DECISION

ECG European City Guide v. Jules Woodell

Claim Number: FA0308000183897

PARTIES

Complainant is ECG European City Guide, Barcelona, Spain (“Complainant”) represented by Christopher W. Byron, of Gallop, Johnson, & Neuman, L.C.  Respondent is Jules Woodell, Uplands, Swansea, United Kindgom (“Respondent”).

         

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <stopecg.org>, registered with TuCows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

William H. Andrews: Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 12, 2003; the Forum received a hard copy of the Complaint on August 13, 2003.

On August 13, 2003, TuCows, Inc. confirmed by e-mail to the Forum that the domain name <stopecg.org> is registered with TuCows, Inc. and that the Respondent is the current registrant of the name.  TuCows, Inc. has verified that Respondent is bound by the TuCows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@stopecg.org by e-mail.

A timely Response was received and determined to be complete on August 29, 2003.

An Additional Submission was timely received from Complainant and was determined to be complete on September 8, 2003.

An Additional Submission was timely received from Respondent and was determined to be complete on September 15, 2003.

Pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed William H. Andrews as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.   Respondent seeks a finding of reverse domain-name hijacking against Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends it has rights in the name ECG.  Complainant states that it is the owner of a pending trademark application in the United States for the mark ECG European City Guide in respect of “maps, tourist guidebooks and street guides,” and the owner of Spanish trademark registration No. M2434001, applied for on October 30, 2001.  Complainant has used the terms “ECG,” “ECG European City Guide” and “European City Guide” as business and trade names in connection with its business activities in Europe and elsewhere for quite some time.  As a result of Complainant’s use of its business and trade names, the public has come to recognize the aforementioned terms as being synonymous with Complainant.

Complainant contends that the domain name in question is confusingly similar to Complaint’s mark, that Respondent has no rights or legitimate interest in connection with its use of the mark, and that Respondent registered and used the domain name in bad faith.  Complainant requests that the domain name registration be transferred due to Respondent’s violation of ICANN rules and policy.

B. Respondent

Respondent contends that Complainant has no rights in the letter combination ECG .  Rather, European City Guide S.L. is Complainant’s official name, and Complainant is only referred to as ECG by others when discussing Complainant’s business practices.  Respondent further contends that its use of the term ‘stop’ before the letters ECG precludes any probability of initial confusion even if Complainant did have rights in the letter combination.  Respondent further asserts that he has legitimate interests in using the name as he has.  Respondent disagrees with Complainant’s business activities and allegedly registered and operated a website and discussion group to provide support for people who have been “tricked” by the activities of Complainant, as he allegedly had been.  Respondent further contends that at the time of registration, Complainant had no trademark rights, only a pending application for the term europeancityguide.com.   Additionally, the Spanish trademark application, discussed above, was for a logo only and was made after registration of the domain name in question.  Respondent asserts his registration and use of the site was not in bad faith.  He allegedly has operated the site, without commercial gain, to provide information and advice to victims of European City Guide’s sales tactics.                                                

In addition to responding to Complainant’s allegations, Respondent requests a finding of reverse domain name hijacking in accordance with ICANN Rule 15(e).  In support of his claim, Respondent asserts that (i) European City Guide made no public use of the term “ECG” before application for a U.S. Trademark on July 22, 2003 and the Spanish mark, on which the U.S. application was based, was held for a completely different area of commerce than ECG asserts as is its primary business; (ii) both the Spanish mark and U.S. marks were applied for after the registration of <stopecg.org>; (iii) the chronology of events suggests bad faith: (a) ECG registered a United States trademark for the express purpose of providing a legal basis to have a website and discussion group terminated, (b) both the Complaint and the U.S. trademark application were made using a fictitious name; (c) ECG moved to have the Yahoo! news group terminated; (d) the tenor of cease and desist letters; (e) ECG moved to have Respondent's e-mail address terminated; and (f) ECG failed to provide Respondent a copy of its Spanish trademark upon request.  For each of these reasons, Respondent alleges the action was not brought in good faith.

C. Additional Submissions

Both Complainant and Respondent provided Additional Submissions for the Panel’s review.  The panel has considered both submissions. 

1. Complainant.

Complainant asserts it did not initiate the proceedings for reverse domain name hijacking or harassment and Respondent’s claim should therefore be denied.  Complainant addressed each of Respondent's allegations substantially as follows.  Complainant contends it has used the name “ECG” in conjunction with its business activities as early as 1998, or three years before Respondent’s registration of the contested domain name.  ECG commenced business activities on the internet on December 21, 1999, offering a comprehensive guide of businesses and culture across Europe and Asia, also prior to Respondent’s registration of the domain name.  Complainant has adopted the name ECG in many of its contracts and has attached exhibits to its submission indicating the same.  ECG's application for a U.S. trademark was not for the express purpose of providing a legal basis for shutting down Respondent's website.  According to Complainant, a U.S. trademark would not be necessary to bring its claim.  Complainant further contends that the real reason that the Yahoo! news group was shut down was, not because of Complainant's actions, but because of violations of Yahoo! policies, when an Internet user impersonated an employee of OVAG.  ECG demanded that the site be shut down only after it learned that its trademark was being used for improper purposes.  Complainant contends that its cease and desist letters to Respondent were not improper.  To the contrary, such letters are typical, and are a reasonable way to resolve conflict in these types of disputes.  Complainant contends that Respondent improperly registered the ecguide@lycos.com e-mail address.  Finally, Complainant contends it did not withhold information about its Spanish trademark following Respondent's request.  Complainant requests recovery of its costs in defending the reverse domain-name hijacking allegations.

2. Respondent

Respondent asserts that the identity of Complainant is still at issue, noting that the Complaint was brought in the name ECG European City Guide, the U.S. trademark application was registered in the name ECG European City Guide s.r.l. and Complainant's attorney states that Complainant's proper name is European City Guide SL.  Respondent further contends that ECG is involved in a border directory scam and that it has never produced maps, tourist guides or street guides.  Respondent acknowledges that Complainant may have been using the name ECG in 1998 and 1999, but that Complainant had abandoned the reference by 2001.  Among other things, Respondent alleges that Complainant cannot acquire rights in the name through illegal activity as Respondent contends Complainant did.  Respondent further contends that Complainant has not been known by the name ECG in connection with maps and tourist guides and therefore has no common law rights in the mark.  Respondent recounts that the domain name is not confusingly similar to any mark in which Complainant has rights, and argues that the meta-tags it has used in connection with the site, are necessary for users to find its site.  In its Additional Submission, Complainant alleged that Respondent had operated the site for commercial gain, noting links to advertisements on Respondent’s site. Respondent contends there are no links to commercial operations on its site, and that advertisements appearing on the site were placed there by Respondent's Internet provider against Respondent's wishes.  Finally, Respondent restates his case for reverse domain-name hijacking, repudiating, among other things, Complainant's version of events for the shutting down of the Yahoo! discussion group, and the fact that the trademark was registered after the domain name. 

FINDINGS

Complainant, European City Guide S.L. previously used the moniker ECG in connection with its business activities as early as 1998.  There is no indication that Complainant was widely known by that name however. Complainant applied for a Spanish trademark of the term European City Guide in logo form on October 31, 2001 and the same was registered on April 5, 2002.  Complainant applied for a U.S. trademark of the term ECG European Cities Guide in July, 2003.  According to Respondent, Complainant has engaged in unfair business practices.  The Panel does not address the merits of such allegations, but does find that Respondent registered the domain, <stopecg.org> on October 2, 2001 for the purpose of criticizing Complainant’s business practices.   Respondent contends that Complainant has tricked businesses, similar to his own, into signing contracts under the guise of requests for information.  Respondent also started a Yahoo! discussion group, and had an e-mail address of ecguide@lycos.com.  Respondent started the Yahoo! discussion group ostensibly to assist businesses who had similarly been tricked by the deceptive business practices of Complainant.  Respondent had a disclaimer placed on its website.  Both the discussion group and the e-mail address were involuntarily terminated.  According to the Complaint, the discussion group, stopecg@yahoo.com, linked through the domain name, was terminated at Complainant’s request on July 24, 2003, and the e-mail address was terminated by Lycos at Complainant’s request on August 8, 2003.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

(2)  the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant contends it has a right in the acronym ‘ECG’ that should be protected.  Complainant has a pending trademark application for the ECG EUROPEAN CITY GUIDE mark with the U.S. Patent and Trademark Office (“USPTO”).  Complainant is the owner of Spanish trademark Reg. No. M2434001, issued in April, 2002.  The Complaint does not indicate what mark was registered under the Spanish registration number; however, Respondent has provided a copy of the registration document for Reg. No. M2434001 which lists the mark as EUROPEAN CITY GUIDE.   Thus, Complainant applied for a trademark with the U.S. Patent and Trademark Office, and obtained its Spanish registration only after Respondent had registered the domain name on October 2, 2001.  Additionally, Complainant’s Spanish registration was for the term “European City Guide” and not “ECG.”  Complainant can claim no rights against Respondent’s use of ‘ECG’ based on actions taken after Respondent’s registration of the domain name. 

Complainant alleges it has used the terms “ECG,” “European City Guide” and “ECG European City Guide” in commerce for “quite some time.”  In its Additional Submission Complainant asserts it has used “ECG” since as early as 1998.  Complainant attaches contracts from 1998 that reference European City Guide, but each contract includes only one reference to ECG in small print, near the bottom of the page. Complainant has not established secondary meaning in the mark through use in commerce and Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (stating that “[a]lthough Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [A]lthough … Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions”); see also Amsec Enters. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark applications do not establish any enforceable rights to the mark until a trademark registration is issued).

Even if Complainant could establish rights to “ECG” by its assertion, it still has failed to show that the domain name <stopecg.org> is confusingly similar to its mark.  Complainant asserts that <stopecg.org> is confusingly similar because it merely adds the generic term “stop” to ECG’s mark. 

The addition of the term “stop” to a domain name has been addressed in COMPUSA Mgmt. Co. v. Customized Computer Training, FA 95082 (Nat’l Arb. Forum, Aug. 17, 2000).  The domain names at issue there were <stopcompusa.com> and <bancompusa.com>.  Complainant offered ample evidence of its ownership and registration of trademarks including the COMPUSA mark and argued Respondent had no legitimate interest in the mark but to disrupt Complainant’s business.  Respondent asserted that he had not used the name for commercial gain but recounted how he was dissatisfied with Complainant’s business practices.  The panel found that Complainant had failed to show any of the three elements of the policy.  Specifically, the panel noted that there was no confusion or similarity, much less identity between the domain name and Complainant’s marks.  According to the panel, “no one could confuse ‘COMPUSA’ or any one of the registered trademarks and ‘STOPCOMPUSA.COM’ or ‘BANCOMPUSA.COM.’”

In addition to Compusa, there are a line of cases finding that names attached to the term “sucks”cannot be confusingly similar because of the obviously negative connotation of such a term.  In Lockheed Martin Corp v. Parsi, D2000-1015 (WIPO Jan. 26, 2001), the panel found that the domain name <lockheedsucks.com> and <lockheedmartinsucks.com> were not confusingly similar to Complainant’s well-known and established marks.  The panel stated, “both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark.”   The panel also noted that United States federal courts have reached analogous conclusions in similar cases.   In Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (Cal. 1998), the well-known health club Bally’s sued Defendant for his registration of <ballysucks.com>, which he used to voice complaints about Bally’s practices.  The court granted defendant’s motion for summary judgment, finding that Bally could not prove a likelihood of confusion with its trademark.  The court found, in part, that there could be no confusion because the parties did not offer “similar goods.”  Bally’s offered health services and Defendant offered a forum for criticism of Bally’s and other corporations. 

Complainant attempts to distinguish the “sucks” cases by arguing that the word “stop” does not necessarily carry a negative connotation.  Despite Complainant’s contention, however, the term “stop” carries a pejorative or negative meaning in this context that makes it unlikely that Internet users will be confused as to the source or sponsorship of the site.   Complainant also contends, in its Additional Submission, that the use of meta-tags is likely to cause confusion or divert would-be customers from its site because of confusion or anger.  Metatags are hidden terms in online documents, often used by search engines to index websites.  As the panel noted in Lockheed Martin, supra, however, “the Panel is mindful that the current nature of the internet is such that search engines may well pull in the disputed domain names when the searcher intends to find only Complainant’s well-known company.  However the Panel believes that once the searcher sees <lockheedsucks.com> and <lockheedmartinsucks.com>, listed among the websites for further search, she will be able to readily distinguish the Respondent’s site for criticism from Complainant’s sites for goods.”  Similarly, here, the Panel finds that use of meta-tags will not cause confusion amongst Internet users such as to satisfy the Policy.   Complainant has cited no specific cases in support of its proposition with respect to meta-tags.  Additionally, Respondent’s disclaimer prominently placed, indicates that it is a non-commercial site established in opposition to European City Guide.  This further alleviates any possibility of confusion.

Legitimate Interests/ Bad Faith

Complainant has the burden of establishing that each element of the policy has been satisfied.   Since the Panel has concluded that Complainant has failed to establish that Respondent has used a name identical or confusingly similar to one in which Complainant has a right, it is unnecessary to specifically consider the parties’ arguments with respect to the “legitimate rights and interests” and “bad faith” prongs of the Policy in order for the Panel to reach its decision.  In any case, it appears that Respondent legitimately registered the domain and set up the site to provide a forum for criticism of Complainant’s business practices.  Respondent has legitimate interests in the domain name for that purpose.  See Bridgestone-Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding Respondent’s use of the Bridgestone-Firestone name to link to a website for commentary about the Complainants constitutes a legitimate non-commercial use and fair use within the meaning of the Policy.  The panel concluded that the exercise of free speech for criticism and commentary demonstrates a right or legitimate interest in the domain name under par. 4(c)(iii)).  As was stated in Bally, supra, Respondent can use Complainant’s mark to identify the source of goods and services of which he is complaining.  This use is necessary to maintain broad opportunities for expression.  Bally, supra. at 1165, 1167.  See also Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (concluding that a domain name including the word “sucks” cannot be confusingly similar, and that a privilege for criticism and parody reinforces that conclusion).

Respondent has not registered or used the domain name or website in bad faith.  (As a general proposition, the same facts establishing fair use and exercise of free speech negate a finding of bad faith intent.  Bridgestone-Firestone, supra.)  Complainant has not proven Respondent intentionally registered and used the site for his own commercial gain, or for the purpose of selling the name back to Complainant or a competitor.  Respondent has not registered the name to disrupt the business of a competitor.  As was noted, Complainant is in the business of providing tourist maps and guides.  There is no evidence that Respondent is in a similar business.  Respondent’s primary purpose in establishing the domain was to criticize Complainant among others.  As noted, there are many cases recognizing the same as a legitimate and fair use.  Finally, Respondent has included a disclaimer to clarify that he is not Complainant.  See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith where Respondent, using the domain name to sell new and used Caterpillar parts through the domain name <catparts.com>, placed a disclaimer on the website indicating no relationship with Complainant’s business).

As in Compusa Management Company, supra, there is no confusion about Respondent’s purpose from viewing the website.  Respondent has provided an explanation for his creation of the site.  Respondent’s disenchantment with Complainant’s business practices is well-documented and his motivation to provide a forum for those who are similarly situated is a legitimate non-commercial use of the site. 

   

Accordingly, the Panel finds that Complainant has failed to establish that Respondent had no legitimate rights to the domain name or that Respondent registered and used the domain name in bad faith.  Therefore, the relief sought by Complainant is Denied.

Reverse Domain Name Hijacking

Respondent alleges that he is entitled to recovery of costs from Complainant for reverse domain-name hijacking.  That term is defined in Par. 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

To establish reverse domain name hijacking, Respondent must show knowledge on the part of Complainant of Respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by Complainant in the face of such knowledge.  Plan Express v. Plan Express (D2000-0565).

Respondent asserts that Complainant attempted to reverse hijack the <stopecg.org> domain name because Complainant filed the Complaint knowing that the disputed domain name was registered prior to Complainant’s registration in Spain and with the USPTO.  See Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan. 2, 2001) (Complaint considered to be brought in bad faith where Complainant must have known that Respondent was not a cybersquatter prior to the filing of the Complaint); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that Respondent's registration of the <aspengrove.com> domain name two years before Complainant's incorporation justified a Reverse Domain Name Hijacking ruling).  Respondent also contends that Complainant used the fictitious name “ECG European City Guide” in the Complaint and asserts that usage of the name was a clear attempt to deceive the Panel into believing Complainant has established rights in the mark or that the mark has been used in commerce.  Finally, Respondent cites a chronology of events, specifically set forth above, which he alleges support a finding of reverse hijacking on the basis of harassment.

Respondent has not established that Complainant acted in bad faith so as to justify a finding of reverse domain name hijacking.  Although Complainant attempted to register marks following Respondent’s registration of the domain name, Complainant has submitted an exhibit indicating that it has referred to itself as “ECG” at some point in the past.  Moreover, Respondent’s reference to Complainant as “ECG” on its site, lends support to Complainant’s claim that it has been known by that name, even if not known to a degree sufficient to establish secondary meaning.  Respondent contends that Complainant was responsible for shutting down the Yahoo! discussion group.  The facts, however, are in dispute as to the true cause or motivation for the termination of the discussion group.  The cease and desist letters do not appear to be improper and Complainant has chronicled its attempts at resolving the matter prior to filing of a Complaint.  The Panel has found no other grounds justifying a finding of bad faith.  Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.  See Citgo Petroleum Corp. v. Tercsak, D2003-0003 (WIPO February 28, 2003).

DECISION

Having found that Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief sought shall be DENIED.

Having found that Respondent has failed to establish that Complainant acted in bad faith in initiating the Domain Name Complaint, the Panel concludes that relief sought by Respondent shall be DENIED.  Additionally, Complainant’s request for recovery of costs in defense of the Reverse Hijacking claim is DENIED.

William H. Andrews, PanelistDated: October 14, 2003

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