The trade mark registrations are generally along the lines of wares involving
computer software for use in manufacturing, planning and scheduling and services
involving installation and other activities in relation thereto.
Many other registrations and applications from several countries around the
world are referred to, many of which appear to be pending applications, and
not all of which are evidenced in the Complainant’s Annexe A. Some of the listed
applications post date the registration of the domain name in question.
In any event the Complainant refers specifically only to the first three above
mentioned trade marks in its actual argument.
It seems to be common ground that the Respondent registered the domain name
in question on November 18, 1999, as shown in the WHOIS report attached to the
private investigator’s report furnished by the Complainant in Annexe H.
It is also common ground that the Complainant is a very large enterprise and
that the Respondent is very small. The Complainant maintains offices in many
countries and had annual revenues USD $571 million in 1999. It does business
with very large enterprises such as Hewlett Packard, Thomson Consumer Products,
Sherwin Williams, etc. It has grown very rapidly since 1992. Its main Website
apparently is at <i2.com>.
The Respondent, on the other hand, is a one person consultancy offering to
provide services ranging from installations, upgrades and repairs to antiviral
protection, cabling, local and wide area networks, and other services used by
home and office clients. The Respondent maintains an active website at <i-two-tech.freeuk.com>,
according to Respondent’s Annexe G.
This is linked to by the domain name in question, namely <i2technology.com>.
There is no suggestion that the Respondent is not or has not actually been
in business as a computer consultancy for at least 18 months. The Complainant’s
investigative report bears this out. The trade name of the Respondent is EYE
TOWARDS TECHNOLOGY. The Complaint states and the Respondent does not dispute
that there is no indication of the Respondent having sought registration of
any trade mark in the U.S.A. or UK incorporating the "i2".
The Complainant states that:
"i2 Technologies has not authorized or agreed to use by Mr. Smith of the
name or mark "i2", including the domain name <i2technology.com>
and the domain name is not used in good faith."
5. Parties’ Contentions
A. Complainant
Beyond that which is noted above, the Complainant alleges its trade marks,
particularly No. 183897 are identical or closely similar to the domain name
<i2technology.com>.
The Complainant further alleges that:
- upon being offered Ł100 sterling for the domain name in question, the Respondent
said that he would only consider "serious" offers and referred to
the possibility of selling the domain name and soliciting offers for it.
- The Respondent’s business is run by him personally on a part time basis and
single handedly, in contrast to that of the Complainant which is "a large
US and multinational corporation".
- The Respondent "does not appear to provide consultancy services in any
particular area, concerning any particular type of software. It therefore might
provide services in direct conflict with i2 Technologies, or be thought or asked
by others to do so."
- Since Mr. Smith has been in the IT industry for 15 years, he "would
have been aware" of i2 Technologies when he registered the domain name
in question.
The Complaint includes much material consisting of copies of annual reports,
advertising and promotional material.
B. Respondent
The Respondent does point out that he was approached by the Complainant’s solicitors
with a cease and desist letter and a demand to transfer the domain name, and
that he had used the domain name in question for almost a year before hearing
from the Complainant’s solicitors. The Respondent denies that he ever tried
to sell or solicit offers for the domain name in question.
The Respondents indicates – and the evidence filed by both parties corroborates
– that it was the Complainant’s solicitors who broached the offer of money.
Apart from the initial offer of Ł100 sterling, no specific amount has been mentioned.
The Respondent admits and the evidence supports his statement that he would
consider "serious offers".
It is worth noting that the Complainant’s initial demand letter dated October
20, 2000, (which was filed by the Respondent) threatened not only a UDRP proceeding,
but High Court proceedings as well.
The essence of the Respondent’s submission is that
"I had chosen "i2technology.com" as my domain because it reflected
the nature of my services I wanted to advertise…
The name "Eye towards Technology" is reflected in i2Technology"
6. Discussion and Findings
Confusion
The first element of the classic UDRP trilogy to be decided is whether the
domain name is identical or confusingly similar to a trademark or service mark
in which the complainant has rights.
The Complainant clearly does have some trade mark rights in "i2"
in respect of computer software used for manufacturing and services in connection
therewith. These may not be very strong rights in relation to the text "i2".
Most of the registrations are only for logos, figurative or design marks and
not for word marks. The Community application for the word mark "i2"
noted above is comparatively recent and being opposed, according to the information
supplied by the Complainant. The Complainant’s argument mentions many trade
marks but apparently relies only on its Community logo marks.
The Complainant does concede that the words TECHNOLOGIES and TECHNOLOGY are
non-distinctive and not memorable.
At least one WIPO Panel has held that a domain name can be confusing with a
stylized or design mark so as to cause confusion (WIPO
Case No. D2000-1016; Playboy Enterprises International, Inc. v. Hector
Rodriguez). The Complainant has subsisting design mark registrations, at
least some of which predate the Respondent’s registration of the domain name.
There may be little danger that a customer of the Complainant would enter into
a contract with the Respondent for any services, given the different channels
of trade and the great disparity in the size and capability of the two entities,
a point emphasised by the Complainant. Nonetheless, there could conceivably
be confusion in the sense that some potential customer of the Respondent may
believe that the Respondent is somehow connected to or affiliated with or sponsored
by the Complainant.
What is not a matter of speculation is that the Respondent has received numerous
e-mail communications apparently intended for the Complainant. The Respondent
himself points out that this is because it is natural for users to assume that
if a person has an e-mail address of <[email protected]>, then it would normally
follow that the website of the recipient’s company would be www.i2.com. Likewise,
it surely follows that a person who assumes that a company’s website is www.i2technolgies.com
might address mail to <[email protected]>. It might very easily happen
that the singular form of "i2technologies" could be used and e-mail
could be sent to <[email protected]> that was intended for an employee
of the Complainant.
The Respondent says that the singular is not the plural and that "This
is clearly another WIPO case of "singular vs. Plural".
Of course, it is trite law and basic common sense that the mere change from
singular to plural or vice versa is not sufficient to avoid confusion for trade
mark purposes or passing off purposes. No one could expect to survive very long
in the automotive field using the trade mark GENERAL MOTOR by arguing that it
is singular and thus not confusing with the plural version.
In any event, the proof of the pudding is in these numerous misdirected e-mails,
brought to the attention of the Complainant’s solicitors apparently without
asking by the Respondent himself. Ironically, the Complainant has supplied only
one example from its own files of a misdirected e-mail.
The domain name in question would therefore appear to be confusingly similar
to the Complainant’s trade marks, in which the Complainant has rights.
Does the Respondent have any rights in the domain name?
The next hurdle that the Complainant must pass is to show that the Respondent
has no rights in the domain name in question. In this instance, the Respondent
says that he wanted his trade name EYE TOWARDS TECHNOLOGY to be "reflected"
in the domain name and hence he chose <i2technology.com>. He also admits
that he has the domain name <i-two-tech.freeuk.com>, to which the disputed
domain name diverts. The material filed by the Complainant in Annexe H (the
private investigator’s report) indicates that the home page illustrates a human
eye with the numeral "2" followed by the word "technology".
This might create some colour of right for usage of a domain name with "EYE2"
as a key element but not "i2".
There is no convincing attempt by the Respondent to explain why he did not
use a domain name along the lines of <eyetowardstechnology>, <eyetotechnology>
or even <eye2technology>, assuming that they were available at the relevant
times and which surely would have better reflected his trade name. The Panelist
observes, although nothing turns on this, that the domain name <eye2technology.com>
appears to be available at the time of writing this decision, based upon a visit
by the Panelist to the <nsi.com> web site.
Whether such registration and usage would survive a High Court case or another
UDRP proceeding at the behest of the Complainant is clearly not for this Panel
to decide or speculate upon. It is common knowledge that the number "2"
is used in the "dot.com" world as a stylish abbreviation of the word
"to". Indeed, the Complainant’s promotional material is full of such
usage in the context of B2B ("business to business"), etc.
This is not to be taken as suggesting that such domain names would not necessarily
give rise to difficulties either in the courts or under the UDRP. However, it
would be clearly more closely related to the Respondent’s chosen trade name
or trade mark (assuming that he actually delivers services using the name EYE
TOWARDS TECHNOLOGY). It would also be less confusing, at least as a domain name,
with <i2technology.com> because it is probably safe to assume that nobody
would type in "EYE2" hoping to get to the Complainant’s web site <i2.com>.
The Respondent points out that the Complainant does not use its domain name
<i2technologies.com> (which identically reflects its corporate name and
several of its trademarks) as an active website, choosing instead to use the
shorter <i2.com>. However, the Complainant is not obliged to actively
use a domain name that is the same as its corporate name or even of its trade
name or trade marks. Its failure to actively use this domain name does not give
the Respondent any colour of right to register something confusingly similar.
Finally, the Respondent cannot claim that it has rights under paragraph 4(c)
of the UDRP.
"(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or service
mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to tarnish
the trademark or service mark at issue."
The facts simply do not fit. Under the first exception the Respondent must
show that he is making a bona fide offering of goods or services before he had
notice. This cannot be the case if the Respondent knew of the Complainant’s
trade mark rights and deliberately chose a confusingly similar domain name.
The Complainant has alleged that the Respondent would have had actual knowledge,
given its reputation amongst professionals. Whether or not this is the case,
the Community and U.K. registrations would impart constructive knowledge. This
is the essential purpose of intellectual property registration statutes. It
entails that anyone in the jurisdiction covered by the registration is deemed
to know of the existence of the registrations, whether or not they actually
know. In any event, the Respondent does not deny the Complainant’s allegation
that he would have had actual knowledge of the existence of the Complainant’s
trade marks. The second and third exceptions clearly are inapplicable on the
evidence presented by the Respondent.
Bad Faith
Paragraph 4(b) of the UDRP indicates that bad faith can be established based
upon any one of the following non-exhaustive indicia:
"(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the Complainant who is the owner
of the trademark or service mark or to a competitor of that Complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location."
It is clear that the Complainant has the burden of proving bad faith and bears
the primary burden of proof although the onus may shift to the Respondent if
sufficient evidence is put forward to call for an answer (WIPO
Case No. D2000-1480; Office Club, Ltd. v. John Adem).
The Complainant alleges that the Respondent resell the domain name in question
for a profit. True, he states in an e-mail after finally receiving an offer
for Ł100 sterling that "However, if approached as was the case here - I
would only consider serious offers presented to me. I have decided to decline
your client’s offer. I am willing to take part in any discussions to resolve
this matter".
The Complainant alleges that this refers to the possibility of selling the
domain name and soliciting offers for it and refers to the correspondence in
Annexe F, the only apparently inculpatory passage having been quoted in the
passages quoted. To the contrary, an examination of Annexe F simply does not
support this allegation. There are no words in the e-mail correspondence which
explicitly or implicitly lead to the conclusion that the Respondent has ever
or would ever want to sell the domain name, much less solicit offers for it.
Indeed, the indication is to the contrary and the Complainant has no evidence
and makes no attempt to suggest otherwise. Bad faith cannot be sustained under
the first of the four indicia.
Indeed, a response to an offer of a nominal amount of consideration with a
suggestion that a more substantial amount may be acceptable is not itself conclusive
of bad faith. Negotiation is to be encouraged and is not per se bad faith.
"The mere discussion of a possible settlement itself constitutes bad faith"
(WIPO Case No. D2000-0161; Zero International
Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen
Urich, para. 7.7). To so hold would be to encourage entrapment, and would
discourage amicable resolution of disputes where UDRP or litigation results
are less than clearly predictable. In this case, the Complainant expressly threatened
High Court litigation, which gives credibility to the Respondent’s evident willingness
and even eagerness to negotiate. The Complainant can hardly complain that its
strong cease and desist letter achieved this result.
Other than the foregoing, the only allegation of facts in the Complaint that
can support an allegation is that the Respondent chose <i2technology.com>
when he trades as "EYE TOWARDS TECHNOLOGY". The Respondent also points
out that there have been numerous examples of misdirected e-mails, even though
the evidence for this emanates from the Respondent. There is evidence consisting
of one e-mail from one Candace Meade filed by the Complainant that this person
visited Respondent’s website looking for the Complainant.
While it clearly is not in the Respondent’s interest to receive e-mail directed
to the Complainant that cannot possibly lead to any business for the Respondent,
the Respondent cannot escape the fact that he is receiving e-mails intended
for the Complainant because of his choice of the domain name in question.
In an e-mail dated January 12, 2001, the Respondent says to the Complainant’s
solicitor that:
"I’m getting very concerned about the amount of e-mails I’m receiving
and forwarding to your clients "i2technoliges.com".
As a goodwill gesture I’ve forwarded every "i2technoliges.com" emails.
I have been doing so for many months.
The emails coming via me are containing sensitive, confidential, Personal details
and business related material.
I would like to resolve this matter sooner rather than later.
I still await a response from your clients.
Do you have any news?"
This would seem to constitute an admission by the Respondent that a significant
amount of traffic, or at least e-mail, is being diverted from the Complainant’s
mail server at its <i2.com> URL to the Respondent’s mail server at its
<i2technology.com> URL. Copies of these various messages were entered
into evidence by the Complainant its Exhibit D. The Respondent himself states:
"It’s common knowledge that if one’s email address is <[email protected]>
then in majority of cases the web address would be prefixed with "www."
Of [sic] the said Domain name used for the email."
This would seem to bring the Respondent within the fourth indicia of bad faith,
namely that he intentionally attempted to attract, for commercial gain, Internet
users to his web site by creating a likelihood of confusion with the Complainant’s
mark ("i2") as to the source, sponsorship, affiliation, or endorsement
of his web site or of a product or service on your web site or location. Even
if it is virtually impossible that any potential customer of the Complainant
would actually use the services of the Respondent (given the very different
services and capabilities of the two entities), the fact remains that at least
one person seeking to find the "i2" website ended upon on the Respondent’s
website and numerous persons sent him misdirected e-mail. It is conceivable
that some clients of the Respondent may have thought that the Respondent was
affiliated with or endorsed by the Complainant, which brings the fourth indicia
into play. All of this could have been avoided had he chosen a domain name,
perhaps based upon "eye" (for which he had a colour of right) rather
than "i", for which he did not.
Therefore, even though based largely on the Respondent’s admissions, a case
of bad faith has been made out.
7. Decision
In view of the above findings, the Panel hereby orders that the domain name
<i2technology.com> be transferred to the Complainant.
Howard P. Knopf
Sole Panelist
