Complainant isEarly Learning Centre Limited, Swindon, United Kingdom, represented by Urquhart-Dykes & Lord LLP, Leeds, United Kingdom.
Respondent is ELC Inc., Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <elc.com> (the “Domain Name”) is
registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2005. On July 14, 2005, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On July 15, 2005, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint (the “Notice”) and the proceedings commenced on July 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 9, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 11, 2005.
The Center appointed David H. Bernstein as the sole panelist in this matter on August 23, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Because Respondent did not submit any Response, the Panel has considered whether the Center has discharged its obligation to notify Respondent of the Complaint pursuant to paragraph 2(a) of the Rules. Although an attempt to email the Notice and Complaint to the “postmaster” email address was unsuccessful, the Center also emailed the Notice and Complaint to the email address provided in Respondent’s Whois information. The Center did not receive a “bounce back” notice or any other indication that this email address was incorrect or inactive. The other methods of potential notice were inapplicable: no fax number was provided for Respondent in the Whois data1 and the mailing address provided was incomplete.
The Panel is therefore satisfied that the Center complied
with the requirement of paragraph 2(a) of the Rules that it “employ reasonably
available means calculated to achieve actual notice” of the Complaint
to Respondent. Given that notice was sent to Respondent’s email address,
the Panel assumes Respondent received actual notice; if it did not, that is
Respondent’s own fault for including inaccurate and incomplete information
in its Whois data. Ares Trading S.A. v. Bill Edwards, WIPO
Case No. D2005-0189 (June 24, 2005).
4. Factual Background
Complainant
Complainant is based in Swindon, United Kingdom. It is a retailer of toys, games, and playthings designed to promote child development. It has been trading under the mark EARLY LEARNING CENTRE since 1974. Its mark ELC is registered in numerous countries around the world (though not in Japan).
Complainant registered the domain name <elc.co.uk> on June 14, 1995, and <earlylearningcentre.co.uk> on September 30, 1996. It operates a website at <earlylearningcentre.co.uk>, to which the domain name <elc.co.uk> also resolves. The website contains the statement “Welcome to Early Learning Centre, the Online Shop for Children’s Toys and Gifts.” Children’s toys and gifts are advertised on the website under various categories, and there is a section showing that Complainant has stores in more than a dozen countries outside the mainland of the United Kingdom. None of these stores are in Japan, however.
Respondent and the Domain Name
According to the Whois report, Respondent registered the Domain Name on February 20, 1996. The Domain Name currently resolves to a page that is “under construction.” Although Complainant alleges that the site always has been inactive, according to the Wayback Machine (“www.archive.org”), the Domain Name resolved to the home page for a Dutch company called “ELC Informatietechnologie” for at least the period from January 13, 1997, through October 3, 2000. The Domain Name started resolving to the current “Under Construction” page some time between February 5, 2001, and September 21, 2004.
Complainant produced printed excerpts from a Google search for “ELC.” There were, apparently, over 722,000 results. Complainant has submitted the first 12 of those. The first result is Complainant’s site (“www.elc.co.uk”), and the sixth result is Respondent’s website (“www.elc.com”). Through additional searching, the Panel found that ELC also is the ticker symbol on the American Stock Exchange for Electric City, Corp. The first result when a similar search was run on Google Japan was the E Learning Consortium at “www.elc.or.jp” (Complainant’s site is the second result).
The Panel’s searching reveals that Respondent
appears to have registered several other domain names, including <mediacrew.com>,
<w-net.com>, <mtnews.com>, <shimazu.com>, and <qandd.com>.
Respondent is actively soliciting offers for sale of each of these domains.
The Panel has been unable to find, and Complainant has not alleged, any similar
offer for the Domain Name <elc.com>.
5. Parties’ Contentions
A. Complainant
Complainant’s contentions are as follows:
1. The Domain Name is identical to the mark ELC, and confusingly similar to Complainant’s registrations for a design mark that contains the initials ELC.
2. Respondent has no rights or legitimate interests in respect of the Domain Name:
a. The website at the Domain Name is currently under construction. Thus, Complainant alleges, “it is reasonable to assume that Respondent has not made any legitimate use of the domain in almost 9 years.”
b. To the best of Complainant’s knowledge, Respondent has never been known by the trading name “ELC” or traded under that name. The Domain Name was chosen by Respondent, Complainant alleges, because of Complainant’s business and reputation, with a view to trading off Complainant’s fame and reputation.
3. The Domain Name was registered and is being used in bad faith:
a. That Respondent has not (apparently) used the Domain Name in almost nine years, and that there is no history of Respondent trading under the name “ELC,” illustrates that Respondent does not have a legitimate interest in the Domain Name or in any identical trademark.
b. It is therefore reasonable to assume that the Domain Name was chosen “purely because of the fame of Complainant” and Complainant’s reputation in the mark. If that was the reason for Respondent registering the Domain Name, Respondent’s purpose must have been to sell, rent, or otherwise transfer the Domain Name to Complainant or a competitor of Complainant, for valuable consideration—an act of bad faith.
c. Alternatively, the Domain Name was intended to be used for Respondent’s own site, in an attempt to take Internet traffic from Complainant’s site. That would be an act, without due cause, designed to take unfair advantage of, or be detrimental to, Complainant’s reputation or the distinctive character of the mark. Under United Kingdom trademark law (section 10(3) of the Trade Marks Act 1994), that would be an act constituting trademark infringement.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
“(i) circumstances indicating that [Respondent has] registered or 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 [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website 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 [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [Respondent] of the dispute, use by [Respondent] 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) Where [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) Where [Respondent is] 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.”
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint.” Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g., by failing to file a Response), as the Panel considers appropriate.
A. Identical or Confusingly Similar
Complainant has sustained its burden under the first factor. It has alleged, without refutation, that it owns registrations in the mark ELC in a number of countries. The Domain Name is identical to that mark.
B. Rights or Legitimate Interests
Complainant also prevails under the second factor. Though its allegations are
thin, it has alleged that Respondent is not known by the name ELC. Given the
difficulty of proving a negative, such base allegations are sufficient to establish
a prima facie case. Advance Magazine Publishers Inc. and Les Publications
Condé Nast S.A. v. ChinaVogue.com, WIPO Case No.
D2005-0615 (August 9, 2005). Given the absence of any Response or any information
on the website that might show a legitimate interest, cf. Action Instruments,
Inc. v. Technology Associates, WIPO Case
No. D2003-0024 (March 6, 2003), a prima facie case is enough to prevail
under the second factor for purposes of this proceeding. Advanced Magazine
Publishes Inc., supra.
C. Registered and Used in Bad Faith
Complainant has not sustained its burden of proving bad faith registration and use.
Complainant’s allegations lack the usual indicia of bad faith. There has been no offer to sell the Domain Name, no competitive website posted, and no pattern of registering numerous domain names for the purpose of blocking Complainant from obtaining a domain name containing its mark. Instead, Complainant seems to base its entire case on the alleged fame of its ELC mark which, it asserts, gives rise to an inference that Respondent must have been targeting Complainant and its mark when it registered the Domain Name in 1996. Further, Complainant alleges, Respondent’s passive holding of the Domain Name for nine years, with no use whatsoever, is evidence of its bad faith.
The record cannot, however, support a conclusion of bad faith registration
in this case. To this day, Complainant appears to have no presence in Japan.
Complainant certainly has submitted no evidence of the fame of the ELC mark
in Japan as of 1996. There thus is no basis for finding that Respondent, if
it is located in Japan (as its address, albeit incomplete, suggests), would
necessarily have been familiar with the ELC mark such that the domain name registration
was likely designed to capitalize on that mark’s fame. Nor can an inference
of bad faith be drawn from Respondent’s alleged non-use of a famous mark
for a long period of time. Unlike the famous and distinctive mark TELSTRA, ELC
appears to be a common abbreviation, as Complainant’s own Google search
shows. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 (February 18, 2000) (passive holding can constitute
bad faith when the mark at issue is famous and well known in Respondent’s
geographic location).
Moreover, contrary to Complainant’s assertions, Respondent (or its predecessor
or someone using the Domain Name with its permission) has used the ELC
name. As noted above, the Wayback Machine reveals that the Domain Name resolved
to the home page of ELC Technology Services from at least 1997 through 2000.
Though the Panel is unable to determine from the limited record submitted in
this case whether this was a bona fide company, the archived website
has all the indicia of having been used in connection with a legitimate business
that used the letters ELC in its name. This may serve as evidence that Respondent
did not register the Domain Name in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
David H. Bernstein
Sole Panelist
Dated: September 6, 2005
1 In the Complaint, Complainant
provided a fax number for Respondent. It is not clear where that fax number came
from. In any event, the number was not operational when the Panel tested it to
see if it connected to a fax machine.
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