WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Courtney Kellogg v. Vance Larson

Case No. D2007-0085

 

1. The Parties

The Complainant is Courtney Kellogg of Annapolis, Maryland, United States of America, represented by Tarrant H. Lomax, P.C., United States of America.

The Respondent is Vance Larson of Odenton, Maryland, United States of America, represented by Hyatt & Weber PA, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <ecolisticcleaning.com>, is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2007. On February 1, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On February 1, 2007, Register.com 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 and technical contact for the domain name. In response to a notification by the Center that the Complaint was administratively deficient because it had not been signed as required by the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), paragraph 4(b), the Complainant filed a signed copy of the signature page on February 2, 2007. The Center verified that the Complaint now satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 February 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2007. The Response was filed with the Center on February 27, 2007.

The Center appointed Debra J. Stanek as the sole panelist in this matter on March 12, 2007. 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.

Subsequent to the filing of the Complaint, the Center and the Panel have received additional communications from Complainant:

(1) On February 2, 2007, a fax to the Center forwarding an e-mail message from the registrar for the disputed domain name.

(2) On March 1, 2007, an e-mail message to the Center regarding the status of Complainant’s trademark application.

(3) On March 13, 2007, an e-mail message to the Panel advised that: “Upon thorough review of Mr. Larson’s response, it is now clear that the domain name was registered for use of the company (Ecolistic Cleaning, Inc.). So, it may be appropriate for the award of the domain name be given to the company, Ecolistic Cleaning, Inc.”

 

4. Factual Background

Complainant and Respondent were involved in the formation and operation of a company, Ecolistic Cleaning (the “Company”). Complainant is the majority owner and Respondent a minority owner. Complainant has applied to register the mark ECOLOSTIC CLEANING and has registered the copyright in a work entitled “Ecolistic Cleaning.”

Respondent registered the disputed domain name, <ecolisticcleaning.com>, on behalf of the Company in his own name. For a period of time, the Company operated its website under the disputed domain name. However, after Complainant and Respondent ended their business relationship, the home page stated:

Website has moved. Our price for Eco-Friendly cleaning is $50.00 for 3 hours. Please email EarthShine350@aol.com to set up your cleaning. http://earthshinenaturally.com.

The Earth Shine Naturally website offered cleaning services similar to those of the Company. Currently, the home page of the website is blank.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant is the founder, president, and majority owner of Ecolistic Cleaning, Inc. She claims to have invented and own the copyright in the term “Ecolistic” and has applied to register the mark ECOLISTIC CLEANING with the United States Patent and Trademark Office. Although the registration has not yet issued, the application was published for opposition in November 2006 and no oppositions were filed.

Ecolistic Cleaning uses the mark ECOLISTIC CLEANING in connection with residential and commercial cleaning services and has been doing so since 2005. The disputed domain name is identical or confusingly similar to the mark.

Respondent has no rights or legitimate interests in respect of the domain name.

Respondent is a minority stockholder of the Company and a former employee.1 Shortly after Respondent joined the Company, in late 2005, Complainant requested that he establish a website for the company. Respondent did so, but unbeknownst to Complainant, registered the <ecolisticcleaning.com> domain name in his own name rather than in the name of the Company or Complainant.

One year later, in connection with ending his relationship with the Company, Respondent informed Complainant that he had registered the Company’s domain name under his name and would transfer it over to Complainant only if Complainant, among other things, bought back Respondent’s stock in the Company. At the time of Respondent’s resignation, Complainant notified Respondent that he had no further authority to act on the Company’s behalf.

The domain name is being used in bad faith because it is being used by Respondent to advertise another cleaning business, operated by Respondent’s wife, which directly competes with Ecolistic Cleaning. Complainant has provide copies of printouts from the site that state:

Website has moved. Our price for Eco-Friendly cleaning is $50.00 for 3 hours. Please email EarthShine350@aol.com to set up your cleaning. http://earthshinenaturally.com.

Complainant also attaches copies of printouts from the Earth Shine Naturally website, which offers cleaning services.

This use of the domain name is an intentional attempt to attract, for commercial gain, visitors to another online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of these third party cleaning services.

Respondent registered the domain name for the purpose of selling or transferring it to Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs. In support, Complainant attaches a letter from Respondent’s counsel, dated December 22, 2006, in which Respondent offered to transfer the domain name to Complainant as part of a settlement that included reimbursement to him for various expenses, his investment in the Company, and the value of his shares in the Company.

B. Respondent

Respondent, jointly with Complainant, created the word “ecolostic” and decided to name the company “Ecolistic Cleaning.” Both parties have rights in the domain name, but Complainant’s rights “exist because of the contract executed between the Respondent and Complainant” and those “rights are in no way personal or exclusive.”

Respondent owns a minority interest in the Company and paid for $2,000.00 in advertising for the company. He set up the Company website and registered the domain name, not at the direction of Complainant, but at his expense “all for the benefit of Ecolistic Cleaning.”

Respondent is not currently using the domain name. Complainant has acted in bad faith because, without Respondent’s authorization, Complainant transferred the domain name. Respondent arranged for it to be transferred back into his own name.

 

6. Discussion and Findings

A. Procedural Matters

As noted above, following the filing of the Complaint, Complainant sent several communications to the Center and to the Panel. As an initial matter, neither the Rules nor the Supplementary Rules provide for the filing of submissions other than a complaint and response.

Although litigants and parties in arbitrations may have a right of reply under the rules of other forums, ICANN chose a different procedure for these proceedings that calls for only a Complaint and a Response. Among other things, this more truncated procedure allows for more rapid and cost effective resolution of domain name challenges.

See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (citation omitted). The Rules do permit the Panel to request further documents and statements. See Rules, paragraph 12. Such requests always involve balancing the provisions of paragraph 10 of the Rules, which require the Panel to ensure both that “each Party is given a fair opportunity to present its case” and that the proceeding takes place with “due expedition.”

The Panel is of the view that supplementary submissions are appropriate only in exceptional cases, for example, the existence of new, pertinent facts that did not arise until after the party’s submission or the need to bring new, relevant authority to the Panel’s attention. To seek or accept supplemental submissions under other circumstances undercuts the streamlined procedures established by ICANN.

The Panel finds that these communications do not present: (a) any new facts or arguments that had not previously arisen, or (b) responses to arguments or rebuttal that could not have been reasonably anticipated. Accordingly, the Panel does not consider these additional communications from Complainant for purposes of this decision.

B. Burden of Proof

In order to prevail, a complainant must prove, under Policy, paragraph 4(a):

(i) The disputed domain name is identical or confusingly similar to Complainant’s mark;

(ii) Respondent has no rights or legitimate interest in the domain name; and

(iii) The domain name was registered and is being used in bad faith.

Policy, paragraph 4(b) sets out four sets of circumstances that may evidence a respondent’s bad faith registration and use under paragraph 4(a)(iii) (see Policy, paragraph 4(b)). Policy, paragraph 4(c) sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name under 4(a)(ii) (see Policy, paragraph 4(c)).

1. Identical or Confusingly Similar

Complainant must establish that the disputed domain name is either identical or confusingly similar to a mark in which it has rights.

Complainant alleges that she has been using the ECOLISTIC CLEANING mark since 2005.2 However, she has provided very little documentary evidence of such use. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (setting out consensus view as requiring complainant asserting rights in unregistered trademark rights to show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).

Complainant’s pending U.S. trademark application is based, as is permitted under U.S. law, 15 U.S.C. § 1051(b), on its bona fide intention to use the mark. However, under U.S. trademark law (except for certain applications filed pursuant to international conventions, which are not applicable here), an intent-to-use trademark application cannot mature into a trademark registration until appropriate statements of use have been filed and accepted. 15 U.S.C. § 1051(b)(3). Thus, the application merely establishes that, on the date that it was filed, January 13, 2006, applicant intended to use the mark as a trademark. The application does not, alone, evidence use of the mark.

Complainant’s annexes indicate that the Company had an active website that used the ECOLISTIC CLEANING mark prior to December 16, 2006, when the website was modified to direct visitors elsewhere. This claim is supported by the copies of Complainant’s webpages available through “www.archive.org,” which do show use of the ECOLISTIC CLEANING trademark on the site at least as of February 28, 2006 as well as by the copyright registration identifying Complainant as the author and owner of the copyright in a work entitled “Ecolistic” (with an alternate title of “Ecolistic Cleaning.”)3

Thus, the Panel is satisfied that Complainant has established rights in the mark ECOLISTIC CLEANING.4 In any case, Respondent does not dispute either that Complainant has rights in the ECOLISTIC CLEANING mark or that the disputed domain name is, for our purposes, identical to that mark. In considering identity or confusing similarity, the “.com” top-level domain, and the space between the terms “ecolistic” and “cleaning” are not relevant.

The Panel finds that Respondent’s’ domain name is identical to Complainant’s mark.

2. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the disputed domain name by making a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph 4(c) of the Policy are applicable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

The Response makes no argument that Respondent has rights or legitimate interests by virtue of any of the circumstance set out in paragraph 4(c) of the Policy. Indeed, the Response affirmatively states that Respondent “secured the right to the domain name … and did so all for the benefit of Ecolistic Cleaning, Inc.” (emphasis added) and that he “registered [the domain name] for the sole purpose of promoting Ecolistic Cleaning” (emphasis added).

Respondent also argues that the only rights that Complainant has in the domain name arose pursuant to a contract between the parties. Yet the contract is silent on the issue of ownership of the domain name. Under these circumstances, the Panel finds that Respondent’s registration for the benefit of the company – even if done on his own initiative and at his own expense – does not give him, personally, any rights or legitimate interests in the domain name.

Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in respect of the <ecolisticcleaning.com> domain name.

3. Registered and Used in Bad Faith

Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):

(a) registering the domain name primarily to sell it for more than documented out-of-pocket costs; or

(b) registering the domain name to prevent the trademark owner from using the mark in a domain name, where there is a pattern of such conduct; or

(c) registering the domain name primarily to disrupt a competitor’s business; or

(d) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the mark as to source, sponsorship, affiliation, or endorsement.

The Panel finds that Respondent was not authorized to register the domain name under his own name and that such registration constitutes bad faith. Further, the Panel finds that Complainant has established that Respondent was using the disputed domain name to intentionally try to attract, for commercial gain, visitors to the online location of a competing cleaning service by creating a likelihood of confusion with the ECOLISTIC CLEANING mark.

Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ecolisticcleaning.com>, be transferred to the Complainant.

Debra J. Stanek
Sole Panelist

Dated: March 25, 2007

1 It is not clear from the Complaint whether Complainant is asserting that Respondent was an employee of Complainant or of the Company.

2 Respondent disputes Complainant’s contention that she alone created the term “ecolistic.” Yet whether Complainant alone -- or Complainant and Respondent together -- coined the term is irrelevant. Under well-established principles of U.S. law, rights in a trademark arise from use of the term as a trademark for goods or services. Trademark rights do not arise from creating or selecting a mark.

3 The Panel does not, by citing the copyright registration, suggest that it finds that the copyright registration proves trademark rights. Nor does the Panel accept Complainant’s assertion that she owns the copyright in the term “ecolostic.” The certificate states that the nature of Complainant’s authorship was “text,” which is consistent with general principles of U.S. copyright law, which typically does not extend copyright protection to titles, names, or short phrases. See 17 U.S.C. § 102(a) (including “literary works” within the subject matter of copyright).

4 To the extent that those rights arise from use of the mark by Complainant’s Company, rather than use by Complainant, it seems clear that Complainant was authorizing and directing the Company, to use the trademark, which she had the authority to do as majority owner and president.