Epitec, Inc. v. EPITEC
Claim Number: FA1209001463139
Complainant is Epitec, Inc. (“Complainant”), represented by Christopher J. Falkowski of Falkowski PLLC, Michigan, USA. Respondent is EPITEC (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epitec.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2012; the National Arbitration Forum received payment on September 18, 2012.
On September 18, 2012, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <epitec.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2012 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@epitec.com. Also on September 19, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in EPITEC and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark EPITEC since it began business as an IT services provider in 1978.
2. Complainant owns, inter alia, United States Federal Trademark Reg. No. 4,174,322 filed Aug. 22, 2011; registered July 17, 2012 for the word mark EPITEC.
3. The disputed domain name was registered on June 6, 1998.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel finds that the disputed domain name is legally identical to the Complainant’s trademark since it takes the trademark and merely adds the non-distinctive gTLD, “.com” (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 4(c) of the Policy requires Complainant to make a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. If it does so, then the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
In terms of paragraph 4(c)(ii) of the Policy, there is no evidence that Respondent has any trademark rights however the publicly available WHOIS information identifies Respondent as “EPITEC” and so there is an open question as to whether Respondent might be commonly known by the disputed domain name.
Complainant refers briefly to the fact that Respondent used the domain name from 2000-2003, allegedly in connection with competing services. There is little elaboration of that history and so a second question arises as to whether (i) in terms of paragraph 4(c)(i) of the Policy, that use established Respondent with a right or legitimate interest in the domain name, or (ii) that allegedly competing use was somehow not in good faith and showed that Respondent lacked rights or legitimate interests.
Complainant contends that Respondent has not used the disputed domain name since February 18, 2003. It submits that through non-use for almost a decade Respondent no longer has rights or legitimate interests in the disputed domain name.
Panel observes that in relation to argument about possible confusion under paragraph 4(a)(i) of the Policy, Complainant makes the statement that “[B]oth the Complainant and the Respondent are engaged in industry of IT services. Even outside the context of identical or confusingly identical marks, the applicable services of the Respondent and the Complainant are confusingly similar.”
Panel also observes that in relation to argument about bad faith under paragraph 4(b) of the Policy and in particular to an allegation Respondent is disrupting Complainant’s business, Complainant states that “[T]he inability of customers, perspective (sic) customers, vendors, perspective (sic) vendors and others to communicate with Complainant through a website at EPITEC.COM is a significant disruption to Complainant’s business.”
Panel notes that on August 3, 2012 Complainant sent Respondent what it has called a “cease and desist letter” wherein it stated that “Epitec has closely monitored the epitec.com domain name for some time. Although the Whois listing for epitec.com indicates that the domain name was first registered in 1998, the Wayback Machine internet archive indicates that the epitec.com domain name has not been used since 2003.” Later, after the threat of UDRP proceedings based partly on some misdirected statements about the operation of the Policy, the letter continues: “In the interest of avoiding needless litigation, I am authorized to offer you a $300 administrative fee in exchange for the voluntary transfer of the domain name to Epitec.”
That letter was authored by Mark Ruma, the Chief Financial Officer of Complainant. Annexed to the Complaint are later email exchanges between Mr Ruma and Diego Faneyte, who would appear to be the beneficial owner of the domain name. On September 10, 2012 Mr Faneyte emailed Mr Ruma in these terms:
I must say that I feel a bit pressurized by your action and was not amused by your phone call on Sunday, while I made it clear that I would let you know after my holiday.
…
Like I said, I am planning to use it again for future activities. This and the reason that it would be hard to find a new domain name that describes what I am doing since 1998. … I hope you understand that handing the domain name over would cost me too much time and effort, so I will not do it.
In an earlier email to Mr Ruma, Respondent states that the domain is not active at present but the intention to use it again is underscored.
Panel has weighed this material against the burden of proof resting on Complainant to show a prima facie case that Respondent has no rights or interests in the domain name and draws the following summary findings.
First, lack of use of a domain name is not per se evidence of a lack of rights or interest in the domain name. In the absence of a Response, Panel might be entitled to make certain negative inferences as a result of non-use, especially over a long period, however in this case Complainant exhibits email correspondence which points to a direct intention by Respondent to use the name. Moreover, Complainant provides evidence that the domain name has been used in the past.
Secondly, Complainant’s bald assertion that passive holding of a domain name is evidence of bad faith must be qualified by the context in which former UDRP cases have made such a finding, specifically, instances where there was no likely good faith use to which the name could be put because of all the surrounding circumstances (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Whilst some of the factors taken into account by panelists in earlier cases of that kind are present here - namely, a degree of notoriety of Complainant’s trademark, failure to file a formal Response, difficulty in identification of beneficial owner of the domain name - there are in this case additional circumstances which mitigate any adverse finding based merely on non use.
Thirdly, there is no evidence before the Panel of registration in bad faith. The domain name was registered in 1998. Although Complainant holds a much later acquired Federal trademark registration and has given evidence of its common law rights to the trademark at this point in time, there is nothing before the Panel which would allow it draw a meaningful conclusion about the market presence of Complainant’s business in 1998, nor is there any evidence whatsoever that in 1998 Respondent targeted Complainant’s trademark.
Fourthly, there is no evidence before the Panel of use in bad faith. The evidence from the Wayback Machine is largely inconclusive of how Respondent once used the domain name and it is the only evidence which Complainant has put forward in this regard. Panel has already commented on the issue of “passive use”.
Fifthly, the evidence shows that Complainant has been aware of and has been “monitoring” the domain name for some time. Had a Response been filed, it might have been submitted that Complainant has targeted Respondent and a submission of Reverse Domain Name Hijacking may have been made. Certainly, there is no explanation in the Complaint as to why a business established in 1978 delayed until 2012 to contact the owner of a domain name which was so manifestly adapted to suit its business or why Administrative Proceedings were not brought before now if the domain name was considered to be an abusive registration.
Panel is conscious that these findings and observations are also of direct relevance to paragraph 4(b) of the Policy and is aware that the Complaint might be disposed of there but has taken a considered view of the paragraph 4(c) and finds that Complainant has failed to establish a prima facie case that Respondent lacks a legitimate interest in the domain name.
No separate findings required.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel orders that the domain name <epitec.com> remain with Respondent.
Debrett G. Lyons, Panelist
Dated: October 24, 2012
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