World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Streetwise Maps, Inc. v. Ryan Gibson

Case No. D2010-0984

1. The Parties

The Complainant is Streetwise Maps, Inc. of Sarasota, Florida, United States of America, represented by Sheppard, Mullin, Richter & Hampton, United States of America.

The Respondent is Ryan Gibson of Edinburgh, United Kingdom of Great Britain and Northern Ireland, internally represented United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <streetwisesystems.com> is registered with Advantage Interactive Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2010. On June 16, 2010, the Center transmitted by email to Advantage Interactive Ltd. a request for registrar verification in connection with the disputed domain name. On June 18, 2010, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2010. The Response was filed with the Center on July 14, 2010.

The Center appointed Ross Carson as the sole panelist in this matter on July 23, 2010. 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.

4. Factual Background

Complainant is the registered owner of numerous United States Trademark registrations for trademarks for or including the trademark STREETWISE. Among the registrations is United States Trademark Registration No. 1333219 for the trademark STREETWISE registered on the Principal Register on April 30, 1985 in relation to the goods: IC 16. US 38: Maps and Maps which include indexes; United States Trademark Registration No. 2233140 for the trademark STREETWISE registered on the Principal Register on March 23, 1999 in relation to the goods and services: IC 9. US 21 23 36 38: Computer software featuring street maps and street map-related data and indices thereto; United States Registration No.2928735 for the trademark STREETWISE and Design registered on the Principal Register on March 1, 2005 in relation to services: IC 35. US 100 101 102; Retailing services, namely mail order services, telephone ordering services, online retail ordering services, electronic retail ordering services via computer, featuring maps, maps with indices, and related travel material, ….

Complainant is the owner of the trademark STREETWISE registered as United Kingdom Registration No. 1571666 on May 12, 1994 in Part B of the Register in respect of: Class 16 Maps, plans and guides; all included in Class 16.

Complainant is also the registered owner of the trademark STREETWISE registered as Registration No. 323519 in the Register of Community Trade Marks on March 25, 1999 in relation to goods in Class-9- Electronic equipment, computers, software, including such equipment, computers and software for generating maps on a disc or screen; goods in- Class 16- printed matter , including newspapers, magazines, books, maps, plans, guides, map indices, map guides and street guides.

Complainant produces and offers for sale many maps relating to locations in the United Kingdom. Some of the maps and the period of time of their availability are as follows: Streetwise London (1991- present); Streetwise Dublin (1995- present); Streetwise Edinburgh (2000- present); Streetwise Great Britain (2004-present); Streetwise Ireland ( 2004-present). In addition to its STREETWISE maps, Complainant publishes additional titles for the UK market: London Mini Metro ( Underground Map) (1990- present); Artwise London (1991-present); Streetwise Map Pack Ireland (2005- present; Streetwise Map Pack Great Brittan (2005- present).

The maps relating to geographical locations in the United Kingdom as well as locations throughout the world are available at Complainant’s principle website <streetwisemaps.com>. Complainant owns over twenty other domain names incorporating its name and trademark STREETWISE. Each of these domain names including it’s domain name <streetwisemaps.co.uk> direct Internet users to Complainant’s website at <streetwisemaps.com>.

Complainant’s domain name <streetwisemaps.com> was created on December 14, 1995.

The disputed domain name <streetwisesystems.com> was created on May 22, 2003.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant states that as found in section 4 above, Complainant is the owner of trademark registrations in the United States of America, the United Kingdom and the European Community for the trademark STREETWISE registered in relation to maps, map products and services associated with making maps available online.

Complainant states that it offers over one hundred different maps throughout the world operating from its website <streetwisemaps.com>. Complainant states that it has millions of customers throughout the world and is a recognized leader in providing map products and related products and services for cities and countries around the world.

Complainant submits that it has acquired common law rights in the United States and in the United Kingdom in the STREETWISE trademark by virtue of Complainant’s use of the mark to identify its products and services in interstate and worldwide commerce; it’s investment in publicizing and advertising its products and services under the STREETWISE mark and the association between the trademark and Complainant; and the consuming public’s use and association of the mark to refer to the products and services developed and marketed by Complainant in association with STREETWISE.

Complainant submits that the disputed domain name was registered on May 22, 2003 some 20 years after Complainant began using it’s trademark STREETWISE and almost 20 years after Complainant registered the trademark STREETWISE in the United States of America. The disputed domain name <streetwisesystems.com> is virtually identical to Complainant’s registered trademark STREETWISE.

Complainant states that the disputed domain name is comprised of Complainant’s trademark STREETWISE in combination with the generic term “system”. Complainant submits that UDRP decisions have consistently held that domain names that combine a trademark with a generic term are confusingly similar under the Policy. See, e.g., Advanced Micro Devices v. Dimitry, WIPO Case No. D2000-0530 (<athlonchip.com> found confusingly similar to ATHLON trademark).

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name <streetwisesystems.com>.

Complainant states that Respondent operates a website associated with the domain name <streetwisesystems.com>, where Respondent advertises, offers for sale and sells map products, in competition with Complainant. On information and belief, Respondent receives revenues from producing city pocket map products for distribution to travelers and visitors to cities in the United Kingdom.

Complainant further submits that Respondent produces a folding pocket map for the City of Edinburgh. Complainant has produced a folding pocket map for the City of Edinburgh for over ten (10) years under the STREETWISE name and trademark.

Complainant states that it has not licensed Respondent to use its STREETWISE trademark. Complainant states on information and belief that Respondent has not filed any trademark application for registration of the STREETWISE trademark, or any variation thereof, in any trademark office or jurisdiction worldwide.

Complainant submits that while Respondent has established a website offering map products, Respondent’s offering is not a bona fide offering. Complainant submits that Respondent was undoubtedly aware of Complainant’s excellent reputation and substantial goodwill in the it’s STREETSWISE trademark due to the extensive fame of the STREETWISE trademark and its numerous trademark registrations, and adopted that mark for his own use and without Complainant’s authority, in order to draw visitors to his business using the strength of Complainant’s trademark and reputation. Complainant submits that Respondent is not using the disputed domain name in connection with a bona fide offering of it’s own goods or services, but is only attempting to benefit from the fame and renown of Complainant’s trademark. See,e.g., Nokia Corp. v. Nick Holmes t/a ETYPE Media, WIPO Case No. D2002-0001 (finding that respondent made no bona fide offering of goods or services where he was aware of complainant’s reputation and goodwill and adopted complainant’s mark in his domain name).

Complainant submits that Respondent is not commonly known by the <streetwisesystems.com> name. There is no indication on the <www.streetwisesystems.com> website, the Advantage interactive’s WHOIS data base or through performing searches with the Google search engine that Respondent is commonly known by the name or mark STREETWISE or <streetwisesystems.com>, other than by virtue of its attempt to capitalize off Complainant’s extensive fame and goodwill by registering the disputed domain name. The name of the registrant of the disputed domain name is “Ryan Gibson” not a company name incorporating the term ‘streetwise’ or any variation thereof.

Complainant further submits that Respondent was not known by and did not offer any products or services in association with the any name, trademark or domain name incorporating “streetwise” prior to registration of the disputed domain name on May 22, 2003 which occurred more than twenty years after Complainant commenced use of its trademark STREETWISE in association with maps.

Complainant states that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. Complainant submits that Respondent is using the website associated with the disputed domain name to offer map products to consumers, in direct competition with Complainant, thus drawing consumers away from Complainant. Complainant submits that use of Complainant’s trademark to draw consumers to a competitor’s site causes Complainant economic harm and gives illicit economic benefit to Respondent.

A.3. Registration in Bad Faith

Complainant submits that as it is one of the most well known map product providers in the world; any competitor of Complainant would undoubtedly be aware of Complainant’s STREETWISE trademark.

Complainant states that by the time that Respondent registered the disputed domain name on May 22, 2003 Respondent was undoubtedly aware of Complainant’s excellent reputation and substantial goodwill in the STREETSWISE trademark due to the extensive use by Complainant of it’s STREETWISE trademark in association with maps and map products over the preceding twenty years throughout the world including the United Kingdom. Complainant produces over 100 map titles and has millions of customers throughout the world.

Complainant further submits that Respondent had constructive notice of Complainant’s prior use of it’s trademark STREETWISE in association with maps and map products. A routine Internet search by Respondent prior to May 22, 2003 would have disclosed Complainant’s website <streetwisemaps.com> and STREETWISE trademark used in association with maps and map products. Further a trademark search on the date of registration of the disputed domain name would have revealed Complainant’s numerous trademark registration for STREETWISE in the United States and around the world including the United Kingdom and the European Union.

A.4. Use in Bad Faith

Complainant states that after discovering Respondent’s registration and use of the disputed domain name Complainant’s solicitors forwarded a cease and desist letter dated April 30, 2009 to a Director of Streetwise Orientation and Navigation System Limited stating that the company has registered and is using the domain name <streetwisesystems.com> in breach of Complainant’s trademark rights. Complainant states that Respondent failed to Respond to Complainant’s letter of April 30, 2009. The name of the Respondent in this case is Ryan Gibson. Complainant’s solicitor’s letter of April 30, 2009 is addressed to the Director of Streetwise Orientation and Navigation Systems Limited located at the same address as the Respondent. Ryan Gibson the Registrant of the disputed domain name shares the same address with Streetwise Orientation and Navigation Systems Limited the user of the disputed domain name. A visit to the web pages associated with the domain name <streetwisesystems.com> shows Streetwise Orientation & Navigation Systems as the operator of the web site, without reference to the word “Limited” normally used to identify a limited liability company.

Complainant submits that Respondent’s failure to respond to Complainant’s solicitors cease and desist letter of April 30, 2009 is compelling evidence of Respondent’s bad faith registration and use of the disputed domain name.

Complainant submits that Respondent registered the disputed domain name <streetwisesystems.com> to attract users to its website for financial gain by creating a likelihood of confusion with Complainant’s trademark STREETWISE. Complainant states that Respondent’s bad faith is demonstrated by use of the disputed domain name in order to free ride on Complainant’s reputation and customer goodwill. Respondent registered and uses the disputed domain name to promote and sell map products. The disputed domain name incorporates Complainant’s trademark STREETWISE in its entirety, and Respondent features the trademark prominently on its website. On information and belief, Respondent has received revenue from the services it is offering through it’s website at <streetwisesystems.com>. Complainant submits that such use and registration indisputably evidences bad faith under paragraph 4(b)(iv) of the Policy. See, e. g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibels, WIPO Case No. D2000-1306 (respondent’s registration and use of a domain name incorporating complainant’s mark to redirect Internet users to a separate retail web site constitutes bad faith).

B. Respondent

B.1. Identical or Confusingly Similar

Throughout the portion of the Response relating to the three issues set out for consideration in paragraph 4(a) of the Policy, Respondent substitutes “Streetwise Orientation & Navigation Systems Limited” for the term Respondent. The Registrar of the disputed domain name in it’s response to the Request for Registrar Verification confirmed that Ryan Gibson is the current registrant of the disputed domain name. In the full WHOIS output for the domain name Ryan Gibson is shown as the contact. Ryan Gibson is shown as being with an organization: CorporatePRM. The Notification of Complaint and Commencement of Administrative Proceedings under the heading “Other Contact Information” describes Ryan Gibson as being associated with “corporate PRM (and/or Streetwise Orientation & Navigation Systems Limited). Complainant’s cease and desist letter relating to alleged objectionable use of the disputed domain name was forwarded by the solicitors for Complainant to the Director of Streetwise Orientation and Navigation Systems. The letter referred to “your company Streetwise Orientation and Navigation Systems Limited has registered and is using the disputed domain name in association with web pages on which you are offering maps and related goods and services under the mark STREETWISE. Respondent has not provided any explanation for substituting Streetwise Orientation and Navigation System Limited for the Respondent Ryan Gibson. As both Complainant and Respondent appear to agree that Streetwise Orientation & Navigation System Limited is the current owner of the disputed domain name and as the web pages associated with the disputed domain name show the domain name used by an entity named Streetwise Orientation & Navigation Systems since 2003 the Panel accepts for the purpose of this decision that Streetwise Orientation & Navigation Systems Limited is the owner of the disputed domain name <streetwisesystems.com>. Respondent as used herein refers to Streetwise Orientation & Navigation Systems Limited .

Respondent contests the exclusivity of Complainant’s trademark STREETWISE . Respondent submits that the term “streetwise” is a commonly used and well known term, hence it is appropriate for Respondent’s system. Respondent provided examples of numerous companies that utilize the word “streetwise” in their companies’ names. Respondent submits that Complainant’s attempt to control the use of the word “streetwise” amounts to an attempt to transform the trademark STREETWISE from rights against fair competition to rights to control the language. Respondent submits that it displays the word “streetwise” in an altogether different manner from Complainant which in no way infringes on Complainant’s mark and is distinctive in its own right.

Respondent submits that the disputed domain name <streetwisesystems.com> is not confusingly similar to Complainant’s trademark STREETWISE as the term “systems” cannot relate directly to Complainant’s business and would not be an apt word to describe Complainant’s goods. Respondent further submits that Complainant has failed to show any evidence of actual confusion having occurred in the market place between use of the disputed domain name and Complainant’s trademark STREETWISE.

Respondent states that its business is clearly different from the business of the Complainant which involves selling maps to the public in association with the trademark STREETWISE. Respondent states that it deals solely with organizations, primarily public sector organizations, and is awarded work by responding to public tenders issued by the client, for which any company may compete. Respondent states that as shown on the web pages associated with the domain name <streetwisesystems.com> Respondent designs and produces integrated pedestrian orientation systems for towns and city centers on behalf of and on instruction by external organizations such as city councils. The systems produced by Respondent include on-street information posts, mapping and directional panels for car parks and train and bus stations. The systems are produced purely for the client and if requested by the client they can also include a pocket map that corresponds with the on street units both in design and content. The system is sold as a whole unit to the client who then becomes responsible for the way in which they distribute or dispose of the pocket maps if they have chosen to include them in their system. Respondent charges the client for the production of the system including any relevant pocket maps at a previously agreed fixed price which is invoiced upon completion of the project. After the invoice has been issued Respondent receives no further revenue from the system or the pocket maps and individuals cannot purchase any products directly from Respondent.

Respondent states that it does not cater in any way to the market targeted by Complainant. Respondent is not a direct competitor of Complainant as alleged by the Complainant. Respondent’s use of <streetwisesystems.com> in its entirety in no way creates a likelihood of confusion with Complainant’s trademark STREETWISE due to the differing nature of the services provided by Respondent as detailed above.

B.2. No Rights or Legitimate Interests in respect of the Domain Name

Respondent states that it does not advertise, offer for sale or sell map products to the public in competition with Complainant as alleged in the Complaint. Respondent states as seen at the web page associated with the disputed domain name <streetwisesystems.com> Respondent is in the business of planning and producing integrated pedestrian orientation systems for towns and city centers on behalf of and on instruction by external organizations such as city councils. The systems produced by Respondent include on-street information posts, mapping and directional panels for car parks and train and bus stations. The systems are produced purely for the client and if requested by the client they can also include a pocket map that corresponds with the on street units both in design and content. The system is sold as a whole unit to the client who then becomes responsible for the way in which they distribute or dispose of the pocket maps if they have chosen to include them in their system. Respondent does not publish the map and is in no way responsible for the distribution of any of the maps.

Respondent states that it deals solely with organizations, primarily public sector organizations such as cities or towns, and is awarded work by responding to public tenders, for which any company can compete, issued by the public sector organization.

Respondent states that Complainant claims they are extremely well known world wide but states Complainant has not adduced any evidence relating to advertising campaigns or notoriety within the media, particularly in the UK to support Complainants assertions. Respondent’s position is that Complainant’s claim of notoriety of it’s trademark is not supported by evidence.

Respondent states that prior to this dispute, the Respondent had never come into contact with, nor heard of, any of the Streetwise Map’s products. Respondent asserts that it has legitimate interests in the domain name. Respondent has been carrying on business as Streetwise Orientation and Navigation System since at least 2003 as shown in copies of web pages appearing on the Internet Archive Wayback Machine. Respondent states that the domain name <streetwisesystems .com> arose as a result of the contraction of the company name Streetwise Orientation & Navigation Systems Limited. Respondent states that as shown on web pages associated with <streetwisesystems.com> these pages show how once the full company name has been detailed and referred to, for ease of dialect the company goes on to be referred to as “Streetwise”.

B.3. Registration in Bad Faith

Respondent states that it registered the disputed domain name in good faith as setout in greater detail above, Respondent was not aware of any advertising or media coverage of Complainant corporation or Complainant’s maps and related products prior to the date of registration of the disputed domain name on May 22, 2003. Respondent states that Complainant has not submitted any evidence of advertising or advertising expenditures of either its brand name or products. Respondent states that the word “streetwise” is a common dictionary word which is appropriate to place Respondent’s integrated pedestrian orientation systems for towns and city centers in context.

Respondent states as further evidence supporting registration in good faith that its domain name <streetwisesystems.com> is a contraction of its corporate name Streetwise Orientation& Navigation Systems Limited. Respondent states that its services are offered to municipal governments following public tendering and Respondent does not offer map or map products for sale to the public. Respondent is not a competitor of Complainant.

Respondent states that UDRP panelists almost uniformly reject importation of any notions of constructive notice arising from trademark registration into determination of rights or lack of good faith under the Policy. See, e.g., Julie and Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Sher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073. Respondent submits that Complainant’s use of common words as its trademark makes it more likely that a member of the public, might have registered the word as a domain name.

B.4. Used In Bad Faith

Respondent states that contrary to the allegation in the Complaint that Respondent acted in bad faith by failing to respond to Complainant’s cease and desist letter of April 30, 2009, Respondent replied to Complainant’s cease and desist letter in a timely fashion. Respondent attached a copy of an e-mail dated May 6, 2009 forwarded to the solicitors for Complainant’s responding to Complainant’s cease and desist letter of April 30, 2009 as an Exhibit to the Response. In the e-mail Respondent informed Complainant: “We are developers of integrated on-street navigation and information networks for Cities and Towns We do this on behalf of City and Town Councils mainly, or other development or city centre management organizations.” Respondent also advised Complainant they had not been approached by anyone mistaking Complainant for Respondent or vice versa. Respondent generally denied confusion or any likelihood of confusion from their use of the disputed domain name.

Respondent denies that it uses the disputed domain name to obtain a free ride on Complainant’s reputation and customer goodwill. Respondent filed letters from public servants in three towns and cities who had used Respondent’s services. Some of the letters described the call for tenders prior to award of a contract and all the letter writers stated that they were not aware of Streetwise Maps Inc., the Complainant. Respondent states that it would make no financial gain whatsoever as a result of any unlikely confusion as they do not deal with retail maps to individuals so that anybody looking to find the Streetwise Map website would not be able to obtain what they were looking for from Respondent. As outlined above Respondent states that it provides services to towns and cities and does not offer or provide maps or associated material to the public.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this 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”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trade mark and secondly that the disputed domain name is identical to or confusingly similar to the trade mark in which Complainant has rights.

Complainant has established that it is the owner of registered trademark STREETWISE registered on the Principal Register in the United States, the Part B Register in the United Kingdom, and in the European Union in relation to maps and related products as described in detail in paragraph 4 above. Complainant’s registered trademarks were registered decades prior to the date of registration of the disputed domain name on May 22, 2003.

The disputed domain name is comprised of Complainant’s registered trademarks STREETWISE in combination with the generic term “systems”. Respondent submits that Complainant’s trademark STREETWISE is a dictionary word and therefore subject to a narrow scope of protection. Respondent further argues that the addition of the suffix “systems” to Complainants registered trademark is sufficient to avoid confusing similarity as Complainant does not offer or provide any services involving systems to the public.

The disputed domain name incorporates the whole of Complainant’s trademark as the prefix of the domain name. Members of the public familiar with Complainant’s trademark but not familiar with the full extent of Complainant’s goods and services recognizing the prefix “streetwise” will be confused into associating the disputed domain name with Complainant.

The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. Previous panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has proven that the disputed domain name <streetwisesystems.com> is confusingly similar to Complainant’s trademark SREETWISE.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks.

Respondent argues that before any notice to it of the dispute Respondent began the use of the disputed domain name <streetwisesystems .com> in 2004 in connection with a bona fide offering of the services of designing and producing integrated pedestrian orientation and navigation systems for towns and city centers on behalf of and on instruction by external organizations such as city councils.

Complainant position is that Respondent offers map products on its website associated with the disputed domain name in competition with Complainant. Complainant argues that such offering is not a bona fide use of the disputed domain name.

While Respondent does refer to maps on its website, Respondent does not offer to sell maps to the public or sell maps to the public on its website. Respondent offers its services to develop a system , not to sell products such as maps. A review of Respondent’s website discloses that its pedestrian orientation and navigation systems include on-street information posts, mapping and directional panels for car parks and train and bus stations. The systems are produced purely for the client and if requested by the client they can also include a pocket map that corresponds with the on street units both in design and content. The system is sold as a whole unit to the client who then becomes responsible for the way in which they distribute or dispose of the pocket maps if they have chosen to include them in their system. Respondent does not publish the map and is in no way responsible for the distribution of any of the maps.

Respondent deals solely with organizations, primarily public sector organizations such as cities or towns, and is awarded work by responding to public tenders issued by the public sector organization, for which any company can compete.

Complainant is in the business of producing and selling folding maps to the public, Complainant’s produces and sells maps of many of the principal cities of the world as well as maps of underground transit systems. Complainant offers it’s maps to the public at its website <streetwisemaps.com>.

Complainant and Respondent are not competitors. The nature of their respective goods and services are different. The nature of the goods and services of Complainant are maps and map products used in association with its trademark STREETWISE. The nature of Respondent’s services are integrated pedestrian orientation and navigation systems offered to and developed in close cooperation with municipal governments or local public organizations. The nature of the trade associated with Complainant’s trademark STREETWISE and Respondent’s domain name <streetwisesystems.com> are substantially different. Complainant offers and sells its maps and map products to the public. Respondent offers its pedestrian orientation and navigation systems to municipal, city or town governments normally following a tender process.

Complainant submitted that its trademark STREETWISE is extremely well known world wide including the UK in association with maps. Respondent submitted that Complainant has not adduced any evidence relating to advertising campaigns or notoriety within the media, particularly in the UK to support Complainants assertions. A statement that a trademark is famous is a conclusion in law. Complainant did not present evidence of its advertising budgets, samples of advertising, number of maps sold annually, media reporting on STREETWISE maps or brand surveys showing brand recognition of Complainant’s trademark STREETWISE in relation to maps in the UK and other countries which evidence would enable the Panel to assess the extent of the goodwill associated with Complainant’s trademark STREETWISE in UK or elsewhere.

Respondent states that it selected the domain name <streetwisesystems.com> as it’s domain name because the words “streetwise” and “systems” are a contraction of it’s corporate name. Respondent states that it chose the word “streetwise” as part of its corporate name because the word is appropriate for Respondent’s pedestrian orientation and navigation systems.

Respondent which is located in Edinburgh stated that Streetwise Orienteering & Navigation Systems Limited was not aware of the Complainant or it’s STREETWISE maps when it registered the disputed domain name <streetwisesystems.com> on May 22, 2003. Complainant had produced and has offered for sale a STREETWISE map of Edinburgh from the year 2000 to the present. Complainant did not submit any evidence relating to promotion or sales of the STREETWISE Edinburgh map in Edinburgh , Scotland or the UK prior to the registration of the domain name by Respondent on May 22, 2003. Respondent filed as Exhibits copies of letters from municipal officials in municipalities in the UK which had contracted to use and utilized Respondent’s services in creating pedestrian orienteering and navigation systems for their city , town or quarter. The municipal officials stated that they were not aware of the Complainant or its maps.

On the basis of the evidence submitted the Panel concludes that Respondent was not aware of Complainant’s STREETWISE trademark prior to registration of the disputed domain name and Respondent is and has been using its domain name <streetwisesystems.com> in connection with a bona fide offering of it’s pedestrian orientation and navigation systems.

The Panel finds that Respondent has demonstrated its rights to and legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As Complainant has not proven that Respondent has no rights or legitimate interests in respect of the disputed domain name, it is not necessary for the Panel to consider if the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Ross Carson
Sole Panelist
Dated: August 6, 2010.

 

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