WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Asphalt Research Technology, Inc. v Anything.com

Case No. D2000-0967

 

1. The Parties

The Complainant is Asphalt Research Technology, Inc., a Florida Corporation, with a principal place of business at 4649 Ponce De Leon Boulevard, Suite 303, Miami, Florida 33146, U.S.A.

The Respondent is Anything.com, whose full post office address is P.O. Box 309, Ugland House, George Town, Grand Cayman.

 

2. The Domain Name(s) and Registrar(s)

The domain name in issue is "ezstreet.com"; the Registrar with which the disputed domain name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 22070, United States of America.

 

3. Procedural History

The Complaint was filed on August 7, 2000 in hardcopy. The Center acknowledged receipt of the Complaint on August 11, 2000. A request for Registrar verification was forwarded to Network Solutions Inc. on August 11, 2000 by e-mail. On August 15, 2000, Network Solutions Inc. confirmed by e-mail that Network Solutions is the Registrar of the domain name in dispute and that Anything.com, P.O. Box 309, Ugland, House, George Town, Grand Cayman is the current registrant of the domain name in dispute.

On August 18, 2000 the Center prepared a Formal Requirements Compliance Checklist and verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel is satisfied that this is the case.

On August 18, 2000, the Center forwarded Notification of Complaint and Commencement of Administrative Proceeding to the Respondent Anything.com by post/courier and e-mail. The Center advised the Respondent that a response was due within twenty (20) calendar days from the day of receipt of the notification. The Respondent was advised that the last day for sending the Response to the Complainant and the Center is September 7, 2000. On August 19, 2000 the Centerís Mail Delivery Subsystem advised that the e-mail message of August 18, 2000 forwarding Notification of Complaint and Commencement of Administrative Proceedings to the Respondent was not deliverable. By stipulation of the parties accepted by the Center, the time to file the Response was extended to September 15, 2000.

On September 15, 2000 the Response was received by the Center. The Center sent an Acknowledgement of Receipt of the Response on September 19, 2000.

On September 22, 2000 the Center sent a Notification of Appointment of Administrative Panel and an expected decision date of October 5, 2000 in accordance with Paragraph 15 of the Rules.

The Administrative Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On September 22, 2000 the Center transmitted the Case File to the Administrative Panel by courier.

 

4. Factual Background

The Trademarks

The Complainant is the owner of the following trademark registration:

United States Trademark Registration No. 2,059,265 for the mark "EZ STREET" registered May 6, 1997 in association with asphalt products, namely, asphalt, bitumen and tar based asphalt sealants, asphalt roof coatings, asphalt composition paving, and asphalt patching compound made of a tar base. Complainant advised that it began using its EZ STREET mark for these products at least as early as February 1996. (A copy of the Registration is attached as Annex C to the Complaint).

The Complainant is also the owner of the following trademark application:

United States Trademark for EZ STREET filed February 17, 1998 in association with concrete and concrete mixes, mortar mixes and cements, grouts and floor underlayments and stuccos, sands and sand aggregates. No application number was provided by the Complainant.

The Domain Name in dispute "ezstreet.com" is reported by Network Solutions to be in "Active" status as of August 15, 2000. The domain name in dispute is not being used by the Respondent to identify a web site but leads users to the Anything.com web site.

5. Partiesí Contentions

A. Complainant

(i) The Complainant submits that the Respondent has registered the domain name ezstreet.com which is identical or confusingly similar to the Complainantís registered trademark EZ STREET and Complainantís common law rights in the mark "EZ STREET".

(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name "ezstreet.com".

(iii) The Complainant further submits that the domain name ezstreet.com was registered and is being used in bad faith.

The Complainant is the owner of United States Trademark Registration No. 2,059,265 for the word EZ STREET, registered on May 6, 1997. Said trademark is registered and used in association with asphalt products, namely, asphalt, bitumen and tar based asphalt sealants, asphalt roof coatings, asphalt composition paving, and asphalt patching compound made of a tar base. The date of first use provided by the Complainant is February 1996.

The Complainant has provided a copy of United States Trademark Registration No. 2,059,265 for EZ STREET.

The Complainant states that the Complainant has been using EZ STREET for many years in commerce. The Complainant did not provide evidence as to the extent of use of the trademark or samples of use of the trademark EZ STREET in association with the goods for which the trademark is registered and used.

With respect to the first element (i) in the Complaint, the Complainant submits that the Respondent has registered the domain name "ezstreet.com" which is identical or confusingly similar to the Complainantís registered trademark EZ STREET. The Complainant submits that the domain name "ezstreet.com" contains the whole of the Complainantís registered trademark EZ STREET. The additional element .com is irrelevant in trademark terms, since it is wholly descriptive and non-distinctive, identifying "ezstreet.com" as a top level generic domain name.

With respect to the second element (ii) in the Complaint the Complainant submits that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The third (iii) submission is that the domain name in dispute was registered by the Respondent in bad faith and is being used in bad faith, Complainant submits that "Net Marketing, an earlier registrant of the "ezstreet.com" domain name obtained the registration for the domain name with no intent of ever using the domain name in connection with a bona fide offering of goods or services. There is no evidence supporting the allegation that the earlier owner "Net Marketing" registered the domain name in dispute without the intent of using the domain name other than evidence that the Complainant was not able to contact the previous registrant "Net Marketing" at its address in Canada.

Complainant advises that on or about July 17, 2000 the Whois database listing for the "ezstreet.com" domain name was updated to reflect a transfer in ownership to the Respondent, Anything.com. Complainant submits that Anything.com has never been known by the mark "ezstreet" or the "ezstreet.com" domain name and submits that Anything.com has never made a legitimate non-commercial or fair use of the domain name "ezstreet.com".

Complainant submits that Respondent is preventing Complainant from using a domain name which is associated with a trademark to which Complainant has substantial rights. Complainant submits that Net Marketing, the earlier registrant, never used the "ezstreet.com" domain name and merely transferred the domain name, most likely by sale, which constitutes evidence that the mark was registered and used in bad faith by the predecessor in title Net Marketing.

Complainant submits that the domain name was registered to prevent Complainant the owner of the EZ STREET trademark from reflecting the trademark in a corresponding domain name which will disrupt Complainantís business by diverting potential customers of Complainantís EZ STREET products to other non-related locations or to tarnish the trademarks at issue.

Complainant submits that by using the "ezstreet.com" domain name, Respondent is intentionally attempting to attract for financial gain Internet users to Respondentís web site by creating a likelihood of confusion with the Complainantís registered and common law trademark rights.

Complainant relies on the Telstra decision in D2000-0003 as support in respect of alleged "passive holding of a domain name" by the Respondent.

B. Respondent

(i) The Respondent does not deny the allegation that the domain name "ezstreet.com" is identical or confusingly similar to the trademark EZ STREET of the Complainant.

(ii) The Respondent submits that it is a developer of Internet web sites and named web sites which Respondent had developed. Respondent submits that it registered "ezstreet.com" for the purpose of developing a web site at the URL "ezstreet.com" related to personal financial matters.

(iii) Respondent submits that the composite phrase "EZSTREET" is a common alternative spelling of a common generic term EASY STREET. Having chosen a generic term Complainant is not in a position to object to the use of the term by others. Respondent submits that there are 46 registered and pending trademarks on the Principal Register in the United States incorporating the generic term EASY STREET, with various spelling combinations including EZ STREET and EAZY STREET. Respondent provided a list of the registered and pending trademarks. Respondent submits that there are several decisions under the ICANN Dispute Resolution Policy and Rules that hold that where a generic domain name is in dispute as it is here, the rights/interest analysis tends to favour the domain name holder.

(iv) Respondent submits that there is no evidence that the Complainantís registered or common law trademark is a famous or well known trademark deserving a broad scope of protection.

 

6. Discussion and Findings

Complaint:

Pursuant to paragraph 4.a of the Policy, Complainant must prove that each of the three following elements are present, that

(i) the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the Respondentís domain name has been registered and is being used in bad faith.

Paragraph 4.c. of the Policy sets out three illustrative circumstances, other circumstances may be relevant, each of which, if proven by the Respondent, shall demonstrate Respondentís rights or legitimate interests in the domain name for purposes of paragraph 4.a.(ii) above. The illustrative examples in paragraph 4.c. are as follows:

(i) before any notice to the Respondent of the dispute, the Respondent used or made demonstratable 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is 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.

Paragraph 4.b. of the Policy sets out 4 illustrations of circumstances which if proven by the Complainant shall be evidence of registration and use of the domain name in bad faith by the Respondent for purposes of paragraph 4.a.(iii) above:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Paragraph 4.b. is not limiting as to the circumstances which may constitute evidence of registration and use of a domain name in bad faith. Circumstances other than those enumerated in subparagraphs (i) to (iv) of Paragraph 4.b. may constitute registration and use of a domain name in bad faith.

"Bad faith" is defined in Blackís Law Dictionary 7th edition at page 134 as: "1. Dishonesty of belief or purpose..". In Halsey v Brotherhood (1881), 19 Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala fides stated that the task of the Court was to consider "whether there is anything to show that what the defendant stated was stated without reasonable and probable cause".

Pursuant to Rule 5.(a), the Respondent shall submit a Response within 20 days of commencement of proceedings. In the Response the Respondent must respond specifically to the statements and allegations contained in the complaint and include all and any bases for the Respondent to retain registration and use of the disputed domain name. Rule 5.(b)(i).

A. Has the Complainant proven that the domain name "ezstreet.com" is identical or confusingly similar to the registered trademark or common law trademark EZ STREET of the Complainant?

As the Respondent does not dispute this element, I find that the domain name and the trademark are confusingly similar.

B. Has the Complainant proven on a balance of probabilities that the Respondent has no rights or legitimate interest in the domain name?

Respondent submits that Respondent is in the business of developing web sites and has already developed dozens of web sites. The Respondent states that it is planning to develop "ezstreet.com" as a web site related to personal financial matters. The Complainantís evidence is that the domain name was transferred to the Respondent on approximately July 17, 2000. The Complainant submits that neither a previous owner of the domain name in Canada nor the Respondent has developed a web site. The Respondent submitted and filed evidence of 46 registered and pending trademarks for the common term EASY STREET, with various spelling combinations including EZ STREET and EAZY STREET (Exhibit "B" to the Response). The Complainant did not file any evidence as to the extent of use of the registered and common law trademark EZ STREET by the Complainant from which one could conclude that the Complainantís trademark is a famous or well known trademark. The Respondent has a legitimate interest to use a trademark or domain name in which many persons hold an exclusive right in relation to different goods and services providing the goods or services are sufficiently far apart from the goods and services of others so as to distinguish the goods or services of the Respondent.

Having regard to the fact that there are many registrations and pending applications for EASY STREET and variations thereof and the fact that the Respondent has developed other web sites and is planning to develop a web site related to personal financial matters under the domain name "ezstreet.com", I find that the Complainant has failed to prove that Respondent has no rights or legitimate interest in the domain name "ezstreet.com".

C. Has the Complainant proved that the domain name was registered and is being used in bad faith?

The domain name was registered by a predecessor in title in Canada and was transferred to the Respondent on approximately July 17, 2000. The Complaint was filed on August 7, 2000. The Respondent is in the business of developing web sites and is planning to develop "ezstreet.com" as a site related to personal financial matters.

The Complainant relies on the decision in Telstra Corporation Limited v Nuclear Marshmallows, Case No. D2000-0003 (WIPO, Feb. 18, 2000) for the proposition "passive holding of a domain" constitutes bad faith. However, the facts in Telstra are substantially different from the facts in this case. The word TELSTRA was a coined word which was well known, one which a trader would not legitimately choose unless seeking to create an impression of an association with the Complainant in that decision.

In the present case there is evidence of exclusive rights in many registrants in the trademark EASY STREET or phonetic variations thereof.

The Complainantís trademark is registered and used in relation to asphalt products, concrete and concrete mixes and the like. There is no evidence that the Complainantís registered or common law trademark EZ STREET is a famous or well known trademark. The Respondent registered the domain name "ezstreet.com" for the purpose of developing a web site at URL "ezstreet.com" related to personal financial matters. Having regard to the short window of time since the Registration of the domain name in dispute and the date of filing of the Complaint, and having no reason to doubt the Respondentís plans to develop the web site for personal financial matters, the Panel finds that the Complainant has failed to prove that the domain name "ezstreet.com" was registered and is being used in bad faith or held passively for use by the Respondent in bad faith.

 

7. Decision

In the Complaint, the Complainant requested that in accordance with the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain name be cancelled or transferred to Complainant. For the reasons expressed above the Complaint is dismissed.

 


 

Ross Carson
Panelist

Dated: October 2, 2000