EWR, Inc. v. Virtual
Marketing Systems, Inc.
Claim Number: FA1007001337637
PARTIES
Complainant is EWR, Inc. (“Complainant”), represented by Leonard C. Dunavant,
1000 Ridgeway Loop Rd., Tennessee, USA.
Respondent is Virtual Marketing Systems, Inc. (“Respondent”), represented by Ronald N. Day, of Virtual Marketing Systems, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecotton.net> (the “Disputed Domain Name”),
registered with TUCOWS, INC.
PANEL
The undersigned certifies 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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 27, 2010.
On August 3, 2010, TUCOWS, INC. confirmed by e-mail to the
National Arbitration Forum that the <ecotton.net> domain name is
registered with TUCOWS, INC. and that the
Respondent is the current registrant of the name. TUCOWS, INC.
has verified that Respondent is bound by the TUCOWS,
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 August 12, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of by which
Respondent could file a Response to the Complaint, via e-mail to all entities
and persons listed on Respondent’s registration as technical, administrative,
and billing contacts, and to postmaster@ecotton.net. Also on August 12, 2010, the Written Notice
of the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response was transmitted to Respondent via post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received and determined to be complete on August 30, 2010.
On or about August 31, 2010 Complainant filed a timely additional
submission.
On or about September 1, 2010 Respondent filed a timely additional
submission.
On September 10, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the
owner of the design service mark ECOTTON registered as
Registration
Number 3,484,441 with the
Office. This trademark was registered on August 12,
2008, for e-commerce services in
the field of cotton, namely, facilitating the
sale and purchase of cotton between
cotton farms and cotton mills and other raw cotton buyers via the internet. Further, on May 24, 2010 Complainant filed a
word mark application with the United States Patent and Trademark office for
ECOTTON. This application remains
pending.
The Disputed Domain Name is identical or confusingly similar to both
the Registered trademark and the pending application (together the
"Marks") in which the Complainant has rights
The Respondent is
using the Disputed Domain Name to promote the sale of cotton over the internet.
Respondent has no
rights or legitimate interest in the Disputed Domain Name. As the owner of the
Marks, Complainant has the exclusive right to the use of the name in connection
with e-commerce cotton sales. Respondent's use of the domain name allows it to traffic
off of the good name of Complainant and is not for a legitimate business
purpose. Complaint further submits that
the Respondent is not commonly known by the Disputed Domain Name.
The Disputed
Domain Name was registered and is being used in bad faith. The Respondent is
apparently in the business of facilitating and/or promoting e-commerce cotton
sales in direct competition with the Complainant and is offering its services
using the Disputed Domain Name as an inducement to potential customers. These
potential customers include customers in the United States of America where the
Complainant has been operating and using the Marks for over ten years and has
developed a well-respected and well-known company, whose customers will only be
confused by Respondent's use of the Disputed Domain Name. Complainant submits
that this use by Respondent of a confusingly similar domain name for commercial
gain is evidence of bad faith registration and use.
B. Respondent
Respondent launched an integrated marketing system for food and fiber
products on December 16, 1997. This
internet based marketing system is generally focused on agricultural goods and
services, including cotton and cotton products.
Respondent’s services include such things as marketing
systems for food and fiber products/services, online stores for gourmet foods
and value-added products, identity preserved marketing (including domain names
such as ewheat.com, ecorn.com, soybeans.com, ecattle.com, epotatoes.com,
etomatoes.com, and the Disputed Domain Name), a finding site for locally grown
produce, logistics applications transportation services, harvesting services,
and employment services, a self publishing knowledge database library, internet
database software application for ecommerce, and web site development and
hosting.
The Disputed Domain Name was registered May 11, 1999 and was put to use
on or before November 25, 1999.
To Respondent’s knowledge, the expression “ecotton” had no presence
online in any manner at the time Respondent’s original ecotton.net page was
published. The service mark “tm” or
ecotton.net™ has been used with ecotton.net at least since 5/21/2001.
C. Complainant’s Additional
Submission
On or about August 31, 2010 Complainant filed a timely additional
submission.
Respondent’s response is procedurally deficient and should not be considered. It is deficient because it does not comply with Policy Rule 5 in two respects. Firstly, it does not specifically respond to the statement and allegations contained in the complaint and include any and all bases for the Respondent to retain registration and use of the Disputed Domain Name. Secondly, the answer does not conclude with the following statement followed by the signature of the Respondent or its authorized representative: “Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument ."
Additionally, the Complainant holds a valid registered trademark in the Marks. A registration on the Principal Register with the U.S. Patent and Trademark Office is prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the registered mark. The Respondent’s use of the Disputed Domain Name clearly infringes upon the rights of Complainant in its Marks.
Finally, the Complainant or its predecessor company has used the domain name <ecotton.com> since April 2, 1999, which was before Respondent registered and began using the Disputed Domain Name. This domain name, <ecotton.com>, has been in continuous use since. The Respondent has no prior rights in the name “ecotton”.
D. Respondent’s additional submission
On or about September 1, 2010 the Respondent filed a timely additional submission. This additional submission added to its response the language required by Rule 5.
FINDINGS
Complainant owns
the design service mark ECOTTON. This registration issued on August 12,
2008.
Respondent
registered the Dispute Domain Name on May 11, 1999 and began using it on
November 25, 1999.
Complainant and
Respondent are commercial competitors for purposes 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.
Complainant asserts that the response should be disregarded because of two deficiencies. First, the response does not include certain language required by Policy paragraph 5. Second, the response does not specifically address the issues raised in the complainant and does not give reasons why Respondent should prevail.
Complainant is correct that the response does not include certain language required by Policy paragraph 5; however, Respondent corrected this deficiency in its Additional Submission, and this Panel accepts this correction.
The provisions of ICANN Rule 5 requiring that a response 1) respond specifically to the statements and allegation contain in the complaint and 2) include any and all basis for the respondents to retain registration and use of the disputed domain name, are instructional for respondents, not a threshold requirement for acceptance of a response. No specific sanction need be imposed for a response that is deficient in these respects; a failure, if any, is in the nature of a self inflicted sanction.
As such, Respondent’s response and additional submission are accepted and have been given due weight.
Under Policy paragraph 4(a)(i), a panel must decide two questions: 1) does the Complainant have rights in a trademark, and 2) is the involved disputed domain name identical or confusingly similar to such trademark? Any issue about whether a registration of a disputed domain name predates the accrual of a complainant’s trademark rights is better addressed under one or both of the other two elements of Policy paragraph 4(a).
The trademark rights in which a
complainant has rights may arise from a registration in a national trademark
office, such as a registration with the United States Patent and Trademark
Office. See Expedia, Inc. v. Tan, FA
991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is
registered with the USPTO, [the] complainant has met the requirements of Policy
¶ 4(a)(i).”); see
also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT
mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb.
Forum June 8, 2007) (finding that the complainant’s rights in the KISSES
trademark through registration of the mark with the USPTO “date back to the filing date of the
trademark application and predate [the] respondent’s registration”).
Alternatively, the requisite trademark
rights may arise in the absence of a national registration from actual use of a
trademark in commerce, giving rise to “common law” trademark rights. See Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug.
17, 2000) (finding common law rights in a mark where its use was continuous and
ongoing, and secondary meaning was established); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972
(Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established
common law rights in the STELLAR CALL CENTRES mark because the complainant
demonstrated that its mark had acquired secondary meaning).
In the present administrative action, Respondent is the
owner of
Complainant also asserts that on April 2, 1999 it registered and has continuously used the domain name <ecotton.com>. Registration and continuous use of this domain name could constitute evidence of secondary meaning, but in order to demonstrate secondary meaning, Complainant must provide much more evidence than merely this. Complainant has not made such an evidentiary showing. Further, rights in a domain name, in and by themselves, are not protected by the Policy; the policy protects trademark rights. As such, Complainant’s domain name <ecotton.com> will not be considered further.
In determining indenticality and
substantial similarity, a panel compares a disputed domain name to the involved
trademark. This comparison is made without
regard to insubstantial differences, such as with the addition of a top level
domain identifier (gTLD), the addition or absence of a letter, space, hyphen,
or the like. See Reebok
Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005)
(holding that the <reebok.net> domain name was identical to the
complainant’s REEBOK mark because it fully incorporates the mark and merely
adds a generic top-level domain); see
also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May
23, 2005) (finding the respondent’s <honeywell.net> domain name to be
identical to the complainant’s HONEYWELL mark).
In the present administrative action, and after removing the top level domain identifier “.net,” the Disputed Domain Name is “ecotton,” and Complainant’s trademark is ECOTTON, which are identical for purposes of the Policy.
As such, Complainant has established the first element of Policy paragraph 4(a).
Policy paragraph 4(c) sets forth three
non-exclusive conditions under which a respondent would have rights or
legitimate interests in a disputed domain name. The first condition is when a respondent is
using the disputed domain name in furtherance of a bona fide offering of goods or services. However, even where a respondent is using a
disputed domain name in connection with a legitimate business (and not merely
to cybersquat) many panels have found that nevertheless a respondent does not
have rights or legitimate interests if it has filed and is using the disputed
domain name in bad faith, and more specifically when a respondent is using an identical
or confusingly similar domain to compete commercially with a trademark owner
and the respondent is doing so intentionally to attract internet users to
itself and away from the trademark owner.
See Bank of
Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd.,
FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use
of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to
respondent’s own website for commercial gain does not constitute either 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)). This Panel believes that it is often more
clear to consider these issues under Policy paragraph 4(a)(iii) and 4(b),
rather than here under Policy paragraph 4(a)(ii) and 4(c)(i).
The second condition under which a respondent
would have rights or legitimate interest in a disputed domain name is when a
respondent has been commonly known by the disputed domain name.
The third condition under which a respondent
would have rights or legitimate interests is where the respondent is making a
legitimate noncommercial or fair use of the dispute domain name, without intent
for commercial gain to misleadingly divert consumers or to tarnish a trademark
or service mark at issue.
Under this element of the Policy, a complainant has the burden to make
a prima facie showing, which burden
is light, and then the burden shifts to the respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
In the present administrative action, Complainant
has demonstrated that Respondent is not commonly known by the name
“Ecotton.” Respondent is commonly known
by the name Virtual Marketing Systems,
Inc.
Complainant has demonstrated that Respondent
is using the disputed domain name for commercial purposes, which is sufficient
to establish that Respondent is not using the Disputed Domain Name for
non-commercial or fair use purposes.
Complainant further demonstrates that the
Disputed Domain Name is identical to Complainant’s trademark and that the Complainant
and Respondent are competitors, which could bring Respondent’s conduct within
the above noted exception, provided this Panel also finds that Respondent’s
registration and use of the Disputed Domain Name is in bad faith. This showing is sufficient to carry
Complainant’s burden for purposes of this element of the Policy.
Respondent demonstrates that it is using the
Disputed Domain Name in connection with its business, which is to operate an
internet based integrated marketing system for food and fiber products,
including products made of cotton. This
is a legitimate commercial endeavor and is sufficient to establish that it does
have rights or legitimate interests to the domain name, provided this Panel
does not otherwise find that Respondent’s registration and use of the Disputed
Domain Name is in bad faith.
As is noted below, this Panel does not find
that Respondent’s registration and use of the Disputed Domain Name is in bad
faith, and as such, Respondent is using the Disputed Domain Name in connection
with a bona fide offering of goods or
services and therefore does have rights or legitimate interests in the Disputed
Domain Name.
As such Complainant has failed to establish the
second element of Policy paragraph 4(a).
Policy paragraph 4(b) sets forth four non-exclusive
conditions under which a respondent’s registration and use of a disputed domain
name would be in bad faith. The first
condition is when the respondent is using a disputed domain name under circumstances
indicating that a respondent has registered or acquired the dispute domain name
primarily for the purpose of selling, renting, or otherwise transferring the
disputed domain name registration to the complainant who is the owner of the
trademark or service mark or to a competitor of that complainant, for valuable
consideration in excess of your document out-of-pocket costs directly relate to
the domain name.
The second condition is when a respondent has
registered a disputed domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark, in a corresponding domain
name, provided that the respondent has engaged in a pattern of such conduct.
The third condition is when a respondent has
registered a disputed domain name primarily for the purpose of disrupting the
business of a competitor.
The fourth condition is when a respondent, by
using a disputed domain name, has intentionally attempted to attract, for
commercial gain, internet users to its website, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of your website.
Of these four conditions, Complainant has
raised only the last, which is addressed below.
The others will not be considered.
In the present administrative action, Respondent
registered the Disputed Domain Name on May 11, 1999 and began using the
Disputed Domain Name on or before November 25, 1999, which was some ten years
before Complainant obtained its trademark registration. As such, in the absence of trademark rights
on the part of Complainant for some ten years, it is not possible for
Respondent to have registered and used the Disputed Domain Name for the purpose
of intentionally attracting, for commercial gain, internet users to
Respondent’s website, by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of respondent’s
website.
As such Complainant has failed to establish
the third element of Policy paragraph 4(a).
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed, Panelist
Dated: September 23, 2010
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