Generic Top Level Domain Name (gTLD) Decisions

The Complainant is eCompany, Inc., California, United States of America.

The Respondent is eEyeNetworks Inc., Vancouver, Canada.

The Domain Name is <eeyenetworks.com>.

The Registrar is Tucows, Inc.

The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by email on December 3, 2002, and in hard copy form on December 6, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy, (the "Policy") the Rules and the WIPO Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.

Tucows, Inc. has confirmed that the Domain Name <eeyenetworks.com> (the "Domain Name") was registered through Tucows, Inc. and that eEyeNetworks Inc. is the current registrant. Tucows, Inc. has further confirmed that the Policy is applicable to the Domain Name.

On December 9, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending his Response to the Complainant and to the Center was December 29, 2002.

The Response was received by the Center on December 30, 2002, by email.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On January 25, 2003, the Panel issued a Procedural Order seeking further information from the parties. Both parties responded.

The date originally scheduled for the issuance of the Panel’s Decision (January 27, 2003) was put back to February 6, 2003.

eCompany, Inc ("the Complainant") is a Delaware Corporation, having its principal place of business in Aliso Viejo, California, United States of America and with overseas offices in Switzerland, the United Kingdom, France and Spain. It is engaged in the supply of computer related goods and services, particularly software and services related to computer network security.

The Complainant’s principal trademark is EEYE which it has registered in the United States for computer software and for computers and computing services etc related to computer network security. It claims first use of the mark in commerce from June 1998. The Complainant is also the proprietor of various European registrations of the mark and a Canadian application filed in November last year, shortly before the launching of this Complaint.

Since June 1998, the Complainant has conducted business through its website at "www.eeye.com". It is also the proprietor of a variety of other ‘EEYE’ domain names.

The Respondent, eEYE Networks Inc. was incorporated on July 8, 2002, in Canada, the Domain Name already having been acquired for the Respondent and in the name of the Respondent on May 3, 2002. The Respondent commenced trade through its website connected to the Domain Name on August 1, 2002. It operates in the field of computer networking.

On November 5, 2002, a Mr. Matt Peters channel sales manager for the Complainant sent to the Respondent an email reading: "Hello, I’d like to speak to someone there about a partnership. Thank you." On the same day the Respondent replied "Hi Matt, my name is Sean Dastouri and I am the President of eEye Networks. You’re more than welcome to give me a call at 604-999-2888 with any questions or comments you may have." On November 14, 2002, the Respondent sent a further email to the Complainant reading "Hello, I am interested in speaking with someone about your partnership programme. Thanks."

This last email was referred to in the Complaint and relied upon by the Complainant as evidence that the Respondent had heard of the Complainant. The preceding exchange of emails was brought to the Panel’s attention by the Respondent in response to the Procedural Order.

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s trademark eEye.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies upon its prior trademark rights, its prior use of the <eeye.com> domain name and the likelihood of confusion stemming from the Respondent’s use of both the Domain Name and the Complainant’s trademark EEYE (solus) on the Respondent’s website. It also asserts that the Respondent knew of the existence of the Complainant because the Complainant received the email dated November 14, 2002, referred to above.

The Complainant further contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith. The Complainant points to its substantial goodwill. It also asserts that the Respondent was aware of the Complainant at the time the Respondent registered the Domain Name. On that latter point its fall back position is that the Respondent knew of the Complainant by the time of the Respondent’s email of November 14, 2002.

In response to the Procedural Order, the Complainant stated that it was unaware of any prior email correspondence between the parties.

The Respondent denies that the Domain Name is identical or confusingly similar to the Complainant’s trademark. Insofar as Canada is concerned, the Respondent points to the fact that the Complainant’s trademark application for EEYE in Canada post dates the Respondent’s commencement of business operations in Canada.

While the Respondent did not expressly deny in the Response that it did not have rights and/or legitimate interests in respect of the Domain Name, it did indicate that it had been trading online under its corporate name and by reference to its website connected to the Domain Name since August 2002. In response to the Procedural Order, it came forward with further evidence to support its contention that it had in fact been trading and/or making demonstrable preparations to trade under the Domain Name prior to notification of the Complaint.

The Respondent contends that it did not become aware of the existence of the Complainant until the Complainant approached it by email on November 5, 2002. That email is quoted in full above.

The Respondent denies that it registered the Domain Name in bad faith and/or is using it in bad faith.

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

Apart from the ".com" suffix the Domain Name comprises the Complainant’s trademark and the generic term "networks".

Given that the broad general area in which the parties both operate includes computer networking, the Panel is in no doubt that the Domain Name is confusingly similar to the Complainant’s trademark EEYE and the Panel so finds.

The fact that the Complainant may have no rights in Canada is not relevant for the purposes of paragraph 4(a)(i) of the Policy. For these purposes all that the Complainant has to do is to establish trademark rights somewhere and this the Complainant has done.

The Respondent has produced evidence to support its contention that it has been trading and/or planning to trade under and by reference to both its corporate name and the Domain Name since at least August 2002.

It is of course possible that this evidence may have been fabricated, but the Complainant does not suggest that the Respondent is not conducting business through the site and there is nothing before the Panel which could justify a finding of forgery.

The only basis that the Complainant has put forward to suggest that the Respondent’s trade is not a genuine bona fide business is that use of the Domain Name is likely to cause confusion and that the Respondent’s email of November 14, 2002, indicates that the Respondent was aware of the existence of the Complainant.

The Panel having found that the Domain Name is confusingly similar to the Complainant’s trademark, the Panel accepts that there is a potential for confusion.

As to the Respondent’s alleged prior knowledge of the Complainant, the Respondent denies that it was aware of the existence of the Complainant prior to the Complainant’s approach on November 5, 2002.

If the Panel had been convinced that the Respondent had set up its business under the Domain Name and with knowledge of the likelihood of confusion, the Panel would have had no difficulty in finding that the Respondent had no rights or legitimate interests in respect of the Domain Name.

As it is, the Complainant’s evidence as to prior knowledge stemming from the email exchange appears to be flawed, the first approach appearing to have come from the Complainant.

In these circumstances, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Had the Panel been persuaded that the Respondent registered the Domain Name with knowledge of the existence of the Complainant and/or its trademark and website, the Panel would have found that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(c) of the Policy.

However, as indicated in the previous section, the Complainant has failed to satisfy the Panel that the Respondent had that crucial prior knowledge at the time of registration of the Domain Name. The Panel understands the Complainant’s concerns. It is, to say the least, surprising that someone such as the Respondent engaged in the computer networking field had not come across the Complainant and its trademark when vetting the marketplace for availability of the name in 2002.

However, the Complainant has put very little before the Panel to justify the Panel holding that the Respondent’s denial of prior knowledge is a lie. The section of the Complaint dealing with bad faith comprises only one paragraph and reads as follows:-

"C. The domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

[21.] In view of Complainant’s substantial goodwill as a recognized industry leader in the network security field and formal trademark rights and registrations, Complainant submits that Respondent was aware of Complainant’s legitimate trademark rights in the EEYE mark at the time it registered the <eeyenetworks.com> domain name. As such, Complainant submits that such act of registration was in bad faith in derogation of Complainant’s legitimate trademark rights. Further, as mentioned above, Respondent was aware of Complainant’s legitimate trademark rights in the EEYE mark at least by the time of the recent November 14, 2002, correspondence."

The last sentence of that section tacitly accepts that the Respondent may not in fact have known of the Complainant prior to the November email exchange. That is not enough. For the purpose of paragraph 4(a)(iii) of the Policy the Respondent will ordinarily have had to have been aware of the existence of the Complainant at the date of registration of the Domain Name.

Accordingly, the Panel holds that the Complainant has failed to prove that the Domain Name was registered in bad faith and is being used in bad faith.

The Complaint is dismissed.