DECISION
ECG European
City Guide v. Jules Woodell
Claim Number:
FA0308000183897
Complainant is ECG European City Guide,
Barcelona, Spain (“Complainant”) represented by Christopher W. Byron, of
Gallop, Johnson, & Neuman, L.C.
Respondent is Jules Woodell, Uplands, Swansea, United Kindgom
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stopecg.org>,
registered with TuCows, Inc.
PANEL
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.
William H. Andrews: Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on August 12, 2003; the
Forum received a hard copy of the Complaint on August 13, 2003.
On August 13, 2003, TuCows, Inc.
confirmed by e-mail to the Forum that the domain name <stopecg.org>
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 14, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 3, 2003 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@stopecg.org by e-mail.
A timely Response was received and
determined to be complete on August 29, 2003.
An Additional Submission was timely
received from Complainant and was determined to be complete on September 8,
2003.
An Additional Submission was timely
received from Respondent and was determined to be complete on September 15,
2003.
Pursuant to Complainant’s request to have
the dispute decided by a single-member Panel, the Forum appointed William H.
Andrews as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant. Respondent seeks a finding of reverse domain-name hijacking
against Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends it has rights in the
name ECG. Complainant states that it is
the owner of a pending trademark application in the United States for the mark
ECG European City Guide in
respect of “maps, tourist guidebooks and street guides,” and the owner of
Spanish trademark registration No. M2434001, applied for on October 30,
2001. Complainant has used the terms
“ECG,” “ECG European City Guide”
and “European City Guide” as
business and trade names in connection with its business activities in Europe
and elsewhere for quite some time. As a
result of Complainant’s use of its business and trade names, the public has
come to recognize the aforementioned terms as being synonymous with
Complainant.
Complainant contends that the domain name
in question is confusingly similar to Complaint’s mark, that Respondent has no
rights or legitimate interest in connection with its use of the mark, and that
Respondent registered and used the domain name in bad faith. Complainant requests that the domain name
registration be transferred due to Respondent’s violation of ICANN rules and
policy.
B. Respondent
Respondent contends that Complainant has
no rights in the letter combination ECG .
Rather, European City Guide S.L. is Complainant’s official name, and
Complainant is only referred to as ECG by others when discussing Complainant’s
business practices. Respondent further
contends that its use of the term ‘stop’ before the letters ECG precludes any
probability of initial confusion even if Complainant did have rights in the
letter combination. Respondent further
asserts that he has legitimate interests in using the name as he has. Respondent disagrees with Complainant’s
business activities and allegedly registered and operated a website and
discussion group to provide support for people who have been “tricked” by the
activities of Complainant, as he allegedly had been. Respondent further contends that at the time of registration,
Complainant had no trademark rights, only a pending application for the term europeancityguide.com. Additionally, the Spanish trademark
application, discussed above, was for a logo only and was made after registration
of the domain name in question.
Respondent asserts his registration and use of the site was not in bad
faith. He allegedly has operated the
site, without commercial gain, to provide information and advice to victims of
European City Guide’s sales tactics.
In addition to responding to
Complainant’s allegations, Respondent requests a finding of reverse domain name
hijacking in accordance with ICANN Rule 15(e).
In support of his claim, Respondent asserts that (i) European City Guide
made no public use of the term “ECG” before application for a U.S. Trademark on
July 22, 2003 and the Spanish mark, on which the U.S. application was based,
was held for a completely different area of commerce than ECG asserts as is its
primary business; (ii) both the Spanish mark and U.S. marks were applied for
after the registration of <stopecg.org>; (iii) the chronology of
events suggests bad faith: (a) ECG registered a United States trademark for the
express purpose of providing a legal basis to have a website and discussion
group terminated, (b) both the Complaint and the U.S. trademark application
were made using a fictitious name; (c) ECG moved to have the Yahoo! news group
terminated; (d) the tenor of cease and desist letters; (e) ECG moved to have
Respondent's e-mail address terminated; and (f) ECG failed to provide
Respondent a copy of its Spanish trademark upon request. For each of these reasons, Respondent
alleges the action was not brought in good faith.
C. Additional Submissions
Both Complainant and Respondent provided
Additional Submissions for the Panel’s review.
The panel has considered both submissions.
1. Complainant.
Complainant asserts it did not initiate
the proceedings for reverse domain name hijacking or harassment and
Respondent’s claim should therefore be denied.
Complainant addressed each of Respondent's allegations substantially as
follows. Complainant contends it has
used the name “ECG” in conjunction with its business activities as early as
1998, or three years before Respondent’s registration of the contested domain
name. ECG commenced business activities
on the internet on December 21, 1999, offering a comprehensive guide of
businesses and culture across Europe and Asia, also prior to Respondent’s
registration of the domain name. Complainant
has adopted the name ECG in many of its contracts and has attached exhibits to
its submission indicating the same.
ECG's application for a U.S. trademark was not for the express purpose
of providing a legal basis for shutting down Respondent's website. According to Complainant, a U.S. trademark
would not be necessary to bring its claim.
Complainant further contends that the real reason that the Yahoo! news
group was shut down was, not because of Complainant's actions, but because of
violations of Yahoo! policies, when an Internet user impersonated an employee
of OVAG. ECG demanded that the site be
shut down only after it learned that its trademark was being used for improper
purposes. Complainant contends that its
cease and desist letters to Respondent were not improper. To the contrary, such letters are typical,
and are a reasonable way to resolve conflict in these types of disputes. Complainant contends that Respondent
improperly registered the ecguide@lycos.com e-mail address. Finally, Complainant contends it did not
withhold information about its Spanish trademark following Respondent's
request. Complainant requests recovery
of its costs in defending the reverse domain-name hijacking allegations.
2. Respondent
Respondent asserts that the identity of
Complainant is still at issue, noting that the Complaint was brought in the
name ECG European City Guide, the U.S. trademark application was registered in
the name ECG European City Guide s.r.l. and Complainant's attorney states that
Complainant's proper name is European City Guide SL. Respondent further contends that ECG is involved in a border
directory scam and that it has never produced maps, tourist guides or street
guides. Respondent acknowledges that
Complainant may have been using the name ECG in 1998 and 1999, but that
Complainant had abandoned the reference by 2001. Among other things, Respondent alleges that Complainant cannot
acquire rights in the name through illegal activity as Respondent contends
Complainant did. Respondent further
contends that Complainant has not been known by the name ECG in connection with
maps and tourist guides and therefore has no common law rights in the
mark. Respondent recounts that the
domain name is not confusingly similar to any mark in which Complainant has
rights, and argues that the meta-tags it has used in connection with the site,
are necessary for users to find its site.
In its Additional Submission, Complainant alleged that Respondent had
operated the site for commercial gain, noting links to advertisements on
Respondent’s site. Respondent contends there are no links to commercial
operations on its site, and that advertisements appearing on the site were
placed there by Respondent's Internet provider against Respondent's wishes. Finally, Respondent restates his case for
reverse domain-name hijacking, repudiating, among other things, Complainant's
version of events for the shutting down of the Yahoo! discussion group, and the
fact that the trademark was registered after the domain name.
FINDINGS
Complainant, European City Guide S.L.
previously used the moniker ECG in connection with its business activities as
early as 1998. There is no indication
that Complainant was widely known by that name however. Complainant applied for
a Spanish trademark of the term European
City Guide in logo form on October 31, 2001 and the same was registered
on April 5, 2002. Complainant applied
for a U.S. trademark of the term ECG
European Cities Guide in July, 2003.
According to Respondent, Complainant has engaged in unfair business
practices. The Panel does not address
the merits of such allegations, but does find that Respondent registered the
domain, <stopecg.org> on October 2, 2001 for the purpose of
criticizing Complainant’s business practices.
Respondent contends that Complainant has tricked businesses, similar to
his own, into signing contracts under the guise of requests for
information. Respondent also started a
Yahoo! discussion group, and had an e-mail address of ecguide@lycos.com. Respondent started the Yahoo! discussion
group ostensibly to assist businesses who had similarly been tricked by the
deceptive business practices of Complainant.
Respondent had a disclaimer placed on its website. Both the discussion group and the e-mail
address were involuntarily terminated.
According to the Complaint, the discussion group, stopecg@yahoo.com,
linked through the domain name, was terminated at Complainant’s request on July
24, 2003, and the e-mail address was terminated by Lycos at Complainant’s request
on August 8, 2003.
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 contends it has a right in
the acronym ‘ECG’ that should be protected.
Complainant has a pending trademark application for the ECG EUROPEAN
CITY GUIDE mark with the U.S. Patent and Trademark Office (“USPTO”). Complainant is the owner of Spanish
trademark Reg. No. M2434001, issued in April, 2002. The Complaint does not indicate what mark was registered under
the Spanish registration number; however, Respondent has provided a copy of the
registration document for Reg. No. M2434001 which lists the mark as EUROPEAN
CITY GUIDE. Thus, Complainant applied
for a trademark with the U.S. Patent and Trademark Office, and obtained its
Spanish registration only after Respondent had registered the domain name on
October 2, 2001. Additionally,
Complainant’s Spanish registration was for the term “European City Guide” and not “ECG.” Complainant can claim no rights against Respondent’s use of ‘ECG’
based on actions taken after Respondent’s registration of the domain name.
Complainant alleges it has used the terms
“ECG,” “European City Guide” and
“ECG European City Guide” in
commerce for “quite some time.” In its
Additional Submission Complainant asserts it has used “ECG” since as early as
1998. Complainant attaches contracts
from 1998 that reference European City
Guide, but each contract includes only one reference to ECG in small
print, near the bottom of the page. Complainant has not established secondary
meaning in the mark through use in commerce and Complainant’s mere application
to the USPTO to register the ECG mark is insufficient to establish rights to
the mark. See Cyberimprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that
Complainant failed to prove trademark rights at common law because it did not
prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship
of goods or services or that there was strong customer identification of the
mark as indicating the source of such goods or services); see also Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (stating
that “[a]lthough Complainant asserts common law rights in the WELLSERV mark, it
failed to submit any evidence indicating extensive use or that its claimed mark
has achieved secondary source identity . . . [A]lthough … Complainant’s
WELLSERV product and related services may be well-known among relevant
consumers, that is a finding that must be supported by evidence and not
self-serving assertions”); see also Amsec Enters. v. McCall,
D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark
applications do not establish any enforceable rights to the mark until a
trademark registration is issued).
Even if Complainant could establish
rights to “ECG” by its assertion, it still has failed to show that the domain
name <stopecg.org> is confusingly similar to its mark. Complainant asserts that <stopecg.org>
is confusingly similar because it merely adds the generic term “stop” to ECG’s
mark.
The addition of the term “stop” to a
domain name has been addressed in COMPUSA Mgmt. Co. v. Customized Computer
Training, FA 95082 (Nat’l Arb. Forum, Aug. 17, 2000). The domain names at issue there were
<stopcompusa.com> and <bancompusa.com>. Complainant offered ample evidence of its ownership and
registration of trademarks including the COMPUSA mark and argued Respondent had
no legitimate interest in the mark but to disrupt Complainant’s business. Respondent asserted that he had not used the
name for commercial gain but recounted how he was dissatisfied with
Complainant’s business practices. The
panel found that Complainant had failed to show any of the three elements of
the policy. Specifically, the panel
noted that there was no confusion or similarity, much less identity between the
domain name and Complainant’s marks.
According to the panel, “no one could confuse ‘COMPUSA’ or any one of
the registered trademarks and ‘STOPCOMPUSA.COM’ or ‘BANCOMPUSA.COM.’”
In addition to Compusa, there are
a line of cases finding that names attached to the term “sucks”cannot be
confusingly similar because of the obviously negative connotation of such a
term. In Lockheed Martin Corp v.
Parsi, D2000-1015 (WIPO Jan. 26, 2001), the panel found that the domain
name <lockheedsucks.com> and <lockheedmartinsucks.com> were not
confusingly similar to Complainant’s well-known and established marks. The panel stated, “both common sense and a
reading of the plain language of the Policy support the view that a domain name
combining a trademark with the word “sucks” or language clearly indicating that
the domain name is not affiliated with the trademark owner cannot be considered
confusingly similar to the trademark.”
The panel also noted that United States federal courts have reached
analogous conclusions in similar cases.
In Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (Cal. 1998),
the well-known health club Bally’s sued Defendant for his registration of
<ballysucks.com>, which he used to voice complaints about Bally’s
practices. The court granted
defendant’s motion for summary judgment, finding that Bally could not prove a
likelihood of confusion with its trademark.
The court found, in part, that there could be no confusion because the
parties did not offer “similar goods.”
Bally’s offered health services and Defendant offered a forum for
criticism of Bally’s and other corporations.
Complainant attempts to distinguish the
“sucks” cases by arguing that the word “stop” does not necessarily carry a
negative connotation. Despite
Complainant’s contention, however, the term “stop” carries a pejorative or
negative meaning in this context that makes it unlikely that Internet users
will be confused as to the source or sponsorship of the site. Complainant also contends, in its
Additional Submission, that the use of meta-tags is likely to cause confusion
or divert would-be customers from its site because of confusion or anger. Metatags are hidden terms in online
documents, often used by search engines to index websites. As the panel noted in Lockheed Martin,
supra, however, “the Panel is mindful that the current nature of the
internet is such that search engines may well pull in the disputed domain names
when the searcher intends to find only Complainant’s well-known company. However the Panel believes that once the
searcher sees <lockheedsucks.com> and <lockheedmartinsucks.com>,
listed among the websites for further search, she will be able to readily
distinguish the Respondent’s site for criticism from Complainant’s sites for
goods.” Similarly, here, the Panel
finds that use of meta-tags will not cause confusion amongst Internet users
such as to satisfy the Policy.
Complainant has cited no specific cases in support of its proposition
with respect to meta-tags.
Additionally, Respondent’s disclaimer prominently placed, indicates that
it is a non-commercial site established in opposition to European City
Guide. This further alleviates any
possibility of confusion.
Legitimate Interests/ Bad Faith
Complainant has the burden of
establishing that each element of the policy has been satisfied. Since the Panel has concluded that
Complainant has failed to establish that Respondent has used a name identical
or confusingly similar to one in which Complainant has a right, it is
unnecessary to specifically consider the parties’ arguments with respect to the
“legitimate rights and interests” and “bad faith” prongs of the Policy in order
for the Panel to reach its decision. In
any case, it appears that Respondent legitimately registered the domain and set
up the site to provide a forum for criticism of Complainant’s business
practices. Respondent has legitimate
interests in the domain name for that purpose.
See Bridgestone-Firestone, Inc. v. Myers, D2000-0190 (WIPO July
6, 2000) (finding Respondent’s use of the Bridgestone-Firestone name to link to
a website for commentary about the Complainants constitutes a legitimate
non-commercial use and fair use within the meaning of the Policy. The panel concluded that the exercise of
free speech for criticism and commentary demonstrates a right or legitimate
interest in the domain name under par. 4(c)(iii)). As was stated in Bally, supra, Respondent can use
Complainant’s mark to identify the source of goods and services of which he is
complaining. This use is necessary to
maintain broad opportunities for expression.
Bally, supra. at 1165, 1167.
See also Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com,
D2000-1104 (WIPO Nov. 23, 2000) (concluding that a domain name including the
word “sucks” cannot be confusingly similar, and that a privilege for criticism
and parody reinforces that conclusion).
Respondent has not registered or used the
domain name or website in bad faith.
(As a general proposition, the same facts establishing fair use and
exercise of free speech negate a finding of bad faith intent. Bridgestone-Firestone, supra.) Complainant has not proven Respondent
intentionally registered and used the site for his own commercial gain, or for
the purpose of selling the name back to Complainant or a competitor. Respondent has not registered the name to
disrupt the business of a competitor.
As was noted, Complainant is in the business of providing tourist maps
and guides. There is no evidence that
Respondent is in a similar business.
Respondent’s primary purpose in establishing the domain was to criticize
Complainant among others. As noted,
there are many cases recognizing the same as a legitimate and fair use. Finally, Respondent has included a
disclaimer to clarify that he is not Complainant. See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497
(Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith where Respondent, using
the domain name to sell new and used Caterpillar parts through the domain name
<catparts.com>, placed a disclaimer on the website indicating no
relationship with Complainant’s business).
As in Compusa Management Company,
supra, there is no confusion about Respondent’s purpose from viewing the
website. Respondent has provided an
explanation for his creation of the site.
Respondent’s disenchantment with Complainant’s business practices is
well-documented and his motivation to provide a forum for those who are
similarly situated is a legitimate non-commercial use of the site.
Accordingly, the Panel finds that
Complainant has failed to establish that Respondent had no legitimate rights to
the domain name or that Respondent registered and used the domain name in bad
faith. Therefore, the relief sought by
Complainant is Denied.
Reverse Domain Name Hijacking
Respondent alleges that he is entitled to
recovery of costs from Complainant for reverse domain-name hijacking. That term is defined in Par. 1 of the Rules
as “using the Policy in bad faith to attempt to deprive a registered
domain-name holder of a domain name.”
To establish reverse domain name
hijacking, Respondent must show knowledge on the part of Complainant of
Respondent’s right or legitimate interest in the disputed domain name and
evidence of harassment or similar conduct by Complainant in the face of such
knowledge. Plan Express v. Plan
Express (D2000-0565).
Respondent asserts that Complainant
attempted to reverse hijack the <stopecg.org> domain name because
Complainant filed the Complaint knowing that the disputed domain name was
registered prior to Complainant’s registration in Spain and with the
USPTO. See Deutsche Welle v.
DiamondWare Ltd., D2000-1202 (WIPO Jan. 2, 2001) (Complaint considered to
be brought in bad faith where Complainant must have known that Respondent was
not a cybersquatter prior to the filing of the Complaint); see also Aspen
Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that
Respondent's registration of the <aspengrove.com> domain name two years
before Complainant's incorporation justified a Reverse Domain Name Hijacking
ruling). Respondent also contends that
Complainant used the fictitious name “ECG European City Guide” in the Complaint
and asserts that usage of the name was a clear attempt to deceive the Panel
into believing Complainant has established rights in the mark or that the mark
has been used in commerce. Finally,
Respondent cites a chronology of events, specifically set forth above, which he
alleges support a finding of reverse hijacking on the basis of harassment.
Respondent has not established that
Complainant acted in bad faith so as to justify a finding of reverse domain
name hijacking. Although Complainant
attempted to register marks following Respondent’s registration of the domain
name, Complainant has submitted an exhibit indicating that it has referred to
itself as “ECG” at some point in the past.
Moreover, Respondent’s reference to Complainant as “ECG” on its site,
lends support to Complainant’s claim that it has been known by that name, even
if not known to a degree sufficient to establish secondary meaning. Respondent contends that Complainant was
responsible for shutting down the Yahoo! discussion group. The facts, however, are in dispute as to the
true cause or motivation for the termination of the discussion group. The cease and desist letters do not appear
to be improper and Complainant has chronicled its attempts at resolving the
matter prior to filing of a Complaint.
The Panel has found no other grounds justifying a finding of bad
faith. Although the Panel has found
that Complainant failed to satisfy its burden under the Policy, the Panel
cannot conclude on that basis alone, that Complainant acted in bad faith. See Citgo Petroleum Corp. v. Tercsak,
D2003-0003 (WIPO February 28, 2003).
DECISION
Having found that Complainant has failed
to establish all three elements required under the ICANN Policy, the Panel
concludes that relief sought shall be DENIED.
Having found that Respondent has failed
to establish that Complainant acted in bad faith in initiating the Domain Name
Complaint, the Panel concludes that relief sought by Respondent shall be DENIED. Additionally, Complainant’s request for
recovery of costs in defense of the Reverse Hijacking claim is DENIED.
William H. Andrews, PanelistDated:
October 14, 2003
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page