WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stefano Carboni T/A esources.co.uk. v. Domain Admin, eSources Communications
Case No. D2008-0970
1. The Parties
The Complainant is Stefano Carboni T/A esources.co.uk., of London, United Kingdom of Great Britain and Northern Ireland, represented by Lawdit Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain Admin, eSources Communications, of Flushing, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <esources.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2008. On June 27, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On June 27, 2008, GoDaddy.com, Inc. 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 Domain Name. 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 July 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response July 27, 2008. The Response was filed with the Center on July 27, 2008.
The Center appointed Warwick Smith, Nasser A. Khasawneh and David E. Sorkin as panelists in this matter on August 19, 2008. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant’s trade mark and domain names
The Complainant is the proprietor of Community Trade Mark E5058946 ESOURCES (a word mark), registered in international classes 35 and 42 with effect from May 4, 2006. The registration covers online retailing, advertising services, directory services, and services in connection with the creation, maintaining and hosting of websites for others.
The Complainant registered the domain name <esources.co.uk> in 2004. He says that he now has 350,000 registered members.
The Complainant also owns “esources” domains, in the Italy, Spain, Hong Kong Sar of China, and Belgium country code top level domains.
The Respondent and the Domain Name
The Domain Name was registered as long ago as May 1996. The Respondent purchased it from the previous owner in May 2007. The Respondent says that it paid USD2,000 for the Domain Name.
The Respondent has produced pages from the website to which the Domain Name resolved on December 12, 1998, and May 21, 2007. These two pages were sourced from the Wayback Machine at “www.archive.org”. The 1998 archive consisted of a single page advertising a corporation called Electronic Sources Inc., with the tag line “Representing Quality Electronic Component Manufacturers in the Pacific North West for over 20 years”. There followed addresses for Electronic Sources Inc. in various northwestern states of the United States of America.
The May 2007 web page shows that the website was then operated by a company called Westmark Electronics, a provider of “technical solutions” based on the latest electronic components, systems and assemblies, and premier software. The website (again, a single page was produced) suggested that Westmark Electronics’ business was aimed at retailers – a promotional statement on the web page said that the company’s products would ensure that its customers had a competitive advantage in the marketplace.
The Complainant produced a more recent screenshot from the website at the Domain Name, apparently printed after the Domain Name had been acquired by the Respondent (it is not clear from the Complaint exactly when this screenshot was taken). The web page produced by the Complainant was headed “<eSources.com> – Wholesale Club”, and it consisted of numerous links which appear to have been generally concerned with wholesaling (“e.g., wholesale”, “wholesale merchandise”, “wholesale distributor”, “wholesale fashion jewellery”). There was also a section consisting of links headed “Consumer Electronic”. Immediately under the heading “<eSources.com >– Wholesale Club”, there was a note in smaller print saying that the domain name might be for sale.
The Respondent says that, after it acquired the Domain Name, it connected the Domain Name to a paid search site managed by a third party, Parked.com. The Respondent explains that Parked.com adopts a search key word targeted system, linking advertisers with domain name owners through a system of matching key words. The Respondent says that it has never used “esources” as a key word, but it has not had any ability to control what visitors might search for on the website at the Domain Name. The Respondent says that its present “landing page” use of the Domain Name should only be considered a “temporary” website – new content is said to be in the course of development, and when the new content is uploaded it will be “relevant to the history and characteristics” of the Domain Name. (No evidence of any such site development work has been produced). In the meantime, the Respondent says that it is merely providing the same type of information on the website as had been provided on the website by earlier owners of the Domain Name.
The Respondent acknowledges that the Domain Name has been listed for sale.
It says that it posted the Domain Name for sale on the website at “www.afternic.com” (the site of a substantial domain name broker), in order to lower its risk while it was developing a long term website to be operated at the Domain Name. The Respondent produced a printout from a web page at the “www.afternic.com” website, showing that an offer of USD275 was made to purchase the Domain Name on October 31, 2007. The Respondent asserts that this was the only offer it has ever received for the Domain Name. The Respondent says that its asking price was USD50,000, a figure which was said to reflect its out-of-pocket cost, time, and effort spent, as well as all the risks the Respondent bore during the development.
The Complainant says that, around six months before it filed the Complaint, it offered (through the website at “www.afternic.com”) approximately USD1,500 for the Domain Name, and that the Respondent immediately then changed its asking price to USD60,000. Both of those assertions are denied by the Respondent.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is identical to the Complainant’s Community Trade Mark.
2. The following matters sufficiently establish that the Respondent has no rights or legitimate interests in respect of the Domain Name:
(i) The Respondent has not claimed that it is using the Domain Name in connection with a bona fide offering of goods or services.
(ii) The Complainant has not licensed or allowed the Respondent to use the Complainant’s ESOURCES mark, whether as part of a domain name or otherwise.
(iii) The Complainant has unregistered rights in the ESOURCES mark, which are prior to the date of registration of the Domain Name. The Respondent is trying to create a connection with the Complainant through the Respondent’s use of the website at the Domain Name.
(iv) The Domain Name is not a mark by which the Respondent is commonly known.
3. The following matters establish that the Domain Name was registered and is being used in bad faith:
(i) The Respondent is trying to attract Internet users to its website by creating a link with the Complainant’s trade mark. The Respondent must have known when it registered the Domain Name, that it would be infringing the Complainant’s rights in its mark, because the Complainant and the Respondent operate in the same field (citing Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169).
(ii) The Respondent registered the Domain Name in order to prevent the Complainant from registering the same domain name for the purpose of its own online selling activities.
(iii) The Respondent knew that the ESOURCES trade mark is well known, and that in itself evidences the Respondent’s bad faith.
(iv) The Respondent’s acts constitute unfair competition and infringement of consumer protection legislation. The web page produced by the Complainant at Annex 4 to the Complaint (the “<esources.com> – Wholesale Club” web page), represents a new development in the Respondent’s use of the website at the Domain Name: initially, the Respondent’s website contained no reference to wholesale or related services.
(v) The Respondent purchased the Domain Name in order to sell it for a profit i.e., cybersquatting. That is demonstrated by the abnormally high price the Respondent requested for the Domain Name, and the Respondent’s actions in increasing its asking price to USD60,000 after it received the Complainant’s offer of USD1,500.
The Respondent contends:
1. The prefix “e” is very common, and the expression “e sources” is a widely used term designating resources available online or electronically. Any rights the Complainant might have in an ESOURCES mark must be considered to be extremely narrow in view of this widespread use by numerous third parties. (A basic search on the United States Patent and Trade Mark Office website yielded 23 trade marks, dead and alive, containing the key word “eSources”, or “eSource”).
2. The Complainant has never sought trade mark registration in the United States of America. The Complainant’s trade mark is not globally well-known, and the Respondent had never heard of the Complainant or any of its operations until the Respondent was notified of the Complaint in this proceeding.
3. The Respondent has rights or a legitimate interest in respect of the Domain Name:
(i) After its acquisition of the Domain Name, the Respondent has continued to provide the same type of information that previous websites established at the Domain Name had provided over the preceding 11 years.
(ii) The Respondent is developing a new website to be operated at the Domain Name, containing content relevant to the history and characteristics of the Domain Name.
(iii) The Respondent has the right and legitimate interest to publish any content, including advertisements, on the website, so that it can retain the visitors that the Domain Name has attracted over the last 12 years.
(iv) The fact that the Respondent listed the Domain Name for sale does not reflect any intention to disclaim rights in the Domain Name.
5. The Domain Name was not registered, and has not been used, in bad faith:
(i) The Domain Name was registered in 1996, and therefore could not have been registered to prevent the Complainant from registering the name – the Complainant’s business was only established long after the Domain Name had been registered.
(ii) The Respondent has not been guilty of cybersquatting. It acquired the Domain Name in order to develop a website to provide information based on the history and characteristics of the Domain Name.
(iii) The Respondent was not aware of the existence of the Complainant until the present Complaint was sent to the Respondent in July 2008. The Complainant has been operating in the United Kingdom of Great Britain and Northern Ireland. The Respondent has never been to that country, and the Complainant is not well-known in the United States of America.
(iv) The Respondent did not acquire the Domain Name for the purpose of selling it to the Complainant at a profit. The Respondent has the right to sell the Domain Name at any price it desires, and the Domain Name was offered to everyone (not just to the Complainant).
(v) The Domain Name was not registered for the purpose of attempting to attract to the website at the Domain Name Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. The Complainant did not even exist when the Domain Name was registered.
6. The Complainant is guilty of attempted Reverse Domain Name Hijacking. The Complainant must have had knowledge of the Domain Name, and the website then operating at the Domain Name, before the Complainant registered its trade mark and its <esources.co.uk> domain name (and the Complainant’s other country code top level domains). The Complainant registered its various “esources” domains with the intention of diverting visitors from the Respondent’s website to the Complainant’s website. The Complainant has lied about his purchase offer for the Domain Name and the Respondent’s asking price, and has wrongly accused the Respondent of cybersquatting even though the Complainant has failed to establish any of the circumstances required by the United States of America Federal Law defining cybersquatting. The Complainant has attempted to trick the panelists in this case. Further, the Complainant was well aware that the Respondent had legitimate rights to the Domain Name, but he never tried to contact the Respondent.
6. Discussion and Findings
A. What the Complainant Must Prove
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(ii) That the disputed domain name 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 disputed domain name; and
(ii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to: “… 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”.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant is the proprietor of the registered Community Trade Mark ESOURCES. That trade mark is identical to the Domain Name. (Numerous UDRP panels have held that the “.com” suffix should not be taken into account in the comparison required by paragraph 4(a)(i) of the Policy – see for example L’Oreal v. Avraham Mattan, Vichycare Customer Service, WIPO Case No. D2007-0122, Sidestep, Inc. v. Anna Valdieri/Marco Ferro, WIPO Case No. D2007-0212, and Sanderling pty Limited, trading as Thimblelady v Roxanne International, WIPO Case No. D2007-0385).
The Complainant has therefore made out his case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
In view of the findings the Panel has made under the heading “Registered and Used in Bad Faith” below, it is not necessary for the Panel to make any findings under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a disputed domain name in bad faith. Those circumstances include:
(i) circumstances indicating that [the respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is not satisfied that any of those circumstances apply in this case, nor that there is any other evidence which would justify a finding of bad faith registration and use.
A finding of bad faith registration and use would require proof that, at the time it registered the Domain Name, the Respondent was aware of the Complainant or his mark. There must be evidence that the Respondent has targeted the Complainant or his mark in some way, or at least that the Respondent had the Complainant or his mark in mind when registering the Domain Name. (See on that point the decisions in The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). There are numerous UDRP panel decisions to similar effect).
There is no sufficient proof of any such “targeting” of the Complainant or his mark in this case.
The Panel notes first that the Respondent denies any knowledge of the Complainant before it received notice of the Complaint in this proceeding. The critical question for the Panel is whether that statement should be disbelieved. In administrative proceedings such as this, panels do not have the benefit of the fact finding tools which are usually available in litigation, such as discovery of documents and cross-examination of witnesses. In those circumstances, a respondent’s denial of knowledge would normally be rejected as being untrue where for example the denial is inconsistent with contemporaneous documents forming part of the evidence, inconsistent with the respondent’s own statements or actions, or simply implausible for some reason. In this case, the Panel is satisfied that there is no sufficient basis for it to reject as false the Respondent’s denial.
The Panel has reached that view for the following reasons.
1. The Complainant does not seem to have sought or obtained any trade mark or service mark registration for the expression “esources” (or any similar expression) in the United States of America.
2. The Complainant appears to be based primarily in the United Kingdom of Great Britain and Northern Ireland. While it operates websites at country code domain names in a number of European countries, and in Hong Kong Sar of China, there is nothing in the evidence to suggest that the Complainant has ever carried on business in the United States of America, where the Respondent is domiciled. Nor is there any evidence that the Complainant has carried out advertising or other promotional activities in the United States of America.
3. The Panel accepts the Respondent’s submission that ESOURCES is not a particularly strong mark. The prefix “e” is a commonly used abbreviation for an online service or facility, and “sources” is a relatively common descriptive expression in the English language. The Respondent has produced evidence of a number of “esource” United States of America trade marks held by third parties, and one of the Respondent’s predecessors in title was “Electronic Sources Inc.”.
4. The factors listed in paragraphs 1 – 3 above make the Respondent’s assertion that it had no knowledge of the Complainant when it registered the Domain Name, entirely plausible. No compelling reason has been put forward why the Respondent must have or should have known of the Complainant or his ESOURCES mark when it acquired the Domain Name in May 2007.
5. The Complainant’s allegations relating to the Respondent’s attempts to sell the Domain Name, are not sufficient to establish bad faith registration and use. There is no bad faith in registering a domain name for the purpose of on-sale at a profit, unless the registration has been effected for the purpose of on-sale to the complainant or to a competitor of the complainant, in circumstances falling within paragraph 4(b)(i) of the Policy. In this case, there is no evidence that the Respondent intended to sell this (substantially descriptive) Domain Name specifically to the Complainant or to one of his competitors.
6 The Respondent submits that the Complaint must fail because the Domain Name was registered in 1996, long before the Complainant commenced business under his ESOURCES mark. That submission is misconceived, as the relevant date of registration was May 2007, when the Respondent acquired the Domain Name from the previous owner (for UDRP Panel decisions holding that the date of acquisition of a disputed domain name is the relevant date of registration, see The iFranchise Group v. Jay Bean/MDNH Inc./Moniker Privacy Services, WIPO Case No. D2007-1438, Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921, and the very recent 3-member panel decision in Ustream.TV, Inc. v Vertical Axis, Inc., WIPO Case No. D2008-0598, at footnote 3). In this case, the Complainant’s Community Trade Mark registration dates from May 2006, approximately one year before the Respondent says that it acquired the Domain Name. Nevertheless, the Panel does note that the original registration and trade use of the Domain Name long before the Complainant established his business under the ESOURCES mark, is consistent with the Respondent’s submission that it merely took over an existing domain name without any knowledge of, or regard for, the Complainant’s trade mark rights.
E. Reverse Domain Name Hijacking
Although the Complaint has failed, the Panel does not see this case as a case where it would be appropriate to make a finding of reverse domain name hijacking, or other bad faith use of the Policy. The Complainant has proved that he is the owner of a registered Community Trade Mark which is identical to the Domain Name, and he has shown that the Domain Name has only been used as a link to a landing page website, consisting of nothing more than a search facility and sponsored links to third party websites (presumably providing the Respondent with pay-per-click advertising revenue). The website at the Domain Name has indicated that the Domain Name might be for sale. That combination of circumstances is fairly typical of the kind of evidence which panels often encounter in cybersquatting cases.
There are also conflicts of evidence on the matters of the Respondent’s asking price for the Domain Name, and whether or not the Complainant made an offer for the Domain Name.
In the end, the Complaint has failed substantially because the Complainant has not proved that the Respondent was aware of the Complainant and his mark when the Respondent registered the Domain Name in May 2007. That is not something the Complainant must have known when he filed his Complaint, and the Panel sees nothing else in the evidence which should have suggested to the Complainant at the time of filing, that its Complaint under the Policy could not possibly succeed.
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
David E. Sorkin
Dated: September 2, 2008