WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Co-op America Foundation v. EDAP, Inc.
Case No. D2003-0155
1. The Parties
1.1 The Complainant is Co-op America Foundation, of Washington, D.C. 20006, U.S.A., represented by Sanjiv D. Sarwate of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, of Chicago, Illinois 60606, United States of America.
1.2 The Respondent is EDAP, Inc., of Surrey, BC, V3T4 M4, Canada, represented by Del Truman of EDAP, Inc.
2. The Domain Name and Registrar
2.1 The disputed domain name is <greenpages.info> (the "Domain Name") which is registered with eNom, Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2003. As originally filed the Complaint identified one "Fin Lemonde" as the Respondent. The relationship between Fin Lemonde and the Respondent is discussed later in this Decision. On February 28, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 10, 2003, the Registrar transmitted by email to the Center its verification response identifying the Respondent as listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
3.2 On February 28, 2003, before having completed the check of formal requirements, the Center emailed the Respondentís representatives and Fin Lemonde acknowledging receipt of the Complaint and providing contact details, case number and the like. On March 3, 2003, an email was received by the Center from "Speedy Fin (fin@firstname.lastname@example.org)" which stated that "SpeedyDomains" is "merely the registrar of this domain, not the registrant, the registrant is EDAP Inc., and is listed as such in the Whois". The email said that a copy of the Complaint was being referred to EDAP.
3.3 A lengthy series of emails follows where there appear to have been difficulties with the Respondent receiving messages over a certain size in its inbox and various communication problems of one sort or another. The Panel does not propose to go through these in detail as, ultimately, they have no direct relevance. On March 11, 2003, the Center requested that the Complainantís representatives file an amendment to the Complaint identifying the correct Respondent. On March 20, 2003, the Center notified the Complainantís representatives that if the deficiencies concerned were not dealt with within five days the claim would deemed to be withdrawn without prejudice to the submission of a new Complaint. On March 22, 2003, an amended Complaint was served by the Complainantís representatives.
3.4 A Response was filed on April 15, 2003. On May 5, 2003, the Complainant filed what it described as a "Motion for leave to file Reply" and a Reply. On May 8, 2003, the Respondent filed documents objecting to the proposed Reply and objecting to the Complaint proceeding on the grounds that it should have been deemed to be withdrawn as deficiencies were not corrected within the stipulated time period. The Respondent objected to the Reply on the grounds that there is no jurisdiction for the Panel to receive a Reply.
3.5 The Center appointed Nick Gardner as the sole panelist in this matter on April 30, 2003. 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. A Decision is due to be provided by May 14, 2003.
3.6 The Panel proposes to overrule the Respondentís objection to the filing of the Reply. It does not consider that the material contained in the Reply prejudices the Respondent. The Panel has jurisdiction under Rule 10(d) to admit the Reply. The Panel also proposes to overrule the Respondentís objection to the Complaint proceeding on the grounds that it should have been to deemed to be withdrawn. Apart from anything else such deemed withdrawal is without prejudice as to the right of the Complainant to file a subsequent Complaint and the Panel proposes to treat the amended Complaint as such subsequent Complaint.
4. Factual Background
4.1 Co-op America and its predecessors in title have used the term GREEN PAGES in connection with a range of publications including directories of environmentally and socially responsible companies. Such use has occurred since at least 1990.
4.2 Such use has in recent years extended to the Internet. Co-op America has adopted various marks such as National Green Pages, Green Pages Store and Green Pages Online. One of these, Green Pages Store, is a US registered trademark.
4.3 Co-op America has used the domain name <greenpages.org>. Such use predates the Respondentís use of the Domain Name. The Domain Name was registered on July 13, 2002.
5. Partiesí Contentions
5.1 The Complaint sets out details of the Complainantís history and its use of the term "greenpages". It also says that the Complainant has adopted a "family of trademarks" which include the words "greenpages" and has in particular the United States trademark for Green Pages Store.
5.2 The Complainant says its family of trademarks have achieved a wide degree of consumer recognition, serve as exclusive designations of the origin of Co-op Americaís good and services, and symbolize the goodwill and reputation of Co-op America.
5.3 The Complainant says that the Respondent has no right or interest in the term greenpages, as its use commenced nearly ten years after the first use of the term greenpages by the Complainantís predecessor. It says that the Respondent does not do business under the name greenpages or any variation thereof and is not licensed by the Complainant to make use of any of the marks in the family of marks.
5.4 The Complainant states that at the time the original Complaint was filed no use of <greenpages.info> had been made. The Complainant says that subsequent to the original Complaint being filed the Respondent started to host an Internet website which contains a statement that "greenpages is a trademark belonging to the Respondent".
5.5 The Complainant says that the inclusion by the Respondent on its website of an acknowledgement that it is not affiliated with (amongst others) the Complainant is an acknowledgement that its use is likely to cause confusion. The Complainant says that the Respondent had, as a matter of US law, constructive knowledge of the Complainantís marks and that it could not have registered the Domain Name with the intention of using it legitimately.
5.6 The Complainant says that the Respondent is engaged in a "shell game" to conceal the true ownership of the Domain Name. The Panel understands the reference to the term "shell game" to be a reference to the type of trick where a small item is placed under one of several cups or shells which are then shuffled about quickly (and often with sleight of hand) before an unsuspecting "mark" is invited to bet as to the correct location of the item concerned, invariably unsuccessfully. In this regard the Respondent says that there have been a succession of transfers of the Domain Name from Fin Lemonde domiciled in Portland to the Respondent and back again. In this regard various Whois searches have been exhibited as follows:-
(a) as at 28-8-02 the Domain Name is shown as being registered to Fin Lemonde.
(b) as at 30-12-02 the Domain Name is shown as being registered to the Respondent.
(c) as at 25-02-03 the Domain Name is shown as being registered to Fin Lemonde.
(d) as at 21-03-03 the Domain Name is shown as being registered to the Respondent.
5.7 The Complainant says that this is a pattern of repeated transfers including one transfer which could only have been accomplished after the original Complaint was filed which demonstrated that the Respondent and its predecessors were attempting to conceal the ownership of the Domain Name.
5.8 The Complainant also says that a response from the Respondent on the March 14, 2003, which says that it has owned the Domain Name since the beginning of its registration was "yet another move in its bad faith shell game" and was "incredible". The Complainant says that the fact that the Respondent is not telling the truth further demonstrates its bad faith.
5.9 The Complainant also relies upon Fin Lemonde failing to respond to the initial Complaint.
5.10 The Complainant also alleges that the Respondentís failure to identify its business and how the Domain Name serves that interest is further evidence of a legitimate lack of interest. It says that the Respondentís claims that it intends to use the Domain Name are spurious and it has not demonstrated any concrete plans or intentions in this regard. It says the fact that the Respondent has put up (after the original Complaint was filed) a web page with a list of Green Party links is merely a pretext by the Respondent and an attempt to "wrap itself in the Green Party banner".
5.11 The Complainant further says that the list of domain names which the Respondent attached to its Response (see below) indicates that it is registering a range of domain names which have no relation to its business such as <aberdeen.info>, <cajun.info>, <jewels.info>, <mysteries.info> and <sexcams.info>. The Complainant says that this shows EDAP speculates in domain names by acquiring potentially valuable domain names to sell or licence to those who have a legitimate commercial use for them.
5.12 The Complainant goes on to take issue in the Reply with a number of points that the Respondent has raised. These are discussed, to the extent necessary, further below in this decision.
5.13 The Respondent says that its use of greenpages is not confusingly similar with any mark used by the Complainant in that greenpages is "inherently non-distinctive".
5.14 In this regard the Respondent exhibits various details of Internet searches showing thousands of references to the term greenpages (or variations thereof) in different contexts.
5.15 The Respondent acknowledges that the Complainant operates a website at "greenpages.org" but refers to various other websites which are unconnected with the Complainant such as "greenpages.com", "greenpages.ca", "green-pages.com", "greenpages.org.nz" and so on. It says that none of these appear to infringe the alleged rights of the Complainant and several of these have been in operation for years.
5.16 The Respondent says the Complainant offered no solid evidence to support its assertions as to a wide degree of consumer recognition and the fact that its use of "greenpages" serves as an exclusive designation of the origin of Co-op Americaís goods and services.
5.17 The Respondent says that its use is fair in that it is using the Domain Name to host a web page, which has a worldwide directory of Green Party offices. It says it has further plans to use the Domain Name in a commercial manner by offering email and advertising. It says the principal of the Respondent, Ms. Diana Marie, is a staunch supporter of the Green Party.
5.18 The Respondent denies that any "shell game" existed or was intended. It says there has been no effort to conceal ownership of the Domain Name and that Fin Lemonde works for SpeedyDomains, the domain registration company that assisted EDAP in the procurement of several "landrush2.info domains" and any inaccuracies in the Whois information were a matter of technical "glitches".
5.19 The Respondent goes on to say that the Domain Name was not registered with the intent of selling it to the Complainant for valuable consideration in excess of out of pocket costs nor has any evidence of this being presented. The Respondent said that it had never heard of the Complainant prior to its registration of the Domain Name.
5.20 The Respondent goes on to say that an individual posing as a third party but who was in fact a representative of the Complainantís representatives attempted to contact Mr. Lemonde to purchase the Domain Name and exhibits an email in this regard. The Respondent sets out evidence that the author of this email is employed by the Complainantís representatives and points out that no response was made to this offer to acquire the Domain Name.
5.21 The Respondent says that the Complainantís activities amount to reverse Domain Name hijacking. In this regard they say that the Complainant has retained a leading law firm who must have realized that the Respondent was well within its rights to obtain and use the Domain Name. They say the attempts to argue otherwise and the covert attempt to purchase the Domain Name constitute bad faith by the Complainant and hence constitutes reverse Domain Name Hijacking.
6. Discussion and Findings
6.1 In order to succeed in this Complaint the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:-
(i) that Domain Names are identical to or confusingly similar to the Complainantís trademark(s);
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Identical or Confusingly Similar
6.2 The Panel is satisfied on the evidence before it that the Complainant has at least some trademark rights in either "greenpages" and/or "Green Pages Store". The Panel is not satisfied that these rights are necessarily exclusive to the Complainant (see below). The Panel is nevertheless satisfied that the Domain Name is identical or confusingly similar to at least one of the Complainantís trademarks.
Rights or Legitimate Interests
6.3 The Panel declines to find, on the evidence before it, that the Complainant has successfully established that it has exclusive rights in the term "greenpages". It is quite clear, as a matter of language, that this term could be conveniently derived by any number of people to convey the idea of a directory or reference source that relates to "green" or environmental matters. The Panel accepts the Complainantís evidence that it uses the term in this manner. The Panel is not however persuaded by the evidence that the Complainant has demonstrated that it has exclusive rights in this regard. Such exclusivity, on the evidence before the Panel, is merely a matter of assertion by the Complainant without any supporting corroboration. The Respondent has convincingly demonstrated a wide range of alternative uses by third parties and has asserted that these uses have not been challenged or objected to by the Complainant. As the Panel reads the Complainantís further Reply, the Complainant does not seek to rebut these assertions. To take a single example, the Respondent asserts that <greenpages.com> is owned by a party unconnected with the Complainant without complaint being made by the Complainant. That evidence is not challenged by the Complainant.
6.4 The Respondent says greenpages is inherently non-distinctive. The Panel is inclined to think that it is a term which is not naturally distinctive, but which may acquire at least some degree of distinctiveness or goodwill through use. It will be a question of fact and degree (as well as of the applicable law) as to whether such acquired distinctiveness and goodwill could be sufficient to constitute rights, which prevent third parties also using the term. On the evidence before the Panel here, the Panel is not satisfied that the Complainant has established that it has a level of distinctiveness and goodwill in the term, sufficient to mean that the Respondent cannot itself have rights or legitimate interests in a term which quite clearly could have been independently derived and which, on the evidence, is used by large numbers of persons. The Panel therefore declines to find that the Respondent has no rights or interests in the term.
6.5 The Panel stresses that this determination is made on the basis of the evidence before it and further evidence might lead to a different conclusion. The Panelís determination is without prejudice to any issues that may arise as a matter of United States trademark law in this regard. It is not the function of the Panel to evaluate the detailed submissions that have been made by the Complainant in this regard.
Registered and Used in Bad Faith
6.6 When analyzed carefully the substance of the Complainantís allegations in this regard really amount to two different matters. The first is the alleged existence of the "shell game" seeking to obscure ownership of the Domain Name. The second is the activities of the Respondent in allegedly trafficking in domain names. The Panel does not attach any significance to the disclaimer, which the Respondent placed on its website.
6.7 So far as the "shell game" is concerned, the Panel is not persuaded that the evidence adduced by the Complainant supports the assertions which are made. All of the associated evidence, which appears with the various Whois searches, suggests that "Fin Lemonde" is employed by an organization called "Speedy Domains". No challenge has been made by the Complainant to the assertion that this organization was retained by the Respondent to effect its registrations. It is clear that when proceedings were initially served on Fin Lemonde at Speedy Domains correspondence followed from that organization indicating that the Respondent was the correct owner of the name.
6.8 Evidence is provided that various "Whois" searches at times continue to show Speedy Domains and Fin Lemonde as the proprietor of the name, but the Panel is unconvinced that this arises by reason of repeated transfers backwards and forwards. Apart from anything else this seems a singularly ineffective way to attempt to conceal ownership of the Domain Name. On balance the Panel prefers the Respondentís argument that these may have occurred because of various technical "glitches" but it has been, in substance, the owner of the Domain Name and Speedy Domains was the organization which (through its employee Fin Lemonde) effected registrations on the Respondentís behalf.
6.9 The Complainant then relies upon the Respondent trafficking in domain names as showing that the Respondent speculates in domain names by acquiring potentially valuable domain names to sell or license these names to those likely to have a legitimate use for them. The Panel accepts that that is a reasonable inference to draw given the range of names the Respondent has registered. However, the point is that (leaving aside the Domain Name) the domain names concerned all, at least as a matter of initial impression, appear to be domain names which are generic and which would normally be available on a "first come first served" basis. In those circumstances there is no objection to an organization obtaining domain names for subsequent resale.
6.10 In this regard the Panelís clear impression is that the Complainant may well be right that the Respondent sought to acquire all of the domain names concerned (including the Domain Name) because it believed the domain names would have commercial value to third parties. The Respondent has said that in doing so it has sought to acquire domain names, which are generic and hence available. The only issue therefore is whether the Domain Name falls within this category. That issue has been considered above. The Panel concludes the Complainant has not established exclusive rights in this regard. Accordingly the Panel does not consider that the Complainantís submissions that the Respondent is engaged in trafficking in domain names assist the Complainantís case.
6.11 The Panel finds the evidence as to the Complainantís attempts to buy the Domain Name through a disguised identity assist neither party. The Panel accepts the Complainantís evidence that the use of such a disguise is common and that to proceed otherwise would be self defeating and run the risk of alerting infringers to the nature of real inquiries that were being made. However, there is no evidence that the offer, once made, was responded to in any way. It does not therefore seem to the Panel to assist either partyís case.
In the light of the above findings, the Panel's decision is as set out below:-
(i) The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
(ii) The Complainant has not established that the Respondent has no rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
(iii) The Complainant has not established that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
(iv) For all the foregoing reasons, the Complaint is denied.
(v) The Panel declines to find the Complaint constitutes Reverse Domain Name Hi-jacking
N. J. Gardner
Dated: May 14, 2003