ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The parties are 2E Corporation (Complainant) and Imagisys Inc. (Respondent). The contested domain name is "2ecorp.com".
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on March 24, 2000. The hardcopy of the Complaint Form was received on March 22, 2000. Payment was received on March 27, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk of eResolution to the following conclusion: the Registrar is Register.com, the Whois database contains all the required contact information but the billing contact. The Contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
An email was sent on April 5, 2000 to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact. The requested information was received April 11, 2000. The Clerk's Office also obtained a copy of the Registration Agreement.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on April 5, 2000. That date is the commencement date of the administrative proceeding.
On April 5, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On April 17, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on April 18, 2000.
On April 24, 2000, the Clerk's Office contacted a first panelist, and requested for him to act as panelist in this case.
On April 25, 2000, this first panelist refused to act as a panelist in this case because of a potential conflict of interests.
On April 25, 2000, the Clerk's Office contacted a second panelist, and requested for him to act as panelist in this case. On April 30, 2000, the second panelist had still not answered to the Request for Services.
On April 28, 2000, the Clerk's Office contacted Ms. Diane Cabell, and requested for her to act as panelist in this case. On May 1, 2000, the panelist accepted the Request for Services and filed the necessary Declaration of Independence and Impartiality.
On May 2, 2000, the Clerk's Office forwarded a user name and a password to Ms. Diane Cabell, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On May 2, 2000, the parties were notified that Ms. Diane Cabell had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 16, 2000.
3. Factual Background
Complainant 2E Corporation (2E Corp) was formed last year to provide electronic administration services for employee benefit programs. Articles of incorporation were filed with the Commonwealth of Virginia by the CEO, Jewel Esposito, on August 27, 1999. Herbert Rubinsky, (owner of Imagisys, Inc., the Respondent) received 22% of the 2E Corp common stock on September 1. Ms. Esposito, sent a memo to him on September 8 suggesting that he "reserve 2E." The Complaint states that Mr. Rubinksy registered the domain under dispute, 2ecorp.com, on September 20, however he did so in the name of Respondent firm rather than in the name of 2E Corp.
2E Corp executed an employment agreement with Mr. Rubinsky on November 1, 1999 by which he became Executive Vice President and Chief Technology Officer. This contract includes a provision requiring mandatory arbitration in New York for any claim or controversy arising out of or relating to the agreement or to the validity, interpretation, enforceability or breach of it.
2E Corp filed an application for registration of the term "2E Corporation" which was received by the US Patent & Trademark office on January 7, 2000. The claim is for "information services in the field of employee benefits."
On March 15, 2000, 2E Corp suspended Rubinsky from his CTO responsibilities. This proceeding was initiated approximately 9 days later.
4. Parties' Contentions
According to the complaint, the term « 2E Corporation» was chosen as a mark because Complainant intends to offer electronic administration of employee benefits sponsor's retirement, health and welfare plan and the term « EE » is the common abbreviation for the word « employee. » Complainant asserts that it has trademark rights in « 2E Corporation » and « 2E Corp » by virtue of (a) choosing the mark (b) the incorporation and (c) the activities it has undertaken using the name since May 1999. These activities have consisted of use of the name in « discussions with potential employees, alliances, independent contractors; in materials for a business plan; and in marketing literature and executive summaries to prospective clients, » and « earnest discussions with potential clients, investors and alliances. »
Complainant asserts that Mr. Rubinsky registered the domain name in bad faith because he did so under the title of his consulting company rather than in the name of Complainant; Mr. Rubinsky is said to be using the domain in bad faith because (a) he has prevented 2E Corp and others from accessing the website in retaliation for his dismissal, (b) he is using the registration as a 'hostage' to extract money from 2E Corp in negotiations over his departure, and (c) there is no business, product or service for which he could use the domain without violating 2E Corp's rights.
Mr. Rubinsky claims that register the domain in his own company name because 2E Corp did not have, at the time of the registration, a fixed address or a bank or credit account to pay for the registration. He also states that access has not been denied to the Complainant. The site was shut down when the company's computer equipment was packed for a move to the new headquarters. Mr. Rubinsky was terminated in the midst of that move. The name servers have been in the possession of Complainant for weeks, as have the passwords necessary to repoint the domain to a different set of servers if Complainant is unable to operate those already in its possession.
Finally, Mr. Rubinsky claims that he has been wrongfully terminated by the Complainant and that this dispute arises out of the November 1employment agreement and should therefore be heard by the terms of the arbitration clause of that contract, not by this panel.
5. Discussion and Findings
As to Respondent's argument that this dispute should not be heard in this forum, it is the opinion of this panelist that the claim of abusive domain name registration in this case requires an evaluation of acts that are independent of the employment agreement, in particular the registration of the domain which took place prior to execution of the agreement.
The UDRP is a proceeding that is binding on a domain holder only if the complainant has a trademark or service mark that is identical or confusingly similar to the domain name. In addition, the Complainant must prove that the domain holder has no rights or legitimate interests in respect of the domain name; and that domain name has been registered and is being used in bad faith. Policy 4(a).
A. Existence of Trademark
The Complainant has not provided sufficient proof of a valid trademark in the term « 2E Corporation » or « 2E Corp. » The name consists solely of letters and numbers that are used in a descriptive manner (including a generic corporate identifier). In the absence of any significant use to date, there is no evidence that the term has acquired secondary meaning sufficient to distinguish the Complainant's services from any others.
The general rule regarding distinctiveness is that an identifying mark is distinctive and capable of being protected if it either is inherently distinctive or has acquired distinctiveness through secondary meaning. Lanham Trade-Mark Act, § 2(e, f), as amended, 15 U.S.C.A. § 1052(e, f). Trademarks may be classified as (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful; latter three categories of marks, are considered inherently distinctive. Lanham Trade-Mark Act, §§ 2, 45, as amended, 15 U.S.C.A. §§ 1052, 1127. Secondary meaning is used generally to indicate that a mark or dress "has come through use to be uniquely associated with a specific source." Restatement (Third) of Unfair Competition § 13, Comment e (Tent.Draft No. 2, Mar. 23, 1990). "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, n. 11, 72 L.Ed.2d 606 (1982).
« If a series of letters is merely a recognizable abbreviation for a descriptive or generic term, the abbreviation is also classified as descriptive or generic. » 1 McCarthy on Trademarks and Unfair Competition 7:11 (4th ed.). Numerals and letters may be valid trademarks if 'they are entirely fanciful and arbitrary, if they have no connection with the article or any of its features, or if they are designed solely, or at least primarily, to indicate origin.' 3 Callman 73.1. They are not valid if they describe or refer to the article or its characteristics. 1. Nature's Bounty, Inc. v. Basic Organics, 432 F.Supp. 546, 551, 196 U.S.P.Q. 622 (E.D.N.Y., May 23, 1977).
Complainant's term is a not very distinctive variation on « double E » or « EE », a common abbreviation for the generic term « employee.» which is a key descriptor of the services offered by the Complainant. No evidence of secondary meaning has been provided, and in fact the evidence supplied would lead to a contrary indication. The business plan is dated January 2000 and gives every indication that the entire business is still in the planning stage. "So that the issue is no longer in doubt, we hold ... that the mere advertising or promotion of a mark in the United States is insufficient to constitute 'use' of a mark 'in commerce,' within the meaning of the Lanham Act, where that advertising or promotion is unaccompanied by any actual rendering in the United States or in 'commerce which may lawfully be regulated by Congress'.…" Buti v. Perosa S.R.L., 139 F.3d 98, 45 U.S.P.Q.2d 1985 (2d Cir. 1998).
B. Bad Faith
Mr. Rubinsky's reasons for registering the domain in the name of his personal consulting company are not very persuasive. It is not necessary that a domain registrant have a credit or bank account in its own name. The only requirement is that the fee be paid. An address of convenience, or of an agent, will suffice when an actual address is not available. Mr. Rubinsky could have registered the domain in the name of the Complainant and used his personal address for contact purposes. This is not necessarily clear from the online registration formats, however, so his misunderstanding could be legitimate. Further, the memo submitted as evidence that Rubinsky was charged with obtaining the domain for the Complainant's benefit only asks that he « reserve » the domain. This implies that a subsequent transfer would have been perfectly acceptable to fulfill the assigned task. Therefore I do not find a compelling case for bad faith in the registration.
Nor does it appear that Mr. Rubinsky is using the domain in bad faith. If the servers are, as alleged by Respondent, in the possession of the Complainant, and if the Complainant actually has the necessary password/s to transfer files to the host servers, then Respondent is not in fact preventing the Complainant from reflecting the mark in a corresponding domain name if this is conduct that is claimed as evidence of bad faith under Section 4(b)(iii) of ICANN's Uniform Domain Name Dispute Resolution Policy.
Complainant alleges that Respondent is acting in bad faith by attempting to extort severance money from Complainant by holding the domain hostage. Whether or not that is one of Respondent's purposes, it would seem from the evidence before this panelist that Respondent has a good faith potential claim for severance. Any demand he might make for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name [evidence of bad faith under Section 4(b)(i) of the Policy] is one that is equally likely to be made in legitimate pursuit of his contractual rights.
Lastly, the Complainant alleges that there is no business, product or service for which Respondent could use the domain without violating 2E Corp's rights. First, there is no requirement that the Respondent use the domain for commercial purposes. The registration may lie fallow in good faith. Secondly, Complainant misunderstands trademark and unfair competition law which permits multiple users to trade under identical marks so long as the consumer is not confused as the source or origin of the goods and services. While the Internet does much to dissolve traditionally distinct geographic markets, it has not yet eradicated them, and product lines retain distinction even online. There are many possible business products or services for which Respondent could use the domain without violating Complainant's rights. And there are many possible fair uses as well. See generally 2 McCarthy on Trademarks and Unfair Competition 11:46 (4th ed.).
The Complainant has not established that it has a valid trademark that is identical or confusingly similar to the domain name under dispute nor that the Respondent has acted in bad faith. Therefore, the request for a transfer is denied.
15 May 2000
(s) Diane Cabell