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Ecostyle BV v. IQ Management Corporation [2001] GENDND 1011 (23 May 2001)

The Complainant is Ecostyle BV, a company incorporated under the laws of the Netherlands, having its principal place of business at Postbus 14, 8426 ZM, Appelscha, the Netherlands.

The Respondent is IQ Management Corporation, a company incorporated under the laws of Belize, having its principal place of business at Marage Plaza, Marage Road, PO Box 1879, Belize City, Belize.

The domain name at issue is <ecostyle.com>, which is registered with TUCOWS.com, Inc, 96 Mowat Avenue, Toronto, Ontario, M6K 3 M1, Canada ("the Registrar").

A Complaint was submitted in hardcopy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 15, 2001, and electronically on April 10, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated March 26, 2001.

On March 26, 2001, a Request for Registrar Verification was transmitted to the Registrar.

On April 4, 2001, the Registrar confirmed that it was in receipt of the Complaint sent to the Registrar by the Complainant, the domain name at issue, was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Hold".

The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The Policy was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.

The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on April 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of April 30, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier, facsimile and e-mail to the addresses indicated in the Complaint.

On April 29, 2001, the Respondent submitted its response to the WIPO Center.

On May 11, 2001, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.

The Complainant is a company engaged in the business of selling biological gardening products, such as herbicides.

The Respondent is an Internet branding and marketing specialist, responsible for clients web sites.

[The Complainant] owned <ecostyle.com> since November 17, 1997. As a result of a mistake or a failure of communication, the name registration at Network Solutions, Inc. was cancelled. Before notification of this cancellation, the domain name was registered by a company named Tucows, located in Toronto, Ontario. This company offered it for sale and Respondent bought the name. At the moment there is no web site linked to the domain name.

In accordance to paragraph 4(a) of the Policy, the complaint alleges (i) Domain Name identical to a trademark in which Ecostyle BV had rights, (ii) Respondent has no rights or legitimate interests in respect of the Domain Name and (iii) the Domain Name is being registered and is being used in bad faith.

As the evidence shows (annex 3 to the Complaint), the mother company of Ecostyle BV (A.J. Zwart Beheer B.V. at the same address at Appelscha) has a registered trademark in the Benelux (Belgium, The Netherlands and Luxembourg). By registering and using the domain name Tucows is infringing this trademark and tradename rights. The name Ecostyle refers to an ecological way of gardening. Hence, it is a name which is easy to remember for potential customers of the company. Trying to attract customers in the rest of the Benelux or the European Union, a ".com" domain has proven to be successful over the past couple of years. Respondent’s registration prevents Ecostyle BV from maintaining its own web site under the top-level domain ".com".

Just like the panel decision in the case Vertical Computer Systems, Inc. v. Registrant of "pointmail.com" (Case No. D2001-0006), in which Tucows was the Respondent, the Panel was satisfied that Tucows had no rights or legitimate interests in respect of the Domain Name, since its only use for the Domain name was offering it for sale. Considering the great similarities of that case in this respect with the present dispute, it seems as the second requirement is satisfied.

Paragraph 4(b) of the Policy lists several circumstances which shall be evidence of the registration and use of a domain name in bad faith. Tucows has registered the domain name primarily for selling, renting or otherwise transferring the name to Ecostyle BV or one of its competitors or to the highest bidder.

Finally the Complainant has requested the Panel to transfer the domain name "ecostyle.com" from the Respondent to the Complainant.

Complainant claims that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complaints only evidence of any such mark is a photocopy of a fax that is not in the English language. Respondent has no idea if this evidence is, in fact, a trademark certificate. Given the top shows a stylised logo, it may actually only be for a stylised logo rather than for a word. Respondent also has no idea what class of goods and services their alleged mark covers. As the evidence submitted is not in the language of the Registration Agreement and thus contravenes 11(a) of the ICANN UDRP Rules, Respondent respectfully requests that the panel disallow Complainant's annex 3a and 3b as evidence of a trademark.

In paragraph 12 of the Complaint, Complainant alleges that Tucows registered the domain name, and then offered it for sale to the Respondent. This is false. Tucows is an accredited ICANN Registrar, and is entitled to offer to be registration agent for whoever wishes to register the name. The UDRP is intended to remedy clear trademark infringement cases. It is not intended as a way for a Complainant to remedy an internal administration error, by falsely accusing the new registrant of TM infringement. The rights to the use of a domain name only exist as long as the annual lease fee is paid to the Registrar. This is made perfectly clear in the Registration Agreement, and the Complainant agreed to such non-perpetual terms when they first registered the name. Citing the appropriate NSI Registration Agreement at http://nsi.com/en_US/legal/service-agreement.jhtml paragraph 4: "Unless otherwise specified, each Network Solutions' service is for a two-year initial term and renewable in perpetuity thereafter for successive one to ten-year terms, as specified during the renewal process. Any renewal of your services with us is subject to our then current terms and conditions and payment of all applicable service fees at the time of renewal ".

Although NSI actively attempted to get its registrant to renew, by sending a number of reminder e-mails and letters, the Complainant clearly lost itsrights to the domain name when they failed to pay the annual lease renewal fee for the name. A domain name is a location on the Internet. It is similar to a piece of real estate. If the owner of a jewellery store on Oxford Street fails to pay their rent, and after ignoring all legal reminders, is evicted from their premises, they can't go back later and take over the space after another leasee has moved in, under the argument that they used to be there. Complainant does not specify whether the alleged "mistake or failure of communication" was the fault of the Complainant or its Registrar, NSI. Whichever, a UDRP action against an innocent registrant of a legally recycled domain name is not the correct remedy to the matter.

Complainant alleges that by registering and using the domain name <ecostyle.com>, Respondent is infringing on Complainants trademark and tradename rights. Respondent denies any such infringement. The mere registration and use of a domain name does not automatically infer infringement. Complainant seems to allege that Ecostyle refers to an ecological way of gardening. Respondent is not in the business of gardening, either ecological or not, and cannot be found to be infringing Complainants rights. According to the USPTO, the mark "ecostyle" is registered in the USA for the categories "Textile rugs, carpets, and textile floor mats for use in the home" and "clothing, namely, pants, shirts and blouses, suits, jackets, coats, shorts, vests, dresses, sweaters, leggings, socks, shoes, boots, belts, camisoles, pajamas and nightgowns, bathrobes, underwear, bras, and hats.". Respondent does not do business in these areas either, so is not infringing on those TM holder's rights, or the rights of the Complainant.

Complainant has failed to provide any evidence to suggest that the Respondent has no rights in the domain name. It has failed so badly that it has resorted to name the ICANN accredited registrar Tucows as the entity not having any rights or legitimate interests in respect of the domain name. This allegation contravenes ICANN UDRP Rule 3 (b) (xiv) by naming the Registrar as a party to the proceedings and negates Complainants statement in paragraph 20 of their complaint waiving claims against the Registrar. Respondent respectfully requests that if the Panel does not refuse the Complaint on these grounds, that it ignores Paragraph 12 (ii) of the Complaint.

Complainant incorrectly cites the case D2001-0006 as a case where Tucows was the respondent. Although Respondent feels the decision in this case should match the decision in that one, we fail to see many similarities between the cases, apart from:

a. the Complainant was a previous registrant of the domain name, which the panel, quite rightly, refused to have any bearing in the case, and;

b. the Panel was not persuaded that the Domain Name was registered and is being used in bad faith. The evidence was consistent with the possibility that the Respondent registered the Domain Name when it became available because of its value as a descriptive name.

Again in paragraph 12 (iii) of the Complaint, the Complainant attempts to make a claim against the Registrar of the name, probably because they could not actually find any evidence of bad faith against the Registrant. Respondent would like to draw the panels attention to an email sent to Respondent shortly after it registered the domain name. This email appears as exhibit One in the Appendices to this Response. This was the second email we had received from this person. We had deleted the first one without responding to it. The text of the email received confirmed that we did not respond to a prior request to sell the name. Respondent highlights the fact that the sender of the email appears to have constructed a very weak and unusual reason for wanting the name - "because we are all vegetarions and we all study Economy the name 'ecostyle.com' seemed very suitable" and the email originated from the Nederlands, suggesting that it may well have been the Complainant, or one of its representatives, trying to illicitly gather evidence to be used in this proceeding. Obviously, if it was indeed them, they failed miserably in their quest. Lord knows it would be very silly for a competitor of the Complainant to acquire this name, and I expect the Panel will agree.

The Respondent is an Internet Branding and Marketing Specialist, responsible for clients web sites receiving millions of visitors every month. One of our services we extend to clients is the identification of suitable brand names for their products and services, and the acquisitions of domain names to reflect such. One of our clients is in the business of vegetable oil production and we were given the task of securing a brand name and suitable domain names for a new hempseed oil product they are intending to launch. On January 17, 2001, we succeeded in registering the generic domain <hempseedoil.com>, and to the further delight of our client, registered the brandable domain ecostyle.com on February 14, after it had been "on-hold" for non-payment for well over a month and thus deleted and available for registration by all-comers. Such an occurrence is common. Literarily thousands of names are deleted by NSI every day for non-payment.

Our client is very upset that their plans to launch the product have had to be put on hold due to the actions of a former registrant of the domain name, who no longer has any rights to it. Website construction has been contracted out (we believe a preliminary website is about to be completed), logos designed, and other actions necessary to launch a new brand. Our client has asked to not be named in this Response, for competitive reasons, and we respect our client's wishes. We are named as registrant as we hold the name in trust for our client, as it is often necessary for those same competitive reasons to do so. We are, understandably, quite upset too, with the prospect of our hard work identifying and acquiring a suitable brandable product name and domain threatened, returning both us and our client to square one, at considerable expense and with zero compensation offered. If this is the way the system works, then the system needs changing urgently. The name was not registered in "bad faith", is not being used in "bad faith" and was not registered "primarily for selling, renting or otherwise transferring the name to Ecostyle BV or one of its competitors, or to the highest bidder". Neither the Respondent or its client are in the gardening business, or operating in the Benelux region, and neither have any wish to have the intended product confused with biological herbicide, as spaying hempseed oil onto weeds is unlikely to have the desired effect.

According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the 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:

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

2) that the Respondent has no legitimate interests in respects of the domain name; and

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

The domain name <ecostyle.com> is identical with the trademark "ecostyle" except for the addition of the suffix ".com". The Complainant has alleged that it is its mother company, A.J. Zwart Beheer B.V., that owns the trademark "ecostyle". The Complainant has not proved that it has any rights to use and exploit the trademark "ecostyle". Nor has Complainant proved that its parent company is the owner of the trademark and has given its permission to Complainant to exercise its trademark rights. With respect to these facts the Panelist is of the opinion that it is doubtful if the Complainant has demonstrated any rights to the trademark "ecostyle". However, due to the judgment regarding Paragraph 4 (a) (iii) below the Panelist sees no reason to base his decision on the aforesaid circumstance.

Paragraph 4 (a) (ii) of the Policy provides that the Respondent shall have no rights or legitimate interests in respect of the domain name.

The Complainant has asserted that the Respondent has no rights or legitimate interest in the domain name.

The Respondent has stated that the domain name was registered on behalf of a client and that the Respondent is named as registrant as it holds the name in trust for a client. The Panelist is of the opinion that these circumstances do not constitute rights or legitimate interests in the domain name.

The prerequisite in the Policy, Paragraph 4 (a) (ii) is fulfilled.

Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.

The Complainant has alleged that a company named Tucows registered the domain name at issue primarily for selling, renting or otherwise transferring the name to Complainant or one of its competitors or to the highest bidder. The Complainant has, however, not established that the Respondent has acted in bad faith according to any of the situations enumerated in the Paragraph 4 (b) of the Policy. Consequently, the Panelist concludes that Complainant has not proved that the domain name at issue has been registered and is being used in bad faith.

In view of the above, Complainant’s request that the domain name <ecostyle.com> be transferred from Respondent to Complainant is denied.

Jonas Gulliksson
Sole Panelist

Dated: May 23, 2001