WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Streetwise Maps, Inc. v. G Allison Case No. D2010-0829 1. The Parties
The Complainant is Streetwise Maps, Inc. of Sarasota, Florida, United States of America, represented by Sheppard, Mullin, Richter & Hampton LLP, United States of America.
The Respondent is G Allison of Wokingham, Berkshire, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2010. On May 21, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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”). On May 21, 2010, the Complainant submitted by email to the Center two corrected pages to the Complaint.
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 May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. The Response was filed with the Center on June 15, 2010.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 22, 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
The Complainant was founded in 1984. It provides map products, and related products and services, for cities and countries around the world, with over 100 map titles, under the trademark STREETWISE. The Complainant has trademark registrations for STREETWISE in the United States of America, and in a number of other jurisdictions including the United Kingdom of Great Britain and Northern Ireland and the European Community, the earliest of which dates from 1985. The Complainant operates a website using the domain name , where it offers its map products and related goods and services. The Complainant owns multiple other domain name registrations incorporating its STREETWISE trademark, all of which resolve to the Complainant's website at the domain name .
The Respondent is the Managing Director and owner of a company called Streetwise Maps Limited, which was incorporated in England in 2007. From January 2004 until incorporation of Streetwise Maps Limited, the Respondent operated Streetwise Online Solutions Limited, using the domain name . Streetwise Maps Limited is, and Streetwise Online Solutions Limited was, in the business of selling digital Ordnance Survey maps. Ordnance Survey is Great Britain's government-owned national mapping agency.
The Respondent registered the disputed domain name on February 2, 2007. He uses it as the address for a website at which Streetwise Maps Limited sells its digital maps. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is virtually identical to, and thus is confusingly similar to, its STREETWISE trademark. The disputed domain name combines the STREETWISE trademark with the generic word “maps”, a term which is descriptive of the Complainant's business. Actual customer confusion has occurred with the Complainant being contacted by vendors and customers of the Respondent seeking to contact the Respondent.
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed the STREETWISE trademark to the Respondent, and the Respondent has not filed any applications for trademark registration of STREETWISE. While the Respondent has established a website offering map products, this is not a bona fide offering. The Respondent would have been aware of the Complainant's reputation and goodwill in the STREETWISE trademark, and adopted that mark for its own use and without the Complainant's authority, to attract Internet users to its business on the strength of the Complainant's trademark and reputation. The Respondent has not been commonly known by the disputed domain name and thus does not have any rights or legitimate interests in it on that basis. The Respondent's use of the disputed domain name is to draw customers away from the Complainant, which is not a legitimate non-commercial or fair use.
The Complainant contends the disputed domain name was registered and is being used in bad faith. The Respondent acquired and is using the disputed domain name to provide, for revenue, map products targeting the consumers and users of the same class as the customers and users of the Complainant's products. The Respondent is using the disputed domain name to “free ride” on the Complainant's reputation and goodwill. On March 16, 2009, the Complainant contacted the Respondent requesting him to immediately cease using the disputed domain name; however, the Respondent did not respond. The Complainant has been using the STREETWISE trademark for over 20 years before the Respondent's registration of the disputed domain name, and is one of the most well-known map product providers in the world. The Respondent must have been aware of the Complainant and its trademark at the time it registered the disputed domain name. B. Respondent
The Respondent contends he is well known as an online-only seller of Ordnance Survey planning maps to the British market and has over 20,000 repeat customers. These customers are predominantly involved in the design and building of housing rather than searching for travel maps of the type sold by the Complainant. The “Streetwise” name and logo were being utilized by the Respondent three years prior to the registration of the disputed domain name. The fonts, colors and styles of the Respondent's logo are totally different to the Complainant's, as is the website to which the disputed domain name resolves, such that customers would instantly recognize the difference.
The Respondent contends he is addressing a totally different market to the Complainant. The Respondent sells planning maps aimed at businesses and individuals making planning applications, whilst the Complainant sells travel maps predominantly aimed at tourists. The Respondent's planning maps are different in terms of scale and content and are predominantly in a digital format, whereas the Complainant's are sold as hard copies. The Respondent sells planning maps covering the whole of the United Kingdom of Great Britain and Northern Ireland, its customers are based in the United Kingdom of Great Britain and Northern Ireland, and it sells its products in British pounds, unlike the Complainant who sells its products throughout the world in American dollars. The Respondent contends he has acquired rights in the “Streetwise” mark by (i) his use of the mark to identify his services and products, (ii) his investment in marketing the services under the “Streetwise” name, and (iii) the customer's use and association of the mark to services provided by him.
The Respondent contends he has not registered and used the disputed domain name in bad faith because (i) the Complainant and Respondent are not competitors, (ii) there is no evidence of customer confusion, and the Respondent would not benefit if there were, (iii) the Respondent has registered and utilized the disputed domain name solely to promote his own business, (iv) the “Streetwise” name and logo were being utilized three years prior to the registration of the disputed domain name, and (v) the Respondent has never sought to sell the disputed domain name to the Complainant or anyone else. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant's trademark STREETWISE, and adds “-maps”. The addition of a hyphen and the descriptive word “maps” does not lessen the inevitable confusion of the domain name with the Complainant's trademark, particularly as the Complainant's business is selling maps. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent's evidence demonstrates that, prior to any notice of this dispute, he had used the domain name in connection with an offering of goods or services – namely, the digital Ordnance Survey planning maps provided by his company Streetwise Maps Limited. Pursuant to paragraph 4(c)(i) of the Policy, the Respondent will have demonstrated a legitimate right or interest in the disputed domain name if this offering was bona fide.
The Complainant has been selling maps and map products under the trademark STREETWISE for more than 20 years prior to the Respondent's registration of the disputed domain name. The Complainant contends that the length and volume of its use of the STREETWISE trademark means that the Respondent knew or should have known of the Complainant's trademark when the Respondent registered the disputed domain name. The Respondent denies this contention, and asserts that the Complainant provided “little if any evidence … of how well known they are, particularly in the UK”. The Respondent's assertion is on the present record sound; the Complaint is notable for its lack of direct evidence of notoriety of the STREETWISE trademark in Britain. Nevertheless, this Panel is of the view that it is possible (although not certain) that the Respondent was aware of the Complainant's trademark at the time of registration of the disputed domain name.
However, this conclusion does not resolve the issue of the bona fides of the Respondent's offering of digital maps under the disputed domain name. In this Panel's view, an offering of goods or services under a domain name will be bona fide, even though the domain name is confusingly similar to the complainant's trademark, if the respondent has a justification for using that domain name and the respondent is not seeking to take advantage of the complainant's trademark by use of that domain name.
In this case, it is significant that the Complainant's trademark STREETWISE has a degree of descriptiveness with respect to maps and mapping, because of its allusion to information (‘wise') about routes of travel (‘street'). Given this descriptiveness, the Respondent has a plausible justification for using the disputed domain name for his mapping products business.
The question that then arises is whether, in using the disputed domain name, the Respondent is seeking to take advantage of the Complainant's STREETWISE trademark. Although the answer to this question is not without doubt, this Panel has concluded that, on the balance of probabilities, the Respondent is not seeking to take advantage of the Complainant's trademark. Although the Complainant and the Respondent are in the same general line of business (selling maps), they are focused on quite different market segments – the Complainant on hardcopy travel maps, and the Respondent on digital Ordnance Survey planning maps. There is unlikely to be much – if, indeed, there is any – overlap in customers for the products of the respective businesses. Thus, on the current record before it, this Panel concludes that the Respondent is not seeking to take advantage of the Complainant's STREETWISE trademark in providing its products under the disputed domain name. Given this conclusion and the conclusion that the Respondent has a plausible justification for using the disputed domain name in relation to its products, this Panel is of the view that the Respondent's offering of goods or services under the disputed domain name prior to notice of this dispute was bona fide.
Accordingly, this Panel finds that, pursuant to paragraph 4(c)(i) of the Policy, the Respondent has a legitimate right or interest in the disputed domain name. C. Registered and Used in Bad Faith
Because of this Panel's finding on the issue of the Respondent's right or legitimate interest in the disputed domain name, discussed above, 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.
Andrew F. Christie
Sole Panelist
Dated: July 6, 2010
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