WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vert Tech Llc v. Computer Chronicles
Case No. D2000-1144
1. The Parties
1.1. The Complainant is Vert Tech LLC, a Delaware limited liability company, having a principal business address at 103 Foulk Road, Wilmington, Delaware 19803. The Complainantís authorized representative in this administrative proceeding is Carole R. Klein, of Morgan, Lewis & Bockius LLP, 1800 M Street, N.W., Washington, DC 20036-5689, USA. The Complainant says in the Complaint that Vert Tech LLC is a recently formed, wholly owned subsidiary of VerticalNet, Inc., and that where appropriate, use of the term Complainant includes a reference to VerticalNet, Inc.
1.2. The Respondent according to the WHOIS database of Network Solutions, Inc. (NSI) is Computer Chronicles, 39, Ramwadi, 1st Floor, No. 25, Kalbadevi Road, Mumbai, Maharashtra 4000002, India. The Respondent's representative in this proceeding is Shyam Sunder Iyer, of TAS & Co., 7/85 Bhaveshwar Dham, Rafi Ahmed Kidwai Road, Wadala, Mumbai 4000031, Maharashtra, India.
2. The Domain Name and Registrar
2.1. The Domain Name subject to this Complaint is "textilewebsite.com". The Registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
3.1. The Complaint was received in electronic form at the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) on August 30, 2000, and in hardcopy on August 31, 2000. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center on September 1, 2000.
3.2. A copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules was sent by the Complainant to the Respondent on August 29, 2000, by fax and courier. A copy of the Complaint was sent by the Complainant to the Registrar on August 29, 2000, by email and fax.
3.3. On September 2, 2000, the Registrar, NSI, was notified of the Complaint by WIPO Center. On September 10, 2000, verification was received from the Registrar of NSI to the effect that the Domain Name "textilewebsite.com" is registered by that Registry in the name of Computer Chronicles, 39, Ramwadi, 1st Floor, No. 25, Kalbadevi Road, Mumbai, Maharashtra 4000002, India. The Respondent's administrative, technical, zone and billing contact is Domain Hostmaster, Web Werks, A3 Matrukrupa Baburao Parulekar Road, Dadar (West), Mumbai, MH400028, India. NSI confirmed that Service Agreement 4.0 is in effect.
3.4. On September 2, 2000, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied, subject to Paragraph 3.5. below, the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Uniform Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Uniform Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
3.5. On September 11, 2000, a notice was sent by WIPO Center by email to the Complainant's representative stating that the Domain Name holder did not submit in its Registration Agreement to the jurisdiction of the Courts at the location of the principal office of the Registrar (NSI). On September 21, 2000, the Complainant's representative replied by email to WIPO Centre, copied by email to the Respondent and to the Registrar, with an Amendment to the Complaint in which it consents to the jurisdiction of the Courts at the location of the Respondent's address at shown in the Registrar's database at the time the Complaint was submitted to WIPO.
3.6. Formal Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent, to the Respondent's representative, and to the Registrant's contact on September 28, 2000, by WIPO Center by post/courier (with enclosures), by fax (without attachments) and by email (without attachments). A copy was sent by email to the Complainant. The deadline for the receipt of a response was set as October 18, 2000.
3.7. A two-page printout of the website "www.textilewebsite.com" was made on September 28, 2000.
3.8. The Respondent sent a Response on October 17, 2000, and WIPO acknowledged that the hardcopy was received on October 19, 2000.
3.9. On October 26, 2000, Dr. Clive Trotman, having provided the WIPO Center by fax with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and the Respondent, the Complainant and the Administrative Panel were so informed via email.
4. Factual Background
4.1. The Complainantís business based in the USA includes the promotion of the goods and services of others by preparing and placing advertisements in an electronic publication available through a global computer information network.
4.2. The Respondent's family business in India includes textiles.
4.3. The Complainant has a Domain Name "textileweb.com" that is registered with NSI, record created date August 22, 2000, stated to have been in use since March, 1996.
4.4. The Respondent has a Domain Name "textilewebsite.com" that is registered with NSI, record created date June 28, 1999.
4.5. A U.S. trademark "textileweb" was filed by TextileWeb, Inc., on April 8, 1998, and granted registration on July 27, 1999. That trademark was assigned by TextileWeb, Inc., to VerticalNet, Inc., on December 29, 1999. The Complainant states that the mark was first was used in interstate commerce by the Complainantís predecessor in interest on or before February 1, 1996, in connection with textile industry resource business.
4.6. On April 17, 2000, the Complainant sent a cease and desist notice to the Respondent demanding action that included the closure of the Respondent's website by April 24, 2000.
4.7. On April 27, 2000, the Respondent replied refusing to comply and making certain counter-assertions.
5. Partiesí Contentions
A. Contentions of Complainant
5.1. The contentions of the Complainant include (paragraphs 5.2-5.6 below) that:
5.2. The Respondent's Domain Name "textilewebsite.com" is confusingly similar to the Complainantís trademark TEXTILEWEB in which it has rights. The variation introduced by the word "site" is minor. The Respondent's website has similar objectives to the Complainantís and is described in similar terms. Both Complainant and Respondent use the Internet as a primary marketing channel.
5.3. The Complainant states that the Respondent has copied content from the Complainantís website and has spammed the Complainant's customer base.
5.4. The Respondent has no legitimate interest in the "textilewebsite.com" Domain Name. The Respondent is not commonly known by any such name. The Respondent intentionally chose the "textilewebsite.com" Domain Name to create an impression of an association with the Complainant and to mislead people to its own business and away from the Complainantís business.
5.5. The Respondent registered and is using the Domain Name in bad faith as evidenced by copying, spamming, and attempting to attract users misleadingly.
5.6. Remedies Requested. The Complainant requests that the Domain Name "textilewebsite.com" be transferred to the Complainant.
B. Contentions of Respondent
5.7. The contentions of the Respondent include (paragraphs 5.8-5.14 below) that:
5.8. The Respondent strenuously denies all the contentions of the Complainant.
5.9. The Domain Name is neither identical to nor deceptively similar to the Complainantís Domain Name in so far as the suffix Ďsiteí sufficiently distinguishes the two names.
5.10. The Complainant's trademark consists of two commonly used words and other businesses are free to use variations incorporating those words.
5.11. The Respondent has been making bona fide use of the disputed Domain Name, which is related to the family business of textiles.
5.12. The Respondent has not acted in bad faith. In particular it has not registered the Domain Name to sell to the Complainant, or engaged in a pattern of registering domain names to prevent trademark owners from using them, or to disrupt the business of a competitor, or to mislead to its own site for commercial gain.
5.13. Complainant's copy appearing on the Respondent's website was acknowledged and fairly dealt with.
5.14. The Respondent has not spammed or behaved improperly towards the Complainant or its customers.
6. Discussion and Findings
6.1. Paragraph 4 (a) of the Uniform Policy requires the Complainant to prove all three of the following elements:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
6.2. As this dispute was closely argued, the Administrative Panel took note of relevant parts of the Final Report of the WIPO Internet Domain Name Process (1999), and in particular part of Paragraph 172 therein which reads: "The cumulative conditions of the first paragraph [essentially (i), (ii) and (iii) in 6.1 above] of the definition make it clear that the behavior of innocent or good faith domain name registrants is not to be considered abusive. For example, a small business that had registered a domain name could show, through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith."
Whether the Domain Name is Confusingly Similar to Complainant's Trademark
6.3. The Domain Name that is the subject of the Complaint is "textilewebsite.com". The Complainant has submitted that this is confusingly similar to its own trademark "textileweb" and Domain Name "textileweb.com".
6.4. Precedent in WIPO domain name cases has usually supported the contention that the addition of a prefix or suffix to a trademark is insufficient to make it different, for example the prefix "i" (Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, Case No. D2000-0599); the prefix "my" (InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joeís Internet Cafe, Case No. D2000-0068); the prefix "micro" (Infospace.com Inc. v. Infospace Technology Co. Ltd., Case No. D2000-0074); the prefix "india" (InfoSpace.com, Inc. v. Hari Prakash, Case No. D2000-0076); and the prefix "www" together with the suffix "s" (InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, Case No. D2000-0069).
6.5. The present case is distinct in that the trademark for which protection is claimed, "textileweb", is a conjunction of two words of very ordinary descriptive meaning. The word "web" is not only of wide meaning but is ambiguous in the present context because its primary meaning is to do with textiles or biology whereas the application of the word "web" to internet technology is recent, narrow and esoteric. The Respondent's use of the word "website" in "textilewebsite" projects a meaning that is strongly suggestive of an internet website, while "textileweb" is more suggestive of a textile company.
6.6. The argument resolves to a finding of fact. The respondent's Domain Name contains words similar to the Complainantís and is to that extent similar, but whether it is confusingly similar is another matter. The Administrative Panel is not persuaded that the Complainantís case as to confusing similarity is stronger than the Respondent's on balance and therefore the benefit of the doubt must be given to the Respondent in respect of Paragraph 4 (a) (i) of the Uniform Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of Domain Name
6.7. The Complainant contends that the Respondent does not have any rights in respect of the Domain Name "textilewebsite.com" because it is virtually identical to the Complainant's "textileweb" trademark, which the Complainant has not authorized the Respondent to use.
6.8. The use of the word "textileweb" by the Complainant as a valid registered trademark is fact. However, as stated in Gateway, Inc. v. Pixelera.com, Inc. (Case No. D2000-0109, Alan J. Limbury Panelist), "Where a trader uses a descriptive name as a trademark, only slight differences will suffice to distinguish another trader and its business from the first trader and its business." It should be noted that the quoted conclusion applied to trademarks as distinct from domain names, which latter in the facts of that case differed only by a hyphen and were held to be confusingly similar. The present Respondent operates a business based on the name "textilewebsite" and a website of the same name (.com). The Respondent does not claim to have registered "textilewebsite" as a trademark but uses it as a business identifier and in the present context it is not necessary for a trademark to be registered for rights to accrue to its user (SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, Case No. D2000-0131).
6.9. The printouts of the Respondent's website dated August 28, 2000, (Complainant's Exhibit F) and October 15, 2000, (Respondent's Annex 8) lead the Administrative Panel to find that at those times the Domain Name was in use in connection with a bona fide offering of goods or services. The terms of the letter from the Complainant to the Respondent dated April 17, 2000, establish that such usage predates any notice of the dispute.
6.10. The Administrative Panel finds that in terms of Paragraph 4 (c) (i) of the Uniform Policy the Respondent has rights to and legitimate interest in the Domain Name. The Complainant therefore does not succeed under Paragraph 4 (a) (ii) of the Uniform Policy.
Whether Domain Name Has Been Registered and is Being Used in Bad Faith
6.11. Since the Complainant needed to satisfy all three of the clauses in Paragraph 4 (a) of the Uniform Policy and has failed to do so under two of them, it is unnecessary to make a finding on the question of bad faith (although all submissions and references submitted were pursued). The Administrative Panel places on record, however, that in accepting the evidence referred to in reaching the preceding conclusions, it does not necessarily endorse any other assertions made by either party and especially those couched in intemperate language. Some of the matters are outside the scope of the Mandatory Administrative Proceeding as framed in Paragraph 4 of the Uniform Policy and may be subject to other remedies. In accordance with Paragraph 15 (e) of the Uniform Rules the Administrative Panel has considered the Respondent's closing submission accusing the Complainant of reverse domain name hijacking and the Panel finds insufficient evidence to sustain this claim.
6.12. In summary, as stated in 6.6 above the Respondent's Domain Name "textilewebsite.com" is not confusingly similar to a trademark in which the Complainant has rights and the Respondent succeeds under element 4 (a) (i) of the Uniform Policy. The Complainant therefore has failed to prove its case overall. Alternatively, as stated in 6.10 above the Respondent has rights to or legitimate interest in respect of the Domain Name and the Respondent succeeds under Paragraph 4 (a) (ii) of the Uniform Policy. The Complainant therefore has failed to prove its case overall. The Decision is made in favor of the Respondent and against the Complainant.
7.1. The Decision of the Administrative Panel is to decline the Complainant's application for the disputed Domain Name "textilewebsite.com" to be transferred to the Complainant.
Dr Clive N. A. Trotman
Dated: December 15, 2000