complainant must provide evidence that the domain name "has been registered and is being used in bad faith" in order to justify a transfer of the name. Although the examples of bad faith set forth in the Policy have led to the interpretation that actual use may not always be required to satisfy the Policy (but instead that mere nonuse or an intent to sell could satisfy the use requirement) there is no similar justification for straying from the plain wording of the policy and allowing bad faith renewal to satisfy the bad faith registration requirement. Some of the examples of bad faith registration and use indicate that bad faith at the time of acquisition by another of the name might satisfy this element, but alleged bad faith renewal by the same registrant of a name that was not initially registered in bad faith does not appear to meet the requirements of the Policy.

This Panel has limited jurisdiction dedicated to deciding domain name disputes under the narrow criterion specified in the Policy. It is not the role of this Panel to express any opinion on the merits of a trademark infringement. Nothing in this decision precludes either party from pursuing its rights in the appropriate court of law.

This Panel finds that Complainant has not shown that the domain name was registered in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain name <echohome.com> remain with Respondent.

Rod Thompson

Sole Panelist

Dated: April 19, 2002

1. Susan Overton, the President of Respondent, was formerly known as Susan Williamson.

2. As noted, Respondent does not refer to the 1998 correspondence, and instead seems to indicate that the name change and discontinued activities occurred after communications from Complainant in 2001. Respondent does not claim, however, that the 1998 correspondence did not occur or that the Exhibits provided by Complainant are inaccurate in any way. Based on copies of the correspondence attached as Exhibits to the Complaint, it is clear that most of the correspondence occurred in 1998. Respondent had access to the Exhibits prior to formulating its response and therefore could not have expected that this Panel would not be aware of the 1998 correspondence. Therefore it is assumed Respondent's use of the domain name <echohome.com> ceased in 1998, not 2001, and that the statements made by Respondent in the 1998 correspondence are not disputed.