Fleetstar Information Systems Ltd. v. Stephen Morris

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Fleetstar

Information Systems Ltd. v. Stephen Morris

Case No.

D2001-0518

1. The Parties

1.1 The

Complainant is Fleetstar Information Systems Ltd. of Cranfield, United Kingdom.

1.2 The

Respondent is Stephen Morris of Woodstock, Maryland, United States of America.

2. The Domain Name and

Registrar

2.1 The Domain

Name is <fleetstar.com>.

2.2 The

registrar with which the domain name is registered is: Network Solutions

Inc., ("NSI"), 505 Huntmar Park Drive, Herndon, Virginia 20170

USA.

3. Procedural History

3.1 Complaint

filed on April 9, 2001, naming Stephen Morris as Respondent.

3.2 The

Complainant elected to have the dispute decided by a single-member Administrative

Panel.

3.3 In

accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit,

only with respect to any challenge that may be made by the Respondent

to a decision by the Administrative Panel to transfer or cancel the domain

name that is the subject of this Complaint, to the jurisdiction of the

courts where the Respondent’s is located, as shown by the address given

for the domain name holder in the concerned registrar’s Whois database

at the time of the submission of the Complaint to the WIPO Center.

3.4 No

legal proceedings have been initiated, as yet (Rules, paragraph 3(b)(xi)).

3.5 As

required by the Rules and the WIPO Supplemental Rules, payment in the

amount of USD 1,500 has been sent with the initial Complaint on April

5, 2001.

3.6 The

Complainant agreed that its claim and remedies concerning the registration

of the domain name, the dispute, or the dispute’s resolution shall be

solely against the domain name holder and waives all such claims and remedies

against (a) the WIPO Arbitration and Mediation Center and Panelists, except

in the case of deliberate wrongdoing, (b) the concerned registrar, (c)

the registry administrator, (d) the Internet Corporation for Assigned

Names and Numbers, as well as their directors, officers, employees, and

agents.

3.7 A copy

of this Complaint, together with the cover sheet as prescribed by the

Supplemental Rules, has been sent or transmitted to the Respondent on

April 9, 2001, by email and mail address as specified above

pursuant to the Rules, paragraph 2(b).

3.8 A copy

of this Complaint, has been sent or transmitted to the concerned registrar

on April 9, 2001.

3.9 On

April 11, 2001, Respondent received a Notification of Complaint and Commencement

of Administrative Proceeding from the WIPO Arbitration and Mediation Center

(Center) by postal service informing the Respondent that an administrative

proceeding had been commenced by Complainant in accordance with the Uniform

Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999

(the Policy), the Rules for Uniform Domain Name Dispute Resolution

Policy, approved by ICANN on October 24, 1999 (the Rules) and the

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the Supplemental Rules). The Center set May 1, 2001 as the date

for the submission of a Response by Respondent.

3.10 The

single panel member, Cecil O.D. Branson, Q.C. submitted a Statement of

Acceptance and Declaration of Impartiality and Independence on May 8,

2001, and was duly appointed in accordance with paragraph 15 of the Rules.

The Panel was required to forward its decision to the Center by May 24,

2001.

4. Factual Background

4.1 The

Complainant, Fleetstar Information Systems Ltd. is a corporation located

in the United Kingdom, and is a member of the Trafficmaster plc Group

("Trafficmaster"). Trafficmaster applied to register the trademark

"Fleetstar" in the United Kingdom on November 12, 1999. The

Complaint, while it says that this registration was granted, does not

say when this occurred. Subsequently an application for a European Community

Trade Mark was made on May 9, 2000, at which time the applicant claimed

United Kingdom priority effective November 12, 1999. Specification

for the goods and services covered by these applications were as follows:

Class 09: Electrical

and electronic apparatus and instruments for providing visually and/or

aurally information about individual vehicles, the locations, routes and

speeds of individual vehicles, electrical and electronic apparatus and

instruments locatable in vehicle interiors for providing information visually/

and/or aurally and for monitoring individual vehicles, equipment and control

centres for monitoring and communicating with individual vehicles.

Class 39: Provision

of information about monitoring individual vehicles, provision of information

about the locations, routes and speeds of individual vehicles, monitoring

and communicating with individual vehicles, monitoring of locations, routes

and speeds of individual vehicles.

That registration

was granted, although the Complaint, again, does not say when.

4.2 On

January 31, 1995, application was made to register the aforesaid trade

name in the United States by an unknown party. This registration was transferred

to Trafficmaster, on December 28, 2000. The description of the services

for this registration is for:

"computer

software and manuals sold therewith in the field of managing vehicle

and driver records for use by companies operating commercial motor

vehicles"

4.3 On

March 6, 2000, the Respondent registered the domain name <fleetstar.com>.

4.4 The

Complainant, on May 19, 2000, registered Fleetstar domains under .net,

.co.uk, and .nl.

4.5 The Complainant’s

web sites as aforesaid, describe Fleetstar as a dynamic fleet management information

system which provides the ability to view both historic and real-time vehicle

activity in addition to a range of key performance indicators on driver and

fleet activity (www.fleetstar.co.uk entered May 10, 2001) (Footnote 1)

4.6 The

Respondent has been involved in the fleet management industry for seven

years and is responsible for the development, support and release of several

web-based fleet management applications with his present employer.

5. Parties’ Contentions

A. Complainant

5.1 Complainant

contends that the domain name <fleetstar.com> is virtually identical

to its registered trademarks and domain names as set out above in

paras. 4.1, 4.2 and 4.3 and that the Respondent’s use of the domain

name in question infringes on Complainant’s rights by confusing the

public as to the origins of the <fleetstar.com> web site.

5.2 Complainant

contends that Respondent has no rights or legitimate interest in the

domain name <fleetstar.com> pursuant to the Policy, para. 4(a)(ii).

5.3 Complainant

contends that Respondent registered and used the domain name <fleetstar.com>

in bad faith in violation of the Policy, para. 4(a)(iii).

B. Respondent

5.4 Respondent

does not contest the fact that its domain name is identical with the

trademark Fleetstar, and the second-level names which are the property

of the Complainant. However, he argues against it being confusingly

similar. In this regard he alleges that the name in question is one

which is descriptive generally.

5.5 The

Respondent claims to have a demonstrable legitimate interest in the

domain name.

5.6 The

Respondent denies any bad faith in regard to his application for and

his use of the domain name <fleetstar.com>. Finally, he says

that he was totally unaware of the existence of the Complainant at

the time he registered Fleetstar.com.

C. No Other Submissions

5.7 The

Panel has not received any requests from Complainant or Respondent

regarding further submissions, beyond the Complaint, waivers, or extensions

of deadlines, and the Panel has not found it necessary to request

any further information from the Parties.

6. Discussion and Findings

6.1 The

Complaint was submitted on the basis of the provisions of the Registration

Agreement in effect between the Respondent and NSI, which incorporates,

by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy")

by way of NSI’s domain name dispute policy in effect at the time of the

dispute. The policy requires that domain name registrants such as Respondent

submit to a mandatory administrative proceeding regarding third-party

allegations of abuse of domain name registration (Policy, paragraph 4(a)).

6.2 Such

administrative proceedings are conducted by ICANN-approved dispute resolution

service providers such as WIPO. The Policy provides an administrative

means for resolving disputes concerning allegations of abuse of domain

name registration, subject to referral of the dispute to a court of competent

jurisdiction for independent resolution (Policy, paragraph 4(a)).

6.3 The

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

(the "Rules"), establish procedures intended to assure that

respondents are given adequate notice of proceedings commenced against

them, and a reasonable opportunity to respond (See e.g. paragraph 2(a),

Rules).

In order to obtain

the relief requested under the Policy, Complainant must prove in the administrative

proceeding that each of the three elements of paragraph 4(a) are present:

(i) The domain

name registered by Respondent is identical or confusingly similar

to a trademark or service mark in which Complainant has rights.

6.4 This

Panel accepts that the Complainant is the holder of the registration of

the trademarks and domain names referred to in paras. 4.1 through 4.4

above, although the dates of the European Community Trade Mark Application

and the transfer of the United States registration to the parent company

of the Complainant both occurred after the date on which the Respondent

acquired registration of the domain <fleetstar.com>.

6.5 The

term "fleetstar" is a conjunction of two generic words – although

this does not necessarily make this juxtaposition a generic word. It has

been said by other Panels that a Complainant must tolerate that other

entities make use of such terms and therefore it is not confusing the

relevant customers that the domain name and the trademark co-exist. See

Welltech ApS v. Dave Gardner WIPO Case No. (D2000-1145). The name

in question is an obvious conjunction of two common words, "fleet"

and "star". Common words and descriptive terms are legitimately

subject to registration as domain names on a "first-come, first-served"

basis. See Zero International Holding GmbH & Kommanditgesellschaft

v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161; EAuto,

L.L.C. v. E Auto Parts, WIPO Case No. D2000-0096; Asphalt Research

Technology, Inc. v. National Press & Publishing, Inc. WIPO Case

No. D2000-1005. This Panelist typed the word "fleetstar" into

the Google search engine. This produced, along with the web sites of the

Complainant and Respondent, sites promoting the sale of liquid natural

gas, sand and gravel trucks, and Mercedes-Benz trucks.

6.6 In light of

the findings made below, this Panel makes no determination in regard to this

requirement.

(ii) Respondent

has no rights or legitimate interests in respect of the domain name.

6.7 The Respondent

states that the domain name of <fleetstar.com> was chosen as an acronym

for services which the Respondent will provide: Fleet Satellite

Tracking And Response . Further, he says he does not intend

to market the application or suite of tools using the name "Fleetstar",

and that this name was chosen exclusively to serve as a Portal. Thus, it will

serve as an entry point to a suite of applications designed to improve the delivery

of relevant, real-time information. The applications provided, it is said, will

leverage emerging technologies including wireless communication and vehicle

telematics to effectively deliver information to business decision makers. In

this regard, it would do well to note that the Respondent registered <Fleetstar.com>

as a result of his background in the fleet-management industry for seven years

and is either employed by or partnered with a person who used the Internet to

provide relevant, real-time data to business decision-makers. Respondent also

states that he is responsible for the development, support and release of several

web-based fleet management applications and has extensive experience and exposure

in the fleet industry.

6.8 There

is no need for evidence that the Respondent is commonly known by the domain

name where there is evidence that, before the Respondent received notice

of this dispute, he has used or made demonstrable preparations to use

the domain name or a name corresponding to the domain name in question

in connection with a bona fide offering of goods or services. See

3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No.

(D2000-0110); Sloan Capital Companies and Stuart M. Sloan v. Sloan

E-Mail Services, WIPO Case No. D2001-0138.

6.9 The

onus of proof in establishing absence of legitimate rights or interests

and registration and use in bad faith is on the Complainant, although

the burden of proof is a shifting one. See John Swire & Sons Ltd.

v. David Huang WIPO Case No. (D2000-1106), Office Club, Ltd. v.

John Adem WIPO Case No. (D2000-1480) -- primary burden

is on the Complainant.

6.10 In

respect of this issue before the Panel in this case, the finding is that

the Complainant has not established a prima facie case.

(iii) The

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

6.11 The

Complaint says that "[t]he respondent has requested payment of over

£28000 U.K. Sterling for the transfer of this name, a sum clearly in excess

of any out-of-pocket registration costs and is clearly promoting the sale

of this domain via the current home page…"

6.12 What

actually occurred here is revealed through three e-mails.

6.13 It is clear

that the Respondent did not approach the Complainant and attempt to sell it

the domain name in question. Instead, the Complainant had a representative of

a web-design agency make a clandestine inquiry as to what would be required

if one of his clients was interested in obtaining the <fleetstar.com>

domain name. Within a matter of hours, the Respondent replied in a manner unlike

what one would expect of a classic cyber-squatter. In essence, he explained

how his domain name was conceived, the demonstrable preparations he was making

for its use, and the fact that he had received several phone call inquiries

from individuals "trying to contact Fleetstar, company". What follows

is material because he says that most of these calls were following up on applications

for credit cards and inquiries about fuel. A gas credit card-issuing company

also holds a "fleetstar" trademark in the United States.(Footnote

2) The fuel likely refers to the liquid natural gas business referred to

in para.6.5 above. This Panel takes from this that while there were people who

were confused, none of them appeared to have been potential or actual customers

of the Complainant. This confirms the common nature of the name in question.

The Respondent then justifies some compensation for giving up the name, which

is precisely what Mr. Dallamore sought on behalf of the, as yet, unknown

inquirer. The last line of this e-mail is, perhaps, the most telling for it

says "if you have any alternative suggestions I would welcome them…"

This Panel takes this as an honest attempt to discuss possible win-win solutions

to the problem which had arisen. The Respondent has said that this is the only

domain name which he has ever registered and he was unaware of the existence

of the Complainant when the domain name in question was registered. This Panel

accepts these assertions as a fact.

6.14 The

Complainant’s agent advises his principal of the exchange of communications,

as above, and concludes as follows:

"At this

stage there are a couple of options – make him an offer, or get lawyers

involved. I’m trying to contact a lawyer we have used before who is

expert in this area, I’ll let you know when I hear from him.

"For more

guidance on domain disputes please see http://www.domainmagistrate.com/".

A lawyer was

not used for this dispute, and the web-site in question contains substantial

information, either directly or through links, relating to domain name

disputes.

6.15 The

Respondent’s response to the request from the Complainant, indicating

that he would accept a substantial amount of money for the transfer of

the domain name, is not necessarily evidence of bad faith where the Respondent

does not initiate the negotiations in this regard. See Rogers Cable

Inc. v. Arran Lal WIPO Case No. (D2001-0201). This Panel finds that

under the circumstances set out above, this is not evidence of bad faith

in this case.

6.16 The

Respondent’s answer to the Complainant’s assertion that the Respondent

is "clearly promoting the sale of this domain via the current homepage",

is that the purpose of the current screen is to encourage potential partners,

generate interest in the site and is used at every meeting with potential

partners. It might be helpful in assessing this issue to reproduce this

site.

Under Construction

Interested in this URL for your Fleet Application?

Your Web enabled fleet application could be accessed at

www.fleetstar.com

Stephen Morris

410-771-2046

http://www.fleetstar.com

6.17 This Panel

finds that this text is consistent with the response of the Respondent as set

out in para. 6.16.

6.18 Further,

the Complainant says that it considers that the domain has been registered

and used in bad faith as the Respondent apparently works for another fleet

management organization and allegedly plans to use this name to establish

a competitive vehicle telematics product despite the existence of known

and established U.S./European trademarks for this name. Respondent denies

this. See para. 5.6 above.

6.19 The

Final Report of the WIPO Internet Domain Name Process of April 30, 1999,

addressed the scope of the intended administrator procedure. In that Report

it was noted that the preponderance of views in this regard was in favour

of restricting the scope of the procedure, at least initially, in order

to deal first with the most offensive forms of predatory practices and

to establish the procedure on a sound footing. Thus, the procedure was

to be limited in such a way as to confine its availability to "cases

of deliberate, bad faith abusive registrations." WIPO Publication

No. 92-805-0779-6, paras. 165-168. This being the case, the procedure

must be understood as not being a method by which competing claimants

may obtain a decision as to which is more entitled to the domain in question.

Further, the burden of proof on all issues under the Policy is on the

Complainant. The appropriate standard is the civil standard of a preponderance

of the evidence. Under the preponderance of the evidence standard a fact

is proved for the purpose of reaching a decision when it appears more

likely than not to be true based on the evidence. See American Online

Inc. v. Anson Chan WIPO Case No. (D2001-0004).

6.20 This

Panel accepts as fact that this is the only domain name ever registered

by the Respondent and that he was not aware of the Complainant at the

time of registering the domain <fleetstar.com>.

6.21 This Panel

is not able to find that the Complainant has proven that the domain name has

been registered and is being used in bad faith.

7. Decision

7.1 This

Panel notes that the only relief sought by the Complainant was that the

domain name be transferred to it. In this case, therefore, there is no

need to give any consideration as to whether the domain name should be

cancelled.

7.2 The

ruling of this Panel is that the registration of the domain <fleetstar.com>

not be transferred to the Complainant.

Cecil O.D.

Branson, QC

Sole Panelist

Dated: May

18, 2001

Footnotes:

1. It may be noted that

here and later, for the purpose of searching for other uses of the "Fleetstar"

name, this Panelist conducted an internet search. This is a practice undertaken

by Panelists in earlier cases. See Welltea ApS v. Dave Gardner, WIPO

Case No. D2000-1145; Sloan Capital Companies and Stuart M. Sloan v. Sloan

E-Mail Services, WIPO Case No. D2001-0138. (back to text)

2. This Panel searched

the U.S. Trademark Electronic Search System, www.tess.uspto.gov on 15 May, 2001,

this being a public record. (back to text)