WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Echo Design Group, Inc. v. Echo Home & Garden
Case No. D 2002-0016
1. The Parties
The Complainant in this administrative proceeding is Echo Design Group, Inc. whose principal place of business is located at 10 East 40th Street, New York, New York 10016-0296, U.S.A. The Respondent in this case is Echo Home & Garden whose principal place of business is 3775 24th Street, San Francisco, California 94114, U.S.A. Susan Overton is the President of Respondent.
2. The Domain Name and Registrar
The domain name at issue is which is registered with Network Solutions Inc., in Herndon, Virginia, U.S.A.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") by e-mail on January 9, 2002, and in hardcopy on January 18, 2002. The WIPO Center determined that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). Respondent requested, and was granted, an extension of time to submit its Response and thereafter submitted its response on February 17, 2002.
4. Factual Background
Complainant has provided evidence that it is the owner of numerous U.S. and foreign trademark registrations for the term ECHO as well as additional trademark registrations for terms such as ECHO BELTS, ECHO KNITS, and ECHO SOFT. Complainant is a designer and manufacturer of home furnishings such as textile fabrics, bedding, linen, along with fashion accessories. Complainant does not sell its products directly, but markets its products through retailers.
Respondent appears to have registered the domain name in May 1997 and, until 1998, Respondent operated a business by the name of Echo Home Furnishings. According to its annual California filings, Respondent�s business is a retail home, garden, and furniture store. Respondent submitted evidence from 1993 showing use of the Echo Home Furnishings name in connection with its payments of San Francisco taxes, its California sellers permit, and its sales and use tax returns. Further, Respondent provided a copy of a Certificate of Amendment to its Articles of Incorporation filed January 1997, whereby the name of its corporation was changed from Clifford Stanton Williamson, Inc.,[1] to Echo Home Furnishings, Inc. Respondent appears to also have been known by the name Echo Home & Garden. Since both names incorporate the terms used in the domain name, this Panel does not attempt to distinguish between the use of Echo Home Furnishings and Echo Home & Garden.
In 1998, Respondent changed the name of its business from Echo Home Furnishings as a result of correspondence received from Complainant alleging that Respondent's use of the name "Echo" for its retail store, catalog, and website infringed Complainant�s trademark. Respondent continues to operate the retail business under a new name, which is apparently either E-Home or Essential Home, but no longer operates a website. In May 2001, Respondent renewed the registration of the domain name.
5. Parties� Contentions
A. Complainant
Complainant asserts that Respondent�s domain name is confusingly similar to Complainant�s ECHO trademark. Although the domain name includes the term "home", Complainant claims that the addition of such a common descriptive term following its trademark does not prevent the domain name from being confusingly similar to Complainant�s mark.
Complainant asserts that it became aware of Respondent�s operation of a retail store under the name Echo Home & Garden in April 1998. At that time Complainant sent a letter to Respondent demanding that Respondent immediately cease and desist from the sale of goods with the ECHO Trademark. Respondent's reply denied any infringement, stated that Respondent sold no products with the ECHO name, and indicated that, in order to avoid any dispute, Respondent was in the process of changing the name of its web page and catalog. In May 1998, Complainant requested confirmation that Respondent was no longer operating a store under the name Echo Home Furnishings and also requested confirmation that Respondent had changed the name of its web page. Respondent confirmed that the company was no longer using the domain name, was no longer mailing a catalog under the name Echo, and would change the name of the storefront. Complainant asserts that this correspondence constitutes a settlement agreement by which Respondent agreed to cease all use of the domain name.
Complainant asserts that Respondent has no legitimate interest in the domain name. Complainant states that Respondent has never been authorized to use Complainant�s ECHO trademark. Further, Complainant asserts that Respondent agreed in the 1998 correspondence to make no further use of the ECHO trademark. Complainant claims that Respondent�s renewal of the domain name violated that agreement.
Complainant claims that there is evidence of bad faith because Respondent is not using the domain name and "has solicited an �offer� for transfer while maintaining a charade of planned but unspecified business use, all in violation of its past settlement with Complainant." Complainant further claims that Respondent�s renewal of the domain name registration after being apprised of Complainant�s rights constitutes bad faith.
Additionally, Complainant claims that because Respondent has no legitimate interest in the domain name it can be inferred that Respondent registered the domain name for the purpose of offering it for sale. Complainant also asserts that Respondent registered the domain name in order to disrupt the business of a competitor. Finally, Complainant asserts that Respondent intentionally acted to Complainant�s detriment when Respondent renewed the domain name in violation of the settlement agreement between the parties.
B. Respondent
Respondent argues that the words "echo home" and the domain name are quite different from the term "echo" and therefore not confusingly similar to Complainant�s ECHO trademark.
Respondent does not address the 1998 correspondence, and instead indicates that Complainant initiated harassing communications with Respondent around June 2001. As a result, Respondent claims that the company discontinued some activities in order to avoid further harassment from Complainant. As part of this process, Respondent indicates that the name of the business was changed.[2]
Respondent does not dispute "the fact that Respondent has renewed the domain name registration and has parked the domain name," but asserts that it is irrelevant.
As noted above, in a letter dated May 12, 1998, prior counsel for Respondent represented that in order to avoid litigation, Respondent would change the name of its web page and catalog. Further, in a letter dated July 11, 1998, Respondent (Ms. Overton) confirmed that the company was not using the domain name for its website. In a letter dated August 31, 1998, Respondent further represented that the company no longer had a website, and that if the company chose to set up a website in the future that it would use as a domain name.
Respondent claims that Complainant has failed to provide any proof that Respondent lacks a legitimate interest in the domain name. Respondent further asserts that it does have legitimate rights in the domain name since it was using the domain name in connection with a bona fide offering of goods and services prior to notification of the dispute. Further Respondent indicates that it has been commonly known by the domain name since 1993. Respondent claims that the company provided vintage and vintage inspired items thus generating the idea for using the term Echo in connection with the business.
Finally, Respondent claims that Susan Overton, the President of Respondent, is planning and preparing to use the domain name in ways that will not infringe on any trademark rights of Complainant. As evidence of this assertion Respondent has provided proof of Susan Overton's enrollment in interior design and architectural consulting classes. Respondent does not specify the use that will be made of the domain name, but merely claims that the website using the domain name will include an express disclaimer and a link to Complainant�s website.
Respondent disputes Complainant�s assertion that the domain name was registered and is being used in bad faith. Respondent claims that Complainant has offered no evidence that Respondent acquired the domain name primarily for the purpose of offering it for sale. Respondent asserts that Respondent began using the name Echo Home Furnishings in 1993 and was using the domain name in connection with the business until Respondent discontinued use of the domain name after continued solicitations by Complainant. Respondent claims that it only considered selling the domain name after being contacted by the Complainant.
Respondent claims that there is no proof that it registered the domain name with the intent of disrupting the business of a competitor. Further Respondent claims that the temporary nonuse of the domain name does not constitute evidence of bad faith, particularly where there was use of the domain name at one time. Respondent asserts that it did not register the domain name for the purpose of selling the name, to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, for the purpose of disrupting the business of Complainant or any competitor, to create any likelihood of confusion as to source, or to misleadingly divert consumers.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules sets out the principles this 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; and,
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
B. Application of Paragraph 4(a) to the Facts
I. Identical or Confusingly Similar to Trademark
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has U.S. and foreign trademark rights to the mark ECHO for home goods such as draperies, curtains, sheets, pillow cases, bedspreads, lamp shades, and rugs, as well as other items such as scarves, jewelry, paper products, leather goods, and bags. Complainant also provided evidence of several other trademarks incorporating the term ECHO such as ECHO ORIGINATIONS, ECHO BELTS, and ECHO SOFT. Complainant has not asserted any trademark rights in the term "Echo Home."
The domain name incorporates Complainant�s mark ECHO in its entirety, but adds a generic term "home" to the mark. The addition of the generic term "home" does not eliminate confusion with Complainant�s mark. The term merely describes many of the goods covered by Complainant�s mark�home products such as draperies and bedspreads.
On these facts, where the disputed domain name incorporates the ECHO mark in its entirety and the addition of the generic term does not help differentiate or eliminate confusion, this Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights.
II. Respondent�s Rights and Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant�s rights or legitimate interests in the name. One such circumstance is showing that Respondent is commonly known by the domain name. In this case, Respondent registered the domain name that corresponded to a trade name it had used since 1993 and was using at the time the domain name was registered.
Respondent may also demonstrate a legitimate interest in the domain name by demonstrating use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The evidence indicates that Respondent offered home goods for sale at its website prior to notice of any dispute. A simple offering of any goods or services does not necessarily constitute a bona fide offering of goods or services. This is particularly true if it appears that a domain name registrant is acting in bad faith and is merely attempting to circumvent the Policy. That does not appear to be the case in this situation. At the time of the registration, Respondent owned and operated a retail store that sold home products, had been using the trade name related to the domain name in connection with the store since 1993, and was selling home goods at the website corresponding to the domain name. This Panel finds, therefore, that Respondent had a legitimate interest in the domain name at the time it was registered.
The complexity arises in this case because in 1998, the Respondent, in response to Complainant's demands, ceased using the trade name and ceased using the domain name in connection with a bona fide offering of goods or services. Complainant asserts, therefore, that Respondent has no existing legitimate interest in the domain name because Respondent agreed to make no further use of the ECHO trademark.
Because this Panel determines (below) that the Complainant has not shown that Respondent registered and used the domain name in bad faith, this Panel does not address the issue of whether or not Respondent continued to have a legitimate interest in the domain name after the 1998 correspondence.
III. Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain name has been registered and used in bad faith. In this case, the Panel finds that Complainant has not provided sufficient evidence that the domain name was registered in bad faith at the time of registration. As noted, at the time of registration Respondent registered a domain name that corresponded to a trade name Respondent had been using for four years. Further, Respondent was using the domain name to sell goods related to its retail store which was also known by the corresponding trade name.
Complainant claims that because Respondent�s President had worked at Macy's, Respondent must have known of Complainant's trademark prior to her registration of the domain name. Complainant does not indicate, however, that Respondent worked in a department where Complainant's goods were sold or provide any other evidence that Respondent was aware of Complainant�s mark. Respondent�s President asserted in her July 11, 1998 correspondence that she had never heard of Complainant or its mark prior to Complainant's initial 1998 letter. This Panel notes, however, that Respondent�s President did not repeat this assertion in her affidavit submitted with the response. Nevertheless, the other evidence of legitimate interest at the time of registration outweighs the mere assertion by Complainant that Respondent�s President might have known of Complainant's marks. Accordingly, this Panel finds that Complainant has not offered sufficient evidence that Respondent registered the domain name in bad faith.
Complainant alleges that Respondent acted in bad faith by renewing its registration of the domain name. Under the Policy, however, the Complainant must provide evidence that the domain name "has been registered and is being used in bad faith" in order to justify a transfer of the name. Although the examples of bad faith set forth in the Policy have led to the interpretation that actual use may not always be required to satisfy the Policy (but instead that mere nonuse or an intent to sell could satisfy the use requirement) there is no similar justification for straying from the plain wording of the policy and allowing bad faith renewal to satisfy the bad faith registration requirement. Some of the examples of bad faith registration and use indicate that bad faith at the time of acquisition by another of the name might satisfy this element, but alleged bad faith renewal by the same registrant of a name that was not initially registered in bad faith does not appear to meet the requirements of the Policy.
This Panel has limited jurisdiction dedicated to deciding domain name disputes under the narrow criterion specified in the Policy. It is not the role of this Panel to express any opinion on the merits of a trademark infringement. Nothing in this decision precludes either party from pursuing its rights in the appropriate court of law.
7. Decision
This Panel finds that Complainant has not shown that the domain name was registered in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain name remain with Respondent.
Rod Thompson
Sole Panelist
Dated: April 19, 2002
1. Susan Overton, the President of Respondent, was formerly known as Susan Williamson.
2. As noted, Respondent does not refer to the 1998 correspondence, and instead seems to indicate that the name change and discontinued activities occurred after communications from Complainant in 2001. Respondent does not claim, however, that the 1998 correspondence did not occur or that the Exhibits provided by Complainant are inaccurate in any way. Based on copies of the correspondence attached as Exhibits to the Complaint, it is clear that most of the correspondence occurred in 1998. Respondent had access to the Exhibits prior to formulating its response and therefore could not have expected that this Panel would not be aware of the 1998 correspondence. Therefore it is assumed Respondent's use of the domain name ceased in 1998, not 2001, and that the statements made by Respondent in the 1998 correspondence are not disputed.
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