WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EPLAN Software & Service GmbH & Co K.G. (formerly known as Wiechers & Partner Datentecknik GmbH & Co K.G.) v. Chad Folkening, ECORP.com, Inc E-PLAN, and ECAST
Case No. D2000-0806
1. The Parties
The Complainant is EPLAN Software & Service GmbH & Co K.G. [formerly known as Wiechers & Partners Datentecknik GmbH & Co K.G.] of An der alten Ziegeler 2, 40789 Monheim an Rhein, Germany.
The Respondents are Chad Folkening, Ecorp.com, Eplan and Ecast. The first three named Respondents are at 88 Rodgers Road, Carmel, IN 46032, United States of America and the fourth Respondent is at 3620 N. Washington Blvd. Indianapolis, IN 46205, United States of America.
2. The Domain Name and Registrar
The domain names at issue are:
and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on July 17, 2000 [electronic version] and on July 20, 2000 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is August 7, 2000.
On July 20, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on July 21, 2000, Network Solutions, Inc transmitted by email to the Center Network Solutions, Inc's verification response confirming that the registrant is Ecast and that the contact for both administrative and billing purposes is Ecorp.com.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 7, 2000, to
this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by August 26, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Chad Folkening, Ecorp.Com, Inc and E-plan
88 Rodgers Road, Suite 22
Carmel, Indiana 46032
United States of America
3620 N. Washington Blvd.
Indianapolis, In 46204
United States of America
The Response was received on August 28, 2000. Due to difficulties in transmitting the Response to the Center, the Center by letter dated August 29, 2000, confirmed to the Respondents that the Response was considered to have been received in a timely fashion. The Respondents' Response is stated to be subject to their objection to the Center's authority to conduct this proceeding. By the terms of its Agreement with Network Solutions, Inc under which the domain names in issue were registered, the registrant Ecast submitted to a mandatory administrative proceeding in the event of a Complaint of this nature. The Complainant selected the Center, which is a Provider approved by ICANN. In the circumstances, the Panel finds that the Respondents' objection to the Center's authority to conduct this Administrative Proceeding fails.
Having received on September 12, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr.. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was September 26, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant, EPLAN Software & Service GmbH & Co K.G. was established in Germany in 1984. The company claims to have created an industry standard with its electrical CAD (computer aided design) in the field of electrical controls design and to have more than 30,000 installations of its computer programs worldwide and offices in 30 countries. As is apparent from its website [Exhibit G to the Response], the Complainant offers a range of products under the EPLAN label, namely EPLAN21: EPLAN5: EPLAN DESIGN; and EPLAN Electrical Desktop.
The Complainant's Trade Mark
The Complainant has exhibited a copy of its US trade mark and services for EPLAN in
Class 9 : for computer services;
Class 41 : for training services in the use and operation of computers and computer programs; and
Class 42 : for computer programming services.
Registration No. 1,485,111 was registered on April 19, 1988 (filed February 13, 1987).
The US registration refers to a corresponding German trade mark 1,0965,756 of September 22, 1986.
The Complainant asserts that it has spent and continues to spend substantial sums promoting the EPLAN mark and as a result EPLAN has become well known to the relevant public and has come to identify uniquely the Complainant as the source of goods and services sold under that mark.
The Complainant's Web Sites
4.3 The Complainant promotes its goods and services at websites located at the domain names
Material from the EPLAN.ORG website is at Exhibit G to the Response.
The Respondents' intended business
4.4 The Respondents characterise the intended business under the domain names in issue as electronic calendaring over the Internet conjoined with other goods and services offered within the Respondents' web-based network. The Respondents explain that their business strategy is premised on the interlinking of numerous web-based businesses. These web-based businesses are intertwined with each other to provide the consumer the opportunity of travelling from site to site within the network of businesses. It is also designed to permit a strategic business partner to join the network and add its products or services to those already offered and to take advantage of the existing products and services already within the network. The Respondents refer to numerous domain names which they have purchased with the intention that such domain names will form the platforms for a global communications company.
The Respondents' "e" prefixed domain names
To illustrate this at Exhibit E to the Response is a list of, inter alia, all "e" related domain names owned by the Respondent, Folkening, or an affiliated company. Apart from the two domain names in issue, of the 50 "e" prefixed domain names the list includes
efare.com: efiling.com,egateways.com, egating.com, elabels.com,emulticast.com, eloop.com, emanagers.com, e-leasing.com, epapers.com, epermits.com, epolls.com, eport.com, epowered.com, eprofiles.com, eproviders.com, eservices.com, eshares.com, ecalendars.com.
The Respondents state that these names were selected based on their generic nature combined with potential for use in the Internet. That selection process is described as "something akin to an intelligent review of the dictionary".
The Respondents characterise the two domain names in issue as obvious choices for its intended business since, for an Internet electronic planning / calendaring device, it is only logical to select a domain name that includes the two main components "e" [synonymous with electronic on the Internet] and plan.
How the Respondents intend to use the two domain names in issue
4.6 The Respondents explain that their intention is to use the two domain names in issue as a planning forum for the interlinked web-based businesses owned or operated by one or more of the Respondents. The proposed EPLAN.com and E-PLAN.com domain names will be used for sites which will provide the planning and co-ordination for all other linked sites.
By way of example, the Response suggests that the sites could be used to facilitate an Internet broadcast of a concert. The promoter of the band would simply log onto the Respondents' network of sites, locate the eplan.com or e-plan.com link, input the relevant information and the band would be booked. The two sites would be supported by other sites operated by the Respondents, such as ecast.com or streaming.com that would carry the Internet performance, all of which would be co-ordinated through the two sites at eplan.com and/or e-plan.com.
The Respondents' existing websites
4.7 The Respondent, ECORP.com, state that it has developed viable websites such as DSL.com, TheVibe.com and ecorp.com. Content posted on those sites is illustrated at Exhibits A to C respectively of the Response.
The Complainant states that it has reviewed two of those sites, DSl.com and ecorp.com but neither refers to either of the domain names in issue. From the Panel's review of the said Exhibits, this is correct. However, the DSL.com website provides a general overview of DSL [an abbreviation for Digital Subscriber Line], how it works and answers a number of questions relating to DSL. DSL is described as a technology for bringing high-bandwidth connectivity to homes and small businesses over ordinary copper telephone lines. It provides a map of the United States indicating where DSL is already available and those where it will soon be available.
The ecorp.com webpage describes it as "a strategic global web communications holding, development and management company leveraging web-based technology within strategic Internet ".com" platforms". It invites those interested in co-development, partnerships, or job opportunities, to email their requests to a number of domain names including the following "e" prefixed domain names:
ecast.com, egaming.com, eservices.com and esignatuires.com.
The Respondents say that over the last several years they have placed more of an emphasis in compiling domain names than in construction of the sites themselves.
However, they are now beginning to add content to those sites. Judging from the content of the DSL.com website it appears to the Panel that the Respondents' business plan is both complex and ambitious. They characterise the DSL.com, ecorp.com and TheVibe.com websites as the first legs of their web-based business.
No actual use of the two domain names in issue
4.8 The Complainant states that the two domain names in issue are not used as a uniform resource locator for any website. The EPLAN.com website [Exhibit 6 to the Complaint] is stated to be "under construction". It reads
"This website is currently under construction by ecorp.com. Please visit again soon to see the development. Ecorp.com is a global internet investment company developing web-based platforms. Please visit ecorp.com for more information or visit the affiliated site DSL.com to learn about DSL technology."
The Complainant states that this message was placed on the EPLAN.com website on about June 12, 2000, over six months after the Complainant put the Respondents Folkening, Ecast and E-Plan on notice of Complainant's rights in the EPLAN mark in November 1999. These statements are not denied in the Response but should, in the Panel's view, be read in the context of the Respondents' description of their business plan, which is the reason for the Panel extensively referring to the explanation of that plan given in the Response.
4.9 This contains, inter alia, the following submissions:
· The business plan including the intended use of the two domain names in issue.
· The Respondents were unaware of the existence, prior to the notice letter of November 1999 [paragraph 4.8 above], of the general operations of the Complainant or of the Complainant's E-PLAN mark.
· It is apparent from the content of the Complainant's eplan.org website that its business has no relation to providing an electronic calendaring system as intended by the Respondents. The businesses are separate and distinct, nor will they compete for the same customers.
· The Respondents did not register the two domain names in issue with an intention of offering to sell them to the Complainant, nor have the Respondents so offered them.
· The Respondents own a number of other general "e" prefixed domain names [paragraph 4.5 above].
· Other companies apparently unrelated to the Complainant have applied to register, and in one case have registered, EPLAN as a trademark with the US Patent and Trade Mark Office. The registered EPLAN mark [No. 2,377,247] is in Class 39 for "motor vehicle licensing services" [Exhibit K to the Response].
· The Respondents say that use by the Respondent, Chad Folkening, of what the Complainant characterised as fictitious names as the registrant of domain names are, in fact, identification tags called nics. They are, so the Respondents say, no more than abbreviated identifiers used to track the owners of websites.
· The Respondents deny that they have engaged in a pattern of conduct amounting to cybersquatting [see, further in paragraphs 6.3.5 and 6.3.6 below].
· On the contrary, the Respondents have paid substantial sums to acquire certain of the domain names to be used for the development of and the interlinking within ecorp.com web-based platform.
5.1 The Complainant contends that the Respondents have registered as domain names a mark which is identical to or confusingly similar to the Complainant's EPLAN mark, that the Respondents have no rights or legitimate interests in respect of those domain names and the Respondents have registered and are using those domain names in bad faith.
5.2 The Respondents deny that the domain names in issue are identical or are confusingly similar to the Complainant's EPLAN mark and further deny that those names were registered or are being used in bad faith. Further, the Respondent assert that they have both rights and legitimate interests in respect of the two domain names in issue.
6. Discussion and Findings
6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following;
· That the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
· The Respondent has no rights or legitimate interests in respect of the domain name; and
· The domain has been registered and is being used in bad faith.
Identical or Confusingly similar
6.2 The Complainant's US trade mark and service mark EPLAN and the Respondents' two domain names in issue are, to all intents and purposes, identical. The addition of .com to the domain names is not relevant. The Complainant's EPLAN mark is identical to the domain name eplan.com and visually and orally the same as the domain name e-plan.com. See, for example, the Panel Decision in WIPO Case D2000-0029 at paragraph 6A [Exhibit F to the Response] in which it was held that
"The addition of .net or .com or the absence of the space between the two words is not significant in determining similarity".
Further, the Respondents are not correct in saying that
"To succeed in this proceeding, Claimant (sic) must establish that there is a likelihood of confusion by consumers as to whether the Respondents' product is the same product offered by the Complainants".
A test for establishing trademark infringement may be "likelihood of confusion". The Policy paragraph 4a makes no such requirement where the domain name in issue is identical to a trademark in which the Complainant has rights. Since in this case there is identity, the Complaint satisfies the requirements of paragraph 4a(i) on that basis.
Rights or Legitimate Interests
6.3 Paragraph 4c of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interest for the purposes of paragraph 4a(ii). Those circumstances are that;
· before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use the domain name or a domain name corresponding to the domain name, in connection with a bona fide offering of goods or services; or
· the Respondent (as an individual, business or other organisation) has been commonly known by the domain, even if it has acquired no trademark or service mark rights; or
· the Respondent is making a legitimate non-commercial or fair use of the domain name with intent for commercial gain to misleading divert customers or to tarnish the trade mark or service mark at issue.
6.4 The Complainant put the Respondents on notice of the dispute in November 1999. The domain name EPLAN.com was registered on May 29, 1998 and the domain name E-PLAN.com on January 13, 1999. However, the Complainant's case is that the Respondents did not use or make any preparations to use the two domain names in issue before being placed on notice of the EPLAN mark. The Complainant goes further and states its belief that the Respondents have no intention to begin business under either of the domain names in issue as part of a commercial or non-commercial undertaking . It bases these assertions upon the following:
· EPLAN is not the Respondents' name or business:
· There is no evidence that the Respondents are commonly known by either of the domain names:
· The Respondents do not appear to be conducting any activity, commercial or non-commercial under either domain name:
· The Complainant has not licensed or otherwise agreed to the Respondents using the Complainant's EPLAN mark:
· At the date of the Complaint [July 17, 2000] the Respondents had not used the domain name E-PLAN.com as a uniform resource locator for any web site:
· Nor was the EPLAN.com domain name so used until about June 12, 2000 [over six months after the notice letter of November 1999] and even then only an "under construction" notice has appeared on the website [see, paragraph 4.8 above]; and
· Neither of the websites to which one is directed by the EPLAN.com website - ECORP.com or DSL.com - make any mention of the two domain names or either of them [see, paragraph 4.7 above].
6.5 It is clear from the Response that neither the second or third circumstance set out in paragraph 4c of the Policy apply on the facts of this case. The issue, therefore, is whether the Respondents come within the first circumstance or can otherwise show rights or legitimate interests. On the evidence before the Panel, did the Respondents prior to November 29, 1999 (or whenever that letter was received by the addressees] use or make demonstrable preparations to use the domain names in issue or a name corresponding to those names in connection with a bona fide offering of goods or services?
6.6 The Respondents do not claim to have made any such use. The Respondents do, however, assert that the two domain names [registered in May 1998 and January 1999] were an integral part of its business plan, which has been under development for several years, in which they would serve as an electronic calendar for linked sites owned or operated by one or more of the Respondents [see, paragraph 4.6 above]. Is this business plan genuine or, as the Complainant suggests, is it totally lacking in credibility? The Panel must determine the "relevance, materiality and weight of the evidence" [Rules, paragraph 10(d)] as it appears from the Complaint and the Response.
6.7 Albeit in connection with the requirement of the third element of paragraph 4 of the Policy [namely, registration and use in bad faith], the Complaint asserts that the Respondent, Chad Folkening, is a cybersquatter. If that is shown to be the case on the weight of the evidence, it is in the Panel's view a circumstance to be taken into account in weighing the credibility of the Respondents' business plan for the purpose of the second element of paragraph 4 of the Policy [namely, legitimate interest]. What, then, is the Complainant's case in relation to the cybersquattering allegation?
6.8 The Complaint refers to and exhibits [Exhibits 9-11]. Three Decisions in cases decided by Panels appointed by the Center. They are
Home Director Inc .v. Home Director [Case D2000-0111];
Europay International SA .v. Eurocard.com Inc
EuroCard.org and Chad Folkening [Case D2000-0173]; and
The Southern Company .v. Chad Doms a/k/a Chad Folkening [Case D2000-0184].
The Complaint also refers to two lawsuits mentioned in the Europay Decision.
6.9 The Complainant refers to the following facts and matters:
· Folkening has registered over 7,000 domain names [Europay, Exhibit 10, paragraph 5.13].
But, in the Europay case the Panel denied the Respondent, Folkening's request for an extension of time within which to file a Response and the case was decided as a default proceeding.
In this case, the Response states that the Respondents have purchased over a period of several years numerous domain names with the expectation that they will serve as a platform for a global communications company [Response, Section II A.1, see paragraph 4.4. above].
· In the Europay case the Panel found that the Respondent Folkening had engaged in a pattern of conduct consisting of registering Domain Names that incorporate trade marks owned by others not for legitimate commercial or non-commercial purposes, that such activities constituted registration and use in bad faith within the meaning of paragraph 4a(iii) of the Policy and were "consistent with the profile of a cybersquatter".
The Respondents point to the challenge they have mounted in the US District Court for the Southern District of Indiana against the Panel Decision of May 22, 2000, in the Europay case. This is Exhibit K to the Response.
· Folkening used a fictitious name when registering the domain name in issue in the Home Director case in order to hide his true identity, which the Panel held in that case evidenced bad faith for the purposes of paragraph 4a(iii) of the Policy.
This was another default proceeding and, as such, the Panel accepted as true all the allegations in the Complaint. In their Response in this case the Respondents explain that the use of pseudonyms are no more than abbreviated identification tags commonly used on the Internet to track the owner of websites [see, paragraph 4.9 above] and that the Panel's conclusions in this respect in the Home Director case represent a misunderstanding of internet technology.
· In this case, the Complainant refers to the original use of the names "GetHi, Cp" and "Euro, special" as the administrative contacts originally used for the two domain names in issue, respectively EPLAN.com and E-PLAN.com [Exhibit 12 to the Complaint], subsequently changed to the Respondent ECORP.com as a result of the April 11, 2000, Panel Decision in the Home Director case.
· The Complainant states that the Respondent, Folkening, has established a pattern of conduct of offering to sell domain names to trademark owners for consideration in excess of his documented out of pocket costs [Policy paragraph 4b(ii)]. This was found to be evidence of bad faith in both the Home Director and Southern Company cases. In the Europay case no offer to sell the disputed domain name was made. The Complainant says this was because the Respondent has learned from earlier cases that such an offer could constitute evidence of registration and use in bad faith.
In fact, the two earlier cases Home Director and Southern Company were, respectively, decided on April 11, 2000, and May 8, 2000, both after the Complaint was made in the Europay case in March 2000. In this case, the Respondent made no attempt whatever to sell either of the two domain names in issue to the Complainant.
· The Complainant suggests that registration by the Respondents of the two domain names in issue despite the prior existence of the US trade mark and service mark registration for EPLAN is further evidence of bad faith in terms of paragraph 4b(ii) and (iii) of the Policy.
The Respondents point to their other "e" prefixed domain names of a generic / descriptive type as indicating lack of intent to pirate the Complainant's EPLAN mark [see, paragraph 4.5 above] and as consistent with its business plan. The Respondents have explained the reason why, as yet, no actual use of the two domain names has been made [see, paragraph 4.7 above].
6.10 Do the Complainant's bad faith allegations amount to evidence that the Respondent, Folkening, and by association the related Respondents in this case are cybersquatters and so call into question the credibility of their business plan which they say establishes legitimate interests in the two domain names in issue? Is this a black and white case of cybersquattering or is it a genuine dispute as to which of two opposing parties have the legitimate right to the domain names [see, Exhibit H to the Response]? Is the Respondents' business plan sufficient to demonstrate legitimate rights to use the two domain names in bona fide commerce and to what extent, if at all, does the generic nature of the EPLAN mark affect the issue [see, the Shirmax case (Exhibit D to the Response)]?
6.11 In the Panel's view, the answer is not straightforward. This administrative proceeding is not designed to resolve evidentiary conflicts of this nature, which are better suited to be tested by a Court. The Panel finds that the Complaint fails to meet the requirements of demonstrating that the Respondents have no legitimate interests in respect of the domain names in issue as required by paragraph 4a(ii) of the Policy.
Registration and Use in ad Faith
6.12 It is, therefore, unnecessary to address these issues. The Panel's analysis of the allegations and responses as regards bad faith are set out in paragraphs 6.7 to 6.10 above. There is, in the Panel's view, a real conflict of evidence in this respect. The Response is not a mere smokescreen. As with legitimate interests [Policy paragraph 4a(ii)], the Panel finds that the Complaint also fails to meet the requirements of Policy paragraph 4a(iii). The fact that Panels on the facts of other disputes have characterised the Respondent, Folkening, as a cybersquatter does not necessarily impeach the credibility of the Response in this case.
In that context, the Panel notes that two of the three court cases referred to in the Europay Decision [paragraph 5.20 of Exhibit 10 to the Complaint] were on-going as at May 22, 2000, and that the Europay Decision itself is, effectively, currently the subject of Court proceedings. In those proceedings a company, Eurozone.com, Inc, (presumably, owned or controlled by the Respondent, Folkening) is seeking Declaratory Relief that it is the owner of the two domain names in issue in the Europay Decision and that the Complainant in that Administrative Proceeding has no rights in those domain names [see, Exhibit K to the Response].
For the foregoing reasons, the Panel decides that the Complainant has failed to prove all requirements of paragraph 4 of the Policy. Accordingly, the Panel rejects the request that the two domain names in issue be transferred to the Complainant.
Dated: September 28, 2000