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Fleetstar Information Systems Ltd. v. Stephen Morris [2001] GENDND 985 (18 May 2001)

1.1 The Complainant is Fleetstar Information Systems Ltd. of Cranfield, United Kingdom.

1.2 The Respondent is Stephen Morris of Woodstock, Maryland, United States of America.

2.1 The Domain Name is <fleetstar.com>.

2.2 The registrar with which the domain name is registered is: Network Solutions Inc., ("NSI"), 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.

3.1 Complaint filed on April 9, 2001, naming Stephen Morris as Respondent.

3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.

3.3 In accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts where the Respondent’s is located, as shown by the address given for the domain name holder in the concerned registrar’s Whois database at the time of the submission of the Complaint to the WIPO Center.

3.4 No legal proceedings have been initiated, as yet (Rules, paragraph 3(b)(xi)).

3.5 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500 has been sent with the initial Complaint on April 5, 2001.

3.6 The Complainant agreed that its claim and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.

3.7 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on April 9, 2001, by email and mail address as specified above pursuant to the Rules, paragraph 2(b).

3.8 A copy of this Complaint, has been sent or transmitted to the concerned registrar on April 9, 2001.

3.9 On April 11, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center (Center) by postal service informing the Respondent that an administrative proceeding had been commenced by Complainant in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Center set May 1, 2001 as the date for the submission of a Response by Respondent.

3.10 The single panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence on May 8, 2001, and was duly appointed in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by May 24, 2001.

4.1 The Complainant, Fleetstar Information Systems Ltd. is a corporation located in the United Kingdom, and is a member of the Trafficmaster plc Group ("Trafficmaster"). Trafficmaster applied to register the trademark "Fleetstar" in the United Kingdom on November 12, 1999. The Complaint, while it says that this registration was granted, does not say when this occurred. Subsequently an application for a European Community Trade Mark was made on May 9, 2000, at which time the applicant claimed United Kingdom priority effective November 12, 1999. Specification for the goods and services covered by these applications were as follows:

Class 09: Electrical and electronic apparatus and instruments for providing visually and/or aurally information about individual vehicles, the locations, routes and speeds of individual vehicles, electrical and electronic apparatus and instruments locatable in vehicle interiors for providing information visually/ and/or aurally and for monitoring individual vehicles, equipment and control centres for monitoring and communicating with individual vehicles.

Class 39: Provision of information about monitoring individual vehicles, provision of information about the locations, routes and speeds of individual vehicles, monitoring and communicating with individual vehicles, monitoring of locations, routes and speeds of individual vehicles.

That registration was granted, although the Complaint, again, does not say when.

4.2 On January 31, 1995, application was made to register the aforesaid trade name in the United States by an unknown party. This registration was transferred to Trafficmaster, on December 28, 2000. The description of the services for this registration is for:

"computer software and manuals sold therewith in the field of managing vehicle and driver records for use by companies operating commercial motor vehicles"

4.3 On March 6, 2000, the Respondent registered the domain name <fleetstar.com>.

4.4 The Complainant, on May 19, 2000, registered Fleetstar domains under .net, .co.uk, and .nl.

4.5 The Complainant’s web sites as aforesaid, describe Fleetstar as a dynamic fleet management information system which provides the ability to view both historic and real-time vehicle activity in addition to a range of key performance indicators on driver and fleet activity (www.fleetstar.co.uk entered May 10, 2001) (Footnote 1)

4.6 The Respondent has been involved in the fleet management industry for seven years and is responsible for the development, support and release of several web-based fleet management applications with his present employer.

5.1 Complainant contends that the domain name <fleetstar.com> is virtually identical to its registered trademarks and domain names as set out above in paras. 4.1, 4.2 and 4.3 and that the Respondent’s use of the domain name in question infringes on Complainant’s rights by confusing the public as to the origins of the <fleetstar.com> web site.

5.2 Complainant contends that Respondent has no rights or legitimate interest in the domain name <fleetstar.com> pursuant to the Policy, para. 4(a)(ii).

5.3 Complainant contends that Respondent registered and used the domain name <fleetstar.com> in bad faith in violation of the Policy, para. 4(a)(iii).

5.4 Respondent does not contest the fact that its domain name is identical with the trademark Fleetstar, and the second-level names which are the property of the Complainant. However, he argues against it being confusingly similar. In this regard he alleges that the name in question is one which is descriptive generally.

5.5 The Respondent claims to have a demonstrable legitimate interest in the domain name.

5.6 The Respondent denies any bad faith in regard to his application for and his use of the domain name <fleetstar.com>. Finally, he says that he was totally unaware of the existence of the Complainant at the time he registered Fleetstar.com.

5.7 The Panel has not received any requests from Complainant or Respondent regarding further submissions, beyond the Complaint, waivers, or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

6.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and NSI, which incorporates, by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") by way of NSI’s domain name dispute policy in effect at the time of the dispute. The policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abuse of domain name registration (Policy, paragraph 4(a)).

6.2 Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abuse of domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(a)).

6.3 The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (See e.g. paragraph 2(a), Rules).

6.4 This Panel accepts that the Complainant is the holder of the registration of the trademarks and domain names referred to in paras. 4.1 through 4.4 above, although the dates of the European Community Trade Mark Application and the transfer of the United States registration to the parent company of the Complainant both occurred after the date on which the Respondent acquired registration of the domain <fleetstar.com>.

6.5 The term "fleetstar" is a conjunction of two generic words – although this does not necessarily make this juxtaposition a generic word. It has been said by other Panels that a Complainant must tolerate that other entities make use of such terms and therefore it is not confusing the relevant customers that the domain name and the trademark co-exist. See Welltech ApS v. Dave Gardner WIPO Case No. (D2000-1145). The name in question is an obvious conjunction of two common words, "fleet" and "star". Common words and descriptive terms are legitimately subject to registration as domain names on a "first-come, first-served" basis. See Zero International Holding GmbH & Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161; EAuto, L.L.C. v. E Auto Parts, WIPO Case No. D2000-0096; Asphalt Research Technology, Inc. v. National Press & Publishing, Inc. WIPO Case No. D2000-1005. This Panelist typed the word "fleetstar" into the Google search engine. This produced, along with the web sites of the Complainant and Respondent, sites promoting the sale of liquid natural gas, sand and gravel trucks, and Mercedes-Benz trucks.

6.6 In light of the findings made below, this Panel makes no determination in regard to this requirement.

6.7 The Respondent states that the domain name of <fleetstar.com> was chosen as an acronym for services which the Respondent will provide: Fleet Satellite Tracking And Response . Further, he says he does not intend to market the application or suite of tools using the name "Fleetstar", and that this name was chosen exclusively to serve as a Portal. Thus, it will serve as an entry point to a suite of applications designed to improve the delivery of relevant, real-time information. The applications provided, it is said, will leverage emerging technologies including wireless communication and vehicle telematics to effectively deliver information to business decision makers. In this regard, it would do well to note that the Respondent registered <Fleetstar.com> as a result of his background in the fleet-management industry for seven years and is either employed by or partnered with a person who used the Internet to provide relevant, real-time data to business decision-makers. Respondent also states that he is responsible for the development, support and release of several web-based fleet management applications and has extensive experience and exposure in the fleet industry.

6.8 There is no need for evidence that the Respondent is commonly known by the domain name where there is evidence that, before the Respondent received notice of this dispute, he has used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in question in connection with a bona fide offering of goods or services. See 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. (D2000-0110); Sloan Capital Companies and Stuart M. Sloan v. Sloan E-Mail Services, WIPO Case No. D2001-0138.

6.9 The onus of proof in establishing absence of legitimate rights or interests and registration and use in bad faith is on the Complainant, although the burden of proof is a shifting one. See John Swire & Sons Ltd. v. David Huang WIPO Case No. (D2000-1106), Office Club, Ltd. v. John Adem WIPO Case No. (D2000-1480) -- primary burden is on the Complainant.

6.10 In respect of this issue before the Panel in this case, the finding is that the Complainant has not established a prima facie case.

6.11 The Complaint says that "[t]he respondent has requested payment of over £28000 U.K. Sterling for the transfer of this name, a sum clearly in excess of any out-of-pocket registration costs and is clearly promoting the sale of this domain via the current home page…"

6.12 What actually occurred here is revealed through three e-mails.

6.13 It is clear that the Respondent did not approach the Complainant and attempt to sell it the domain name in question. Instead, the Complainant had a representative of a web-design agency make a clandestine inquiry as to what would be required if one of his clients was interested in obtaining the <fleetstar.com> domain name. Within a matter of hours, the Respondent replied in a manner unlike what one would expect of a classic cyber-squatter. In essence, he explained how his domain name was conceived, the demonstrable preparations he was making for its use, and the fact that he had received several phone call inquiries from individuals "trying to contact Fleetstar, company". What follows is material because he says that most of these calls were following up on applications for credit cards and inquiries about fuel. A gas credit card-issuing company also holds a "fleetstar" trademark in the United States.(Footnote 2) The fuel likely refers to the liquid natural gas business referred to in para.6.5 above. This Panel takes from this that while there were people who were confused, none of them appeared to have been potential or actual customers of the Complainant. This confirms the common nature of the name in question. The Respondent then justifies some compensation for giving up the name, which is precisely what Mr. Dallamore sought on behalf of the, as yet, unknown inquirer. The last line of this e-mail is, perhaps, the most telling for it says "if you have any alternative suggestions I would welcome them…" This Panel takes this as an honest attempt to discuss possible win-win solutions to the problem which had arisen. The Respondent has said that this is the only domain name which he has ever registered and he was unaware of the existence of the Complainant when the domain name in question was registered. This Panel accepts these assertions as a fact.

6.14 The Complainant’s agent advises his principal of the exchange of communications, as above, and concludes as follows:

"At this stage there are a couple of options – make him an offer, or get lawyers involved. I’m trying to contact a lawyer we have used before who is expert in this area, I’ll let you know when I hear from him.

"For more guidance on domain disputes please see http://www.domainmagistrate.com/".

A lawyer was not used for this dispute, and the web-site in question contains substantial information, either directly or through links, relating to domain name disputes.

6.15 The Respondent’s response to the request from the Complainant, indicating that he would accept a substantial amount of money for the transfer of the domain name, is not necessarily evidence of bad faith where the Respondent does not initiate the negotiations in this regard. See Rogers Cable Inc. v. Arran Lal WIPO Case No. (D2001-0201). This Panel finds that under the circumstances set out above, this is not evidence of bad faith in this case.

6.16 The Respondent’s answer to the Complainant’s assertion that the Respondent is "clearly promoting the sale of this domain via the current homepage", is that the purpose of the current screen is to encourage potential partners, generate interest in the site and is used at every meeting with potential partners. It might be helpful in assessing this issue to reproduce this site.

Under Construction Interested in this URL for your Fleet Application? Your Web enabled fleet application could be accessed at www.fleetstar.com Stephen Morris 410-771-2046 http://www.fleetstar.com

6.18 Further, the Complainant says that it considers that the domain has been registered and used in bad faith as the Respondent apparently works for another fleet management organization and allegedly plans to use this name to establish a competitive vehicle telematics product despite the existence of known and established U.S./European trademarks for this name. Respondent denies this. See para. 5.6 above.

6.19 The Final Report of the WIPO Internet Domain Name Process of April 30, 1999, addressed the scope of the intended administrator procedure. In that Report it was noted that the preponderance of views in this regard was in favour of restricting the scope of the procedure, at least initially, in order to deal first with the most offensive forms of predatory practices and to establish the procedure on a sound footing. Thus, the procedure was to be limited in such a way as to confine its availability to "cases of deliberate, bad faith abusive registrations." WIPO Publication No. 92-805-0779-6, paras. 165-168. This being the case, the procedure must be understood as not being a method by which competing claimants may obtain a decision as to which is more entitled to the domain in question. Further, the burden of proof on all issues under the Policy is on the Complainant. The appropriate standard is the civil standard of a preponderance of the evidence. Under the preponderance of the evidence standard a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence. See American Online Inc. v. Anson Chan WIPO Case No. (D2001-0004).

6.20 This Panel accepts as fact that this is the only domain name ever registered by the Respondent and that he was not aware of the Complainant at the time of registering the domain <fleetstar.com>.

6.21 This Panel is not able to find that the Complainant has proven that the domain name has been registered and is being used in bad faith.

7.1 This Panel notes that the only relief sought by the Complainant was that the domain name be transferred to it. In this case, therefore, there is no need to give any consideration as to whether the domain name should be cancelled.

7.2 The ruling of this Panel is that the registration of the domain <fleetstar.com> not be transferred to the Complainant.

Cecil O.D. Branson, QC
Sole Panelist

Dated: May 18, 2001

Footnotes: