The Echo Design Group, Inc. v. Echo Home & Garden

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Echo Design Group, Inc. v. Echo Home & Garden

Case No. D 2002-0016

1. The Parties

The Complainant in this administrative proceeding is Echo Design Group, Inc.

whose principal place of business is located at 10 East 40th Street, New York,

New York 10016-0296, U.S.A. The Respondent in this case is Echo Home & Garden

whose principal place of business is 3775 24th Street, San Francisco, California

94114, U.S.A. Susan Overton is the President of Respondent.

2. The Domain Name and Registrar

The domain name at issue is <echohome.com> which is registered with Network

Solutions Inc., in Herndon, Virginia, U.S.A.

3. Procedural History

A Complaint was received by the World Intellectual Property Organization Arbitration

and Mediation Center (the "WIPO Center") by e-mail on January 9, 2002,

and in hardcopy on January 18, 2002. The WIPO Center determined that the Complaint

is in formal compliance with the requirements of the Uniform Domain Name Dispute

Resolution Policy (the "Policy"), 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 Dispute Resolution Policy,

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

requested, and was granted, an extension of time to submit its Response and

thereafter submitted its response on February 17, 2002.

4. Factual Background

Complainant has provided evidence that it is the owner of numerous U.S. and

foreign trademark registrations for the term ECHO as well as additional trademark

registrations for terms such as ECHO BELTS, ECHO KNITS, and ECHO SOFT. Complainant

is a designer and manufacturer of home furnishings such as textile fabrics,

bedding, linen, along with fashion accessories. Complainant does not sell its

products directly, but markets its products through retailers.

Respondent appears to have registered the <echohome.com> domain name

in May 1997 and, until 1998, Respondent operated a business by the name of Echo

Home Furnishings. According to its annual California filings, Respondent’s business

is a retail home, garden, and furniture store. Respondent submitted evidence

from 1993 showing use of the Echo Home Furnishings name in connection with its

payments of San Francisco taxes, its California sellers permit, and its sales

and use tax returns. Further, Respondent provided a copy of a Certificate of

Amendment to its Articles of Incorporation filed January 1997, whereby the name

of its corporation was changed from Clifford Stanton Williamson, Inc.,[1]

to Echo Home Furnishings, Inc. Respondent appears to also have been known by

the name Echo Home & Garden. Since both names incorporate the terms used

in the <echohome.com> domain name, this Panel does not attempt to distinguish

between the use of Echo Home Furnishings and Echo Home & Garden.

In 1998, Respondent changed the name of its business from Echo Home Furnishings

as a result of correspondence received from Complainant alleging that Respondent's

use of the name "Echo" for its retail store, catalog, and website infringed

Complainant’s trademark. Respondent continues to operate the retail business

under a new name, which is apparently either E-Home or Essential Home, but no

longer operates a website. In May 2001, Respondent renewed the registration

of the <echohome.com> domain name.

5. Parties’ Contentions

A. Complainant

Complainant asserts that Respondent’s <echohome.com> domain name is confusingly

similar to Complainant’s ECHO trademark. Although the domain name includes the

term "home", Complainant claims that the addition of such a common

descriptive term following its trademark does not prevent the domain name from

being confusingly similar to Complainant’s mark.

Complainant asserts that it became aware of Respondent’s operation of a retail

store under the name Echo Home & Garden in April 1998. At that time Complainant

sent a letter to Respondent demanding that Respondent immediately cease and

desist from the sale of goods with the ECHO Trademark. Respondent's reply denied

any infringement, stated that Respondent sold no products with the ECHO name,

and indicated that, in order to avoid any dispute, Respondent was in the process

of changing the name of its web page and catalog. In May 1998, Complainant requested

confirmation that Respondent was no longer operating a store under the name

Echo Home Furnishings and also requested confirmation that Respondent had changed

the name of its web page. Respondent confirmed that the company was no longer

using the <echohome.com> domain name, was no longer mailing a catalog

under the name Echo, and would change the name of the storefront. Complainant

asserts that this correspondence constitutes a settlement agreement by which

Respondent agreed to cease all use of the <echohome.com> domain name.

Complainant asserts that Respondent has no legitimate interest in the <echohome.com>

domain name. Complainant states that Respondent has never been authorized to

use Complainant’s ECHO trademark. Further, Complainant asserts that Respondent

agreed in the 1998 correspondence to make no further use of the ECHO trademark.

Complainant claims that Respondent’s renewal of the <echohome.com> domain

name violated that agreement.

Complainant claims that there is evidence of bad faith because Respondent is

not using the domain name and "has solicited an ‘offer’ for transfer while

maintaining a charade of planned but unspecified business use, all in violation

of its past settlement with Complainant." Complainant further claims that

Respondent’s renewal of the domain name registration after being apprised of

Complainant’s rights constitutes bad faith.

Additionally, Complainant claims that because Respondent has no legitimate

interest in the domain name it can be inferred that Respondent registered the

domain name for the purpose of offering it for sale. Complainant also asserts

that Respondent registered the domain name in order to disrupt the business

of a competitor. Finally, Complainant asserts that Respondent intentionally

acted to Complainant’s detriment when Respondent renewed the <echohome.com>

domain name in violation of the settlement agreement between the parties.

B. Respondent

Respondent argues that the words "echo home" and the <echohome.com>

domain name are quite different from the term "echo" and therefore

not confusingly similar to Complainant’s ECHO trademark.

Respondent does not address the 1998 correspondence, and instead indicates

that Complainant initiated harassing communications with Respondent around June

2001. As a result, Respondent claims that the company discontinued some activities

in order to avoid further harassment from Complainant. As part of this process,

Respondent indicates that the name of the business was changed.[2]

Respondent does not dispute

"the fact that Respondent has renewed the domain name registration and

has parked the domain name," but asserts that it is irrelevant.

As noted above, in a letter dated May 12, 1998, prior counsel for Respondent

represented that in order to avoid litigation, Respondent would change the name

of its web page and catalog. Further, in a letter dated July 11, 1998,

Respondent (Ms. Overton) confirmed that the company was not using the <echohome.com>

domain name for its website. In a letter dated August 31, 1998, Respondent further

represented that the company no longer had a website, and that if the company

chose to set up a website in the future that it would use <ehome-garden.com>

as a domain name.

Respondent claims that Complainant has failed to provide any proof that Respondent

lacks a legitimate interest in the domain name. Respondent further asserts that

it does have legitimate rights in the domain name since it was using the domain

name in connection with a bona fide offering of goods and services prior to

notification of the dispute. Further Respondent indicates that it has been commonly

known by the domain name since 1993. Respondent claims that the company provided

vintage and vintage inspired items thus generating the idea for using the term

Echo in connection with the business.

Finally, Respondent claims that Susan Overton, the President of Respondent,

is planning and preparing to use the domain name in ways that will not infringe

on any trademark rights of Complainant. As evidence of this assertion Respondent

has provided proof of Susan Overton's enrollment in interior design and architectural

consulting classes. Respondent does not specify the use that will be made of

the domain name, but merely claims that the website using the <echohome.com>

domain name will include an express disclaimer and a link to Complainant’s website.

Respondent disputes Complainant’s assertion that the domain name was registered

and is being used in bad faith. Respondent claims that Complainant has offered

no evidence that Respondent acquired the domain name primarily for the purpose

of offering it for sale. Respondent asserts that Respondent began using the

name Echo Home Furnishings in 1993 and was using the domain name in connection

with the business until Respondent discontinued use of the domain name after

continued solicitations by Complainant. Respondent claims that it only considered

selling the domain name after being contacted by the Complainant.

Respondent claims that there is no proof that it registered the domain name

with the intent of disrupting the business of a competitor. Further Respondent

claims that the temporary nonuse of the domain name does not constitute evidence

of bad faith, particularly where there was use of the domain name at one time.

Respondent asserts that it did not register the domain name for the purpose

of selling the name, to prevent the owner of the trademark from reflecting the

mark in a corresponding domain name, for the purpose of disrupting the business

of Complainant or any competitor, to create any likelihood of confusion as to

source, or to misleadingly divert consumers.

6. Discussion and Findings

A. Applicable Rules and Principles of Law

Paragraph 15(a) of the Rules sets out the principles this 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; and,

(ii) that the Respondent has no legitimate interests in respect of the

domain name; and,

(iii) that the domain name has been registered and is being used in bad

faith.

B. Application of Paragraph 4(a) to the Facts

I. Identical or Confusingly Similar to Trademark

Complainant is required under Paragraph 4(a)(i) of the Policy to prove that

the domain name is identical or confusingly similar to a trademark in which

Complainant has rights. Complainant has demonstrated that it has U.S. and foreign

trademark rights to the mark ECHO for home goods such as draperies, curtains,

sheets, pillow cases, bedspreads, lamp shades, and rugs, as well as other items

such as scarves, jewelry, paper products, leather goods, and bags. Complainant

also provided evidence of several other trademarks incorporating the term ECHO

such as ECHO ORIGINATIONS, ECHO BELTS, and ECHO SOFT. Complainant has not asserted

any trademark rights in the term "Echo Home."

The domain name <echohome.com> incorporates Complainant’s mark ECHO in

its entirety, but adds a generic term "home" to the mark. The addition

of the generic term "home" does not eliminate confusion with Complainant’s

mark. The term merely describes many of the goods covered by Complainant’s mark–home

products such as draperies and bedspreads.

On these facts, where the disputed domain name incorporates the ECHO mark in

its entirety and the addition of the generic term does not help differentiate

or eliminate confusion, this Panel finds that the domain name is confusingly

similar to a mark in which Complainant has rights.

II. Respondent’s Rights and Legitimate Interests in the Domain Name

Paragraph 4(c) of the Policy sets out circumstances that demonstrate the Registrant’s

rights or legitimate interests in the name. One such circumstance is showing

that Respondent is commonly known by the domain name. In this case, Respondent

registered the domain name that corresponded to a trade name it had used since

1993 and was using at the time the domain name was registered.

Respondent may also demonstrate a legitimate interest in the domain name by

demonstrating use of the domain name in connection with a bona fide offering

of goods or services prior to notice of the dispute. The evidence indicates

that Respondent offered home goods for sale at its website prior to notice of

any dispute. A simple offering of any goods or services does not necessarily

constitute a bona fide offering of goods or services. This is particularly true

if it appears that a domain name registrant is acting in bad faith and is merely

attempting to circumvent the Policy. That does not appear to be the case in

this situation. At the time of the registration, Respondent owned and operated

a retail store that sold home products, had been using the trade name related

to the domain name in connection with the store since 1993, and was selling

home goods at the website corresponding to the domain name. This Panel finds,

therefore, that Respondent had a legitimate interest in the domain name at the

time it was registered.

The complexity arises in this case because in 1998, the Respondent, in response

to Complainant's demands, ceased using the trade name and ceased using the domain

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

asserts, therefore, that Respondent has no existing legitimate interest in the

domain name because Respondent agreed to make no further use of the ECHO trademark.

Because this Panel determines (below) that the Complainant has not shown that

Respondent registered and used the domain name in bad faith, this Panel does

not address the issue of whether or not Respondent continued to have a legitimate

interest in the domain name after the 1998 correspondence.

III. Registration and Use in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the

domain name has been registered and used in bad faith. In this case, the Panel

finds that Complainant has not provided sufficient evidence that the domain

name was registered in bad faith at the time of registration. As noted, at the

time of registration Respondent registered a domain name that corresponded to

a trade name Respondent had been using for four years. Further, Respondent was

using the domain name to sell goods related to its retail store which was also

known by the corresponding trade name.

Complainant claims that because Respondent’s President had worked at Macy's,

Respondent must have known of Complainant's trademark prior to her registration

of the domain name. Complainant does not indicate, however, that Respondent

worked in a department where Complainant's goods were sold or provide any other

evidence that Respondent was aware of Complainant’s mark. Respondent’s President

asserted in her July 11, 1998 correspondence that she had never heard of Complainant

or its mark prior to Complainant's initial 1998 letter. This Panel notes, however,

that Respondent’s President did not repeat this assertion in her affidavit submitted

with the response. Nevertheless, the other evidence of legitimate interest at

the time of registration outweighs the mere assertion by Complainant that Respondent’s

President might have known of Complainant's marks. Accordingly, this

Panel finds that Complainant has not offered sufficient evidence that Respondent

registered the domain name in bad faith.

Complainant alleges that Respondent acted in bad faith by renewing its registration

of the domain name. Under the Policy, however, the Complainant must provide

evidence that the domain name "has been registered and is being

used in bad faith" in order to justify a transfer of the name. Although

the examples of bad faith set forth in the Policy have led to the interpretation

that actual use may not always be required to satisfy the Policy (but instead

that mere nonuse or an intent to sell could satisfy the use requirement) there

is no similar justification for straying from the plain wording of the policy

and allowing bad faith renewal to satisfy the bad faith registration requirement.

Some of the examples of bad faith registration and use indicate that bad faith

at the time of acquisition by another of the name might satisfy this

element, but alleged bad faith renewal by the same registrant of a name that

was not initially registered in bad faith does not appear to meet the requirements

of the Policy.

This Panel has limited jurisdiction dedicated to deciding domain name disputes

under the narrow criterion specified in the Policy. It is not the role of this

Panel to express any opinion on the merits of a trademark infringement. Nothing

in this decision precludes either party from pursuing its rights in the appropriate

court of law.

7. Decision

This Panel finds that Complainant has not shown that the domain name was registered

in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel

requires that the registration of the domain name <echohome.com> remain

with Respondent.

Rod Thompson

Sole Panelist

Dated: April 19, 2002

1. Susan Overton, the President of Respondent,

was formerly known as Susan Williamson.

2. As noted, Respondent does not refer to

the 1998 correspondence, and instead seems to indicate that the name change

and discontinued activities occurred after communications from Complainant in

2001. Respondent does not claim, however, that the 1998 correspondence did not

occur or that the Exhibits provided by Complainant are inaccurate in any way.

Based on copies of the correspondence attached as Exhibits to the Complaint,

it is clear that most of the correspondence occurred in 1998. Respondent had

access to the Exhibits prior to formulating its response and therefore could

not have expected that this Panel would not be aware of the 1998 correspondence.

Therefore it is assumed Respondent's use of the domain name <echohome.com>

ceased in 1998, not 2001, and that the statements made by Respondent in the

1998 correspondence are not disputed.