WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EzCommerce Global Solutions, Inc. v. AlphaBase Interactive (aka Alpha Base Interactive, Inc., Alpha Base Systems, Inc. and Alpha Base Systems, Incorporated)
Case No: D2002-0943
1. The Parties
The Complainant is EzCommerce Global Solutions, Inc. of San Jose, California, United States of America, represented by Thoits, Love, Hershberger & McLean, P.C. of Palo Alto, California, United States of America.
The Respondent is AlphaBase Interactive (aka Alpha Base Interactive, Inc., Alpha Base Systems, Inc. and Alpha Base Systems, Incorporated), C/O Barry Weingart of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ezcommerce.com> ("Domain Name") is registered with Network Solutions, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2002. On October 11, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On October 15, 2002, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2002. The Response (an early, informal e-mail communication from Respondent) was filed with the Center on October 14, 2002, and confirmed as the Response on November 7, 2002.
The Center appointed Andrew Mansfield as the sole panelist in this matter on November 11, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the proceeding is English.
4. Factual Background
Respondent, the California corporation AlphaBase Interactive, Inc., registered the Domain Name on March 29, 1997.
The Complainant is EzCommerce Global Solutions, Inc., a Delaware corporation and the successor in interest to all of the assets of EzCommerce, Inc., a California corporation. EzCommerce, Inc. the California corporation, was incorporated on October 23, 1998 and was merged with and into Complainant in May 2002.
On January 31, 2000, Complainant filed an intent-to-use application to register EZCOMMERCE on the Principal Register of the United States Patent and Trademark Office. The intent-to-use registration matured into a registration on the Principal Register on September 3, 2002.
On April 13, 2001, EzCommerce, Inc., the California corporation, filed an additional trademark application with the United States Patent and Trademark Office. This application was a first use application to register EZCOMMERCE on the Principal Register. This application matured into a registration on the Principal Register on June 11, 2002.
Both marks have been properly assigned to Complainant.
5. Partiesí Contentions
Complainant asserts that the Domain Name is identical or confusingly similar to its trademarks. Complainant asserts common law rights in EZCOMMERCE dating back to "at least 1999 when it began providing consulting services to its clients." As described above, Complainant registered its marks on the Principal Register of the United States Patent and Trademark Office in 2002.
Complainant asserts Respondent has no rights or legitimate interests in the Domain Name because the Domain Name was not used prior to the first contact between the parties. In other words, the Domain Name was dormant during the period 1997 to at least September 27, 2000, (the date of the first e-mail to Respondent from the President of Complainant). Complainant implies that no use was made of the Domain Name until at least June 12, 2002, (the date of the formal notice of a trademark dispute between the parties). Later in the Complaint, it is indicated that the Domain Name was pointed to a pre-existing website for Intermedia Organizer on June 24, 2002.
Further, Complainant asserts that Respondent has not provided "even a scintilla of information" concerning how it allegedly intended to use the Domain Name, is not and was not known by the Domain Name and has not made fair use of the Domain Name. Finally, Complainant provides evidence that Respondentís rights as a California corporation have been suspended.
To prove "bad faith" by Respondent, Complainant points to the correspondence between the parties. Respondent, after being contacted by Complainant, offered to sell the domain name for as much as $100,000 or lease the domain name for a small annual fee of (at most) $5,000.
Last, Complainant states that Respondentís renewal of the Domain Name registration during the time he was attempting to sell or lease the Domain Name evidences bad faith.
Respondent provided a short response by e-mail on October 14, 2002. Respondent states that it owns a company called Intermedia Organizer, Inc. that sells a product called iO. As part of the product, users are given the ability to look up and acquire sub-domains. That service is called EZID. Respondent plans to incorporate an automated commerce module in its software in 2003 and will name that module "EZCOMMERCE."
The Domain Name, registered in 1997, was allegedly used for an online commerce processing system in the late 1990s.
Respondent states that he was "pestered" by Complainant to set a price for the sale of the Domain Name and did not offer to sell the Domain Name until after repeated contact from the Complainant.
6. Discussion and Findings
Complainant must prove three distinct elements in order to prevail on its claim for transfer of the Domain Name. These elements are set forth in Paragraph 4(a) of the Policy:
- The 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 Name was registered and is being used in bad faith.
A. Is the Domain Name Identical or Confusingly Similar to a Complainant Trademark?
Paragraph 4(a)(i) of the Policy states that Complainant must have trademark or service mark rights in a mark identical or confusingly similar to the Domain Name. In this case, the Domain Name is identical to the mark that Complainant acquired in 1999. Prior panels have issued conflicting decisions on whether this element is satisfied by the identity alone. Some panels have found that a complainantís trademark rights must have existed at the time the domain name was registered in order for this element to be satisfied. This Panel finds the spirit and aim of the Policy is in accord with this line of authority.
A Complainant who had no trademark (or an immediately impending mark known to Respondent) when the Domain Name was registered should have no recourse under the Policy. In this matter (and by its own admission) Complainant did not acquire common law trademark rights to EZCOMMERCE until at least 1999. The Domain Name was registered two years before that Ė in 1997.
One prior panel held that paragraph 4(a)(i) of the Policy:
Necessarily implies that the Complainantís [trademark] rights predate the Respondentís registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally.
Phoenix Mortgage Corporation v. Tom Toggas, WIPO Case No. D2001-0101 (March 30, 2001. See also José de Jesus Velázquez Jiménez v. Velazquez-Perez, CPA, WIPO Case No. D2001-0342 (May 8, 2001); Sealstore.com L.C. v. Sealpool, NAF Case No. FA0096535 (March 8, 2001); Diamond Shamrock Refining & Marketing v. CES Marketing Group, NAF Case No. FA0096766 (April 20, 2001); Business Architecture Group, Inc. v. Reflex Publishing, NAF Case No. FA0097051 (June 5, 2001).
No exception to this general rule concerning the date of registration and the commencement of trademark rights applies to this case. The nature of such exceptions was well explained in a recent decision. In ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (October 7, 2002). The Panel found that "a domain name registration can have been undertaken in bad faith even if the trade mark rights at which such bad faith was directed arose after the registration of the domain name," in certain circumstances.
This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latterís development a new trademark.
Complainant in this matter has not introduced any evidence that Respondent was somehow aware that Complainant intended to use "EZCOMMERCE" to brand a product in 1999 when Respondent registered the Domain Name in 1997.
In addition, EZCOMMERCE is a weak trademark and "EZ" (in the sense that it is short for "easy") and "Commerce" are common words in English. A lack of "confusing similarity" may result from the commonness of the trademarked word. In Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO Case No. D2000-0950 (October 11, 2000), the panel held that the widespread use of the prefix "easy" in business names made it unlikely that consumers would confuse the disputed domain name and the trademark..
Because the alleged trademark EZCOMMERCE did not exist at the time the Domain Name was registered and because of the weakness of the mark and the resulting lack of confusing similarity, the Panel finds that paragraph 4(a)(i) has not been satisfied by Complainant. This finding is not mandatory in order for the Panel to determine that the Complaint should be denied, as is discussed below. The Panel also finds that Complainant has not demonstrated a lack of rights or legitimate interests in the Domain Name by Respondent nor has Complainant demonstrated Respondent acted in bad faith.
B. Does Respondent Have Rights or Legitimate Interests in the Domain Name?
Complainant also bears the burden of proof to demonstrate that Respondent has no rights or legitimate interests in the Domain Name. Pursuant to paragraph 4(c)(i) of the Policy, demonstrable pre-dispute use or preparation for use by Respondent establishes that Respondent has either rights or a legitimate interest in the Domain Name.
Respondent has informed the Panel that it operated a commerce web site at the Domain Name in the late 1990s and has prepared for the launch of an EZCOMMERCE service within its iO software for 2003. According to one panel, "even perfunctory preparations have been held to suffice for this purpose." Maureen A. Healy v. Andreas Kuhlen, WIPO Case No. D2000-0698 (August 24, 2000). Further, a panel may accept a plausible explanation from Respondent that such use is intended and has been prepared. PT Cruiser Club LLC v. Thompson Six Star, Inc., NAF Case No. FA0096452 (February 28, 2001).
The Panel finds that Respondent has rights and legitimate interests in the Domain Name both because of prior use and based on the evidence of preparations for future use.
C. Did Respondent Register and Use the Domain Name in Bad Faith?
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith." Those designated may be summarized as:
- Evidence that the purpose of registration is to sell, rent or transfer the domain name to the Complainant for an amount in excess of out-of-pocket expenses; or
- Evidence that the registration of the domain name was to prevent the owner of the trademark or the service mark from using the domain name, coupled with a pattern of such conduct; or
- Evidence that registration and/or use is primarily meant to disrupt the business of a competitor; or
- Intentional utilization, for commercial purposes, of the likelihood of confusion stemming from the domain nameís use or deployment.
The fact that Respondent registered the Domain Name prior to any use by Complainant that may establish common law trademark rights also belies any claim that the Domain Name was registered in bad faith. One panel articulated the element of "bad faith registration" as follows:
The Policy is directed to dealing with cybersquatters. For an allegation of bad faith registration and use of a domain name to succeed, the Complainant has to show at the very least that when the Respondent registered the Domain Name, the Respondent was (or was likely to have been) aware of the existence of the Complainant or, more particularly, the Complainantís rights in respect of the trademark in question.
Rusconi Editore S. P. A. v. Bestinfo, WIPO Case No. D2001-0656 (July 5, 2001). See also America.com Inc. et al v. PSS InterNet Services, Inc., NAF Case No. FA0096784 (April 19, 2001).
As discussed above, the Policy does apply, under certain circumstances, to an abusive registration of a domain name accomplished in anticipation of a trademark registration or trademark use. Such registration may be made in bad faith if the registrant has inside information. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (October 7, 2002). No such evidence has been introduced in this case.
Further, it was Complainant who initiated the discussion concerning the sale of the Domain Name. Evidence concerning the price and terms of the proposed sale does not support a finding of bad faith. In addition, no evidence was introduced by Complainant showing any pattern in which Complainant registers and sells Domain Names.
Complainant is also incorrect in its assertion that the renewal of the Domain Name constituted a separate act that evidences "bad faith." In Spirit Airlines, Inc.v. Spirit Airlines Pty. Ltd, WIPO Case No. D2001-0748 (July 25, 2001), the panel found:
Renewal of a domain name registration in this respect is no different from renewal of a trademark registration. It represents a continuation of the original registration.
The Panel finds no evidence that Respondent has acted in bad faith.
For all the foregoing reasons, the Complaint is denied.
Date: November 21, 2002