WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International E-Z Up, Inc. v. Affordable Instant Shelters, Inc.
Case No. D2001-1244
1. The Parties
The Complainant in this administrative proceeding is International E-Z Up, Inc. whose address is 1601 Iowa Avenue, Riverside, CA 92507, USA. The Respondent in this case is Affordable Instant Shelters, Inc., whose address is 6820 Benjamin Road, Suite 12, Tampa, Florida 33634, USA.
2. The Domain Name and Registrar
The domain name at issue is which is registered with Internet Names Worldwide, a division of Melbourne IT Ltd ("Melbourne IT").
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 15, 2001.
On October 18, 2001 a Verification Response was received from Melbourne IT which served to: (1) confirm that Melbourne IT was in receipt of the notification of the domain name dispute; (2) confirm that Melbourne IT is the registrar of the domain name; (3) confirm that Respondent is the current Registrant of the domain name; and (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrar�s WHOIS database for the Registrant of the disputed domain name, the technical contact, and the administrative contact.
On October 23, 2001, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The WIPO Center determined that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules").
A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (post/courier and email), dated October 23, 2001. The Notification set a deadline of November 12, 2001 by which the Respondent could make a Response to the Complaint. Respondent submitted a Response dated November 12, 2001. Respondent submitted an amended affidavit on November 20, 2001 correcting a misstatement in the original affidavit and Response.
On December 4, 2001, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel in which Roderick M. Thompson was appointed to serve as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on December 4, 2001, is December 18, 2001.
4. Factual Background
Complainant has provided evidence that it is the owner of U.S. trademark registration No. 1,803,282 for the mark INSTANT SHELTER for "collapsible tents" which was registered in 1993. Complainant also owns Canadian and Benelux trademark registrations for the INSTANT SHELTER mark. Complainant is in the business of providing collapsible canopy products. Complainant offers and sells its collapsible canopy products through its website at .
Respondent, Affordable Instant Shelters, Inc., is the current Registrant of the domain name . Respondent registered the domain name in November 1996. In 1997, Respondent registered the fictitious business name "Affordable Instant Shelters, Inc." At some point after registration of the domain name, the exact timing is not clear from either the Complaint or the Response, Respondent became an authorized dealer of Complainant. Complainant terminated Respondent�s dealer status on January 30, 2001.
Complainant sent a letter to Respondent on July 23, 2001, requesting that Respondent cease using Complainant�s trademarks and transfer the disputed domain name to Complainant. Respondent requested additional information on August 13, 2001, in order to analyze the issue. Complainant responded on August 23, 2001. Respondent apparently did not respond to Complainant�s August 23 letter.
5. Parties� Contentions
A. Complainant
Complainant asserts that the domain name is virtually identical to Complainant�s trademark INSTANT SHELTER, except that the domain name includes the letter "s". Complainant asserts, therefore that the domain name infringes Complainant�s trademark rights, creates a likelihood of confusion, and has resulted in actual confusion.
Complainant alleges that Respondent does not have a legitimate interest in the domain name because Respondent is no longer an authorized dealer of Complainant and Complainant notified Respondent that Respondent was no longer allowed to use Complainant�s logo or pictures of Complainant�s products. Complainant also sent a letter to Respondent in July 2001 requesting that Respondent cease use of its trademarks and transfer the domain name to Complainant. Further, Complainant indicates that although Respondent is known by the name Affordable Instant Shelters, Inc., Respondent has not been commonly known by the contested domain name .
Complainant alleges that Respondent has registered and used the domain name in bad faith. Complainant claims that Respondent has registered the name to attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant�s mark. Further, Complainant asserts that Respondent�s current use of the domain name is to intentionally divert actual and prospective customers of Complainant�s goods for its own commercial gain and to create a likelihood of confusion.
Additionally, Complainant indicates that Respondent registered the domain name on September 22, 2000 and that the content of the website is identical to the content at the web site. Finally, Complainant alleges that Respondent�s failure to respond to Complainant�s demand letter constitutes further evidence of bad faith.
B. Respondent
Respondent disputes Complainant�s assertions. Respondent claims that Complainant�s mark is a common and descriptive term for readily assembled shelters or canopies. Respondent also claims that Complainant does not use the term "instant shelter" as a trademark, but rather uses it as a description for Complainant�s goods.
Further, Respondent contends that it has a legitimate interest in the disputed domain name because Respondent was using the domain name in connection with the bona fide offering of goods and services before notice of this dispute. Respondent asserts that it has been using the domain name since 1997 to sell instant shelters. Respondent claims that it registered the domain name as a continuation of its pre-existing business. Further, Respondent notes that the domain name corresponds to Respondent�s corporate name�Affordable Instant Shelters, Inc. �which it registered in 1997. Respondent also asserts that prior to registering the domain name Respondent did not know that Complainant claimed the term "instant shelter" as a trademark.
Additionally, Respondent asserts that it did not register, and has not used, the disputed domain name in bad faith. Respondent claims that it did not register the domain name for the purpose of disrupting Complainant�s business or in an attempt to attract Internet users to Respondent�s site by creating a likelihood of confusion. According to Respondent, Respondent registered the name because it incorporates a common term that is closely associated with Respondent�s pre-existing business operations and the goods provided by Respondent.
Finally, Respondent asserts that Complainant has filed this dispute in an effort to put Respondent, Complainant�s competitor, out of business. Respondent notes that Complainant has filed two other law suits against Respondent this year, neither of which relate to the domain name.
6. Discussion and Findings
A. Applicable Rules and Principles of Law.
Paragraph 15(a) of the Rules sets out the principles the Panel is to use in rendering its decision: "A Panelist 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."
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 in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and used in bad faith.
B. Application of Paragraph 4(a) to the Facts.
Registration and use in bad faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the domain name has been registered and used in bad faith. Complainant claims that Respondent has registered the name to attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant�s mark. Complainant also asserts that Respondent is using the domain name to intentionally divert Complainant�s customers.
Complainant does not offer any evidence to support these allegations, however. There is no evidence that Respondent intended to attract Complainant�s customers to Respondent�s web site or intended to create confusion. Instead, it appears that Respondent registered a domain name that Respondent considered to be a descriptive term for its ongoing business.
Complainant also claims that Respondent�s failure to respond to Complainant�s demand letter constitutes bad faith. Mere failure to respond to a demand letter does not, without more, constitute bad faith registration and use of a domain name. Further, Respondent did not completely ignore Complainant�s repeated demands. Complainant sent one demand letter regarding the domain name and Respondent�s counsel responded to that letter with a request for additional information.
The Panel finds, therefore, that Complainant has not met its burden of showing that Respondent registered and used the domain name in bad faith.
Respondent�s rights and legitimate interests in the domain name
Under the Policy, Complainant bears the burden of proving that Respondent does not have a legitimate interest in the domain name. Complainant alleges that Respondent does not have a legitimate interest in the domain name because 1) Respondent is no longer an authorized dealer of Complainant; 2) Complainant sent a letter to Respondent requesting that Respondent cease use of its trademarks and transfer the domain name to Complainant; and 3) Respondent has not been commonly known by the contested domain name . Further, Complainant points out that Respondent registered the domain name , implying that since Respondent has an alternative domain name, Respondent does not have a legitimate interest in maintaining a web site at the domain.
The Policy sets forth examples, in paragraph 4(c), of circumstances that demonstrate Respondent�s legitimate interests in the name. One such circumstance is use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. Respondent appears to have been using the domain name in connection with a bona fide offering of goods prior to notice of the dispute. Based on advertisements submitted by Respondent, it appears that Respondent was in the "instant shelter" industry prior to registering the domain name. Respondent registered a descriptive term as a domain name for its ongoing business as a means of taking its business online. Respondent has been using the domain name in connection with sales of shelters since 1997. Further, Respondent claims that prior to registering the domain name, Respondent did not know that anyone claimed trademark rights to the term "instant shelter."
Another circumstance demonstrating a legitimate interest under the Policy is evidence that Respondent�s business has been commonly known by the domain name. Respondent has been using the corporate name "Affordable Instant Shelters, Inc." since 1997. Although the domain name is not an exact match with Respondent�s corporate name, it is a shorter version of the name. The circumstances enumerated in the policy are merely exemplary, however, and so other circumstances may also constitute a legitimate interest. Thus, it is not necessary for the Respondent to meet the exact specification of the circumstances outlined in the policy in order to demonstrate a legitimate interest. In this case Respondent chose a domain name that is closely connected to its corporate name as well as its product.
Based on Respondent�s bona fide business and its closely related corporate name, this Panel finds that Respondent has shown a legitimate interest in the domain name. The fact that Respondent became an authorized dealer of Complainant some time after registration of the domain name does not change this analysis under the policy There is no evidence that, upon becoming a dealer, Respondent agreed to give up any of its preexisting rights with regard to the domain name.
Likewise, Respondent�s registration of a second domain name, , and Respondent�s maintenance of a mirror site at that name, does not negate Respondent�s legitimate interest in the . A domain name registrant could use an alternative domain name to sell its goods or services for any number of legitimate business reasons. That such an alternative domain name has been registered and used by Respondent does not affect Respondent�s legitimate interest in the disputed name.
Respondent has shown a legitimate interest in the name and Complainant has failed to present sufficient evidence to demonstrate Respondent�s lack of legitimate interest. This Panel therefore finds that Complainant has not met its burden of proving that Respondent does not have a legitimate interest in the domain name.
Identical or Confusingly Similar to Trademark
Given the Panel�s conclusion that Complainant has not met its burden in relation to showing the existence of bad faith and an absence of legitimate interests under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, it is not necessary for the Panel to determine whether the domain name is confusingly similar to a trademark in which the Complainant has rights.
6. Decision
This Panel decides that Complainant has not shown that the Respondent has no legitimate interests in the domain name. Additionally, Complainant has not shown that the domain name was registered and used in bad faith. Accordingly, this Panel requires that the registration of the domain name remain with the Respondent.
Roderick M. Thompson
Sole Panelist
Dated: December 18, 2001
Full & Egal Universal Law Academy