E-Power Marketing v. E
Power, Inc.
Claim Number: FA0712001124643
PARTIES
Complainant is E-Power Marketing (“Complainant”), represented by Lawrence
J. Crain, of Greer, Burns & Crain, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epowermedical.com>, registered with Network
Solutions, Inc.
PANEL
The undersigned certify that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Hon. Sir Ian Barker, Hon. Carolyn M. Johnson, Anne M. Wallace as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On January 7, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 28, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@epowermedical.com by
e-mail.
A timely Response was received and determined to be complete on
On
On February 7, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Sir Ian Barker (Presiding Panelist), Hon.
Carolyn M. Johnson and Anne M. Wallace as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is the owner of a US registered trademark for the words
“E‑POWER MARKETING” which was registered on
The Respondent registered the disputed domain name on
The disputed domain name is confusingly similar to the Complainant’s
trademark. On the Respondent’s website,
it provides marketing services on the internet to medical professionals similar
to those provided by the Complainant on its <e‑powermark.com>
website. The fact that the disputed
domain name offers services in the same industry as the registered trademark
leads the web surfer to believe he or she is accessing a web page of the owner
of the trademark.
The Respondent has no rights or legitimate interests with respect to
the disputed domain name. The
Complainant gave it none. The
Respondent’s use of the disputed domain name is not a bona fide offering of goods and services because the Respondent had
prior notice of the Complainant’s trademark rights.
The disputed domain name was registered and is being used in bad
faith. The Respondent’s contact
information on the disputed domain name registration is false. The Claimant’s attempt to contact the
Respondent through the email address listed on the WHOIS database was unsuccessful
and a “cease-and-desist” letter dated August 3, 2007 was returned undelivered to
the address shown in the WHOIS information.
The Respondent had constructive notice of the
trademark by virtue of the Complainant’s registration on the
B. Respondent
The Respondent and the Complainant operate under similar corporate
names: E Power Inc. and E-Power Marketing, respectively. There are significant distinctions between
the services offered by them. E-Power
Marketing markets to a broad array of client websites for search engine optimization,
whereas the Respondent operates in a target email market to individuals who
have opted to receive, specifically, medically-related information. The Complainant has no special medical focus.
The Respondent is licensed to do business under the corporate name E-Power
Inc. and has established a presence in healthcare marketing on the Internet. It uses the disputed domain name as a
corporate site to market its medically-related email marketing services to
potential clients.
The Respondent has commonly been known by E Power Inc., both on and
offline, since its inception and has never intended to confuse or mislead
potential customers by using the disputed domain name for any other marketing
purposes. It has never used the disputed
domain name for generalized search engine optimization and markets and
maintains a distinct and separate niche in the medical field solely for
targeted opt-in email marketing.
The Respondent registered the disputed domain name in good faith and
intends to continue to do business responsibly and without malicious
intent. The types of marketing and uses
of the Complainant and the Respondent are separate and distinct. The Complainant’s marketing focus is to improve
the placement of websites through search engine optimization with the intent of
driving web traffic to client sites. The
Respondent’s mode of marketing is solely through opt-in email, informing
consumers about health-related information.
The Respondent makes no use of search engine marketing.
C. Complainant’s
Additional Submissions
Whilst the Respondent’s services may not encompass all those offered by
the Complainant, the likelihood of confusion still exists with respect to any
services offered by both the Complainant and the Respondent.
The Respondent misconstrues its own services to avoid a finding of
likelihood of confusion by arguing that it offers email marketing, rather than
search engine optimization. However,
historical snapshots of the Respondent’s website clearly show that the
Respondent’s services include more than mere email marketing services.
The Respondent provides a service that generates web page traffic
exactly like the Complainant’s services.
For example, on
The Respondent acquired a disputed domain name confusingly similar to a
mark being publicly used in connection with the identical type of Internet
marketing services. Similarities between
the services offered by the Respondent and the Complainant show that the
Respondent was certain to have had notice of the Complainant’s mark,
particularly, as it was being used publicly for a three-year period prior to
the Respondent’s registration of the <epowernews.com> domain.
FINDINGS
The Complainant has rights in the
The fact that the trademark was registered after the disputed domain name
does not prevent a complainant from asserting rights in a trademark which may
or may not be confusingly similar to the disputed domain name.
The evidence of the existence of a common law mark before the date of
registration of the trademark is not sufficient to justify a finding of a
common law mark before that date.
The disputed domain name and the trademark are not confusingly
similar. Therefore, the Complainant
fails under Paragraph 4(a)(i) of the Policy.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name
has been registered and is being used in bad faith.
The Complainant has satisfied the requirement that it has a trademark in respect of the name E-POWER MARKETING, although that trademark was registered after the disputed domain name. It is sufficient under the Policy that rights in a trademark are held by the Complainant at the time of the Complaint.
However, the fact that the registration of the disputed domain name precedes registration of the trademark often creates a difficulty for a complainant in proving bad faith registration. In that respect, a complainant has to provide evidence from which the Panel could infer that, at the date of registration of the disputed domain name, the complainant had a common law trademark. The information provided by the Complainant falls far short of the proof necessary for establishing a common law trademark, as discussed in numerous cases under the Policy.
However, that
matter is academic because, in the opinion of the Panel, the trademark and the
disputed domain name are not confusingly similar. Both parties operate under corporate names. The use of the word “medical” instead of
“marketing” sufficiently distinguishes the two businesses. It was said in Entrepreneur Media Inc. v. Smith: “similarity of marks or lack thereof are context-specific concepts. In the internet context, consumers are aware
that domain names are different to websites are quite often similar, because of
the need for language economy and that very small differences matter.” 279 F.3d 1135, 1147 (9th
Cir. 2002).
See also Prudential Insurance Co. of America v. Quick Net Communications, in which the <prudentialmotors.com> domain name incorporated the complainant’s PRUDENTIAL mark with the addition of the word “Motors.” The Panel held that there was no apparent connection to the complainant or the insurance and financial industry and that the domain name was not confusingly similar to the mark. FA 146242 (Nat. Arb. Forum Mar. 27, 2003).
Since the Complainant has not satisfied the Panel that it has discharged the onus of proof under Paragraph 4(a)(i) of the Policy, the Panel does not need to analyze the other two elements of the Policy.
DECISION
For these reasons, the Panel concludes that relief shall be DENIED.
Hon. Sir
(Presiding Panelist)
Hon. Carolyn M. Johnson Anne M.
Wallace
(Panelist) (Panelist)
Dated: February 21, 2008