WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yakira, L.L.C. v. Worldengine Holding, LLC

Case No. D2007-1132

 

1. The Parties

Complainant is Yakira, L.L.C. d/b/a Ecko Unltd. (“Complainant”), a limited liability company organized and existing under the laws of New Jersey with a principal place of business in New York, New York, United States of America.

Respondent is Worldengine Holdings, LLC (“Respondent”), an entity with an address in White Plains, New York, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <ecko.org> (the “Domain Name”). The registrar is Go Daddy Software, Inc. (the “Registrar”).

 

3 Procedural History

On August 1, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On August 3, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On August 7, 2007, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On August 3, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

On August 8, 2007, the Center received an Amended Complaint from Complainant via email. On August 14, 2007, the Center received the Amended Complaint in hardcopy.

The Center verified that the Amended Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On August 17, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Amended Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On September 5, 2007, the Center received the Response of Respondent via email. On September 7, 2007, the Center received the Response of Respondent in hardcopy.

On September 10, 2007, the Center received from Complainant a Reply to the Response. On September 12, 2007, Respondent objected to the filing of the Reply by Complainant, as not provided for under the Rules and Supplemental Rules.

On September 25, 2007, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.

Having considered the request of Complainant to file a Reply and the Respondent’s objection to such filing, the Panel has determined to accept the Reply in accordance with paragraph 10 of the Rules.

 

4. Factual Background

In 1989, an individual named Marc Echo began selling T-shirts airbrushed with the phrase “Echo Unlimited”. He continued to sell these T-shirts until 1993. In 1993, Marc Echo formed Echo Unlimited to sell his clothing and accessories line. In 1997, Marc Echo changed the spelling of his name and company name to “Ecko” to create Marc Ecko and Ecko Unltd. Today, Complainant is in the business of designing, manufacturing and selling clothing, shoes, jewelry and eyeware. In 2002, Complainant’s affiliate launched Complex Magazine, a pop culture publication for a new generation.

Complainant operates its main domain names at <ecko.com>, <eckoUnltd.com> and <eckoUnlimited.com> which all resolve to the same web pages. Complainant’s main website provides a variety of information about Complainant, provides links and/or otherwise enables users to purchase Ecko’s goods and provides a link to Complainant’s website at “eckoTv.com” where the public is able to upload videos. Together, these three domain names generate more than 1 million hits per month. Complainant has also registered the following domain names, among others, which link to its main websites: <ecko1972.com>, <eckoclothing.com>, <eckocomplex.com>, <ecko-complex.com>, <eckofunction.org>, <eckomail.com>, <eckomen.com>, <eckooutletcom>, <eckored.com>, <eckored.net>, <eckored.org>, <eckounlimited.net>, <eckounlimited.org>, <eckounltd.com>, <eckounlted.net>, <eckounltd.org>, <eckowomen.com>, <marcecko.com>, <marcecko.net>, <marceko.org> and <marceckofootwear.com>.

Complainant has continuously used its trade names, ECKO UNLIMITED and ECKO UNLTD. in connection with its clothing and accessories lines since at least as early as 1997. In addition, Complainant used its trade name ECHO UNTLD in connection with clothing between 1993 and 1997, and has continuously used its trademark ECKO UNLTD since at least as early as 1997. Complainant has also created, adopted and used other marks that include the principal element “ecko”. These marks include ECKO FUNCTION, MARC ECKO AND ECKORED (hereinafter collectively the “ECKO Marks”). Today, these ECKO Marks are registered though out the world. In addition, Complainant has numerous pending applications for registration of additional Marks.

Complainant is also the owner of a number of U. S. trademark registrations for the ECKO Marks. Through Complainant’s long and extensive use and investment, the ECKO Marks and the ECKO UNLITD trade name have become widely in the clothing field and for related goods.

Complainant sells its products affixed with the ECKO Marks and ECKO UNLTD trade names worldwide in specialty clothing stores and large retail department stores. In addition to the sale of its goods over the Internet, the Complainant’s sales of products worldwide bearing the ECKO Marks and/or ECKO UNLTD trade names have exceeded hundreds of millions of dollars.

Worldwide advertising costs and expenditures over the past several years for goods branded under the ECKO family of Marks (including by Complainant and/or through its vast network of select authorized licensees and select authorized distributors) are well above ten million dollars.

Complainant heavily advertises its clothing and accessory line throughout the world and also receives unsolicited press, in a variety of well-known magazines. These magazines include without limitation, Cosmo, Dirt Rider, DNR, EGM, Expert Gamer, The Fader, Flaunt, Frank 151, Import Tuner, Jane, Marie Clair, Marvel, Maxim, Mixer, MX Racer, Nylon, Official Playstation Magazine, Paper, Playboy, Racer X, Ride, Slam, Slap, Snap, The Source, Spin Stress, Stuff, Super Street, Thrasher, Tokion, Toyfare, Trace, Transworld Motorcross, Transworld Skate, Transworld Snow, Transworld Surf, Transworld Stance, URB, Vibe, XLR8R, XXL and ym.

Complainant also regularly participates as a vendor in several annual tradeshows for the fashion and accessories industry, where it exhibits its products affixed with its ECKO Marks and/or displays the ECKO UNLTD trade name. These tradeshow include the Men’s Apparel Guild in California (“MAGIC”); Action Sports Retailer (“ASR”); NY Menswear Week Runway Show; 7th on Sixth and Macy’s Passport fashion shows.

By virtue of Complainant’s long use and the renown of its ECKO Marks and ECKO UNLTD trade name, when these marks are used in connection with clothing and accessories they are associated exclusively with Complainant. The reputation associated with Complainant’s ECKO Marks is excellent by virtue of the quality of Complainant’s clothing and accessories.

Respondent registered the Doman Name on October 28, 2004. At the time that Respondent registered the Domain Name, Complainant had used ECKO in it trade name and ECKO Marks for many years. Complainant had registered the domain name <ecko.com> six years before Respondent registered <ecko.org>.

Respondent is using the Domain Name to resolve to a website provided by Sedo. The website features links to various websites selling Complainant’s clothing and accessories. It appears as though Respondent is parking the Domain Name at Sedo and that Respondent receives money for the links on its website as they are “sponsored links”. Thus Respondent receives payment whenever someone accesses the website at “www.ecko.org” allegedly on a pay-per-click basis.

One of the first links on the “www.ecko.org” site, when “www.ecko.org” is typed into the browser, is Marc Ecko Shoes On Sale with a link to “www.zappos.com”. Complainant alleges that Zappos.com’s Associates Program pays Respondent a commission on a pay-per-click basis if the user of the Domain Name links to “www.zappos.com” and then makes a purchase.

In addition, the webpage at “www.ecko.org” indicates the Domain Name is for sale. Complainant alleges that the Respondent and/or Michael Zielinski, the administrative and technical contact for the disputed Domain Name are related because they share the same addresses and have registered other domain names. Complainant alleges that Respondent is in the business of registering and warehousing domain names.

Respondent explains that it has undertaken a systematic registration of generic three and four letter domain names. Respondent does “park” these domain names to allow its investments to mature, while earning nominal revenues on a pay-per-click basis. Respondent alleges that it has no relationship to Zappos.com and has generated no income from this source.

Respondent further explains that the parking company has developed its own software to determine what may be of interest to the user who types in “www.ecko.org” and also maintains a “for sale” indication on the websites it “parks”. None of these activities indicates any intent by Respondent to profit from any confusion with Complainant or to sell the Domain Name to Complainant. These actions are those of the parking company which is independent of Respondent.

Respondent alleges that prior to registration of the Domain Name, Respondent had never heard of Complainant, nor can it be charged with constructive knowledge because Complainant has never used the phrase ECKO alone.

 

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainant contends that it has registrations of trademarks which it refers to as the ECKO Marks and that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ECKO Marks 15 U.S.C. 1115. Complainant argues that the term ECKO is the dominant element of the ECKO Marks.

(ii) Complainant argues that the Domain Name is confusingly similar to the ECKO Marks, pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the dominant element of the ECKO Marks with the addition of the generic term “.org”.

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the ECKO Marks in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii).

Paragraph 4(b) contains four nonexclusive criteria by which Complainant may demonstrate Respondent’s bad faith:

(i) circumstances indicating that you have registered or 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; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant argues that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant or to others for valuable consideration in excess of the registrant’s out-of-pocket costs. In support of this allegation, Complainant cites the “for sale” sign which was posted on the website to which the Domain Name resolves.

Complainant argues that Respondent has registered the Domain Name to prevent Complainant from reflecting its ECKO Marks in a corresponding Domain Name and has engaged in a pattern of such activity.

Finally, Complainant alleges that Respondent is deriving commercial gain by driving traffic to a website using confusion regarding the source of the website and being paid on a pay-per-click basis.

B. Respondent’s contentions

(i) Respondent asserts that Complainant has no rights in the simple term ECKO by itself. The so-called ECKO Marks are for ECKO UNLIMITED, ECKO UNLTD., ECKO FUNCTION, MARC ECKO and ECKORED. None of the registrations is for the term ECKO.

Respondent further alleges that Complainant abandoned its application for a trademark of the term ECKO which Respondent alleges demonstrates an inability by Complainant to show use of the term in commerce. Respondent also argues that Complainant abandoned its registration of the Domain Name <ecko.org>.

Respondent asserts that there is no evidence that Complainant has any common law rights in the term ECKO.

(ii) Respondent asserts that the Domain Name is not identical to any of the registrations comprised the ECKO Marks. Respondent asserts that Complainant must rely on confusing similarity, which does not exist because the term ECKO is used in numerous lines of commerce which have no connection to clothing and accessories or to Complainant.

(iii) Respondent asserts that it has rights to or legitimate interests in the Domain Name because the parking of a domain name and the receipt of pay-per-click revenues from the parking company are legitimate business purposes. Nothing is inherently wrong with the parking of generic terms as domain names, nor is there anything wrong with pay-per-click revenues. Both practices are legitimate and confer legitimate interests in the Domain Name upon Respondent.

(iv) Respondent denies that it registered or used the Domain Name in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which apply:

Respondent claims that there is no showing of bad faith based on paragraph 4(b)(i) because it did not offer or intend to sell the Domain Name to the Complainant or to others. Respondent contends that the “for sale” sign placed on the Domain Name was part of the parking company’s software. Once Respondent became aware of Complainant’s claims, the parking company was instructed to remove the “for sale” sign and any other reference to Complainant’s products.

Respondent argues that paragraph 4(b)(ii) does not apply because the registration of the Domain Name does not prevent the Complainant from reflecting the mark in a corresponding domain name. Respondent further argues that it has not engaged in a pattern of registering domain names to prevent the trademark owner from reflecting the mark in a corresponding domain name.

Respondent and Complainant are not business competitors and thus, there is no evidence of bad faith based on paragraph 4(b)(iii).

There is no evidence of bad faith based on paragraph 4(b)(iv) because Respondent is making a fair, non-commercial use of the Domain Name, given that the revenues derived on a pay-per-click basis are nominal.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), N. 3.

To prevail the Complainant must show that each of the essential elements of paragraph 4(a) of the Policy has been established by the evidence proffered. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

A. Enforceable Trademark Rights

Complainant contends that it has registrations of trademarks which it refers to as the ECKO Marks and that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ECKO Marks 15 U.S.C. 1115. Complainant argues that the term ECKO is the dominant element of the ECKO Marks.

Respondent asserts that Complainant has no rights in the simple term ECKO by itself. The so-called ECKO Marks are for ECKO UNLIMITED, ECKO UNLTD, ECKO FUNCTION, MARC ECKO and ECKORED. None of the registrations is for the term ECKO.

The Panel finds that the dominant element of the ECKO Marks is the term ECKO. When ECKO is used in the line of commerce consisting of clothing and accessories, the scope of protection of the ECKO Marks is sufficiently broad to protect the term ECKO.

Respondent further alleges that Complainant abandoned its application for a trademark of the term ECKO which Respondent alleges an inability by Complainant to show use of the term in commerce. Respondent also argues that Complainant abandoned its registration of the Domain Name <ecko.org>.

The Panel declines the invitation to draw any inference from the abandonment of a registration for ECKO or from the lapsed registration of the <ecko.org> Domain Name that Complainant failed to use the term ECKO in commerce or that Complainant no longer cared how the <ecko.org> Domain Name would be used.

Therefore, the Panel finds that for the limited purpose of this proceeding, Complainant has enforceable rights in the term ECKO when used with clothing and accessories.

B. Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the ECKO Marks pursuant to the Policy paragraph 4(a)(i).

Complainant argues that the Domain Name is confusingly similar to the ECKO Marks, pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the dominant element of the ECKO Marks with the addition of the generic term “.org”.

Respondent asserts that the Domain Name is not identical to any of the registrations comprising the ECKO Marks. Respondent further asserts that Complainant must rely on confusing similarity, which does not exist because the term ECKO is used in numerous lines of commerce which have no connection to clothing and accessories or to Complainant.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel notes that the entirety of the dominant element of the ECKO Marks is included in the Domain Name with the addition of the extension “.org”.

Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 23:50 (4th ed. 1998).

Respondent’s addition of the gTLD “.org” is non-distinctive because it is required for registration of the Domain Name.

While the WIPO UDRP panelists concensus view is that the content of the website is not relevant in determining the confusing similarity, the Panel notes that Respondent has used the Domain Name in conjunction with the advertising of products in the fashion and accessories line of commerce, which may further confuse consumers.1 Complainant has alleged that one of the first links on the “www.ecko.org” site, when “www.ecko.org” is typed into the browser, is Marc Ecko Shoes On Sale with a link to “www.zappos.com”. Respondent’s answer that the parking company software was responsible for these links does nor absolve Respondent of responsibility for the routing of this traffic into the clothing and accessories industry.

Therefore, the Panel finds that the Domain Name is confusingly similar to the ECKO Marks pursuant to the Policy paragraph 4(a)(i).

C. Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent asserts that it has rights to or legitimate interests in the Domain Name because the parking of a domain name and the receipt of pay-per-click revenues from the parking company are legitimate business purpose. Nothing is inherently wrong with the parking of generic terms as domain names, nor is there anything inherently wrong with pay-per-click revenues. Respondent further asserts that both practices are legitimate and confer rights or legitimate interests in the Domain Name upon Respondent.

The Panel finds that under the present circumstances the use of parking or pay-per-click revenues together with reference to Complainant’s clothing and accessories products is not a legitimate use of the Domain Name and does not confer rights or legitimate interest on Respondent as the sale of bona fide goods and services. The fact that the parking company used its software to direct users having identified <ecko.org> to sources of interest including Complainant does not protect Respondent. Nor does the fact that the revenues were nominal protect Respondent from its actions constituting commercial activity.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

D. Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). The four nonexclusive criteria of bad faith set forth in paragraph 4(b) of the Policy are described above.

Complainant argues that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant or to others for valuable consideration in excess of the registrant’s out-of-pocket costs. In support of this allegation, Complainant cites the “for sale” sign which was posted on the website to which the Domain Name resolved.

Respondent claims that there is no showing of bad faith based on paragraph 4(b)(i) because it did not offer or intend to sell the Domain Name to the Complainant or to others. Respondent contends that the “for sale” sign placed on the Domain Name was part of the parking company’s software. Once Respondent became aware of Complainant’s claims, the parking company was instructed to remove the “for sale” sign and any other reference to Complainant’s products.

Additionally, Complainant alleges that Respondent is deriving commercial gain by driving traffic to a website using confusion regarding the source of the website and being paid on a pay-per-click basis.

Respondent submits there is no evidence of bad faith based on paragraph 4(b)(iv) because Respondent is not capturing internet traffic through confusing similarity with Complainant nor are the revenues form the pay-per-click basis more than nominal.

The Panel finds that the “for sale” sign placed on the website cannot be ignored because it was part of the software of the parking company. In addition, the Panel finds that Respondent’s use of the Domain Name did generate revenues with the purpose of allowing the domain name to mature for eventual sale. Therefore, the Respondent was engaged in commercial activity using confusing similarity to capture internet users for its website and to eventually sell the Domain Name.

The Panel finds that Complainant has shown the necessary elements of bad faith under the Policy paragraphs 4(b)(i) and (iv).

 

7. Decision

The Panel concludes (a) that the Domain Name <ecko.org> under the circumstances of this proceeding is confusingly similar to Complainant’s registered ECKO Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.


Richard W. Page
Sole Panelist

Dated: October 10, 2007


1 WIPO Overview of WIPO Panel View on Selected UDRP Questions, .