EPS Settlements Group, Inc. v. Bank of
America
Claim Number: FA0510000577705
PARTIES
Complainant is EPS Settlements
Group, Inc. (“Complainant”), represented by K Kalan, of Berenbaum, Weinshienk & Eason, P.C., 370 17th Street, Suite 4800, Denver,
CO 80202. Respondent is Bank of America (“Respondent”),
represented by Randel S. Springer, of Womble Carlyle Sandridge & Rice PLLC, One West Fourth
Street, Winston-Salem, NC 27107.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eps.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Sandra Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 13, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 17, 2005.
On October 14, 2005, Network Solutions, Inc. confirmed by e-mail to the
National Arbitration Forum that the <eps.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On October 20, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 9, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@eps.com by e-mail.
A timely Response was received and determined to be complete on November
9, 2005.
On November 11, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra Franklin as Panelist.
On November 14, 2005, Complainant filed an
Additional Submission in accordance with NAF Supplemental Rule 7.
On November 18, 2005, Respondent filed an
Additional Submission in accordance with NAF Supplemental Rule 7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has substantial common law trademark rights in EPS in connection with its structured settlement services. Complainant asserts that the <eps.com> domain name is confusingly similar to Complainant’s EPS mark. Complainant further asserts that Respondent intends to auction the domain name to the highest bidder, and therefore is not using the disputed domain name in connection with a bona fide offering of goods and services, but rather registered and is using the domain name in bad faith.
B. Respondent
Respondent asserts that Complainant has not established trademark rights in EPS. Respondent states that it has rights and interests in the <eps.com> domain name, having legitimately acquired it in a foreclosure. Respondent denies any bad faith registration or use.
C. Complainant’s Additional Submission
In Complainant’s Additional Submission it contends that Respondent did not properly serve its Response on Complainant. Complainant also states that Respondent obtained the <eps.com> domain name via adversarial transfer, and reiterates that Respondent is holding the domain name solely for the purpose of selling it to the highest bidder.
D. Respondent’s Additional Submission
Respondent states, in its Additional
Submission, that Complainant failed to prove trademark rights in <eps.com>, and that Complainant itself demonstrates
that Respondent acquired the domain name legitimately. Respondent goes on to argue that it has not
solicited or accepted offers to purchase the domain name from Complainant or
anyone else.
DISCUSSION AND FINDINGS
First, the Panel finds that Complainant received
the Response and has had ample notice and time to respond.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Complainant
asserts that it has common law rights in EPS, but failed to provide any
evidence which would support such a finding.
Complainant provided documents containing references to “EPS Consultants
Meeting,” which did nothing to show recognition among the consuming public or
to otherwise establish secondary meaning in EPS. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003)
(holding that prior UDRP precedent did not support a finding of common
law rights in a mark in lieu of any supporting evidence, statements or proof
(e.g., business sales figures, revenues, advertising expenditures, or number of
consumers served)); see also Molecular Nutrition, Inc. v. Network News &
Publ’ns., FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and
applying the principals outlined in prior decisions that recognized “common
law” trademark rights as appropriate for protection under the Policy “if
Complainant can establish that it has done business using the name in question
in a sufficient manner to cause a secondary meaning identifiable to
Complainant’s goods or services”); see also Cyberimprints.com, Inc. v.
Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that
Complainant failed to prove trademark rights at common law because it did not
prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship
of goods or services or that there was strong customer identification of the
mark as indicating the source of such goods or services). Thus, the Panel finds that Complainant did
not establish rights in EPS.
Furthermore, the Panel finds that
EPS is merely a generic three-letter combination and, by itself, cannot be
afforded trademark protection.
Respondent provided numerous examples of widespread use of EPS in other
domain names, as well as trademarks filed with the U.S. Patent and Trademark
Office. See CRS Tech. Corp. v.
Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“CONCIERGE is not
so associated with just one source that only that source could claim a legitimate
use of the mark in connection with a website.”); see also Bus. Architecture
Group, Inc. v. Reflex Publ’g, FA
97051 (Nat. Arb. Forum June 5, 2001) (Complainant did not establish secondary
meaning in BAG by simply stating that it was known by the acronym B.A.G.).
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i).
Since Complainant has failed to establish the
very first requirement under the Policy, it is not necessary to thoroughly
discuss the remaining elements.
However, the Panel notes that acquiring a domain name in a foreclosure
is a legitimate way of obtaining an enforceable interest in a domain name.
Though not necessary to this decision, the
Panel further notes that the legitimate holder of a domain name may indeed sell
the domain name as it sees fit.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra Franklin, Panelist
Dated: November 28, 2005
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