Eisco Scientific LLC filed a UDRP seeking the transfer of the domain name Eisco.com from its registrant. The Complainant argued that the domain name was identical to its trademarks and that the respondent had no legitimate interests in it, and was using it in bad faith.
Eisco Scientific LLC presented its registered trademarks, claiming the domain name was used to divert consumers misleadingly.
The Respondent countered by asserting that the domain name was acquired legally and before the complainant’s trademarks were registered, thus negating any bad faith registration. The respondent emphasized the domain name’s acquisition in 2012, three years prior to any trademark registration by the complainant. Furthermore, the respondent highlighted the lack of concrete evidence from the complainant regarding bad faith usage or the complainant’s established reputation at the time of domain registration.
The panel found that the complainant did not adequately prove that the respondent lacked legitimate interests in the domain name or that it was used in bad faith. It was noted that the domain name was registered significantly earlier than the complainant’s trademarks, making it implausible that it was acquired in bad faith.
Additionally, the complainant failed to demonstrate that the respondent’s use of the domain name was unfair or illegitimate.
As a result, the panel concluded that Eisco Scientific LLC did not meet the required elements under the ICANN Policy and thus, the relief requested was denied. The domain name “eisco.com” was ordered to remain with the respondent, Hexuan Cai. The panel also rejected the Respondent’s request for a finding of Reverse Domain Name Hijacking.
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.DECISION
Eisco Scientific LLC v. Hexuan Cai
Claim Number: FA2405002100421
PARTIES
Complainant is Eisco Scientific LLC (“Complainant”), represented by George R. McGuire of Bond, Schoeneck & King, PLLC, New York, USA. Respondent is Hexuan Cai (“Respondent”), represented by Ankur Raheja of CyLaw Solutions, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is eisco.com, registered with Paimi Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Bart Van Besien as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 31, 2024; Forum received payment on May 31, 2024.
On June 14, 2024, Paimi Inc confirmed by e-mail to Forum that the eisco.com domain name is registered with Paimi Inc and that Respondent is the current registrant of the name. Paimi Inc has verified that Respondent is bound by the Paimi Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@eisco.com. Also on June 17, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 9, 2024.
On July 10, 2024, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Bart Van Besien as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant claims to be the owner of the following trademarks (hereafter the “Trademarks”):
· US trademark (combined word figurative mark), EISCO, registration no. 4,955,159, registered on May 10, 2016; filed on August 19, 2015; claimed first use / in commerce: May 31, 2014; registered for subclasses in Nice class 9.
· US trademark (wordmark), EISCO, registration no. 4,955,040, registered on May 10, 2016; filed on August 18, 2015; claimed first use / in commerce: December 31, 2002; registered for subclasses in Nice classes 9, 11 and 16.
· US trademark (combined word figurative mark), EISCO Labglass, registration no. 7,088,051, registered on June 20, 2023; filed on September 24, 2021; claimed first use / in commerce: May 31, 2022; registered for subclasses in Nice class 9.
The Complaint does not contain any further information about the Complainant, its activities, or its history.
The Complainant argues that the disputed domain name is identical (or at least nearly identical) to its Trademarks (or at least to the word portion “EISCO”) since the disputed domain name includes the word “EISCO” in its entirety.
The Complainant states that the Respondent does not have rights or legitime interests in the disputed domain name: (1) The Complainant states that the disputed domain name resolves to a parked page from which the Respondent is hoping to earn money through clicks on the links provided at the parked page. The Complainant states that the disputed domain name is used solely to misleadingly divert consumers looking for goods of the type sold by the Complainant; (2) The Complainant states that there is no use of the disputed domain name in connection with a bona fide offering of goods or services, nor any legitimate noncommercial or fair use of the domain name; (3) The Complainant argues that the Respondent is not commonly known by the name “EISCO” and that his identity is masked in the WhoIs data.
The Complainant argues that the disputed domain name was registered and is being used in bad faith: The Complainant asserts that the disputed domain name resolves to a parked page and is used to misleadingly divert consumers looking for goods of the type sold by the Complainant. The Complainant submitted a screenshot of the website available via the disputed domain name, showing links to “Science Classroom Supplies”, “Equipment Supplies”, and “Laboratory Equipment”. The Complainant claims that such goods are competitive with the goods sold by the Complainant under the Trademarks.
B. Respondent
The Respondent asserts that the Complainant tries to hijack the disputed domain name.
The Respondent emphasizes that the disputed domain name was created on October 18, 1996, whereas the first trademark of the Complainant was filed only on August 18, 2015. The Respondent states that the Complainant is willingly concealing crucial information.
The Respondent states that he acquired the disputed domain name on November 26, 2012, via Network Solution’s backorder service. The Respondent underlines that the Trademarks of the Complainant post-date the Respondent’s acquisition of the domain name by almost three years. The Complainant does not explain this chronological discrepancy. The Respondent argues that the date of usage is of no relevance in these proceedings.
The Respondent emphasizes that the Complainant does not substantiate its claim under UDRP Policy ¶ 4(a)(ii) (rights or legitimate interests) and UDRP Policy ¶ 4(a)(iii) (bad faith), and that the Complainant does not provide crucial information about the case. The Respondent asserts that the Complainant solely relies on a screenshot and did not even add this screenshot as an annex to the Complaint. The Respondent blames the Complainant for not submitting important documentation to support its Complaint, such as the UDRP Policy, a Power of Attorney, the Domain Registration Agreement, and the WhoIs Information for the disputed domain name.
The Respondent emphasizes that the Complainant does not provide any information about the Complainant’s business, reputation, sales volumes, advertising, marketing, revenue, or any other facts which could establish that the Complainant and its Trademarks were particularly well known when the disputed domain name was registered.
The Respondent states that he acquired the disputed domain name in 2012 together with many other generic and abbreviated domain names. The Respondent states that the disputed domain name forms part of the Respondent’s stock in the trade of generic, brandable and acronym domain names for development and sale. The Respondent claims that he did not have knowledge of the Complainant before the start of this dispute.
The Respondent argues that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights, the first person to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
The Respondent mentions that the term “EISCO” is a 5-letter short and brandable word, that was registered as a domain name investment. The Respondent argues that the characteristics of the word make it easy to remember, and make it serve well as an online identity.
The Respondent sets forth that speculating and investing in domain names is a legitimate and well-established business which in itself confers a legitimate interest. The Respondent mentions that it registered several 5-letter domain names with the same vowels. Furthermore, the Respondent states that many third parties make use of similar domain names as the disputed domain name.
The Respondent underlines that the Complainant is represented by a counsel, who ought to know better and who is under an obligation to undertake at least minimal due diligence before filing a complaint. The Respondent claims that the Complainant solely filed the complaint because the Respondent did not want to sell the disputed domain name for the price demanded by the Complainant.
The Respondent also argues that it is well-established that, when a domain name has been registered before the trademark of a complainant, the registration of the domain name was not in bad faith, because the registrant could not have been aware of the complainant’s non-existing trademark rights.
The Respondent emphasizes that the Complainant does not even address bad faith registration of the disputed domain name. The Respondent underscores that the Complainant did not have any relevant trademark rights in 2012 at the time when the Respondent acquired the disputed domain name. The Complainant did not provide any evidence of earlier use of the term ‘EISCO’.
The Respondent states that the Complainant cannot rely on the first use in commerce since the Complainant did not substantiate secondary meaning or pre-existing trademark rights. The Respondent emphasizes that the Complainant did not indicate the length and number of sales under the Trademarks, the nature and extent of advertising, nor consumer association through surveys and media recognition.
Whereas the Complainant’s screenshot of the website available via the disputed domain name showed links to “Science Classroom Supplies”, “Equipment Supplies”, and “Laboratory Equipment”, the Respondent submitted another screenshot of the same website showing links to “Online Education”, “Tutor Online”, and “Online Class”. These are advertisements for services falling under Nice class 41 (the Complainant’s Trademarks are registered for classes 9, 11 and 16 but not 41). These advertisements are based upon many factors such as cookies, previous online searches, historical websites visited, AI, and other technical instruments.
The Respondent stresses that the Complainant’s Trademarks are not well-known and that he was not aware of the existence of the Complainant or its Trademarks.
The Respondent claims to have used the proxy service of the disputed domain name for privacy purposes only.
Finally, the Respondent asks the Panel to declare that the Complaint constitutes an attempt of reverse domain name hijacking. The Respondent emphasizes the Complainant should have known its case was fatally weak, and that the Complainant should have known the complaint could not succeed since the disputed domain name had been registered prior to any trademark rights being acquired.
FINDINGS
The disputed domain name was first registered on October 18, 1996.
The Respondent acquired the disputed domain name on November 26, 2012.
The Complainant submitted trademark registration certificates for the following Trademarks:
· US trademark (combined word figurative mark), EISCO, registration no. 4,955,159, registered on May 10, 2016; filed on August 19, 2015; claimed first use / in commerce: May 31, 2014; registered for subclasses in Nice class 9.
· US trademark (wordmark), EISCO, registration no. 4,955,040, registered on May 10, 2016; filed on August 18, 2015; claimed first use / in commerce: December 31, 2002; registered for subclasses in Nice classes 9, 11 and 16.
· US trademark (combined word figurative mark), EISCO Labglass, registration no. 7,088,051, registered on June 20, 2023; filed on September 24, 2021; claimed first use / in commerce: May 31, 2022; registered for subclasses in Nice class 9.
The Complainant did not provide evidence of its actual use of the Trademarks, whether before or after the registration dates of these Trademarks.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The disputed domain name incorporates the “EISCO” word element of the Complainant’s Trademarks entirely, with the addition of the generic “.com” Top-Level Domain (gTLD). The addition of the gTLD does not add distinctiveness to the disputed domain name. It is well established that the gTLD may be disregarded when it comes to considering whether a domain name is confusingly similar to a trademark to which the Complainant has rights. See, f.e., Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Forum May 14, 2009).
The Panel therefore concludes that the disputed domain name is confusingly similar to the Trademarks of the Complainant under the first element of paragraph 4(a) of the Policy.
Rights or Legitimate Interests
The overall burden of proof lies on the Complainant, but when a Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proof shifts to the Respondent. Following this shift, the Respondent must come forward with relevant evidence that demonstrates its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element.
The Panel holds that the Complainant has not established a prima facie case in support of its arguments that the Respondent lacks rights and legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006).
First, the Complainant argues that there is no bona fide offering of goods or services, nor any legitimate noncommercial or fair use of the disputed domain name, because the disputed domain name resolves to a parking page. The Complainant argues that the Respondent intends to benefit financially through clicks on the links provided on the parking page, and that the Respondent wishes to misleadingly divert consumers looking for goods or services of the type offered by the Complainant.
The Panel notes that the disputed domain name was first registered on October 18, 1996. This is almost 6 years before the claimed first use of the Trademarks by the Complainant (i.e. December 31, 2002, according to the trademark certificates submitted by the Complainant), and almost ten years before the first registration of a Trademark by the Complainant (i.e. May 10, 2016, according to the trademark certificates submitted by the Complainant).
The Respondent acquired the disputed domain name on November 26, 2012, i.e. 4 years before the first registration of a Trademark by the Complainant (i.e. May 10, 2016, according to the trademark certificates submitted by the Complainant). The Panel emphasizes that the Complainant did not submit convincing evidence regarding its alleged “first use” or “use in commerce” of the Trademarks before their application or registration. As a consequence, these unsubstantiated dates of “first use” or “use in commerce” are not taken into consideration by the Panel. The Panel emphasizes that the burden of proof is upon the Complainant.
Given the timeline of the facts of this case, it is implausible that the Respondent would have registered the disputed domain name to confuse the public or to suggest a relationship with the Complainant.
Moreover, the Complainant did not provide the Panel with any further explanation, argumentation, or evidence about why the use of the disputed domain name by the Respondent would be illegitimate, commercial, or unfair. The Panel emphasizes that the selling of a domain name is not per se an unfair use, nor is the hosting of a parking page per se an unfair use.
Second, the Complainant argues that the Respondent is not known by the term “EISCO”.
The Panel notes that the Respondent has shown that it uses the disputed domain name for a purpose that does not seem to be illegitimate as such. The disputed domain name consists of the letters “EIS” and “CO”. The Respondent has shown that the letters “EIS” might refer to many different abbreviations and that the letters “CO” commonly refer to the word “company”.
Third, the Complainant argues that the identity of the Respondent is masked in the WhoIs data.
The Panel notes that it is not uncommon that registrants mask their identity for privacy reasons, as the Respondent says to have done in the present case.
Taking the above elements into account, the Panel concludes that the Complainant did not show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name under the second element of paragraph 4(a) of the Policy.
Registration and Use in Bad Faith
In view of the Panel’s finding that the Complainant failed to establish the second element of Paragraph 4(a) of the Policy, the Panel does not need to consider the Complainant’s assertions that the Respondent (registered and) used the disputed domain name in bad faith. Nevertheless, the Panel will state for the record its conclusions on the third element of Paragraph 4(a) of the Policy as well.
First, as a general remark, the Panel finds that one should not lightly conclude that a respondent registered and/or used a domain name in bad faith.
Second, the Complainant states that the disputed domain name is used as a parking page and is being used to misleadingly divert consumers looking for the goods/services offered by the Complainant or similar goods/services. The Complainant does not show that the Respondent causes actual confusion or is trying to seek confusion among the relevant public. The Complainant did not provide sufficiently convincing argumentation or evidence that any of the circumstances of paragraph 4(b) of the Policy (or any other circumstances of bad faith at registration and use of the disputed domain name) are present. The website available through the domain name seems to contain links (sponsored links or advertisements), but the Panel is not convinced that these links constitute evidence of bad faith registration of the domain name. It seems that these links are automatically generated. In each case, the Complainant did not provide convincing evidence that the Respondent intentionally focused these links on the Complainant or its business or that the Respondent registered the domain name with the intention to compete with the Trademarks of the Complainant.
Third, the Complainant did not show that the Respondent knew or should have known the Complainant or its Trademarks at the time of registration or use of the domain name. As stated by the Respondent, apart from the Trademark certificates, the Complainant did not provide any information about the Complainant’s business, reputation, sales volumes, advertising, marketing, revenue. The Complainant did not provide evidence of any other facts which could establish that the Complainant and its Trademarks were particularly well known when the disputed domain name was registered.
Fourth, as concerns the chronology of the case, the Panel notes that the disputed domain name was registered on October 18, 1996, and that the domain name was acquired by the Complainant on November 26, 2012. As mentioned above, this is several years before the registration of the Trademarks. The Respondent’s acquisition of the disputed domain name predates the Complainant’s registration of the Trademarks with at least 4 years. The finding that the Respondent acquired the disputed domain name before the Complainant registered its Trademarks, precludes bad faith registration by the Respondent in this case.
The burden of proof is on the Complainant. As concerns a potential claim of use of the Trademarks before their registration or application, the Panel finds that the Complainant has not established sufficient secondary meaning in its Trademarks to create common law or unregistered trademark rights in the marks. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
Fifth, acquiring and selling domain names does not in itself constitute bad faith registration or bad faith use of the domain names. The Complainant failed to provide convincing argumentation and documentation that this would constitute bad faith. The Complainant did not submit evidence of circumstances that the registration or use of the disputed domain name would constitute bad faith of the Respondent.
Taking all the above elements into account, the Panel concludes that the Complainant did not show that the Respondent has registered or used the disputed domain name in bad faith under the third element of paragraph 4(a) of the Policy.
Reverse Domain Name Hijacking
The Panel finds that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative procedure. Lack of success of a complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. The Panel refers in particular to the fact that the Complainant prevailed on the first element of Paragraph 4(a) of the Policy and to the fact that the Complainant did probably not know all relevant elements of fact because of the Respondent’s initial use of a privacy service for the WhoIs registration of the domain name.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the eisco.com domain name REMAIN WITH Respondent.
Bart Van Besien, Panelist
Dated: July 17, 2024
