Ecostyle B.V. v. IQ Management Corporation

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Ecostyle

BV v. IQ Management Corporation

Case No.

D2001-0375

1. The Parties

The Complainant is

Ecostyle BV, a company incorporated under the laws of the Netherlands, having

its principal place of business at Postbus 14, 8426 ZM, Appelscha, the Netherlands.

The Respondent is IQ

Management Corporation, a company incorporated under the laws of Belize,

having its principal place of business at Marage Plaza, Marage Road, PO

Box 1879, Belize City, Belize.

2. The Domain Name

and Registrar

The domain name at

issue is <ecostyle.com>, which is registered with TUCOWS.com, Inc,

96 Mowat Avenue, Toronto, Ontario, M6K 3 M1, Canada ("the Registrar").

3. Procedural History

A Complaint was submitted

in hardcopy to the World Intellectual Property Organization Arbitration and

Mediation Center (the "WIPO Center") on March

15, 2001, and electronically on April 10, 2001. An Acknowledgment of Receipt

was sent by the WIPO Center to the Complainant, dated March 26, 2001.

On March 26, 2001,

a Request for Registrar Verification was transmitted to the Registrar.

On April 4, 2001, the

Registrar confirmed that it was in receipt of the Complaint sent to the

Registrar by the Complainant, the domain name at issue, was registered with

the Registrar and that the Respondent was the current registrant of the

name. The Registrar also forwarded the requested WHOIS details, confirmed

that the Uniform Domain Name Dispute Resolution Policy was in effect and

stated that the domain name was on "Hold".

The Registrar has currently

incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy

(the "Policy"). The Policy was adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August

26, 1999. There is no evidence that the Respondent ever requested that the domain

name at issue be deleted from the domain name database. Accordingly, the Respondent

is bound by the provisions of Policy.

The Panel has determined

that the Complaint is in formal compliance with the requirements of the

Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as

approved by ICANN on October 24, 1999, (the "Uniform Rules"),

and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy,

in effect as of December 1, 1999, (the "WIPO Supplemental Rules").

The required fees for a single-member Panel were paid on time and in the

required amount by the Complainant.

No formal deficiencies

having been recorded, on April 11, 2001, a Notification of Complaint and Commencement

of Administrative Proceeding (the "Commencement Notification") was

transmitted to the Respondent (with copies to the Complainant, the Registrar

and ICANN), setting a deadline of April

30, 2001, by which the Respondent could file a Response to the Complaint. The

Commencement Notification was transmitted to the Respondent by post/courier,

facsimile and e-mail to the addresses indicated in the Complaint.

On April 29, 2001,

the Respondent submitted its response to the WIPO Center.

On May 11, 2001, the

WIPO Center issued to both parties a Notification of Appointment of Administrative

Panel and Projected Decision Date. This Notification informed the parties

that the Administrative Panel would be comprised of a single Panelist, Mr.

Jonas Gulliksson.

The Sole Panelist finds

that the Administrative Panel was properly constituted and appointed in

accordance with the Uniform Rules and WIPO Supplemental Rules. The Administrative

Panel shall issue its Decision based on the Complaint, the Response, the

Policy, the Uniform Rules and the WIPO Supplemental Rules.

4. Factual Background

The Complainant is

a company engaged in the business of selling biological gardening products,

such as herbicides.

The Respondent is an

Internet branding and marketing specialist, responsible for clients web

sites.

5. Parties’ Contentions

A. The Complainant’s

contentions are as they appear in the following extracts from the Complaint:

[The Complainant] owned

<ecostyle.com> since November 17, 1997. As a result of a mistake or

a failure of communication, the name registration at Network Solutions,

Inc. was cancelled. Before notification of this cancellation, the domain

name was registered by a company named Tucows, located in Toronto, Ontario.

This company offered it for sale and Respondent bought the name. At the

moment there is no web site linked to the domain name.

In accordance

to paragraph 4(a) of the Policy, the complaint alleges (i) Domain Name

identical to a trademark in which Ecostyle BV had rights, (ii) Respondent has

no rights or legitimate interests in respect of the Domain Name and (iii) the

Domain Name is being registered and is being used in bad faith.

(i) The Domain

Name is identical to a trademark in which Ecostyle BV has rights

As the evidence shows

(annex 3 to the Complaint), the mother company of Ecostyle BV (A.J. Zwart

Beheer B.V. at the same address at Appelscha) has a registered trademark

in the Benelux (Belgium, The Netherlands and Luxembourg). By registering

and using the domain name Tucows is infringing this trademark and tradename

rights. The name Ecostyle refers to an ecological way of gardening. Hence,

it is a name which is easy to remember for potential customers of the company.

Trying to attract customers in the rest of the Benelux or the European Union,

a ".com" domain has proven to be successful over the past couple

of years. Respondent’s registration prevents Ecostyle BV from maintaining

its own web site under the top-level domain ".com".

(ii) Tucows has

no rights or legitimate interests in respect of the Domain Name

Just like the panel

decision in the case Vertical Computer Systems, Inc. v. Registrant of

"pointmail.com" (Case No. D2001-0006), in which Tucows was

the Respondent, the Panel was satisfied that Tucows had no rights or legitimate

interests in respect of the Domain Name, since its only use for the Domain

name was offering it for sale. Considering the great similarities of that

case in this respect with the present dispute, it seems as the second requirement

is satisfied.

(iii) The Domain

Name is being registered and is being used in bad faith

Paragraph 4(b) of the Policy

lists several circumstances which shall be evidence of the registration and

use of a domain name in bad faith. Tucows has registered the domain name primarily

for selling, renting or otherwise transferring the name to Ecostyle BV or one

of its competitors or to the highest bidder.

Finally the Complainant

has requested the Panel to transfer the domain name "ecostyle.com"

from the Respondent to the Complainant.

B. The Respondent’s

contentions are as they appear in the following extracts from the Response:

Complainant claims

that the domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights. Complaints only evidence

of any such mark is a photocopy of a fax that is not in the English language.

Respondent has no idea if this evidence is, in fact, a trademark certificate.

Given the top shows a stylised logo, it may actually only be for a stylised

logo rather than for a word. Respondent also has no idea what class of goods

and services their alleged mark covers. As the evidence submitted is not

in the language of the Registration Agreement and thus contravenes 11(a)

of the ICANN UDRP Rules, Respondent respectfully requests that the panel

disallow Complainant's annex 3a and 3b as evidence of a trademark.

In paragraph 12 of

the Complaint, Complainant alleges that Tucows registered the domain name,

and then offered it for sale to the Respondent. This is false. Tucows is

an accredited ICANN Registrar, and is entitled to offer to be registration

agent for whoever wishes to register the name. The UDRP is intended to remedy

clear trademark infringement cases. It is not intended as a way for a Complainant

to remedy an internal administration error, by falsely accusing the new

registrant of TM infringement. The rights to the use of a domain name only

exist as long as the annual lease fee is paid to the Registrar. This is

made perfectly clear in the Registration Agreement, and the Complainant

agreed to such non-perpetual terms when they first registered the name.

Citing the appropriate NSI Registration Agreement at http://nsi.com/en_US/legal/service-agreement.jhtml

paragraph 4: "Unless otherwise specified, each Network Solutions' service

is for a two-year initial term and renewable in perpetuity thereafter for

successive one to ten-year terms, as specified during the renewal process.

Any renewal of your services with us is subject to our then current terms

and conditions and payment of all applicable service fees at the time of

renewal ".

Although NSI actively

attempted to get its registrant to renew, by sending a number of reminder

e-mails and letters, the Complainant clearly lost itsrights to the domain

name when they failed to pay the annual lease renewal fee for the name.

A domain name is a location on the Internet. It is similar to a piece of

real estate. If the owner of a jewellery store on Oxford Street fails to

pay their rent, and after ignoring all legal reminders, is evicted from

their premises, they can't go back later and take over the space after another

leasee has moved in, under the argument that they used to be there. Complainant

does not specify whether the alleged "mistake or failure of communication"

was the fault of the Complainant or its Registrar, NSI. Whichever, a UDRP

action against an innocent registrant of a legally recycled domain name

is not the correct remedy to the matter.

Complainant alleges

that by registering and using the domain name <ecostyle.com>, Respondent

is infringing on Complainants trademark and tradename rights. Respondent

denies any such infringement. The mere registration and use of a domain

name does not automatically infer infringement. Complainant seems to allege

that Ecostyle refers to an ecological way of gardening. Respondent is not

in the business of gardening, either ecological or not, and cannot be found

to be infringing Complainants rights. According to the USPTO, the mark "ecostyle"

is registered in the USA for the categories "Textile rugs, carpets, and

textile floor mats for use in the home" and "clothing, namely, pants, shirts

and blouses, suits, jackets, coats, shorts, vests, dresses, sweaters, leggings,

socks, shoes, boots, belts, camisoles, pajamas and nightgowns, bathrobes,

underwear, bras, and hats.". Respondent does not do business in these areas

either, so is not infringing on those TM holder's rights, or the rights

of the Complainant.

Complainant has failed

to provide any evidence to suggest that the Respondent has no rights in

the domain name. It has failed so badly that it has resorted to name the

ICANN accredited registrar Tucows as the entity not having any rights or

legitimate interests in respect of the domain name. This allegation contravenes

ICANN UDRP Rule 3 (b) (xiv) by naming the Registrar as a party to the proceedings

and negates Complainants statement in paragraph 20 of their complaint waiving

claims against the Registrar. Respondent respectfully requests that if the

Panel does not refuse the Complaint on these grounds, that it ignores Paragraph

12 (ii) of the Complaint.

Complainant incorrectly

cites the case D2001-0006 as a case where Tucows was the respondent. Although

Respondent feels the decision in this case should match the decision in

that one, we fail to see many similarities between the cases, apart from:

a. the Complainant

was a previous registrant of the domain name, which the panel, quite

rightly, refused to have any bearing in the case, and;

b. the Panel

was not persuaded that the Domain Name was registered and is being

used in bad faith. The evidence was consistent with the possibility

that the Respondent registered the Domain Name when it became available

because of its value as a descriptive name.

Again in paragraph

12 (iii) of the Complaint, the Complainant attempts to make a claim against

the Registrar of the name, probably because they could not actually find

any evidence of bad faith against the Registrant. Respondent would like

to draw the panels attention to an email sent to Respondent shortly after

it registered the domain name. This email appears as exhibit One in the

Appendices to this Response. This was the second email we had received from

this person. We had deleted the first one without responding to it. The

text of the email received confirmed that we did not respond to a prior

request to sell the name. Respondent highlights the fact that the sender

of the email appears to have constructed a very weak and unusual reason

for wanting the name - "because we are all vegetarions and we all study

Economy the name 'ecostyle.com' seemed very suitable" and the email originated

from the Nederlands, suggesting that it may well have been the Complainant,

or one of its representatives, trying to illicitly gather evidence to be

used in this proceeding. Obviously, if it was indeed them, they failed miserably

in their quest. Lord knows it would be very silly for a competitor of the

Complainant to acquire this name, and I expect the Panel will agree.

The Respondent is an Internet

Branding and Marketing Specialist, responsible for clients web sites receiving

millions of visitors every month. One of our services we extend to clients is

the identification of suitable brand names for their products and services,

and the acquisitions of domain names to reflect such. One of our clients is

in the business of vegetable oil production and we were given the task of securing

a brand name and suitable domain names for a new hempseed oil product they are

intending to launch. On January 17, 2001, we succeeded in registering the generic

domain <hempseedoil.com>, and to the further delight of our client, registered

the brandable domain ecostyle.com on February 14, after it had been "on-hold"

for non-payment for well over a month and thus deleted and available for registration

by all-comers. Such an occurrence is common. Literarily thousands of names are

deleted by NSI every day for non-payment.

Our client is very

upset that their plans to launch the product have had to be put on hold

due to the actions of a former registrant of the domain name, who no longer

has any rights to it. Website construction has been contracted out (we believe

a preliminary website is about to be completed), logos designed, and other

actions necessary to launch a new brand. Our client has asked to not be

named in this Response, for competitive reasons, and we respect our client's

wishes. We are named as registrant as we hold the name in trust for our

client, as it is often necessary for those same competitive reasons to do

so. We are, understandably, quite upset too, with the prospect of our hard

work identifying and acquiring a suitable brandable product name and domain

threatened, returning both us and our client to square one, at considerable

expense and with zero compensation offered. If this is the way the system

works, then the system needs changing urgently. The name was not registered

in "bad faith", is not being used in "bad faith" and was not registered

"primarily for selling, renting or otherwise transferring the name to Ecostyle

BV or one of its competitors, or to the highest bidder". Neither the Respondent

or its client are in the gardening business, or operating in the Benelux

region, and neither have any wish to have the intended product confused

with biological herbicide, as spaying hempseed oil onto weeds is unlikely

to have the desired effect.

6. Discussion and

Findings

According to Paragraph

15 (a) of the Rules the Panel shall decide a complaint in accordance with

the Policy, the Rules and any rules and principles of law that it deems

applicable.

Paragraph 4 (a) of

the Policy directs that the Complainant must prove each of the following:

1) that the

domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has

rights; and,

2) that the

Respondent has no legitimate interests in respects of the domain name;

and

3) the domain name

has been registered and is being used in bad faith.

The domain name <ecostyle.com>

is identical with the trademark "ecostyle" except for the addition

of the suffix ".com". The Complainant has alleged that it is its

mother company, A.J. Zwart Beheer B.V., that owns the trademark "ecostyle".

The Complainant has not proved that it has any rights to use and exploit

the trademark "ecostyle". Nor has Complainant proved that its

parent company is the owner of the trademark and has given its permission

to Complainant to exercise its trademark rights. With respect to these facts

the Panelist is of the opinion that it is doubtful if the Complainant has

demonstrated any rights to the trademark "ecostyle". However,

due to the judgment regarding Paragraph 4 (a) (iii) below the Panelist sees

no reason to base his decision on the aforesaid circumstance.

Paragraph 4 (a) (ii)

of the Policy provides that the Respondent shall have no rights or legitimate

interests in respect of the domain name.

The Complainant has

asserted that the Respondent has no rights or legitimate interest in the

domain name.

The Respondent has stated

that the domain name was registered on behalf of a client and that the Respondent

is named as registrant as it holds the name in trust for a client. The Panelist

is of the opinion that these circumstances do not constitute

rights or legitimate interests in the domain name.

The prerequisite in

the Policy, Paragraph 4 (a) (ii) is fulfilled.

Paragraph 4 (a) (iii)

of the Policy further provides registration and use in bad faith.

The Complainant has

alleged that a company named Tucows registered the domain name at issue

primarily for selling, renting or otherwise transferring the name to Complainant

or one of its competitors or to the highest bidder. The Complainant has,

however, not established that the Respondent has acted in bad faith according

to any of the situations enumerated in the Paragraph 4 (b) of the Policy.

Consequently, the Panelist concludes that Complainant has not proved that

the domain name at issue has been registered and is being used in bad faith.

7. Decision

In view of the above,

Complainant’s request that the domain name <ecostyle.com> be transferred

from Respondent to Complainant is denied.

Jonas Gulliksson

Sole Panelist

Dated: May

23, 2001