E-Switch, Inc. v. Vertical Axis, Inc. c/o Domain Administrator
Claim Number: FA0803001163985
Complainant is E-Switch, Inc. (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eswitch.com>, registered with Nameview, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Hugues G. Richard as Chair
Carolyn Marks-Johnson as Panelist
David E. Sorkin as Panelist
Complainant submitted a Complaint to the National Arbitration Forum
On March 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
On April 23, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Chair, Carolyn Marks-Johnson and David E. Sorkin as Panelists.
On April 24, 2008, a timely and complete Additional Submission from Respondent was received.
Complainant requests that the domain name be transferred from Respondent to Complainant.
FACTUAL AND LEGAL GROUNDS
The Complainant claims that, knowing of the E-SWITCH trademarks, Respondent obtained the <eswitch.com> domain name in an effort to generate confusion and resulting click-through revenue. Respondent uses the <eswitch.com> domain name in connection with a website that merely hosts a variety of links to and advertisements for third parties selling a wide variety of goods and services that compete with those offered by E-Switch.
On January 9, 2008, E-Switch sent a letter to Respondent through the registrar’s “Whois Identity Shield” objecting to Respondent’s unauthorized use of the <eswitch.com> domain name.
Thereafter, Respondent modified the <eswitch.com>website to include “Sponsored Results for WITCH” rather than “Sponsored Results for E SWITCH.” Despite Respondent’s attempt to present the <eswitch.com>website as merely relating to witches, the website continues to display links relating to switches such as those sold by E-Switch. Without question, the sole reason Respondent registered and is using the <eswitch.com> domain name is to generate advertising revenue for Respondent by creating a likelihood of confusion with the well-known and distinctive E-SWITCH trademark.
Identical and/or Confusingly Similar
E-Switch owns common
law rights in its E-SWITCH trademark based on its longstanding and continuing
use of the trademark for nearly fifteen years.
In addition, E-Switch owns registrations for its E-SWITCH mark in the
The <eswitch.com> domain name wholly incorporates and is identical to the E-SWITCH trademark, except for the removal of the hyphen between “E” and “Switch.” The removal of the hyphen is not sufficient to distinguish the domain name from the E-SWITCH trademark. In addition, a generic top-level domain such as “.com” does not distinguish the domain name from the E-SWITCH trademark. Thus, Section 4(a)(i) of the Policy is clearly satisfied, as the <eswitch.com> domain name at issue is “identical or confusingly similar” to trademarks in which E-Switch has rights.
Respondent Has No Rights or Legitimate Interests in the Domain Name
Respondent does not use the <eswitch.com> domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the domain name; and Respondent has never been known as or referred to as the name incorporated in the domain name.
In addition, there is no evidence that Respondent is commonly known by “eswitch” or any variant thereof. The Whois record for the <eswitch.com> domain name merely lists the domain name itself and indicates that the domain name was registered using the registrar’s “Whois IDentity Shield” program. The absence in the Whois record of any indication that Respondent is commonly known by the name incorporated in the <eswitch.com> domain name supports the conclusion that Respondent is not known by this designation. A review of Respondent’s websites accessible via the <eswitch.com> domain name further confirms that Respondent is not commonly known by this name. Moreover, the fact that Respondent freely changed the content of the <eswitch.com> website to reflect “Sponsored Results” for the term “WITCH” rather than “Sponsored Results for E SWITCH” also indicates that Respondent is not commonly known by “eswitch” or any variation thereof.
Accordingly, Section 4(a)(ii) of the Policy is satisfied, as Respondent has no legitimate interests in the domain name as defined in Sections 4(c)(i)-(iii) of the Policy.
Respondent Registered and Is Using the Domain Name in Bad Faith
There are multiple grounds for finding bad faith in this case, any one of which is sufficient to justify transferring the domain name to E-Switch.
Respondent Is Attempting To Attract Internet Users to Advertisements on Its Website for Commercial Gain by Creating a Likelihood of Confusion
Respondent is using the <eswitch.com> domain name to display revenue-generating links to third parties. Respondent is acting in bad faith by capitalizing on the likelihood of confusion it is creating by using the E-SWITCH trademark in the <eswitch.com> domain name. Prior to being notified by E-Switch, the <eswitch.com> website included sponsor links for switching products, including products that compete with E-Switch’s products. Use of the <eswitch.com> domain name to provide links to the very types of products offered by E-Switch is likely to cause consumers to believe mistakenly that the website is operated by or affiliated with E-Switch. Complainant has given proof of actual confusion. The actual and likely consumer confusion caused by Respondent’s use of the <eswitch.com> domain name is compelling evidence of Respondent’s bad faith registration and use of the domain name under UDRP ¶ 4(b)(iv).
Respondent’s Knowledge of E-Switch’s Rights Prior To Registering the Domain Name Is Evidence of Bad Faith
“Registration of a domain name that is confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). E-Switch has used its E-SWITCH trademark for fifteen years across the globe. Given Respondent’s use of the <eswitch.com> domain name to display links to switching products, it is beyond doubt that Respondent was aware of the E-SWITCH trademark when it registered the domain name and elected to use the domain name to earn click-through revenue.
Moreover, even in the highly
unlikely event that Respondent did not have actual knowledge of E-Switch’s
rights when it registered the eswitch.com domain name, Respondent nonetheless
was imparted with constructive knowledge of E-Switch’s rights pursuant to
Respondent’s Registration of the Domain Name through Concealment Is Evidence of Bad Faith
Respondent registered the <eswitch.com> domain behind the registrar’s “Whois IDentity Shield” program which prevents the public, including E-Switch, from determining the true identity of the domain name registrant. This act of concealment alone can provide evidence of bad faith registration and use.
Respondent’s Attempt to Alter the Content of the Website is Evidence of Bad Faith
As described above, on
FACTUAL AND LEGAL GROUNDS
Not Identical nor Confusingly Similar
Respondent refuses to transfer the disputed domain name <eswitch.com> (the “Domain”) to Complainant on the grounds that its trademark is not a mark for the word “eswitch” but for a stylized form of the word. The differences between Complainant’s stylized mark and the Disputed Domain are more than sufficient to find they are not identical or confusingly similar, particularly because Complainant’s mark is descriptive and, thus, entitled to very limited protection. Complainant uses its mark in a descriptive fashion for its business that sells switches online. The letter “e” in front of word stands for “electronic” and refers to anything done online (as in email, ecommerce, etc.).
Respondent has a legitimate interest in the Domain because “eswitch” is a descriptive term that anyone is entitled to register. The descriptive nature of the term is underscored by substantial third party use, including a third party registered trademark for ESWITCH (without the hyphen), and over 11,000 third party Google results. Moreover, Respondent has used the domain name in connection with bona fide goods and services in the nature of pay-per-click ads which further establishes its legitimate interest. Respondent has not engaged in bad faith registration or use.
Respondent never heard of Complainant or its trademark when it registered the Domain. The fact that Respondent registered the Domain solely based on its descriptive nature (and not because of Complainant’s trademark) is corroborated by the more than 50 other descriptive domain names Respondent has registered which are preceded by the letter “e,” such as <ebedding.com>, <ealuminum.com>, <eappraisals.net>, <ebooktraining.com>, <ebooks.net>, <ebatterystore.com>, <e-camp.org>, and <e-botanica.com>. The fact that Complainant has presented evidence of actual confusion is not relevant under the UDRP because there is no proof the Respondent intended to create confusion – and the evidence points to the contrary.
Complainant filed its application, and began use of another registered mark (No. 3,347,324) on January 30, 2007, but that was over a year after Respondent registered the Domain on October 28, 2005.
Respondent believed no party could claim exclusive rights to this descriptive term domain name. The Disputed Domain was registered on October 28, 2005. DomainTools Whois History report. Respondent registered the Disputed Domain when it was deleted and expired due to the prior registrant’s failure to renew it. Respondent did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when it registered the domain name. Complainant has not proffered any evidence demonstrating that Respondent had knowledge of its trademark. Respondent did not register the Disputed Domain with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site. Respondent did not register the Disputed Domain to prevent Complainant from owning a domain name incorporating its trademark. Strong corroboration for the fact that Respondent registers domain names solely because they incorporate common words or descriptive terms are the more than 50 other domain names it has registered which incorporate common and descriptive words, preceded by the prefix “e,” such as: <ebedding.com>, <ealuminum.com>, <eappraisals.net>, <ebooktraining.com>, <ebooks.net>, <ebatterystore.com>, <e-camp.org>, and <e-botanica.com>, <ebizsearch.com>, <e-asset.com>, <eamateur.com>, etc. The only pattern evident from these domain names is that each domain name is preceded by the letter “e.” Each domain name was registered simply because someone else registered them first and then abandoned them by failing to pay the renewal fees. The fact that one of these domain names happened to be similar to Complainant’s descriptive trademark is strictly coincidence. Respondent hosts the Disputed Domain with HitFarm.com, a service that places sponsored search pay-per-click (“PPC”) advertisements provided by Yahoo.com on domain names owned by third parties, and shares advertising revenue earned from the sponsored search results with the domain owners. As indicated in the Complaint, when Respondent first registered the Domain, the PPC links related to switches. After Respondent received a cease and desist letter complaining about its use of the mark, but before this dispute was initiated, Respondent altered the web site to contain information about witches, as noted in the Complaint. Respondent did not do this in bad faith but rather as an accommodation in an attempt to avoid a legal dispute.
B. Respondent Has Rights And A Legitimate Interest In The Domain Name
The registration of domain names, like <eswitch.com>, that contain common descriptive terms subject to third party use ipso facto establishes the Respondent’s legitimate interest. There can be no doubt that Complainant’s mark is descriptive by virtue of i) “e” stands for electronic; and Complainant sells electronic switches; and ii) the substantial third party use of the term “eswitch,” as demonstrated by over 11,000 third party Google results. There is even a third party registered trademark for ESWITCH (without the hyphen).
C. Complainant Has Not Demonstrated That The Domain Name Was Registered and Is Being Used In Bad Faith
Respondent had absolutely no knowledge of Complainant’s alleged mark when it registered the Disputed Domain. Respondent simply registered it because it incorporated a common word, and because it became available when the prior registrant of the domain name failed to renew it. There is no evidence that Respondent even had knowledge of Complainant’s mark when it registered it. Absent such evidence, bad faith cannot be proven.
The substantial third party use of the mark certainly lends credence to the fact that Respondent did not have Complainant’s mark in mind when it registered the domain. Complainant has acknowledged that prior to January 2008, when it sent Respondent a cease and desist letter, the web site had carried PPC links related to “switches.” The record contains evidence that these links were present as early as May 2006. As noted above in the legitimate interest section, such descriptive use of a Domain is a good faith use. Complainant argues that Respondent’s alteration of the web site to contain links related to witches constitutes a bad faith act. However, the change was done to accommodate Complainant’s stated concern that Respondent was violating its trademark rights. While, Respondent did have a right to use the descriptive domain name <eswitch.com> to advertise switches, the alteration does not constitute bad faith. The change was done long after the Domain was registered and, thus, is irrelevant in determining Respondent’s mindset in October 2005 when it registered the Domain. Nevertheless, the web site change was not a bad faith act. The change was done as an accommodation in an attempt to avoid a dispute. Such a response to a cease and desist letter does not constitute bad faith.
Complainant is also incorrect that its evidence of actual confusion supports a finding of bad faith under the Policy. It cannot. First, as noted above, this actual confusion occurring after the Domain was registered does not prove Respondent’s intentions at the time of registration. It is the Respondent’s intent that is relevant and there simply is no evidence of an intent to confuse. Bad faith registration and use cannot be inferred, when a mark is descriptive, particularly when, as here, there is “substantial third party use of the term.”
C. Additional Submissions
E-Switch Owns Documented Trademark Rights In Its E-SWITCH Name and Mark.
It is without question that E-Switch owns trademark rights in its E-SWITCH trademark. Complainant’s E-SWITCH mark is subject of an incontestable federal registration, namely Registration No. 1,871,860. Respondent argues that Registration No. 1,871,860 does not establish that E-Switch owns rights in the E-SWITCH word mark because the registration covers E-Switch’s stylized version of its E-SWITCH mark. However, Respondent ignores the fact that the E-SWITCH designation is not disclaimed in Registration No. 1,871,860, which demonstrates the United States Patent and Trademark Office’s conclusion that E-Switch’s E-SWITCH mark is distinctive and protectable. (Complaint, Ex. 4.) In addition, Registration No. 1,871,860 issued without a claim of acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1025(f), which further demonstrates the inherent distinctiveness of the E-SWITCH mark.
Moreover, prior panels have found, “graphic elements . . . not being
reproducible in a domain name, need not be considered when assessing identity
or confusing similarity.” Sweeps Vacuums & Repair Ctr. v. Nett
Corp., D2001-0031 (WIPO
In E-Switch’s many registrations for its E-SWITCH mark in a stylized form, the term “E-SWITCH,” is plainly the dominant aspect of the mark. E-Switch’s numerous registrations for its E-SWITCH mark, including incontestable Registration 1,871,860, establish E-Switch’s rights in its E-SWITCH mark.
Respondent also ignores that the fact that E-Switch uses its E-SWITCH name and mark in plain text, as shown, on Exhibit 3 of the complaint. As further evidence of E-Switch’s rights in its E-SWITCH trademark, E-Switch submits herewith as Exhibit A excerpts from E-Switch’s product catalogs from 1995, 1996, and 1999 which show E-Switch’s use of the E-SWITCH mark in plain text long prior to Respondent’s registration of the <eswitch.com> domain name in October 2005. E-Switch had significant sales of E-SWITCH product long before Respondent registered the <eswitch.com> domain name. In particular, during the period of 1993 through 2004, E-Switch achieved over $130 million in sales. As such, notwithstanding E-Switch’s registered trademark rights, E-Switch owns longstanding common law rights in the E-SWITCH designation based on its long and continuous use of that mark long before Respondent registered the <eswitch.com> domain name. Moreover, the <eswitch.com> domain name and its associated webpage have caused actual confusion, demonstrating that consumers view E-SWITCH as a designation of source and the <eswitch.com> domain name confusingly similar thereto.
As indicated, E-Switch has not disclaimed the exclusive right to use the
mark E-SWITCH in Registration No. 1,871,860 or any other registration. Moreover, E-Switch’s registration has become
incontestable, and therefore the E-SWITCH mark is not subject to attack on the
ground that it is merely descriptive. Park ‘N Fly, Inc. v. Dollar Park & Fly,
E-Switch’s longstanding use of the E-SWITCH mark well before Respondent registered the <eswitch.com> domain name as well as the actual confusion caused in the minds of E-Switch customers demonstrate that E-SWITCH is a distinctive source identifier for E-Switch. Respondent attempts to challenge E-Switch’s rights by arguing there are “over 11,000 third party Google results” for “eswitch.” However, this result is misleading. Many of the results in Respondent’s search are for products or services that are completely different from the switches offered by E-Switch, which further confirms that E-SWITCH is not descriptive of E-Switch’s products. Moreover, Respondent intentionally set up its Google search to exclude all hits that also include “e-switch,” so that Respondent’s search results intentionally removed references to Complainant E-Switch. Thus, Respondent’s results fail to show the truth, that Google searches for “e-switch,” “e switch” (no hyphen with a space), and “eswitch” (no hyphen, no space) all predominantly feature Complainant E-Switch. In fact, E-Switch’s website is the first hit on all three searches, and most of the remaining hits refer to websites affiliated with E-Switch in some way, including E-Switch distributors, which again confirms the distinctiveness of the E-SWITCH trademark.
The <eswitch.com> Domain Name is Confusingly Similar to the E-SWITCH Trademark.
Respondent argues that the small
difference of the removal of the hyphen matters because “e-switch” is a
descriptive term, and when “the mark is merely descriptive, small differences
matter.” (Response, at 6) (quoting Tire Discounters, Inc. v. TireDiscounter.com,
FA 679485 (Nat. Arb. Forum
E-Switch has trademark rights in the E-SWITCH mark, and Respondent’s <eswitch.com> domain name is identical or confusingly similar to it. Without question, E-Switch has satisfied Section 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
Respondent Does Not Have Any Rights or Legitimate Interests In the Domain Name.
Respondent is not commonly known by “eswitch” or any variation thereof, it is not using the <eswitch.com> domain name in connection with a bona fide offering of goods or services, and Respondent is not making a noncommercial fair use of the domain name. Rather, Respondent is known by the name “Vertical Axis, Inc.” (which was only revealed to E-Switch after it filed its Complaint given that Respondent registered the domain name using an identity shield service). In addition, Respondent has only used the <eswitch.com> domain name to host revenue-generating links, some of which link to products that compete with E-Switch.
All the decisions cited by Respondent found that a legitimate interest was present because either the complainant did not have trademark rights, or because the respondent demonstrated it was using the domain name to describe its services. Here, E-Switch owns trademark rights in its E-SWITCH mark. In addition, the <eswitch.com> domain name does not describe Respondent’s activities whatsoever, which consists of hosting revenue-generating click-through links that direct Internet users to competitors of E-Switch. None of the decisions cited by Respondent found that hosting links to competitors of the trademark owner is a legitimate interest. Indeed, Respondent is well aware that its activities do not constitute a bona fide offering of services. See Candid Color Sys., Inc. v. Vertical Axis, Inc., FA 702669 (Nat. Arb. Forum June 27, 2006) (finding Vertical Axis was not making a legitimate use of the <partypic.com> domain name because “the name PARTY PICS which, if descriptive once, is now one in which Complainant has acquired . . . substantial rights and goodwill . . . [and] it is not the sort of term that is likely to be very commonly used”). There can be no question that E-SWITCH acquired trademark rights in its E-SWITCH mark long before Respondent registered the <eswitch.com> domain name in October 2005.
“[I]t has been well established in various UDRP decisions that redirecting Internet users to sites featuring links to third-party websites does not constitute a bona fide offering of goods under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as the registrant of such a domain name receives financial compensation when users click on the links by way of click-through fees.” Life Time Fitness, Inc. v. Great Names for sale at TheNameStore.com!, FA 1145885 (Nat. Arb. Forum Mar. 31, 2008); see also 3M Co. v. Excellence Internet Servs., Ltd., FA 771820 (Nat. Arb. Forum Sept. 26, 2006); see also Elsevier B.V. v. Domain Deluxe, FA 237520 (Nat. Arb. Forum Mar. 24, 2004)
Moreover, none of the decisions Respondent cites deal with the situation at issue here, where the click-through advertising links provided on the domain name at issue link to competitors of the trademark owner. In fact, one of Respondent’s cited decisions, another where Vertical Axis is a party, expressly notes that such a situation is not a bona fide commercial offering. Thus, E-Switch has satisfied Section 4(a)(ii) of the UDRP.
Respondent Registered and Is Using the Domain Name In Bad Faith
Respondent argues that it “had
absolutely no knowledge of Complainant’s alleged mark when it registered the
Disputed Domain.” Respondent’s purported
subjective knowledge is immaterial.
Respondent registered a domain name that is identical or confusingly
similar to an incontestably registered trademark. See
Life Time Fitness, FA 1145885, supra (“[R]egistering a domain name
which is confusingly similar to a registered trademark in order to divert
Internet users consists of a use in bad faith of a domain name.”). Even if Respondent did not have actual notice,
it had a duty to avoid registering domain names that are confusingly similar to
trademarks it should have known about.
As the panel noted in Digi Int’l
v. DDI Sys., FA 124506 (Nat, Arb. Forum
Moreover, prior panels have found
that Vertical Axis is a serial registrant of domain names that infringe the
trademarks of others in order to exploit confusion with the trademark. See
Candid Color Sys., FA 702669, supra;
MBNA Am. Bank, N.A. v. Vertical Axis,
FA 133632 (Nat. Arb. Forum
For the foregoing reasons, E-Switch has satisfied Section 4(a)(iii) of the UDRP.
Relevancy of the Descriptiveness and Weakness of Complainant’s Mark
Respondent restates that a mark that is weak is subject to limited protection.
Small Differences Matter – And it is Appropriate to Raise the Issue Here
Complainant’s mark here indeed has design elements. Perhaps, as Complainant suggests, not as significant as in Weil Lifestyle but, nevertheless, significant. The E is oversized and there is a design behind the letters TCH in SWITCH. The differences in the marks are self-evident.
The cases cited by Complainant regarding confusing similarity are obviously inapposite. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) involved the domain name <hewlitpackard.com>, a typo of Complainant’s unique and non-descriptive mark. Hugh Jackman v. Peter Sun, FA 248716 (Nat. Arb. Forum May 10, 2004) involved domain names incorporating variations of the actor Hugh Jackman’s name. Such non-descriptive marks are entitled to far greater protection than Respondent’s descriptive/generic mark for “switch,” with the descriptive letter “e” in front of it.
The search on Google was not intended to show that Complainant is not known on the Internet. It was intended to show that the mark is weak and in lawful common use by third parties. This demonstrates Complainant does not have a monopoly on the term and Respondent was justified in its belief that it could register a domain name incorporating “eswitch.” Respondent recognizes that a search including E-SWITCH would result in numerous references to Complainant. However, Respondent is not arguing that it has a right to <e-switch.com> but, rather, to <eswitch.com> (without the hyphen). The substantial third party use of eswitch further demonstrates the weakness of Complainant’s mark in attempting to preclude the uses of “eswitch” without the hyphen. In fact, as noted in the Complaint, there is even a third-party registered mark for ESWITCH.
Respondent has a Legitimate Interest in the Disputed Domain.
Respondent alleges that registering a descriptive/generic domains like <eswitch.com>, without intent to profit from a trademark, establishes a legitimate interest as does the use of such domain names to display PPC ads. Complainant’s argument that its mark is not descriptive cannot fly. Complainant does not dispute that it sells “electronic switches” under the name E-SWITCH. If that term is not descriptive of electronic switches, than E-MAIL is not descriptive of electronic mail.
Respondent cites decisions that agree that the display of PPC ads constitute bona fide use in commerce. See e.g., Nursefinders, Inc. v. Vertical Axis, Inc., D2007-0417 (WIPO July 5, 2007) involving Respondent in connection with the domain name <nursefinder.com>.
Respondent did not Register or use the Disputed Domain in Bad Faith
Complainant argues that the Respondent engaged in bad faith solely because it “registered a domain name that is identical or confusingly similar to an incontestably registered trademark.”
It is fair to argue that a respondent’s good faith belief regarding the dissimilarity of a domain name and trademark is sufficient to establish good faith registration. This is because it is the Respondent’s intent that is relevant. Here, there is no intent whatsoever of any malicious intent.
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.
Complainant asserts rights in its
E-SWITCH mark through trademark registrations of the mark with various
governmental authorities, including the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,871,860 issued January 3, 1995). The Panel
determines that these trademark registrations adequately establish
Complainant’s rights for the purposes of Policy 4(a)(i).
Respondent contends that since
Complainant’s E-SWITCH trademark registration contains the mark in stylized
form, this registration is not sufficient for Policy 4(a)(i). However, previous panels have found, and this
Panel finds, that stylization of a mark is irrelevant for the purposes of
Policy 4(a)(i), as it is impossible to incorporate stylization into a domain
name. See Roux Labs., Inc. v.
Sheldeez Beauty Salon,
The Panel determines that the <eswitch.com> domain name is
confusingly similar to Complainant’s E-SWITCH mark under Policy 4(a)(i) as the
disputed domain name contains Complainant’s mark, omitting only the hyphen from
the mark, and adding the necessary requirement of a top-level domain. Such modifications may be found insufficient
to negate the confusingly similar nature of the disputed domain name to
Complainant’s mark. See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive
Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen
in the domain names is not sufficient to differentiate the domain names from the
mark); see also Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum
While Respondent contends that Complainant’s
E-SWITCH trademark registration is comprised of common, descriptive terms and
as such cannot be enforceable under the Policy, the Panel finds that such a
determination is not necessary under Policy 4(a)(i) as this portion of the
Policy considers only whether Complainant has rights in the mark and whether
the disputed domain name is identical or confusingly similar to Complainant’s
mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA
915206 (Nat. Arb. Forum
The Panel finds that since the Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
WHOIS information identifies Respondent as “Vertical
Axis, Inc. c/o Domain Administrator” and Respondent does not allege that it is
in any way known by the <eswitch.com>
domain name. The Panel finds that since Respondent is not commonly known by the
disputed domain name under the parameters of Policy 4(c)(ii). See Educ.
Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum
Complainant asserts that Respondent previously used the <eswitch.com> domain name to display a website with hyperlinks to various third-parties in direct competition with Complainant. Complainant contends that following its cease-and-desist letter to Respondent, the content on the website was altered to display hyperlinks about “witches” instead of the previous links regarding “switches.” The Panel finds that one or both of these uses is neither a bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use under Policy 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy 4(c)(i)).
determines that Respondent is using the <eswitch.com> domain name in an
attempt to commercially benefit from creating a likelihood of confusion as to
Complainant’s source and sponsorship of the disputed domain name and resolving
website. Such a finding may lead to a
holding of bad faith registration and use under Policy ¶ 4(b)(iv). See Am.
Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum
Complainant further asserts that Respondent had if not actual knowledge of its mark, at the very least, constructive knowledge, at the time at which the <eswitch.com> domain name was registered. The Panel finds evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Additional Submission, Complainant contends that Respondent has been the
respondent in several other UDRP cases in which the disputed domain names were
transferred from Respondent to the respective complainants. See
Candid Color Sys., Inc. v. Vertical Axis, Inc c/o Domain Administrator, FA
702669 (Nat. Arb. Forum
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eswitch.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Chair
Carolyn Marks-Johnson, Panelist
Dated: May 7, 2008
I respectfully dissent, on the same grounds as in Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Nat. Arb. Forum Apr. 17, 2008). While the present case is admittedly closer than Lufthansa was, it nonetheless appears more likely to me that Respondent selected the domain name for its descriptive sense than that it did so for reasons having anything to do with Complainant or its mark. I do not believe that the circumstantial evidence supports an inference that Respondent was even aware of Complainant or the mark when it registered the domain name, let alone that the registration was targeted at Complainant or its mark, and I disagree with the majority's view that constructive notice may suffice under the Policy. I would deny the Complaint.
David E. Sorkin, Panelist
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