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EDREAMS, Inc. v. eWorldWideWeb, Inc.
Case No. D2006-0726
1. The Parties
Complainant is EDREAMS, Inc., World Trade Center Norte, Barcelona, Spain, , represented by March & Asociados, Spain.
Respondent is eWorldWideWeb, Inc., Robert Wilcox,
, La Jolla, United States of America, represented by The Law Offices of Stephen
H. Sturgeon & Associates, United States of America.
2. The Domain Name and Registrar
The disputed domain name <e-dreams.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2006. On June 13, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 13, 2006, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 5, 2006. The Response was filed with the Center on July 11, 2006.
The Center appointed Wolter Wefers Bettink as the
sole panelist in this matter on July 20, 2006. 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.
4. Administrative Order: Late Response
The due date for the Response was July 5, 2006. No Response or communication was received by the Center on that date. Eventually, the Response was filed on July 11, 2006, after the Center had sent a Notification of Respondent Default to Respondent. Under paragraph 5(d) of the Rules an extension of the deadline may be permitted by the Panel in case of exceptional circumstances.
Respondent states that the late submission is due to the fact that its representative, Stephen H. Sturgeon, was the victim of a robbery, apparently claiming that this is an ‘exceptional’ case, warranting extension of the deadline for the Response.
Evidence of the robbery consists of a police report which shows that a bag apparently belonging to Respondent’s representative was stolen on July 5, 2006. Although Respondent contends that the stolen items of its representative include computer equipment, papers and documents which were necessary for the submission of the Response and which were intended to be submitted in a timely manner, the police report does not mention this. Furthermore, Respondent does not explain why it or its representative did not inform the Center of the possible consequences of this incident immediately after the theft, in particular since the theft apparently took place on July 5, 2006, the due date for the Response. Therefore, in the view of the Panel, this is not an ‘exceptional case’ as contemplated in paragraph 5(d) of the Rules.
As was the case in the UDRP case concerning <mobilcom.com>Mobile
Communicatins -Service Inc. v. Web Reg, RN, (WIPO
Case No. D2005-1304), there may be a broader issue here. Using the same
search tools as the Panelist in that case, the Panel has found that there are
at least 10 other cases in which Respondent’s representative has sought
an extension. There may have been cases where the Respondent had good cause
for the late filing of the Response, or for requesting an extension or where
the extension was limited (one day). However, this pattern of extension requests
and late filings raises legitimate questions about the bona fides of
other requests, such as not being able to find an attorney (in the USA, Fimat
International BanqueSociйtй Gйnйrale v. Lebanon Index/ La France DN and Elie
Khouri WIPO Case No. D2002-0760 and
Wick Communications Co. Inc. v. Half Moon Bay Coastside Foundation WIPO
Case No. D2002-0556) or that the notice of the complaint may have been buried
in “an enormous amount of email (with considerable junk mail” Van
Morrison and Exile Productions Limited v. Unofficial Club De Van Morrison
WIPO Case No. D2002-0417) In view of the
above, the Panel denies Respondent’s request to consider its Response,
since it was submitted well after the deadline, without justification by exceptional
5. Factual Background
The disputed domain name <e-dreams.com> was registered on March 8, 1999.
Complainant is owner of the domain name <edreams.com>
which was registered on February 6, 1996.
6. Parties’ Contentions
Complainant states that its company was founded in March 1999 in Silicon Valley, United States of America. It further states to own offices in Barcelona, London, Milan and San Francisco. Complainant points out that its domain names edreams.com and edreams.net were registered before the disputed domain name.
Complainant has developed a European travel portal. The portal can be reached through the domain names <edreams.com>, <edreams.net>, <edreams.info>, <edreams.es, <e-dreams.es>, <edream.es>, <e-dream.es>, <edreams.it>, <edream.it>, <e-dreams.it>, <e-dream.it> and <idreams.it>. Complainant states that worldwide it receives an average of 7.5 million visits annually on its portal.
Complainant has submitted an organization chart which shows that it is the shareholder of several companies that operate in the European travel industry including Vacaciones eDreams, S.L., eDreams International Network S.L., eDreams Ltd., and eDreams S.r.l. Complainant claims to have reached a top position in the Spanish and Italian market with its travel portal.
Complainant filed the word mark EDREAMS on September 9, 1999, with the United States Patent and Trademark Office. This trademark was abandoned on September 20, 2001, for strategic reasons. Complainant further states that it is well-known in the marketplace under the trade name EDREAMS, as evidenced by press releases and articles published in magazines and newspapers, submitted by Complainant.
Complainant is of the opinion that the disputed domain name <e-dreams.com> is confusingly similar to the rights of Complainant to its domain names and trade names.
Complainant is further of the opinion that Respondent has no rights or legitimate interests in respect of the domain name <e-dreams.com>. Respondent is focused on Internet services and specializes in the commercialization of domain names. Respondent does not possess any trademark EDREAMS or uses such sign as a company name. Complainant contends that the disputed domain name is not used in relation to any website and has not been used since its registration date (March 8, 1999). Respondent is not an authorized dealer of Complainant. To the best of Complainant’s knowledge, Respondent has not made any demonstrable preparations to use the domain name <e-dreams.com>. Complainant further contends that confused customers of Complainant will likely be frustrated in their efforts to reach Complainant’s website when they use the domain name <e-dreams.com>. Respondent is not commonly known by and has no economic interest in the disputed domain name. According to Complainant, Respondent does not use the domain name for offering goods or services and is not making any “demonstrable preparations” to use the domain name in connection with a bona fide offering of goods or services. Respondent offers the domain name for sale through the website “www.moniker.com”.
Complainant is further of the opinion that the disputed domain name has been registered and is being used in bad faith. According to Complainant, by offering the domain name for sale on the Internet, Respondent intentionally attempts to attract Internet users for commercial gain, creating a likelihood of confusion with the protected rights and trade name of Complainant. Respondent further prevents Complainant from reflecting its mark in a corresponding domain name.
According to Complainant, Respondent must have been aware of the prior domain names edreams.com and edreams.net, due to necessary searches previous to the registration. Complainant further claims that Respondent has sought to disrupt or threatened to disrupt Complainant’s business by causing confusion.
Since the Panel has denied Respondent’s request
to consider its Response, as it was submitted well after the applicable deadline,
Respondent’s defence is not discussed here.
7. Discussion and Findings
Paragraph 15(a) of the Policy directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, the Supplementary Rules, and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy, Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has 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.
A. Confusingly similar
Complainant does not rely on a registered trademark. However, the Panel infers from the statements of Complainant that it relies on common-law or unregistered trademark rights.
In order to successfully rely on common-law or unregistered trademark rights,
Complainant must show that the name has become a distinctive identifier associated
with Complainant or its goods and services. Relevant evidence of such “secondary
meaning” includes length and amount of sales under the mark, the nature
and extent of advertising, consumer surveys and media recognition, Uitgeverij
Crux v. W. Frederic Isler WIPO Case No.
D2000-0575); Skattedirektoratet v. Eivind Nag WIPO
Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall WIPO
Case No. D2001-0083; Australian Trade Commission v. Matthew Reader
D2002-0786 Imperial College v. Christophe
Dessimoz WIPO Case No. D2004-0322.
The Panel finds that Complainant has submitted evidence which shows that the name edreams has acquired such secondary meaning in view of both the length of use thereof (since March 1999), the number of daily visits to the <edreams.com> portal and media recognition and the amount of sales under the mark.
The Panel finds that this unregistered trademark EDREAMS is confusingly similar to the domain name <e-dreams.com>.
B. Bad faith registration and use
For practical reasons, the Panel first considers whether Complainant has provided evidence that the domain name was registered and is used in bad faith.
Respondent registered the domain name <e-dreams.com> on March 8, 1999. Therefore, this registration took place prior to the date that Complainant states that it started its business under the trade name Edreams on March 19, 1999. Complainant has not submitted evidence of business activity under the name Edreams before that date.
Complainant holds the domain name <edreams.com> which was registered on February 6, 1996 but, understandably, there is no evidence of Complainant’s use of this domain name before Complainant started its business.
Complainant claims to have registered its domain name <edreams.net> on October 16, 1998, but submitted a copy of a Whois database which shows that this domain name was registered on September 23, 2005 (by eDreams Ltd, London).
Furthermore, the Panel finds that the press publications, websites and other documents concerning Complainant contain no date earlier than the year 2000.
On the basis of the above, the Panel finds that there is no evidence that Complainant acquired its trademark rights prior to the registration date of the disputed domain name.
It is a basic rule of UDRP case law that, when a domain name is registered
before a trademark right is established, the registration of the domain name
was not in bad faith because the registrant could not have contemplated Complainant’s
non-existent right. See John Ode d/b/a ODE and ODE-Optimum Digital Enterprises
v. Intership Limited, WIPO Case No. D2001-0074
This may be different if Complainant can prove that Respondent clearly was aware of the trademark when it registered the domain name. This exception does not apply here, since Complainant has not proven that its business activity started before the registration date of the domain name <e-dreams.com>, nor that there is any other reason – such as Respondent being involved in developing Complainant’s business plan – why Respondent would have any knowledge of Complainant’s trademark when registering the disputed domain name.
Complainant has therefore failed to provide the required evidence that Respondent
registered and used the domain name in bad faith. This implies that the Panel
does not need to consider whether Complainant has provided sufficient evidence
that Respondent has no right or a legitimate interests in the domain name.
For all the foregoing reasons, the Complaint is denied.
Wolter Wefers Bettink
Dated: August 3, 2006