WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACT’L SA v. WebQuest.com Inc.
Case No. D2006-0554
1. The Parties
The Complainant is ACT’L SA, Braine L’Alleud, Belgium, represented by Pierre Crockaert, Belgium.
The Respondent is WebQuest.com Inc., California, United States of America, represented by David A Dingeman, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ewon.com> is registered with Moniker Online Services, LLC. It was first registered on June 29, 2001.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2006. On May 2, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 3, 2006, Moniker On line Services, LLC 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.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 19, 2006. The Center verified that the Complaint together with the amendment to 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 May 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 13, 2006. The Response was filed with the Center on June 10, 2006.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 26, 2006. 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. In the Panel’s view, there are no further outstanding procedural issues.
4. Factual Background
The Complainant ACT’L SA is a Belgium company founded in 1992. Since 2000, the Complainant has started to design, develop, manufacture and sell a range of Industrial Programmable Routers under the name EWON. The name EWON as used for the Routers range apparently means “Eye Watching Over the Net” and is used on the Internet for monitoring and maintenance of Industrial Equipment.
The Complainant relies upon and is the owner of registered trademarks for the mark EWON in the Benelux trademark registry and in Spain. The marks relied upon are as follows:
|Benelux||Number 0668836||Filed July 7, 2000||Registered December 1, 2000||Class 9|
|Spain||Number 261049||Filed August 31, 2004||Registered August 2, 2005||Class 9|
Copies of an extract from the Benelux Trademarks Office Register and the Spanish Certificate of Registration are exhibited as Annex AN2 and AN3 to the Complaint respectively. It should be noted that the registrations are for the mark “EWON” plus a device.
The Complainant also relies upon a number of domain names to promote the EWON products range worldwide, including <ewon.be> registered on August 2, 2000.
The Complainant submits that it has worked since 2000 to create a worldwide network of distributors to promote and sell the EWON products range. The distributors are apparently present in over 20 countries including countries in Europe, Middle East, Africa, Central Asia, South East Asia, Australia and the Americas. A list of the distributors throughout the world is annexed at Annex AN7 to the Complaint.
The EWON product range is composed of more than 50 different references of industrial electronic devices. The name of any of these devices is composed of the brand name “EWON” followed by a number for the product type identification, eg., EWON 2001, or EWON 4005.
Examples of these are set out at Annexes AN4 and AN8 to the Complaint.
The current dispute appears to have been commenced as a result of an exchange of emails between the Complainant and the Respondent. The Complainant relies upon a series of email correspondence commenced by the Complainant.
The first is an exchange dated October 23, 2002 (Annex AN9) commencing with an email to the Respondent proposing “a transaction to transfer” the domain name. In response to this request the Respondent quoted US$5,000.00.
A further exchange two years later, dated September 7, 2004, (Annex AN6) commences with a request from the Complainant asking:
“Are you selling ewon.com? If yes at what price?”
The response was US$10,000.
The Panel notes that this exchange of correspondence was commenced by the Complainant.
5. Parties’ Contentions
(i) The Complainant submits that it owns the registered trademarks relied upon in the Complaint and that the domain name in dispute is identical to or confusingly similar to a trademark in which the Complainant has rights.
(ii) The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name because:
(a) The domain name <ewon.com> content is not related to the word EWON.
(b) The <ewon.com> content is built automatically without direct connection between the domain name and the content. It relies upon Google research for “The top resources of the net” and the “www.ewon.com” home page which apparently show a number of websites having no connection with each other but all having exactly the “www.ewon.com” website layout.
An extract is exhibited at Annex AN5 to the Complaint which appears to be a reference to <ewon.com> together with a list of goods and services such as “voyage”, “shopping”, “photo”, “vacance” and “assurance”.
(c) The Complainant submits that the domain name was registered and is being used in bad faith on the grounds that the Respondent has registered the domain name for the sole purpose of selling it to the Complainant who is the owner of the trademark EWON for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. It relies upon the emails referred to above.
(i) The Respondent accepts that it is in the business of providing paper click search engines pertinent to the generic words and phrases including <ewon.com>.
(ii) It submits without giving evidence that it has legitimate common law service mark rights for <ewon.com>.
(iii) It registered the domain name at the time because of its generic usability and because it is common to add the character “little e” meaning “electronic” in front of generic words.
(iv) The Complainant’s registered trademarks are not purely text marks but distinctive graphical marks. The Complainant does not have any United States trademark registrations.
(v) The Respondent was unaware of the Complainant’s business or service marks until receiving the Complaint. It alleges that since launching <ewon.com> in June 2001, no one has ever contacted the Respondent regarding any earlier rights in the mark EWON.
(vi) No evidence of actual possible consumer confusion has been given.
(vii) The Respondent has rights and legitimate interests in respect of the domain name because:
(a) The Respondent registered <ewon.com> as an available generic domain name;
(b) It has used <ewon.com> as a search engine as shown in Annex 5 to the Complaint.
(c) It is using the generic phrase “ewon.com” to profit for the intrinsic generic value of the word “ewon”.
(d) It is using the generic phrase “ewon.com” to profit for the intrinsic generic value of the word “ewon”.
(e) The Complainant does not show that the Respondent should have been aware of the Complaint’s Belgium or Spanish trademarks.
(viii) Whether the domain name has been registered and is being used in bad faith;
(a) The Respondent was unaware that EWON was a registered mark in Belgium or Spain;
(b) The Respondent has operated <ewon.com> for 5 years without dispute;
(c) The Respondent did not receive constructive notice of a dispute through a cease and desist letter;
(d) The Respondent has not attempted to profit from the Complainant’s use of “ewon” and has not diverted customers from the Complainant nor is there any evidence to support this;
(e) There are no 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.
6. Discussion and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element in paragraph 4(a) of the Policy is present:
(i) That the domain name in dispute 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 Respondent’s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these elements in turn:
A. Identical or Confusingly Similar
The Complainant relies upon its Benelux and Spanish trademark registrations. The Benelux trademark registration was registered on December 1, 2000, and the Spanish on August 2, 2005. The domain name was registered on June 29, 2001. It can therefore be seen that the Complainant had a prior registered right in respect of the Benelux registration. It is also clear from the Complaint that the Complainant had started to design, develop, manufacture and sell a range of products under the name “EWON” in 2000.
The Belgium trademark registration is for the mark EWON plus a device or logo. In the Panel’s view, the word part of the Belgium trademark registration is identical to the domain name in dispute, with the exception of the top level domain element, “.com”.
The Panel therefore finds that the domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant relies on the submission that the domain name content is not related to the word EWON as demonstrated by Annex AN5 to the Complaint. By contrast the Respondent submits that it is merely using ewon.com as a search engine and that the term “ewon” is a combination of an abbreviation for electronic “e” and “won”.
In the Panel’s view the Complainant fails to rebut the Respondent’s explanation. There is nothing in the Complainant’s submissions to show that the Respondent has no rights or legitimate interests in the domain name. In the absence of such submissions and supporting evidence the Panel finds for the Respondent in respect of this element.
That finding would be sufficient to dispose of the Complaint. However, the Panel will proceeds to deal with the third element.
C. Registered and Used in Bad Faith
The Complainant’s case is based upon paragraph 4(b)(i) of the Policy which states as follows:
“For the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
(i) Circumstances indicating that you have registered or that you have 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 your documented out of pocket costs directly related to the domain name;”.
The Complainant relies upon the email exchanges referred to in section 4 above.
In the amended Complaint it refers to an email apparently sent by the Complainant on September 7, 2004, and exhibited as Annex AN6 to the Complaint. That email however, appears to be dated July 14, 2004.
In any event, having considered the emails exhibited at AN6 and AN9, it appears to the Panel that the request to sell the domain name came from the Complainant and that the figures of US$5,000 and US$10,000 were made in response to that request only. The Complainant has failed to provide evidence that the Respondent was aware of Complainant’s trademark at the time of registration.
In the Panel’s view it therefore follows that the Respondent did not register or acquire the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name for valuable consideration in excess of documented out-of-pocket costs”.
The Panel accepts the Respondent’s submission that it was “not in the business of selling the domains name as shown in its response to the emails from the Complainant and never contacted the Complainant.”
It follows that the Complainant fails to prove this element.
For all the foregoing reasons the Complaint is denied.
Clive Duncan Thorne
Dated: July 10, 2006