eeParts, Inc. v. E E All Parts Corp.
a/k/a EE All Parts
Claim Number: FA0505000481753
PARTIES
Complainant
is eeParts, Inc. (“Complainant”),
represented by M. Craig Tyler of Wilson Sonsini Goodrich & Rosati, 8911 Capital of Texas Highway North, Westech 360, Suite 3350,
Austin, TX 78759-8497. Respondent is E E All Parts Corp. a/k/a EE All Parts (“Respondent”), represented by Donald Drozd, 2960
Airway Avenue, Suite A102, Costa Mesa, CA 92626.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <eeallparts.com> and <eeallparts.net>, registered with Network Solutions, Inc. and
Go Daddy Software, Inc.,
respectively.
PANEL
Each
of the undersigned certifies that he has acted independently and impartially and
to the best of his knowledge has no known conflict in serving as a Panelist in
this proceeding.
Alan
L. Limbury, David H. Bernstein and Paul M. DeCicco as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
19, 2005. The National Arbitration Forum received a hard copy of the Complaint
on May 23, 2005. In order to address certain deficiencies in the Complaint
raised by the National Arbitration Forum; an Amended Complaint dated May 27, 2005
was received by the National Arbitration Forum in hard copy on May 31, 2005.
On
May 20, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <eeallparts.com>
is registered with Network Solutions, Inc. and that Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
May 24, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <eeallparts.net>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
May 31, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 20,
2005 by which Respondent could file a Response to the Amended 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@eeallparts.com and postmaster@eeallparts.net by
e-mail.
A
timely Response was received and determined to be complete on June 16, 2005.
A
timely Additional Submission from Complainant was received by the National
Arbitration Forum on June 21, 2005 but the fee required to accompany it was not
received until June 24, 2005, three days after the expiry of the time within
which, under the National Arbitration Forum’s Supplemental Rule 7(a), any such
submission is required to be complete. Pursuant to paragraph 10(b) of the Rules
for Uniform Domain Name Dispute Resolution
Policy (the “Rules”), the Panel has nevertheless given regard to the
Additional Submission, in the interests of ensuring that each party is given a
fair opportunity to present its case.
The Panel has considered the supplemental submission to the extent the
submission discussed additional facts that are responsive to the allegations in
Respondent’s Response.
On June 23, 2005, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Alan L. Limbury, David H. Bernstein and Paul M. DeCicco as
Panelists.
Due
to exceptional circumstances, by Order dated July 7, 2005, the time period
within which the Panel was required to render its Decision was extended until
July 14, 2005.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
says that since at least September 1999 it has been using the EEPARTS.COM and
EEPARTS service marks and the corresponding <eeparts.com> domain name to
provide a website for distributors, assemblers and manufacturers to buy and
sell electronic parts and components, and that it has developed substantial
fame in those marks.
Complainant
obtained United States Patent and Trademark Office registrations for the
EEPARTS.COM service mark on August 26, 2003 (Reg. No. 2,756,643,) and the
EEPARTS service mark on September 21, 2004 (Reg. No. 2,886,832), in each case
based on a filing on April 25, 2000 and a claimed first use in commerce of
September 7, 2000.
Complainant
says Respondent is a broker in the secondary market for electronic components,
using for its website the <eeallparts.com> domain name, which it registered
in July 2000, more than ten months after Complainant began using its marks in
commerce. The <eeallparts.org> [sic] domain name is not being used by
Respondent for its website. Respondent registered the <eeallparts.net>
domain name on or about January 8, 2004, more than four years after
Complainant began using its marks in commerce.
Complainant
relies on evidence of actual confusion amongst customers in the secondary
electronics component market regarding the relationship between Complainant and
Respondent.
Complainant’s
counsel sent Respondent a ‘cease and desist’ letter dated January 12, 2004, to
which Respondent has not replied.
According
to Complainant, Respondent should be
considered as having no rights or legitimate interests in respect of the domain
names because the domain names were registered in bad faith, in that they were
registered primarily for the purpose of profiting from Complainant’s goodwill
in its marks, as evidenced by the timing of Respondent’s registrations, and/or
that Respondent has created actual confusion with Complainant’s marks as to the
source, sponsorship, affiliation or endorsement of its website.
Around
the time of the filing of the Amended Complaint in these proceedings,
Complainant filed a complaint in the Central District of California involving
the disputed domain names.
B.
Respondent
Respondent’s
mark, EEALLPARTS.COM, provides a website for distributors, brokers, original
equipment manufacturers, value-added resellers and system integrators to buy
and sell electronic parts, components, assemblies and finished goods of all
types. As its <eeallparts.com> website reveals, Respondent is
intended to be a source for ALL types of electronics.
EE ALL
PARTS CORPORATION has been duly registered since October 1999 with the
Secretary of State of California, whose nationwide search of existing corporate
names for potential conflicts did not determine that there would be one between
Respondent and Complainant’s names.
The
<eeallparts.com> domain name was registered in July 2000, shortly
after EE ALL PARTS CORPORATION was established, because it matched the name of
the corporation, not to take advantage of any other corporation’s name.
Respondent
has spent a large amount to advertise the domain and corporate names. Respondent
has been utilizing <eeallparts.com> and <eeallparts.net>
in good faith. Between July 2000 and December 2003 (prior to Complainant’s
‘cease and desist’ letter) Respondent, using the <eeallparts.com> domain
name, offered for sale and shipped electronic parts in over 3,500 transactions
totaling over $12.5 million in revenue. It has not offered the domain names for
sale. Both are in use for sending and receiving emails.
Complainant’s
evidence of alleged actual confusion is that in three instances out of the
(presumably) thousands of transactions over Complainant’s six year history,
customers made simple human mistakes. Because Respondent’s customers are
professional buyers who need, when ordering, to match precisely the
manufacturer’s part number and date code being offered by the seller, it is
virtually impossible that they would ever be confused and unable to distinguish
between EEALLPARTS and EEPARTS.
Respondent
first became aware of eeparts.com’s “fame” as a result of the ‘cease and
desist’ letter.
Respondent
has been commonly known by the <eeallparts.com> and <eeallparts.net>
domain names. Its current customer base lists over 10,000 contacts in 7,500
companies. The website <eeallparts.com>
has over 750 member contacts worldwide who can either log in to request quotes
or provide their excess lists to Respondent for quoting.
The
remedy sought by Complainant should be denied. Complainant knew or should have
known that Respondent was making legitimate use of the domain names and was not
using them in bad faith. It knew or should have known that the instances of
purported confusion were isolated instances not of confusion but of
mistake. In fact no legitimate
instances of confusion have been cited and no actual instances of confusion
have occurred.
C.
Complainant’s Additional Submission
In
its additional submission Complainant contends as follows:
Respondent
was not registered with the California Secretary of State until September 2000,
not October 1999, so the domain name could not have been registered in July
2000 to match the corporate name.
The
search conducted by the Secretary of State before registering corporate names
would not have compared the name EE All Parts Corporation with eeParts, Inc.
Respondent
did not start using the <eeallparts.com> domain name for an
extended period of time after registration, since it was ‘under construction’
as of November 28, 2001. As late as
June 22, 2003 the website using <eeallparts.com> did not identify
an affiliation with EE All Parts Corporation.
Instead the “company information” section of the website discusses E
Electronics, not EE All Parts Corporation. Likewise, the “contact us” section.
Neither disputed domain name was used in connection with the name EE All Parts
Corporation prior to June 22, 2003.
Respondent’s
discussion of the amount of money spent on advertising is devoid of evidence of
good faith use of the disputed domain names.
Complainant
agrees that Respondent has sold electronic components via a website utilizing <eeallparts.com>.
Complainant says Respondent has used both disputed domain names to interfere
with Complainant’s business and intentionally to attract, for commercial gain,
Internet users to its website by creating a likelihood of confusion as to the
source of its website and its products.
The
“simple human mistake” to which Respondent refers in arguing absence of
confusion is in fact the customers’ confusion as to the source of goods and
services arising out of Respondent’s bad faith use of the domain names. Complainant provided only three examples of
what are innumerable instances of confusion. In fact, Respondent’s customers
were confused.
Respondent
initiated the use of EE All Parts Corporation and <eeallparts.com>
long after Complainant’s marks were first used in commerce.
Respondent
asserts that it became aware of Complainant’s fame in 2004, but Respondent was
a customer of Complainant before 2004. Additionally, it never replied to the
‘cease and desist’ letter. The number of ways in which Respondent says it has
used the domain name provides ample evidence of its wrongful conduct – all
those ways are intended to create confusion and interfere with Complainant’s
business.
FINDINGS
Complainant has failed to establish all
required elements entitling it to relief.
DISCUSSION
Paragraph 4(k) of the Policy permits either party to
submit the dispute to a court of competent jurisdiction either before
commencing the mandatory administrative proceeding or after its conclusion.
Paragraph 18 of the Rules confers upon the Panel the discretion to decide
whether to suspend or terminate a proceeding or proceed to a decision, where
legal proceedings in respect of a domain name dispute that is the subject of a
complaint are initiated prior to or during an administrative proceeding.
Complainant has referred to its court proceeding as
“involving” the domain names that are the subject of this Complaint, without
specifying in what respects those domain names are involved, nor whether an
order is sought for the transfer to Complainant of the domain names. The Panel
is not disposed to terminate or suspend this administrative proceeding because
a court decision is likely to take considerable time and may not necessarily
cover the same ground or apply the same legal principles in resolving the issues
before the court. The court is under no obligation to pay regard to the
decision of the Panel.
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;
(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.
Some
Panels have taken the view that, to prevail under this first factor, a
complainant must demonstrate trademark rights which pre-date the domain name
registration: see Phoenix Mortgage Corp.
v. Toggas, D2001-0101 (WIPO Mar. 30, 2001); Razorbox, Inc. v. Skjodt,
FA 150795 (Nat. Arb. Forum May 9, 2003); Ode v. Intership Ltd., D2001-0074
May 1, 2001); Chiappetta v. Morales,
D2002-1103 (WIPO Jan. 20, 2003) and Abt
Elecs., Inc. v. Motherboards.com, FA 221239 (Feb. 20, 2004) (in which
latter case the Complaint was summarily dismissed).
Other
Panels, including those in some more recent cases, have decided that it is
sufficient for trademark rights to be shown to exist before the filing of the
Complaint: see Swissvoice ag v. Chan chin sung, D2004-0672 (WIPO Oct. 8, 2004); Brasserie Almaza S.A.L v. Orbyt,
D2004-0799 (WIPO Jan. 13, 2005); Int’l
Commc’ns Indus. Ass’n, Inc. v. Avolution, D2004-0139 (WIPO
Mar. 31, 2004); eGalaxy Multimedia Inc v.
T1, FA 101823 (Nat. Arb. Forum Dec. 23, 2001); Bragg v. Condon, FA 92528 (Nat. Arb. Forum Mar. 2,
2000); ExecuJet Holdings Ltd v. Air Alpha
Am., Inc., D2002-0669 (WIPO
Oct. 7, 2002); Telecom House, Inc v.
Chin-Fu Lo, D2003-0032 (WIPO Feb. 24, 2003); Consejo
de Promoción Turística de México, S.A. de C.V. v. Latin Am. Telecom Inc., D2004-0242 (WIPO July 19, 2004); Countrywide
Fin. Corp., Inc. v. Popal,
D2005-0295 (WIPO June 15, 2005).
The
latter approach commends itself to this Panel because it does not require a
gloss on the language of paragraph 4(a)(i) of the Policy; it allows the timing
differences to be taken into account on the issues of legitimacy, bad faith and
reverse domain name hijacking and it recognizes that there are circumstances in
which bad faith registration and use may be found even where the domain name
was registered before the trademark rights arose. For these reasons, WIPO has identified this as the “consensus”
position. See “WIPO Overview of
WIPO Panelists Views on Selected UDRP Questions,” at http://arbiter.wipo.int/domains/search/overview/index.html#14;
see also Fresh Intellectual Props., Inc. v. 800Network.com, Inc.,
D2005-0061 (WIPO Mar. 21, 2005) at note 3 (explaining why it is appropriate to
follow consensus decisions as articulated by the WIPO Overview).
Here
Complainant has established that, prior to the filing of the Complaint, it had
rights, by way of United States Federal registration, in the EEPARTS and
EEPARTS.COM service marks, which the Panel must presume to be distinctive,
“albeit at the weaker end of the spectrum.” See EAuto, L.L.C. v. Triple S. Auto
Parts, D2000-0047 (WIPO Mar.
24, 2000).
As to
whether Complainant has established rights at common law in its marks or either
of them, according to the Complaint its marks had been in use for ten months by
the time the <eeallparts.com> domain name was registered in July
2000. According to Complainant’s service mark registration certificates,
neither mark had been used in commerce prior to Respondent’s registration of
that domain name. Because it is less likely to have been influenced by any
consideration of the issues presently in dispute, the Panel prefers the date of
first use in commerce cited in those certificates (September 7, 2000 – after
the <eeallparts.com> domain name was registered) to the date
asserted in the Complaint (September 1999).
Whichever
date be correct, Complainant has not shown that it has common law rights, that
is, it has not produced evidence that before the <eeallparts.com>
domain name was registered, Complainant had used its marks in connection with
goods or services so as to have acquired a reputation such that members of the
public would associate those goods or services with Complainant and not with
others not authorized by Complainant to use the marks: See British Heart
Found. v. Meyer, AF-0957
(eResolution Nov. 13, 2001). Nor does the evidence establish common law
rights in either mark (as distinct from registered rights in the EEPARTS.COM
mark) prior to the registration in January 2004 of the <eeallparts.net>
domain name.
The
Panel is unable to conclude, on the material before it, that Complainant has at
any time had common law trademark rights in either mark before the registration
of those marks. To be clear, the Panel
is not finding that Complainant lacked common law rights; rather, the Panel
finds, on the limited evidence presented in this record (which is without the
benefit of the discovery process), that Complainant has not submitted
sufficient evidence to prove the existence of such common law rights.
Although
Complainant filed its service mark registration applications in April 2000, applications do
not give rise to trademark rights: see Aspen Grove, Inc. v. Aspen Grove,
D2001-0798 (WIPO Oct. 5, 2001) and Spencer Douglass MGA v. Absolute Bonding
Corp., D2001-0904 (Sept. 5, 2001).
Accordingly the Panel proceeds on the footing that
Complainant has standing to rely in this administrative proceeding only on its
registered marks.
Here the interpolation of the generic
word “all” between the letters “ee” and the word “parts” means that the domain
names are not essentially or virtually identical to the marks.
The test of confusing similarity under
the Policy is confined to a comparison of the disputed domain name and the
trademark alone, independent of the other marketing and use factors, such as
the "Sleekcraft factors" – AMF
Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979) - usually
considered in trademark infringement or unfair competition cases. See, e.g., BWT Brands, Inc. v. NABR, D2001-1480 (WIPO Mar. 26, 2002); Britannia Building Soc’y v. Britannia Fraud
Prevention, D2001‑0505
(WIPO July 6, 2001) and Energy Source
Inc. v. Your Energy Source,
FA 96364 (Nat. Arb. Forum Feb. 19, 2001).
A similar approach has been adopted by the U.S. Federal court in N. Light Tech., Inc. v. N. Lights Club,
2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar. 31, 2000). In light of
this test, Complainant’s evidence of actual confusion on the part of some of
its customers is not conclusive.
The
Panel has not found this an easy evaluation, since the word “parts” is a
generic word, inherently lacking in distinctiveness, and the letters “ee” could
be taken as an indication of electronic parts available electronically. The
suffix “.com” in the second mark refers to the Internet and reinforces the idea
of electronic trade. Taking each mark
as a whole, it is the “ee” prefix that produces the necessary element of
distinctiveness, without which both marks would be likely to be unregistrable
in connection with electronic parts.
Weak though the marks may be, the Panel
inclines to the view that the presence in the domain names of the descriptive,
adjectival word “all” does not sufficiently distinguish the domain names from
the marks, the suffixes “.com” and “.net” in the domain names being
inconsequential. Accordingly the Panel
finds, not without hesitation, that the disputed domain names are confusingly
similar, as that phrase is used in the Policy (and not as the phrase is more
generally used in trademark infringement litigation) to Complainant’s marks in
that Internet users might be caused to wonder whether there may be an
association between them.
The Complainant has accordingly
established this element of its case.
Complainant
relies under this heading solely upon alleged registration of the domain names
in bad faith.
Although
the onus of proving absence of rights or legitimate interests in a domain name
rests with Complainant, a respondent may demonstrate its rights and legitimate
interests in a disputed domain name by showing that, prior to any notice to it
of the dispute, it used the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services:
Policy paragraph 4(c)(i).
As
already mentioned, the <eeallparts.com> domain name was registered
in July 2000. Notice of this dispute was given by the ‘cease and desist’ letter
from Complainant’s attorney to Respondent dated January 12, 2004. It is common
ground that prior to receipt of that letter, Respondent has used the <eeallparts.com>
domain name to buy and sell excess parts for stock via the Internet. Indeed,
the ‘cease and desist’ letter itself says as much. The earliest example of customer confusion, of which there is
evidence before the Panel (in Exhibit D to the Complaint), occurred in October
2003.
The
Exhibits to Complainant’s supplemental submission reveal that Respondent was
registered as a California Corporation under the name “EE ALL PARTS
CORPORATION” on September 6, 2000. As of November 28, 2001 the website at the <eeallparts.com>
domain name was under construction. As of June 2, 2003 that domain name led to
an active website in the name of eElectronics All Parts Corp., which described
itself as an international open market distributor of electronic components,
founded in 1998. The page bears the inscription “© E Electronics 2002.”
Respondent’s
Exhibit 1 contains copies of web pages at the <eeallparts.com> web
site bearing the inscription “© E Electronics 2003” and referring to
eElectronics as “a division of EE All Parts Corp.”
The
evidence establishes that by October 2003 at the latest, Respondent was using
the <eeallparts.com> domain name to buy and sell parts via the
Internet. Was this offering of goods and services bona fide?
Complainant’s EEPARTS.COM mark had been registered on August 26, 2003 but there
is no evidence before this Panel to indicate that Respondent was aware of
Complainant’s mark at any time prior to the ‘cease and desist’ letter. On the
evidence, Complainant had no trademark rights (as the Panel has found) when
Respondent registered such domain name, nor when Respondent registered its
corporate name a few months later. Complainant has asserted that Respondent was
a customer of Complainant before 2004 but has produced no evidence of this.
Under
these circumstances the Panel concludes that Respondent’s offering parts via
the Internet under the <eeallparts.com> domain name at all times
prior to receipt of notice of this dispute constitutes a bona fide offering
of goods or services and that it has accordingly demonstrated that it has
rights and legitimate interests in the <eeallparts.com> domain
name.
Although
Complainant’s EEPARTS.COM mark was registered before Respondent registered the <eeallparts.net>
domain name, there is no evidence Respondent was aware of this prior to the
‘cease and desist’ letter. When it registered the <eeallparts.net> domain
name on January 8, 2004, Respondent had been trading in parts since at least
October 2003 under the <eeallparts.com> domain name and under the
corporate name EE ALL PARTS CORPORATION.
Under these circumstances the Panel finds that prior to any notice of
this dispute, Respondent used a name corresponding to the <eeallparts.net>
domain name in connection with a bona fide offering of goods and
services. Further, the Panel finds
that, by the time it registered the <eeallparts.net> domain name,
Respondent was commonly known by the EE ALL PARTS name: see Policy, paragraph
4(c)(ii).
For
both these reasons the Panel finds Respondent has proved that it has rights and
legitimate interests in the <eeallparts.net> domain name.
Complainant
has failed to establish this element of its case in relation to either domain
name.
In the light of the Panel’s finding on the issue of
legitimacy, Complainant must fail.
Nevertheless, the Panel has considered and sets out below its views on
the issue of bad faith.
On the evidence, the disputed domain
name, <eeallparts.com>, was registered before Complainant had any
trademark rights. The question then arises whether it is possible, in such
circumstances, for Respondent to be found to have registered the domain name in
bad faith.
Some cases have indeed described such a
finding as “impossible.” See Razorbox,
Inc. v. Skjodt, FA 150795
(Nat. Arb. Forum May 9, 2003); Ode v.
Intership Ltd., D2001-0074
(WIPO May 1, 2001) and Chiappetta v.
Morales, D2002-1103 (WIPO
Jan. 20, 2003). Others that such a finding is “difficult to conceive.” Digital Vision, Ltd. v. Advanced Chemill
Sys., D2001-0827 (WIPO
Sept. 23, 2001).
Others have contemplated the possibility
of finding bad faith in such circumstances; see the dissent by panelist Thomas
L. Creel in Firstgate Internet A.G. v.
Soung, D2000-1311 (WIPO
Jan. 29, 2001) and see also ExecuJet
Holdings Ltd v. Air Alpha Am., Inc.,
D2002-0669 (WIPO Oct. 7, 2002) and Telecom
House, Inc v. Chin-Fu Lo, D2003-0032 (WIPO Feb. 24, 2003).
Many
cases, mostly merger cases where each constituent of the trademark relied upon
was already itself a trademark, have actually found bad faith even where the
mark in question postdated the domain name. A.P.
Møller v. Web Soc’y, D2000-0135
(WIPO Apr. 15, 2000); SMS Demag AG v.
Seung Gon, Kim, D2000-1434
(WIPO Jan.19, 2001); Konica Corp. v. IC, D2003-0112 (WIPO Mar. 31, 2003); Clifford Chance LLP v. CPIC Inc., D2000-1603 (WIPO Jan. 28, 2001); Pharmacia & Upjohn AB v.
Monsantopharmacia.com, Inc.,
D2000-0446 (WIPO Aug. 1, 2000); Santander
Inv. Bank Ltd. v. Divisas Mexicanas, S.A. de C.V., D2004-0475 (WIPO Aug. 30, 2004). One case where bad faith was found where there was not even a
preceding constituent mark is eGalaxy
Multimedia Inc v. T1, FA 101823 (Nat. Arb. Forum Dec. 23,
2001). In
Bragg v. Condon, FA 92528 (Nat. Arb. Forum Mar. 2, 2000), the
complainant disclosed confidential strategies to the respondent shortly before
domain name registration. Subsequently the complainant’s trademark was
registered. The respondent was found to
have used the domain name in bad faith after the trademark was registered.
Under paragraph 4(b)(iv) of the UDRP, this evidences both bad faith
registration and bad faith use.
Accordingly, this Panel proceeds on the
basis that the registration of the <eeallparts.com> domain name
prior to any of Complainant’s trademark rights arising does not preclude the
possibility of a finding of registration in bad faith.
Complainant relies, under this heading,
on the timing of Respondent’s domain name registrations as showing an intent to
profit from Complainant’s goodwill and on Respondent having caused actual
confusion by registering the domain names.
In light of the Panel’s findings that
Complainant has no common law marks, that the <eeallparts.com> domain
name was registered before Complainant acquired any trademark rights at all,
and that Respondent was unaware of either of Complainant’s marks before the
‘cease and desist’ letter, the timing of Respondent’s registrations affords no
ground for a finding of intent to profit from Complainant’s goodwill. In the absence of evidence of any such
intent on the part of Respondent, the fact that Respondent has caused actual
confusion by using, to describe its legitimate business, a confusingly similar
domain name, likewise affords no ground for a finding of bad faith registration
and use.
The question arises whether Respondent’s
continued use of the <eeallparts.com> domain name to buy and sell
parts via the Internet after receiving the ‘cease and desist’ letter
constitutes bad faith use under paragraph 4(b)(iv) of the Policy, which
provides that bad faith use of that kind is also evidence of bad faith
registration. Even assuming, for the sake of argument, that such use after the
‘cease and desist’ letter was tantamount to bad faith use, the decided cases
firmly reject the idea that subsequent bad faith use can displace evidence of
good faith registration:
Previous decisions have considered the
matter of good faith registration followed by bad faith use. The prevailing
view is that the Policy was not designed to prevent such situations. In Substance
Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc.
(SAMI), WIPO Case No. D2001-0782, the panel stated that “If a domain name was
registered in good faith, it cannot, by changed circumstances, the passage of
years, or intervening events, later be deemed to have been registered in bad
faith”. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO
Case No. D2000-0026, the Respondent registered a domain name to reflect
its own business name but subsequently sought to sell the name for profit when
its business dissolved. The panel found that to decide the case on the
subsequent bad faith action would “extend the Policy to cover cases clearly
intended to be outside its scope.” Similarly, in Telaxis Communications Corp.
v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered
the disputed domain name in good faith but subsequently began to use it in bad
faith. It was held that because the registration was made in good faith the
requirement of Paragraph 4(a)(iii) was not met
Yoomedia Dating
Ltd. v. Newcomer, D2004-1085
(WIPO Feb. 22, 2005).
See also Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104 (eResolution
Mar. 20, 2000), as explained in Passion
Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) and
followed in Viz Commc’ns., Inc., v.
Redsun, D2000-0905 (WIPO Dec. 22,
2000); and e-Duction, Inc. v. Zuccarini,
D2000-1369 (WIPO Feb. 5,
2001).
Complainant has
failed to establish this element of its case.
DECISION
Complainant
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Alan L.
Limbury
Presiding Panelist
David H. Bernstein & Paul
M. DeCicco
Panelists
Dated: July 14, 2005
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