National Arbitration Forum




E-Power Marketing v. E Power, Inc.

Claim Number: FA0712001124643




Complainant is E-Power Marketing (“Complainant”), represented by Lawrence J. Crain, of Greer, Burns & Crain, Ltd., 300 S. Wacker Drive, Suite 2500, Chicago, IL 60606.  Respondent is E Power, Inc. (“Respondent”), 3597 Lorrie Drive, Oceanside, NY 11572.





The domain name at issue is <>, registered with Network Solutions, Inc.





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.





Complainant submitted a Complaint to the National Arbitration Forum electronically on December 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 28, 2007.


On December 27, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


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 by e-mail.


A timely Response was received and determined to be complete on January 28, 2008.


On February 1, 2008, a timely Additional Submission was received from the Complainant.


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.





Complainant requests that the domain name be transferred from Respondent to Complainant.





A.     Complainant


The Complainant is the owner of a US registered trademark for the words “E‑POWER MARKETING” which was registered on December 9, 2003.  The mark was registered “for increasing user visits for websites of others on a global computer information network, from online sources, namely, search engines, directories, news groups, websites and email.”  The Complainant has continuously used its mark in commerce since July 2, 1998 and has operated a website <> since July 2, 1998.  The Complainant has spent large sums on advertising relating to the promotion of its website and trademark.


The Respondent registered the disputed domain name on June 26, 2001.  The disputed domain name includes the distinctive “e-power” portion of the Complainant’s “E-POWER MARKETING” trademark.  The fact that the Respondent has deleted “marketing” and inserted “medical” is not sufficient to avoid a likelihood of confusion, especially considering the similar connotations of ‘marketing” and “medical” with respect to their uses on the website.


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‑> 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 US principal register of trademarks.  The use of the website under the disputed domain name to offer services that are in competition with and related to those offered by the Complainant constitutes bad faith.  See, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 24, 2000).


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 February 2, 2003, the Respondent advertised E‑Power as a starter base and website to generate targeted traffic for pharmaceutical and health-related websites with a focus on increasing return on investment.  On April 7, 2007, it claimed that it advertised services that “increase your visibility and presence on the internet.”  Accordingly, the services offered by both the Respondent and the Complainant are closely related.  As such, the Respondent has no legitimate interest in obtaining and using the disputed domain name which it acquired in bad faith. 


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 <> domain. 





The Complainant has rights in the United States trademark E-POWER MARKETING registered on December 9, 2003.  The disputed domain name was registered by the Respondent on June 26, 2001.


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.





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.



Identical and/or Confusingly Similar


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 <> 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. 





For these reasons, the Panel concludes that relief shall be DENIED.




Hon. Sir Ian Barker

(Presiding Panelist)


Hon. Carolyn M. Johnson                                         Anne M. Wallace

(Panelist)                                                                    (Panelist)



Dated:  February 21, 2008