International E-Z UP, Inc. v. PNH
Enterprises, Inc.
Claim Number: FA0609000808341
PARTIES
Complainant is International E-Z UP, Inc. (“Complainant”), represented by Jennifer L. Webber, of Fulwider Patton LLP, 6060 Center Drive, 10th Floor, Los Angeles, CA 90036. Respondent is PNH Enterprises, Inc. (“Respondent”), represented by Daniel I. Lack, of Ogilvy Renault LLP 1981 McGill College Avenue, Montreal, PQ H3A 3C1 Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ezup-canada.com>,
registered with Network Solutions, 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.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 28, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 2, 2006.
On September 29, 2006, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <ezup-canada.com>
domain name is registered with Network Solutions, Inc. and that the 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 October 5, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 25, 2006 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@ezup-canada.com by e-mail.
A timely Response was received and determined to be complete on October
25, 2006.
On October 31, 2006, an
Additional Submission was received from the Complainant.
Rule 7 of
the National Arbitration Forum’s UDRP Supplemental Rules provides that a party
may submit additional written statements within 5 calendar days after the
Response was received by the Forum. Thereafter, the Panel has a discretion
whether to receive any additional statements. As there was some doubt as to
whether the Complainant’s Additional Submission was received within time, the
Panel has considered whether to exercise its discretion to receive it. In view
of the short period of time involved, the fact that the Respondent has not
relied on any prejudice it might have suffered and the fact that the Respondent
has also made an Additional Submission, the Panel decided to receive the
Complainant’s Additional Submission.
On November 7, 2006, an Additional Submission was received from the
Respondent and was determined to comply with Supplemental Rule 7.
On November 1, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name should be transferred to it because it can make out each of the three criteria prescribed under Policy ¶ 4(a)(i‑iii) of the Policy. It maintains, first, that the domain name <ezup-canada.com> is confusingly similar to the Complainant’s trademarks registered with the United States Patent and Trademark Office (“USPTO”), namely E-Z UP and E-Z UP stylised. In contends that this is so because the domain name consists of the entirety of the trademarks and that the confusion comes about because the marks are well known and widely publicized and the domain name is likely to confuse customers into believing that it is associated with Complainant.
Complainant then argues that Respondent has no rights or legitimate interests in the disputed domain name as, when it registered the disputed domain name, Respondent was an independent dealer affiliated with Complainant, a relationship that continued until the dealership was terminated on or about June 30, 2006; since then, no other basis has arisen for Respondent to claim a right or legitimate interest in the disputed domain name.
Thirdly, Complainant contends that the disputed domain name was registered and is being used in bad faith, because Respondent is using the disputed domain name to draw Internet users to its website for sales of collapsible canopies in competition with Complainant. It is doing this, Complainant contends, by creating a likelihood of confusion with Complainant’s marks as to the association with Respondent’s website.
B. Respondent
Respondent does not dispute that the disputed domain name is
confusingly similar to Complainant’s two marks.
However, it contends that it had and still has a legitimate interest in
the disputed domain name.
This legitimate interest comes from the fact that when it was
Complainant’s Canadian distributor and dealer in 1998, it registered the
disputed domain name, which it was authorized to do by Complainant. It has since used the disputed domain name
in offering Complainant’s products for sale in Canada.
Respondent then contends that its legitimate interest continued and
continues today because it still holds stocks of Complainant’s products, it will
need time to sell them and it feels necessary for the maintenance of its
business reputation to provide a warranty and after sales service to
purchasers. Consequently, it needs to
retain the disputed domain name and the e-mail addresses associated with it to
continue providing those services.
Respondent therefore maintains that it has a current right or legitimate
interest in the disputed domain name and wishes to keep it unto a reasonable
phase-out period has expired.
Thirdly, Respondent maintains that it did not register and use the
disputed domain name in bad faith, for it is axiomatic that, if it registered
the disputed domain name with the authority of Complainant, it could not have
registered it in bad faith and to make out a case under the Policy, Complainant
must establish both that the disputed domain name was registered in bad faith
and that it has been used in bad faith, which Complainant has not done.
C. Additional Submission by the
Complainant
In its Additional Submission Complainant contends that when the
distributor agreement with the Respondent was terminated, Respondent lost the
legitimate interest it had in the disputed domain name, as it has no other
independent interest that it can show.
In any event, its ceasing to use the website to which the disputed
domain name resolves, shows that Respondent has no current right or legitimate
interest in the disputed domain name.
It also submits on the issue of bad faith that this element may be
established by factors not specifically listed in Policy ¶ 4(b) and that one
such factor is where, as in the present case, the owner of the trademark has
revoked Respondent’s right to use it in a disputed domain name.
Moreover, Respondent is holding the domain name hostage by demanding
onerous conditions on its transfer.
D. Additional Submission by the
Respondent
Respondent in its Additional Submission contends that despite
Complainant’s further submissions, Respondent currently has a legitimate
interest in the disputed domain name because of the e-mail addresses it needs
to continue providing its after-sales service.
It also contends that consistent UDRP jurisprudence is to the effect
that, to succeed, a complainant must establish both registration and use of the
contentious domain name in bad faith, which Complainant in the present case has
not done. Moreover, it is not holding
the disputed domain name hostage when Complainant already has two other
disputed domain names that reflect its trademarks.
FINDINGS
Complainant is the owner of two trademarks registered with the United States Patent and Trademark Office (“USPTO”), namely:
(a) Trademark number 1,994,970, registered on August 20, 1996 for E-Z UP; and
(b) Trademark number 1,992, 874, registered on August 13, 1996 for E-Z UP, stylised.
Respondent registered the <ezup-canada.com> domain name on February 15, 1998. Respondent was formerly Complainant’s
Canadian distributor and registered the disputed domain name during that
time. However, it is not now Complainant’s
distributor.
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; and
(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.
Identical
and/or Confusingly Similar
The Panel finds that the <ezup-canada.com>
domain name is confusingly similar to Complainant’s registered E-Z UP
trademark, details of which are provided above. That is so because the disputed domain name consists of the
entirety of the trademark and, in substance, only the word “canada” has been
added. It
has been held many times that it does not absolve a disputed domain name
registrant on this issue if, as in the present case, it takes the entirety of a
trademark and then adds a geographic location where the trademark owner carries
on its business; see Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000)
(finding that the domain name, <walmartcanada.com> is confusingly similar
to the complainant’s famous mark); see also Toyota Motor Sales U.S.A., Inc. v. Hamid, D2001-0032 (WIPO, Mar. 28, 2001) (where the offending
domain names included geographic locations and two of them were
<usalexus.com> and <uslexus.com>); see also Toyota Motor Sales, U.S.A., Inc. v.
Fleetrates.com a/k/a company, fleetrates a/k/a dealer.com, FA568488 (Nat.
Arb. Forum, November 21, 2005) (where the domain name <lexusus.com> was
held to be confusingly similar to the trademark LEXUS).
In the present case, the addition of the word “canada” to
the well-known E-Z UP brand of collapsible canopies could only be interpreted
by the average consumer to mean the Canadian website of the E-Z UP product.
The disputed domain name also removes the hyphen between the letters “e” and “z” and adds a hyphen after the term “up”. Panels have found, under Policy ¶ 4(a)(i), that the addition and omission of hyphens do not differentiate domain names from the trademarks contained therein. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).
Accordingly, the <ezup-canada.com>
domain name is confusingly similar to Complainant’s registered E-Z UP
trademark.
The same result applies in the case of the second of the
two trademarks, for although it is sometimes difficult to make the comparison
between a domain name and a stylized trademark, in the present case the E-Z UP
component so dominates the stylised trademark that the disputed domain name is
also confusingly similar with that trademark.
It has also been established in many UDRP decisions that
when making the present comparison, suffixes like the gTLD suffix “.com” are to
be disregarded.
Accordingly, Complainant has made out the first of the
three elements that it must establish to succeed.
Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of Policy ¶ 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 trademark or service mark at issue.
Thus, if Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the disputed domain name, Complainant will have failed to discharge its onus and the Complaint will fail.
The generally accepted approach to this issue is that the Policy requires Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that the burden then shifts to Respondent to show that it does have rights or legitimate interests; see G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) and Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant apparently concedes that whilst the distributor agreement between the parties was on foot, Respondent had a legitimate right or interest in the disputed domain name, as it used it in the course of its business with the approval of Complainant. However, Complainant also contends that when the distributor agreement came to an end, so also did Respondent’s right or legitimate interest and that accordingly it now has none.
That, of course, is a prima facie showing, to which Respondent replies that it has a continuing interest in the domain name and one that is legitimate. That interest, Respondent says, comes from the fact that while the distributorship was still on foot, Respondent was “the contact in Canada for after-sales customers service issues including product warranty claims relating to E-Z Up products.”
Complainant has not denied this allegation in its Additional Submission although it had an opportunity to do so and the Panel will accordingly accept it, on the balance of probabilities, as being the fact.
Respondent also says that despite the allegation that the distributor agreement ended on June 30, 2006, Respondent placed orders for more goods and that these orders were confirmed by Complainant, with shipping dates up to August 31, 2006. Complainant appears to agree with this by saying in its Additional Submission that it was willing to fill those orders as part of an attempt to resolve the dispute amicably.
That being so, Respondent says that it still has some of the stock that it bought from Complainant and that it needs some time to sell it. It also says that to maintain its good business reputation it must continue to provide warranty services and general after sales services on these products and that it needs the domain name and is corresponding e-mail addresses to do so. Moreover, it claims that this need is exacerbated by the fact that Complainant has now said that it will not provide warranty services or general after sales services to customers of Respondent.
Again, Complainant has not denied this allegation in its Additional Submission and the Panel will therefore accept it, on the balance of probabilities, as being the fact.
The issue then is whether this fact situation gives rise to a right or legitimate interest in the disputed domain name. Respondent says that it does, for it has an interest in keeping its good reputation and an interest in not having its business disrupted until it can transfer its communications over to new e-mail addresses which it is in the process of setting up. Complainant, on the other hand, says that this fact situation does not give rise to a right or legitimate interest in the domain name, for once the distributor relationship came to an end, it ended any right or legitimate interest Respondent had in the disputed domain name.
The Panel finds that the fact situation described by Respondent shows a legitimate interest in the disputed domain name. That is so for the following reasons.
First, whatever the status of Respondent is today, it is clear that at least until June 30, 2006 it had a legitimate interest in the disputed domain name. It is not denied by Complainant that whilst the distributor agreement was current, Respondent registered the disputed domain name with the knowledge and approval of Complainant.
Indeed, the Complainant would have a hard job denying this. By using the valuable tool, the Wayback Machine at <archive.org>, the Panel has readily been able to determine that for a long time Complainant was announcing on its website that potential Canadian customers should use <ezup-canada.com>, Respondent’s website and not <ezupcanada.com> or any other of Complainant’s own websites if they want to buy E-Z Up products in Canada. In other words, Complainant is directing Canadian buyers to go to Respondent’s website, to which the contentious domain name resolves.
Complainant was trading on Respondent’s domain name and using it in its
website advertising from, so far as the Panel can tell from the Wayback
Machine, at least November 27, 2001 until April 21, 2006, being the first shot of the
website captured where <ezupcanada.com> is used instead of
<ezup-canada.com>, a change which no doubt came about because of the
deteriorating business relationship between the parties. During the whole of the time that it
promoted Respondent’s website, it described Respondent as its “Exclusive
Canadian Distributor.” It is clear
therefore that during this period the domain name, embodying Complainant’s
trademark, was being used by Respondent and with the knowledge and approval of
Complainant to sell Complainant’s products in Canada as its distributor. That clearly gave Respondent a right or
legitimate interest in the disputed domain name.
Secondly, the situation just described makes this case one of those
that fall for decision under the principles developed in Oki Data Americas,
Inc. v. ASD, Inc. WIPO Case No.
D2001-0903. Nov. 6, 2001. In that case,
a ‘reseller’, meaning an authorized sales or service agent, was held to be
making a bona fide offering of goods
and services when it used its principal’s trademark in a domain name to
advertise its own services, which involved selling the principal’s products or
its spare parts. Those circumstances,
it was said, gave the reseller a legitimate interest in the domain name
sufficient to defeat a claim by the trademark owner. These principles have recently been discussed by the panel as
presently constituted in Control Techniques Limited v. Lektronix
Ltd, D2006-1052 (WIPO Oct. 11, 2006).
In the present case, it is clear that since
Respondent acquired the disputed domain name, it has been using it for a
legitimate business that has not transgressed Complainant’s interests at
all. Moreover, on August 8, 2006 it
deactivated its website and since then has only used the disputed domain name
for e-mail addresses. The case comes,
therefore, within the Oki Data
principle and gives rise to a right or legitimate interest in the domain name
on the part of Respondent.
The remaining and more difficult question is
whether the fact that the distributorship has come to an end has automatically
brought to an end Respondent’s right or interest, or whether Respondent has a
right or interest that continues past the termination and is current today.
The opinion of the Panel is that on the facts of the case, Respondent retains a legitimate interest in the disputed domain name. That is so for the following reason.
Those who drafted Policy ¶ 4(a)(ii) of the UDRP Policy intended that the expression “legitimate interests” would mean something other than “rights.”
The intention was that, first, if the registrant had an actual legal right to the domain name, that would defeat the trademark owner’s claim by itself. But, secondly, the Policy went further and added another criterion, that of legitimate interest. Those words have to be given some work to do or they serve no purpose. The intention here was to cover cases where the registrant may not have a legal right, but where it nevertheless has a bona fide association or connection of some sort with the domain name, where for example “… the Respondent has not registered the domain name for merely speculative reasons …” (MAHA Maschinenbau Haldenwang GmbH & Co. KG v. Deepak Rajani, D2000-1816 (WIPO March 2, 2001), but has a “real interest in the domain name” and is not making “an abusive domain name registration…”(Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 12, 2000).
A business clearly has a real interest in keeping on good terms with its customers by maintaining warranty and after sales services, for there is nothing more calculated to alienate customers and develop a bad reputation that to disown the customer when a product breaks down or needs some maintenance. A business has a similar interest in not disrupting communications with its customers and associates during a changeover to new email addresses. It seems contrary to common sense and all business practice to deny that these situations give rise to interests that are legitimate.
For that reason, Respondent in the present case has a legitimate interest in the disputed domain name that comes from its dual interest in using the name to maintain its business reputation and to avoid disruption of its business, not simply because it has found itself in that position, but because it has come about from carrying out its legitimate role as the approved agent of Complainant.
Clearly this interest cannot last forever, but the Panel is concerned only with whether Respondent, in the words of Policy ¶ 4(a)(ii) of the Policy “has” a legitimate interest, i.e. has it at the time this decision is being made. It is clear that Respondent does have such an interest at this time.
It is true that in Geckodrive Inc. v. Jon Hollcvraft, Case No. AF-1047 (eResolution, November 20, 2001) Complainant has found a case holding that a reseller has no legitimate interest in a domain name when its reseller status has been terminated. However, that case is very different from the present one. In Geckodrive, the respondent was establishing a website to promote and sell the complainant’s goods against the express wishes of the complainant. In the present case, Respondent is not doing that, has expressly disavowed any intention to do so and does not want to have a website using the contentious domain name, but is merely unwinding the detail that comes from having stock already acquired that it must dispose of. Moreover, Respondent is not claiming a legitimate interest that comes from a right to resell Complainant’s goods, but a legitimate interest in maintaining its reputation and avoiding disruption. In the Panel’s opinion they are both very real and legitimate interests.
The other case Complainant relies on, Jerome Stevens Pharmaceuticals, Inc v. Watson, D2003-1029 (WIPO Mar 26, 2006), is not on point either, for there was doubt in that case whether the respondent had ever had authority to register the domain name, whereas in the present case there was not only a clear authority, but Complainant actively promoted and traded on Respondent’s disputed domain name for several years. It is from that authority that Respondent’s interest has arisen. Moreover, Respondent’s legitimate interest in the present case is limited to those activities necessary to unwind the business relationship.
Likewise, in UVA Solar GmbH & Co K.G. .v. Mads
Kragh D2001-0373(WIPO May 7, 2001) the
distributorship had come to an end, but the registrant of the disputed domain
name claimed to be entitled to continue using the disputed domain name in a
website against the wishes of the trademark owner. All of these cases are very different from the present case for the
reasons given.
For these reasons Respondent has
rebutted the prima facie case of
Complainant and has shown that it has a legitimate interest in the disputed
domain name. Complainant has therefore
failed to make out the second of the two elements that it must establish.
In view of the findings already made, is not
strictly necessary to deal with the issue of bad faith. But as the facts already found apply equally
to this issue as they did to rights and legitimate issues, the issue of bad
faith may be dealt with briefly.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.
Further guidance on how to implement this requirement is to be found in Policy ¶ 4(b), which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
In an appropriate case, evidence of any one of these criteria may show bad faith registration and use. But the facts in the present case are opposed to any such conclusion. Not only has Complainant not shown that the registration of the disputed domain name came within any of the criteria, but it has shown the opposite, for the facts clearly establish that the disputed domain name was registered in good faith as part of a legitimate business arrangement and with the knowledge and approval of Complainant. Not only was that so, but the facts have also shown that Complainant used and traded on the fact that Respondent had a website based on the disputed domain name and it actively promoted it. So there was no bad faith registration either intended by Respondent or understood by Complainant to have been committed.
Moreover, it is drawing a very long bow to say that there has been bad faith use in the present case. For most of the life of the disputed domain name, it has been used in good faith, for the benefit of Complainant as well as Respondent; Complainant has clearly been prepared to take the advantages of the disputed domain name and it is only since the falling out between the two that it does not want the disputed domain name used in connection with its business. But Respondent is not using the disputed domain name in a website or for any improper or misleading purpose of in any way that could be regarded as deleterious to Complainant. Indeed, Respondent deactivated the website on August 8, 2006, two months before Complainant was filed.
Accordingly, Complainant has not shown bad faith registration or use.
DECISION
For these
reasons Complainant has not proved two of the three elements that it must
establish to succeed. The Panel
therefore concludes that relief shall be DENIED.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 15, 2006
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