International E-Z UP, Inc. v. Affordable Instant Shelters, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

International

E-Z Up, Inc. v. Affordable Instant Shelters, Inc.

Case No.

D2001-1244

1. The Parties

The Complainant in this

administrative proceeding is International E-Z Up, Inc. whose address is 1601

Iowa Avenue, Riverside, CA 92507, USA. The Respondent in this case is Affordable

Instant Shelters, Inc., whose address is 6820 Benjamin Road, Suite 12, Tampa,

Florida 33634, USA.

2. The Domain Name and

Registrar

The domain name at

issue is <instantshelters.com> which is registered with Internet Names

Worldwide, a division of Melbourne IT Ltd ("Melbourne IT").

3. Procedural History

A Complaint was received

by the World Intellectual Property Organization Arbitration and Mediation Center

(the "WIPO Center") on October 15, 2001.

On October 18, 2001

a Verification Response was received from Melbourne IT which served to: (1)

confirm that Melbourne IT was in receipt of the notification of the domain name

dispute; (2) confirm that Melbourne IT is the registrar of the domain name;

(3) confirm that Respondent is the current Registrant of the domain name; and

(4) provide the full contact details (i.e., postal address(es), telephone number(s),

e-mail address(es)) available in the registrar’s WHOIS database for the Registrant

of the disputed domain name, the technical contact, and the administrative contact.

On October 23, 2001,

a Formal Requirements Compliance review was completed by the assigned WIPO Center

Case Administrator. The WIPO Center determined that the Complaint is in formal

compliance with the requirements of the Uniform Domain Name Dispute Resolution

Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain

Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the

"Rules"), and the WIPO Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental

Rules").

A Notification of Complaint

and Commencement of Administrative Proceeding was sent by the WIPO Center to

the Complainant (email) and Respondent (post/courier and email), dated October

23, 2001. The Notification set a deadline of November 12, 2001 by which the

Respondent could make a Response to the Complaint. Respondent submitted a Response

dated November 12, 2001. Respondent submitted an amended affidavit on November

20, 2001 correcting a misstatement in the original affidavit and Response.

On December 4, 2001,

the WIPO Center sent to the parties a Notification of Appointment of Administrative

Panel in which Roderick M. Thompson was appointed to serve as Panelist. Mr.

Thompson submitted a Statement of Acceptance and Declaration of Impartiality

and Independence to the WIPO Center. The Projected Decision Date, as determined

by the WIPO Center and transmitted to the parties on December 4, 2001, is December

18, 2001.

4. Factual Background

Complainant has provided

evidence that it is the owner of U.S. trademark registration No. 1,803,282

for the mark INSTANT SHELTER for "collapsible tents" which was registered

in 1993. Complainant also owns Canadian and Benelux trademark registrations

for the INSTANT SHELTER mark. Complainant is in the business of providing collapsible

canopy products. Complainant offers and sells its collapsible canopy products

through its website at <www.instantshelter.com>.

Respondent, Affordable

Instant Shelters, Inc., is the current Registrant of the domain name <instantshelters.com>.

Respondent registered the domain name in November 1996. In 1997, Respondent

registered the fictitious business name "Affordable Instant Shelters, Inc."

At some point after registration of the domain name, the exact timing is not

clear from either the Complaint or the Response, Respondent became an authorized

dealer of Complainant. Complainant terminated Respondent’s dealer status on

January 30, 2001.

Complainant sent a

letter to Respondent on July 23, 2001, requesting that Respondent cease using

Complainant’s trademarks and transfer the disputed domain name to Complainant.

Respondent requested additional information on August 13, 2001, in order to

analyze the issue. Complainant responded on August 23, 2001. Respondent apparently

did not respond to Complainant’s August 23 letter.

5. Parties’ Contentions

A. Complainant

Complainant asserts that

the domain name <instantshelters.com > is virtually identical to Complainant’s

trademark INSTANT SHELTER, except that the domain name includes the letter "s".

Complainant asserts, therefore that the domain name infringes Complainant’s

trademark rights, creates a likelihood of confusion, and has resulted in actual

confusion.

Complainant alleges that

Respondent does not have a legitimate interest in the domain name because Respondent

is no longer an authorized dealer of Complainant and Complainant notified Respondent

that Respondent was no longer allowed to use Complainant’s logo or pictures

of Complainant’s products. Complainant also sent a letter to Respondent in July

2001 requesting that Respondent cease use of its trademarks and transfer the

domain name to Complainant. Further, Complainant indicates that although Respondent

is known by the name Affordable Instant Shelters, Inc., Respondent has not been

commonly known by the contested domain name <instantshelters.com>.

Complainant alleges that

Respondent has registered and used the domain name in bad faith. Complainant

claims that Respondent has registered the name to attempt to attract, for commercial

gain, Internet users to its website or other on-line location, by creating a

likelihood of confusion with Complainant’s mark. Further, Complainant asserts

that Respondent’s current use of the domain name is to intentionally divert

actual and prospective customers of Complainant’s goods for its own commercial

gain and to create a likelihood of confusion.

Additionally, Complainant

indicates that Respondent registered the domain name <all-shelters.com>

on September 22, 2000 and that the content of the <all-shelters.com> website

is identical to the content at the <instantshelters.com> web site. Finally,

Complainant alleges that Respondent’s failure to respond to Complainant’s demand

letter constitutes further evidence of bad faith.

B. Respondent

Respondent disputes Complainant’s

assertions. Respondent claims that Complainant’s mark is a common and descriptive

term for readily assembled shelters or canopies. Respondent also claims that

Complainant does not use the term "instant shelter" as a trademark,

but rather uses it as a description for Complainant’s goods.

Further, Respondent contends

that it has a legitimate interest in the disputed domain name because Respondent

was using the domain name in connection with the bona fide offering of goods

and services before notice of this dispute. Respondent asserts that it has been

using the domain name since 1997 to sell instant shelters. Respondent claims

that it registered the domain name as a continuation of its pre-existing business.

Further, Respondent notes that the domain name corresponds to Respondent’s corporate

name–Affordable Instant Shelters, Inc. –which it registered in 1997. Respondent

also asserts that prior to registering the domain name Respondent did not know

that Complainant claimed the term "instant shelter" as a trademark.

Additionally, Respondent

asserts that it did not register, and has not used, the disputed domain name

in bad faith. Respondent claims that it did not register the domain name for

the purpose of disrupting Complainant’s business or in an attempt to attract

Internet users to Respondent’s site by creating a likelihood of confusion. According

to Respondent, Respondent registered the name because it incorporates a common

term that is closely associated with Respondent’s pre-existing business operations

and the goods provided by Respondent.

Finally, Respondent asserts

that Complainant has filed this dispute in an effort to put Respondent, Complainant’s

competitor, out of business. Respondent notes that Complainant has filed two

other law suits against Respondent this year, neither of which relate to the

domain name.

6. Discussion and Findings

A. Applicable Rules

and Principles of Law.

Paragraph 15(a) of the

Rules sets out the principles the Panel is to use in rendering its decision:

"A Panelist shall decide a Complaint on the basis of the statements and

documents submitted in accordance with the Policy, these 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:

(i) that the domain

name registered by the Respondent is identical or confusingly similar to a trademark

in which the Complainant has rights;

(ii) that the Respondent

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

(iii) the domain name

has been registered and used in bad faith.

B. Application of Paragraph

4(a) to the Facts.

Registration and use in

bad faith

Paragraph 4(a)(iii) of

the Policy requires the Complainant to show that the domain name has been registered

and used in bad faith. Complainant claims that Respondent has registered the

name to attempt to attract, for commercial gain, Internet users to its website

or other on-line location, by creating a likelihood of confusion with Complainant’s

mark. Complainant also asserts that Respondent is using the domain name to intentionally

divert Complainant’s customers.

Complainant does not offer

any evidence to support these allegations, however. There is no evidence that

Respondent intended to attract Complainant’s customers to Respondent’s web site

or intended to create confusion. Instead, it appears that Respondent registered

a domain name that Respondent considered to be a descriptive term for its ongoing

business.

Complainant also claims

that Respondent’s failure to respond to Complainant’s demand letter constitutes

bad faith. Mere failure to respond to a demand letter does not, without more,

constitute bad faith registration and use of a domain name. Further, Respondent

did not completely ignore Complainant’s repeated demands. Complainant sent one

demand letter regarding the domain name and Respondent’s counsel responded to

that letter with a request for additional information.

The Panel finds, therefore,

that Complainant has not met its burden of showing that Respondent registered

and used the domain name in bad faith.

Respondent’s rights and

legitimate interests in the domain name

Under the Policy, Complainant

bears the burden of proving that Respondent does not have a legitimate interest

in the domain name. Complainant alleges that Respondent does not have a legitimate

interest in the domain name because 1) Respondent is no longer an authorized

dealer of Complainant; 2) Complainant sent a letter to Respondent requesting

that Respondent cease use of its trademarks and transfer the domain name to

Complainant; and 3) Respondent has not been commonly known by the contested

domain name <instantshelters.com>. Further, Complainant points out that

Respondent registered the domain name <all-shelters.com>, implying that

since Respondent has an alternative domain name, Respondent does not have a

legitimate interest in maintaining a web site at the <instantshelters.com>

domain.

The Policy sets forth examples,

in paragraph 4(c), of circumstances that demonstrate Respondent’s legitimate

interests in the name. One such circumstance is use of the domain name in connection

with a bona fide offering of goods or services prior to notice of the dispute.

Respondent appears to have been using the domain name in connection with a bona

fide offering of goods prior to notice of the dispute. Based on advertisements

submitted by Respondent, it appears that Respondent was in the "instant

shelter" industry prior to registering the domain name. Respondent registered

a descriptive term as a domain name for its ongoing business as a means of taking

its business online. Respondent has been using the domain name in connection

with sales of shelters since 1997. Further, Respondent claims that prior to

registering the domain name, Respondent did not know that anyone claimed trademark

rights to the term "instant shelter."

Another circumstance demonstrating

a legitimate interest under the Policy is evidence that Respondent’s business

has been commonly known by the domain name. Respondent has been using the corporate

name "Affordable Instant Shelters, Inc." since 1997. Although the

domain name <instantshelters.com> is not an exact match with Respondent’s

corporate name, it is a shorter version of the name. The circumstances enumerated

in the policy are merely exemplary, however, and so other circumstances may

also constitute a legitimate interest. Thus, it is not necessary for the Respondent

to meet the exact specification of the circumstances outlined in the policy

in order to demonstrate a legitimate interest. In this case Respondent chose

a domain name that is closely connected to its corporate name as well as its

product.

Based on Respondent’s bona

fide business and its closely related corporate name, this Panel finds that

Respondent has shown a legitimate interest in the domain name. The fact that

Respondent became an authorized dealer of Complainant some time after registration

of the domain name does not change this analysis under the policy There is no

evidence that, upon becoming a dealer, Respondent agreed to give up any of its

preexisting rights with regard to the domain name.

Likewise, Respondent’s

registration of a second domain name, <all-shelters.com>, and Respondent’s

maintenance of a mirror site at that name, does not negate Respondent’s legitimate

interest in the <instantshelters.com>. A domain name registrant could

use an alternative domain name to sell its goods or services for any number

of legitimate business reasons. That such an alternative domain name has been

registered and used by Respondent does not affect Respondent’s legitimate interest

in the disputed name.

Respondent has shown a

legitimate interest in the name and Complainant has failed to present sufficient

evidence to demonstrate Respondent’s lack of legitimate interest. This Panel

therefore finds that Complainant has not met its burden of proving that Respondent

does not have a legitimate interest in the domain name.

Identical or Confusingly

Similar to Trademark

Given the Panel’s conclusion

that Complainant has not met its burden in relation to showing the existence

of bad faith and an absence of legitimate interests under paragraphs 4(a)(ii)

and 4(a)(iii) of the Policy, it is not necessary for the Panel to determine

whether the domain name is confusingly similar to a trademark in which the Complainant

has rights.

6. Decision

This Panel decides that

Complainant has not shown that the Respondent has no legitimate interests in

the domain name. Additionally, Complainant has not shown that the domain name

was registered and used in bad faith. Accordingly, this Panel requires that

the registration of the domain name <instantshelters.com> remain with

the Respondent.

Roderick

M. Thompson

Sole Panelist

Dated: December

18, 2001