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and Mediation Center
J2 Global Communications, Inc. v. Ideas Plus, Inc.
Case No. D2005-0792
1. The Parties
The Complainant is J2 Global Communications, Inc., Hollywood, California, United States of America.
The Respondent is Ideas Plus, Inc., Longwood, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <e-fax.com> is registered with OnlineNic, Inc.
d/b/a China-Channel.com, located within the jurisdiction of the United States
District Court for the Northern District of California (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2005. On July 25, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On August 8, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 10, 2005, in electronic form and on August 15, 2005 in hard copy. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2005. The Response was filed with the Center on September 12, 2005.
The Center appointed M. Scott Donahey as the Sole Panelist in this matter on September 20, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On September 27, 2005, the Complainant submitted Motion
for Leave to File a Reply Brief and Exhibits. Although the Panel did not request
the filing, the Panel exercises its discretion under Rule 12 to accept the Reply.
4. Factual Background
On July 13, 1992, Complainant’s assignor applied with the United States Patent and Trademark Office (“USPTO”) for the mark E-FAX. On April 23, 1993, the application was assigned to the Supplemental Register. On August 3, 1993, registration issued on the Supplemental register. The registration was later assigned to Complainant and registered with the USPTO.
Complainant also registered on the Supplemental Register as typed drawings the marks EFAX CORPORATE, EFAX MESSENGER, EFAX VOICE, and EFAX SEND. On the registration of EFAX CORPORATE, Complainant disclaimed the right to the exclusive right to use “EFAX” apart from the typed drawing as shown.
Complainant registered on the Principal Register as a typed drawing the mark EFAX PLUS. On the registration, Complainant disclaimed the exclusive right to use “EFAX” apart from the typed drawing as shown.
Complainant does business under the name E-Fax and its predecessor and Complainant have been using the E-FAX mark since 1989. Complainant registered the domain name <efax.com>.
Respondent registered the domain name at issue on April 12, 1998. Complaint, Annex 1.
On February 8, 1999, Complainant contacted Respondent by telephone and offered to buy the domain name at issue. Respondent indicated that the domain name at issue was not for sale.
On January 10, 2003, Complainant’s counsel sent by federal express and facsimile a letter to Respondent, demanding that the domain name at issue be transferred to Complainant. Complaint, Annex 3. Respondent did not reply to the demand.
On June 18, 2004, Complainant’s counsel sent by federal express and facsimile a letter to Respondent, again demanding that the domain name at issue be transferred to Complainant. Complaint, Annex 4. Respondent did not reply to the demand.
On December 16, 2004, Complainant’s counsel sent by federal express and facsimile a letter to respondent, again demanding that Respondent transfer the domain name at issue to Complainant. Complaint, Annex 5. Respondent did not reply to the demand.
On June 7, 2005, Complainant’s counsel sent by federal express, facsimile and email, a letter to Respondent, again demanding that Respondent transfer the domain name at issue to Respondent. Complaint, Annex 6. Respondent did not reply to the demand.
Respondent is a publisher of news and information.
Respondent has never offered to sell or rent the domain name at issue.
5. Parties’ Contentions
Complainant contends that the domain name at issue is identical or confusingly similar to trademarks and service marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent registered and is using the domain name at issue in bad faith.
Respondent contends that the mark EFAX is either generic
or descriptive and that Complainant brought an action in the courts of the United
Kingdom entitled Efax.com, Inc. v. Oglesby, and that Complainant lost
the case because the court found that the term “efax” was merely
descriptive and did not give rise to a claim for passing off. See “http://swarb.co.uk/lawb/inteWords.shtml”.
Respondent contends that “e-fax” is not confusingly similar to EFAX,
and that Respondent did not register and is not using the domain name in bad
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel 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:
(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; and
(2) that the respondent has no legitimate interests in respect of the domain name; and
(3) 1that the domain name has been registered and is being used in bad faith.
There is no doubt that the domain name at issue is identical to the EFAX mark
and confusingly similar to other marks which Complainant has registered with
the USPTO. The Channel Tunnel Group Ltd. v. John Powell, WIPO
Case No. D2000-0038 (<channel-tunnel.com>; the addition of a hyphen
does not affect identicality); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a
For Sale, WIPO Case No. D2000-0662
(inclusion in the domain name of a mark or a close facsimile thereof constitutes
The Center has made a study of WIPO UDRP panel decisions and published an “Overview of
WIPO Panel Views on Selected UDRP Questions” (“WIPO Overview”).
At paragraph 1.1 of the
Overview, the WIPO Center sets out the consensus view that the holding of a
registered trademark generally confers such rights and legitimate interests.
However, the Center also points out some limited exceptions to the consensus
view. Among the cited exceptions is the case of PC Mall, Inc. v. Pygmy Computer
Systems, Inc., WIPO Case No. D2004-0437.
In that case the Complainant applied for registration with the USPTO of a mark
which issued on the Supplemental, rather than the Principal Register. The Panel
noted that registration on the Supplemental Register meant that the USPTO found
the mark not to be distinctive, but only capable of becoming distinctive upon
the acquisition of secondary meaning. Since the complainant in that case failed
to offer proof that the trademark had acquired secondary meaning, the complaint
failed to show that the complainant had rights in the trademark.
In the present case, the Panel reviewed the USPTO records of the cited trademark registrations cited in, but not attached to, the Complaint. The WIPO Overview gives the consensus view of a panelist conducting independent research. The consensus view is that “the panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision”.
In the only registration on the Principal Register, the Complainant disclaimed any exclusive right to the use of the term “efax” apart from the typed drawing of the mark as shown (EFAX PLUS). This same disclaimer was made as to one of the marks registered on the Supplemental Register.
The Panel notes that in its Reply brief the Complainant cites an additional application for the mark EFAX, which application was not included among the citations in the original Complaint. Complainant states that after Complainant submitted substantial evidence that its mark EFAX has acquired distinctiveness, the Unites States Patent and Trademark Office (“USPTO”) approved the mark EFAX for publication on the Principal Register on May 31, 2005. Reply, p.1. The Panel reviewed the USPTO website and notes that the application is indeed pending on the Principal Register and was published for opposition on May 31, 2005. However, no registration has issued. More significantly Complainant did not furnish to the Panel any “substantial evidence that its mark EFAX has acquired distinctiveness”, nor did Complainant furnish any evidence as to any of the cited registrations or as to the application cited in Complainant’s Reply that any of the marks in question have acquired secondary meaning as indications of source of the services.
The Panel finds the reasoning of the PC Mall case applies in the present case, since in two instances the Complainant expressly disclaimed the exclusive right to the use of the trademark asserted. As Complainant has produced no evidence as to the acquisition of secondary meaning, the Panel finds that Complainant has failed to establish that it has rights in the marks registered on the supplemental register.
It is true that the Complainant has one registration on the Principal Register
(EFAX PLUS), and that registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is distinctive.
Respondent has the burden of refuting this assumption. See, e.g., EAuto,
L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN
Case No. D2000-0047. The Panel notes that
in that registration the Complainant expressly disclaimed any exclusive right
to the use of the term “efax” apart from they typed drawing of the
mark as shown. In light of such a disclaimer by the Complainant, it is doubtful
whether the Complainant has established that it has rights in the mark EFAX.
However the Panel does not need to finally determine whether the Complainant
has rights in the mark EFAX, as the Complainant has failed to prove that the
disputed domain name was registered in bad faith.
It is evident that the Complainant’s marks and the disputed domain name
are of a descriptive character - a Google search yields millions of web pages
using the word “fax”, and the addition of the prefix e merely suggests
an electronic or Internet-based fax. Complainant contends that Respondent was
on constructive notice of Complainant’s USPTO registration under United
States law, citing 15 U.S.C. §1072. However, one who looked at the registration
on the USPTO website would see that Complainant had expressly disclaimed the
right to exclusive use of the mark EFAX. This would hardly constitute constructive
notice. Complainant has offered no evidence that the Respondent had the Complainant
and its mark in mind when the Respondent registered the domain name. There is
nothing in the case file indicating that the Respondent targeted the Complainant.
The mere fact that Respondent registered the domain name at issue after the
complainant had registered the trademark at issue is not significant where the
asserted mark is inherently descriptive in nature. EAuto L.L.C. v. Triple
S. Auto Parts, d/b/a Kung Fu Yea Enterprises, Inc., WIPO
Case No. D2000-0047 (holding that the registration of a domain name confusingly
similar to the descriptive mark EAUTO does not in and of itself constitute bad
faith). Because the Panel finds that the Complainant has failed to establish
that the domain name was registered by the Respondent in bad faith, the Panel
does not need to determine whether the Respondent has rights or legitimate interests
in respect of the domain name at issue.
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Dated: October 3, 2005