The Complainant is EDREAMS, Inc. Barcelona, Spain, represented by March & Asociados, Spain.
The Respondent is Arise Company Ltd, Simon Wei, Auckland,
North Island, New Zealand, represented by Anna Leung.
2. The Domain Name and Registrar
The disputed domain name <edream.com> is registered
with Tucows. It was first registered on June 29, 1998.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2006. On June 15, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 15, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details for the administrative, billing and technical contact.
The Center has 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.
In accordance with the Rules, paragraphs 2(a) and 4(a) the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for filing the Response was July 6, 2006. The Response was filed with the Center on June 26, 2006.
The Center appointed Clive Duncan Thorne as the sole
panelist in this matter on July 10, 2006. 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.
4. Factual Background
The Complainant EDREAMS, Inc. is a leading travel portal in Europe and the United States having secured one of the largest investments in a private E-commerce Company in recent years. It was founded in March 1999 in Silcon Valley and currently has offices in Barcelona, London, Milan and San Francisco. It has a complex corporate structure, details of which are set out in a table at Annex III to the Complaint.
The Complaint has developed a leading European travel portal during the last 8 years reaching an apparent top position in the market and achieving sales of over €12,000,000 in its first year of operations. At Annex IV to the Complaint are copies of a series of extracts from inter alia Time Magazine, World Business, InternetNews.com and the Wall Street Journal Europe which confirm the trading activities of the Complainant and the fact that it launched in 1999. At Annex VI to the Complaint are copies of a number of reports and articles also published in magazines and newspapers referring to the activities of Complainant.
The Complainant does not appear to own any relevant registered trademark rights similar to the domain name in dispute ie., <edream.com>. Without giving detail, the Complainant submits that it apparently owned a similar trademark which “was finally abandoned due to strategy reasons”. The Respondent confirms this in the Response. At Annex I to the Response it exhibits evidence of a United States trademark search which shows that the mark EDREAMS was applied for by the Complainant on September 9, 1999 and subsequently abandoned on September 20, 2001. Accordingly, the Panel proceeds on the basis that there are no registered trademark rights.
The Complainant sets out a list of domain names which it owns incorporating the words “edreams” and “edream”. All of these post date the domain name in dispute with the exception of <edreams.com> which was created on 1996.
It is uncontested that the domain name in dispute was created on June 29, 1998. The Respondent however asserts that the domain name <edreams.com> was created on February 6, 1996, and although in existence at the time the domain name in dispute was created it was not owned or utilised by the Complainant until some time around November 9, 1999. Evidence of this is set out at Annex IV to the Response which consists of a search through the archived websites of www.edreams.com” on the “wayback machine” database and which reveals that between May 1997 to February 1998 EDREAMS.com was used by Electric Dreams Inc., and Internex Information Services Inc. Evidence is also given by the Respondent that none of the other related domain names owned by the Complainant were used to offer websites providing travel services until at least November 1999 (Annex 5 to the Response).
This evidence ties in with the evidence adduced by
the Complainant that it did not commence operations until 1999, the year after
the creation of the domain name in dispute.
5. Parties Contentions
A. Complainant
1. The Complainant submits that it has established unregistered trademark rights in the mark EDREAMS.
2. It submits that in considering the mark EDREAMS and the disputed domain name <edream.com> the domain name in dispute is confusingly similar to the Complainant’s rights being identical to the trade name EDREAMS except for the inclusion of a “S” as a plural suffix within the trade name and domain name of the Complainant.
3. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name for the following reasons:
(i) the Respondent is a New Zealand company without any relevant trading activity under the domain name <edream.com>.
(ii) the domain name in dispute is not being used by the Respondent and that the Respondent is not commonly known by the name edream.
(iii) the domain name in dispute was registered and is being used in bad faith for the following reasons:
(i) The Respondent has offered the domain name in dispute for sale on the website “www.monica.com”.
(ii) By commercialising the domain name in dispute the Respondent has attempted to attract for commercial gain potential customers of the Complainant.
(iii) Having made no use of the domain name in dispute the Respondent has sought to profit from its registration by trading on the Complainant’s goodwill.
B. Respondent
1. The Respondent submits that:
(i) The Complainant has no trademark rights in the domain name.
(ii) Even if the Complainant does have rights they post date the registration of the domain name in dispute.
(iii) Taking into account the entirety of the surrounding circumstances there is unlikely to be confusion between the trade name EDREAMS and the domain name in dispute.
(iv) The Respondent submits that it has rights or legitimate interests in respect of the domain name because:
(i) The Respondent has for the past 8 years continuously made legitimate non-commercial fair use of the domain name.
(ii) The domain dispute is a descriptive or generic term which entitles the Respondent and anyone else to a legitimate right to register and keep a common descriptive term.
(iii) The domain name was not registered or is being used in bad faith because:
(i) The Complainant did not even exist at the date of registration of the domain name in dispute.
(ii) The Respondent should not be expected to know the activities and market position of the Complainant given its lack of presence in the Asia Pacific region.
(iii) The Respondent has never at any point offered the domain name for sale
to the Complainant or its competitors.
6. Discussion and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present;
(i) that the domain name in dispute 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 interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The Panel, on the basis of the evidence referred to above, has found that the Complainant has unregistered rights in the trading name EDREAMS. In the light of the absence of relevant registered trademark rights and having considered the evidence of the Complainant’s trading activity the Panel is satisfied that the Complainant has unregistered trademark rights in the mark EDREAMS. The Respondent casts doubt on whether unregistered rights are sufficiently established but does not support this submission by any evidence beyond stating “neither the Respondent nor his representative has come across or heard of EDREAMS Inc. until this proceeding”.
However, taking into account the evidence that the Complainant has only traded since 1999 the Panel finds that these rights extend only from 1999 which post dates the date of creation of the domain name in dispute.
The Respondent submits that even if the Complainant has rights in a trademark or service mark paragraph 4(a)(i) of the Policy is only satisfied if the trademark was registered before the domain name in dispute and that to find otherwise would be in conflict with the meaning and purpose of the Policy and general principles of trademark law. The Respondent refers to two previous Decisions to support this decision:
EzCommerce Global Solutions Inc. v Alpha Base Interactive
(aka Alpha BaseInteractive, Inc., Alpha Base Systems, Inc., and Alpha
Base Systems, Incorporated), WIPO Case
No. D2002-0943.
To counter the argument raised and the submission the Complainant relies upon the fact that the domain <edreams.com> which it now owns was created on 1996, ie prior to the domain name in dispute and asserts that it has consequently been used earlier to the registration of the disputed domain name. No evidence is given by the Complainant as to how the domain name <edreams.com> has been used prior to 1998, nor to account for the fact that the Complainant did not commence trading until at least March 1999. Moreover, the evidence adduced by the Respondent shows that the domain name <edreams.com> was used by third parties between May 1997 and February 1998.
Both the Phoenix and EzCommerce decisions are strongly in favour of the view that a Complainant who had no trademark rights (nor an immediately impending mark not known to the Respondent) when the Domain Name was registered should not have recourse under the Policy. They both take the view, as do other authorities cited in the EzCommerce decision, that any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally. The EzCommerce case outlines a number of exceptions to this view including a speculative registration based upon an impending merger between companies or the use of insider knowledge by the registrant. As in the EzCommerce case, no exceptions to this general rule concerning the date of registration and the commencement of trademark rights apply in this case.
Having considered the above authorities and the submissions of the parties, the Panel finds that the Complainant is unable to satisfy the test in paragraph 4(a)(i) of the Policy because it has no trademark rights which pre-date the date of creation of the disputed domain name.
The Panel nevertheless accepts the evidence of the Complainant that the disputed domain name is confusingly similar to the Complainant’s trade name EDREAMS. The Complainant rightly points out that the only distinction is the inclusion of “S” as a suffix.
The Panel has considered the arguments as to identity and confusing similarity put forward by the Respondent and in particular that the evidence of confusion caused by the similarity between the disputed domain name and the trademark should be considered on the basis of the likelihood of confusion amongst Internet users and that surrounding circumstances should be taken into account. In the Panel’s view it is unnecessary to go that far and that it is entitled to make a comparison of the Complainant’s mark EDREAMS with the disputed domain name <edream.com>. Having done that the Panel, in its view, inevitably comes to a finding of confusing similarity.
Nevertheless because the Complainant has failed to prove prior rights, it has not satisfied its burden of proof under Paragraph 4(a)(i) of the Policy.
The Panel finds for the Respondent in relation to this element.
B. The Rights or Legitimate Interest
Having found against the Complainant in relation to the first element it is not strictly necessary for the Panel to consider this second element. However, it will do so because of the request from the Respondent to make a finding of reverse domain name hijacking.
In support of this element, the Complainant relies upon a submission that the Respondent is not using the domain name in dispute and that it has no trademark rights in EDREAMS. It also submits that the Respondent is not commonly known by the domain name in dispute.
To counter these submissions the Respondent submits that the domain name has been in continuous use since 1999, and adduces evidence at Annex 10 to the Response from and to third parties pointing out that the domain name is used and reserved for a small number of friends and family affiliated from the Respondent. The evidence is affidavit evidence and both deponents assert that they have been users of email “since the start of 1999”. In the Panel’s view this evidence is sufficient to show that the Respondent has a right to use domain name in dispute and thatit has done so for legitimate non-commercial use.
The Respondent also raises the submission that because the domain name is merely “generic or descriptive” no-one has exclusive rights to common descriptive terms in their generic sense. The Respondent submits that “EDREAM” is a cyber derivative of the ordinary dictionary word “DREAM”. It is not necessary for the Panel to consider this argument.
The Panel for the reasons set out above finds for the Respondent in relation to this element.
C. Reverse Domain Name Hijacking
Having found that the Complainant has not proved its Complaint, the Panel must consider the issue of Reverse Domain Name Hijacking as requested by the Respondent.
The Respondent asked the Panel to make a finding of Reverse Domain Name Hi-jacking and a finding that the Complainant has abused the administrative proceeding “in an effort to strip Mr Wei’s legitimate right to the domain name in dispute”. It submits that the Complainant’s claims are “so groundless consisting primarily of a misrepresentation of the events and the use of implausible evidence, that it casts serious doubts on the intentions of the Complainant”. In particular, the Respondent submits:
(i) The Complainant has deliberately withheld information that <edreams.com> was acquired from a third party around November 1999; and
(ii) The Complainant fails to disclose the fact that between 1996 to 1998 the domain name <edreams.com> was used by third party companies.
Having considered all the issues in the case the Panel takes the view that there is no evidence of “misrepresentation” or “deliberate withholding of information”.
It is true that the only evidence of the Complainant’s
rights arising before June 29, 1998 depends upon the evidence relating to the
domain name <edreams.com>. That evidence as adduced by the Complainant
is flimsy. Nevertheless, the Panel does not consider that the Complaint as put
forward by the Complainant misrepresents the position or deliberately withholds
information. For this reason it is not prepared to make a finding of Reverse
Domain Name Hijacking.
7. Decision
For all the foregoing reasons the Complaint is denied. The Respondents’ request for a finding of Reverse Domain Name Hijacking is also denied.
Clive Duncan Thorne
Sole Panelist
Dated: July 24, 2006
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