ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant: Eddie Bauer, Inc
Respondent: Cole Sales Solutions, Inc
Contested Domain Name: eddiebauercamping.com
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on June 5, 2000. The hardcopy of the Complaint Form was received on June 7, 2000. Payment was received on May 31, 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's Office of eResolution to the following conclusions: the Registrar is Melbourne IT, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on June 5, 2000. The requested information was received June 12, 2000.
The Clerk's Office 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's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 15, 2000. That date is the commencement date of the administrative proceeding.
On June 15, 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 July 5, 2000, the Respondent submitted the signed hard copy of his response. The online version of the response was received on July 8, 2000.
On July 11, 2000, the Clerk's Office contacted Ms. Diane Cabell, and requested that she acts as panelist in this case.
On July 12, 2000, Ms. Diane Cabell, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 13, 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 July 13, 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 July 26, 2000.
3. Factual Background
Complainant has a registered mark in the US (and other countries) for the name "Eddie Bauer" in conjunction with such camping equipment as duffel bags, packs, sacks, tents and sleeping bags. Respondent has registered the domain name "eddiebauercamping.com" which currently resolves to an active "placeholder" website that features advertisements relating to the services of the website host, Verio. No allegation has been made of any other use of the domain name.
4. Parties' Contentions
The complaint alleges bad faith and lack of right and legitimate interest by virtue of the similarity of the domain name with the mark. The Complainant argues that (a) it has exclusive rights in the name and (b) has not licensed the Respondent to use the mark and therefore (b) Respondent is acting in bad faith and has no right or legitimate interest in the domain name. The Complainant does not include any evidence of bad faith but simply alleges that Respondent registered the domain for the bad faith purposes described in Section 4(b)(iv) of the UDRP Policy which says,
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Respondent claims that the parties have been engaged in protracted negotiations over the last two years for a licensing agreement in regard to the marketing of camping equipment and that the domain registration was made in good faith, and with the Complainant's knowledge, to preserve the name for use under the terms of the expected agreement. This argument is possibly meant to establish a defense under Policy Section 4(c)(i), which reads,
"before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services…."
5. Discussion and Findings
Under Section 4(a) of the UDRP, Complainant must establish five elements to justify transfer of a domain registration: the existence of a valid trade/service mark, a confusing similarity/identity between the mark and the domain name, bad faith registration, bad faith use, and lack of Respondent's right or legitimate interest in the name. The Complainant in this proceeding has provided evidence of a valid mark and confusing similarity. I find that Respondent did not acquire any right or legitimate interest in a name simply because it engaged in business discussions with the mark owner. Respondent should have been well aware of Complainant's preemptive rights and intent to dispute unauthorized use since a license for such permission was presumably the very subject of the negotiations.
However, the Respondent alleges that it registered the name in good faith since this was done in contemplation of an authorized relationship and with the knowledge of Complainant's representative. Registration alone does not necessarily constitute an act of infringement and no claim is made that it was intended to block Complainant's use of the name. Indeed there is no odor of the extortionist or anti-competitive behavior by which the UDRP characterizes cybersquatters. Accepting the Respondent's allegations on these points as truth, I conclude that although the domain was registered without right, it was not registered in bad faith if no commercial use was contemplated until a formal agreement had been reached. Nor does the Respondent's use of the domain constitute bad faith at this time. A trademark does not give the mark owner an unlimited exclusive right to use the name. There are many uses available to other parties, including non-commercial and non-competing uses. The only evidence of use of the domain that has been supplied by either party indicates that the index page is a placeholder for a forthcoming website. The advertising that appears on the page is devoted exclusively to the web hosting and domain registration services of the Respondent's service provider. Since Complainant's mark does not appear to extend to that class of services, this use does not appear to be fall within the exclusive jurisdiction of Complainant's mark. Further, there is no indication that this current use is one from which the Respondent reaps commercial gain. Respondent appears to be protected, for the time being, under the provisions of Section 4(c)(iii) by
"…making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. "
The domain registration for eddiebauercamping.com should remain with the Respondent.
July 21, 2000
(s) Diane Cabell