ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant : Tourism and Corporate Automation Ltd.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on January 27th, 2000. The hardcopy of the Complaint Form was received on February 7th, 2000. Payment was received on the same date.
Upon receiving all the required information, eResolution's clerk proceeded to:
The inquiry lead the Clerk of eResolution to the following conclusion: the Registrar is Melbourne IT DBA Internet Names Worldwide, the Whois database contains all the required contact information but the billing contact. The Contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to help@ inww.com by eResolution clerk's office to confirm the name of the billing contact on February, 5th, 2000. The requested information was received February, 7th, 2000.
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 February 7th, 2000. That date is the commencement date of the administrative proceeding.
On February 7th, 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 February 27th, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on February, 29th, 2000.
On March 2nd, 2000, the Clerk's Office contacted Mr. I Trotter Hardy, and requested for him to act as panelist in this case.
On March 2nd, 2000, Mr. I Trotter Hardy, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On March 2nd, 2000, the Clerk's Office forwarded a user name and a password to Mr. I Trotter Hardy, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On March 2nd, 2000, a hard copy of file was sent to Mr. I Trotter Hardy.
On March 2nd, 2000, the parties, the Registrar and ICANN were notified that Mr. I Trotter Hardy had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 16th, 2000.
3. Factual Background
Complainant Tourism and Corporate Automation Ltd. (TCA) sells computer software to travel planning businesses in a variety of countries around the world. For thirteen years, TCA has marketed this software under the name "TourPlan." TCA has attempted several times to register the domain name "TourPlan.com" and found it unavailable. It has, however, registered several related names, including "TCA-TourPlan.com", "TCA-TourPlan.co.uk", and "TourPlan.co.nz".
Within the last two or so years, one of TCA's company directors was discharged or dismissed and upon leaving TCA, this director established a new company under the name "Nanosoft" with a product it called "TravelStudio." In 1999, this same director found that the domain name "TourPlan.com" had become available and registered it.
Complainant TCA now proceeds under the ICANN domain name dispute resolution policy to have this domain name transferred to itself.
4. Parties' Contentions
Complainant contends that it has rights in the trademark "TourPlan," and that the respondent registered the name in bad faith. Respondent contends that the complainant's mark "TourPlan" is very weak and that its own interest in the name is legitimate.
5. Discussion and Findings
Domain name arbitration panels have no mandatory body of law to follow in making a decision; they are arbitration panels, not courts. The ICANN UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY ("Policy") gives explicit guidance to the parties to a domain name dispute in completing the necessary procedural paperwork, but this guidance is directed to the parties, not to the panel.
Nevertheless, the guidelines can be a useful, though neither mandatory nor exclusive, set of principles for arbitration panels, and I adopt them as such for this arbitration.
ICANN Policy section 4.a requires a complainant to assert and prove that
A. Confusing similarity.
Part (i) has no clarifying commentary or additional definition. The language is obviously taken from the general principles of trademark and unfair trade law. Granted, the "general principles" of a body of law make more sense when they can be identified to a particular legal jurisdiction. One would be more comfortable talking about the general principles of trademark law for a single sovereign, than for a world full of sovereigns. That the Internet is a world full of sovereigns is nowhere better illustrated than in this very proceeding, where the arbitrator is from the United States, the domain name holder has registered its name with an Australian registrar, and the complainant is a New Zealand company with London offices. But I determine that it is not feasible for any given arbitrator or panel to be familiar with all bodies of trademark and unfair trade law in all countries reached by the Internet, and that it is therefore sufficient for this proceeding that I am reasonably familiar with U.S. trademark law and confident that the avoidance of "confusing similarity" can be given a broad and common sense interpretation having suitable relevance nearly everywhere on the Internet.
The issue is then whether the domain name "TourPlan.com" is identical or confusingly similar to a mark of the complainant, namely "TourPlan," a term the complainant uses as a trademark for its commercial computer software. I find that it is identical or confusingly similar, and I reach that finding whether the holder's name is considered as "TourPlan.com" or just "TourPlan" or as "www.TourPlan.com." Internet users generally understand that "www" as a possible prefix, and ".com" or any other generic top level domain identifier as a suffix, are related more to the structure of the Internet than they are to the activities, nature or name of an entity maintaining a presence on the Internet at that particular domain name. Consequently, I find that Internet users are disposed to disregard these prefixes and suffixes and to pay most attention to the term or terms in between. Here that term is obviously "TourPlan," the same word used by the complainant as a mark.
The respondent domain name holder offers evidence that TourPlan is not a strong mark. At least one other entity, the University of Waterloo in Canada, has apparently made use of the same mark for software that is also related to the complainant's travel industry business. I have looked at Waterloo's web site and confirmed that they make use of the "TourPlan" term. Moreover, the holder implies that the complainant's own use of "TourPlan" is modest in scope and perhaps even more modest in the degree of its consumer recognition.
Even without this evidence, I would agree that "TourPlan," as a combination of ordinary words related to the travel business, is far from being a strong mark in the way that "Kodak" and "Shell Oil" are strong marks. But neither the ICANN Policy nor the general principles of trademark law implies that only the strongest of marks can engender confusion. Confusion can arise within particular segments of a market, among consumers in particular geographic areas, within groups who share a common interest or business, or in other limited but non-trivial ways. Even though acknowledging and accepting the domain name holder's evidence that "TourPlan" lacks substantial mark strength, I nonetheless find that the domain name "TourPlan" is identical or confusingly similar to the complainant's mark "TourPlan."
There remains the issue whether the complainant itself has rights of some sort in the term TourPlan. I have indirectly alluded to my findings on that issue in the paragraphs above, and here make them explicit: I find that the complainant has rights and legitimate interests in the term "TourPlan" by virtue of its use of that term as a trademark on its computer software for at least thirteen years, and in its use of versions of the same term in several not-disputed domain names such as "TCA-TourPlan.com", "TCA-TourPlan.co.uk", and "TourPlan.co.nz".
Domain Name Holder's Rights or Legitimate Interests.
The Policy specifies that respondent domain name holders will have demonstrated that they have rights or other legitimate interests in a domain name if the panel finds, from all the evidence, that
Again, these factors are directed to the parties, not to the panel. For that reason a panel is entitled to reach its own conclusions about a domain name holder's legitimate interests in the domain name, and the weight that that conclusion is to have in its overall finding, regardless of the domain name holder's demonstration of any of the Policy's listed factors.
Read in a literal-minded way, the Policy states that a respondent domain name holder will satisfy its burden of making a proper response to one element of a complaint (that the holder lacks any legitimate interest in the domain name) if the arbitration panel later reaches-after the respondent name holder has completed its response-a specified conclusion. In that sense, the propriety of the domain name holder's response can only be assessed retroactively, after the panel has completed its findings.
Frankly, though that is the letter of the Policy, I do not believe that it is intended to be read in just that way. Rather, I conclude that the Policy is intended to establish the principle that the domain name holder's rights or legitimate interest in the name is a very important, though not dispositive, factor in the panel's decision, and I will so treat it.
Section 4.c(i) suggests that one way a domain name holder can establish a legitimate interest in the domain name is by showing that before notice of the dispute, it used or prepared to use the name in connection with a bona fide offering of goods or services. The respondent domain name holder in the instant proceeding offers no evidence that it actually used the name TourPlan in such a connection before notice of the dispute, and in fact makes clear that it has not yet made any such use but is rather reserving the name for future use.
The question is then whether the domain name holder plans to make such use. On this point, the guidance of section 4.c(i) comes from its use of the word "demonstrable." I take that word to mean that it will not be sufficient for a domain name holder merely to assert that it has plans for the commercial use of the domain name. Presumably because a domain name holder in a domain name dispute easily could and likely would make an assertion of planned use, the Policy wisely indicates that more tangible evidence of planned use must be put forward. Though not bound by this guideline, I find it to be of considerable relevance in this proceeding. I note that the respondent domain name holder here has put forward only the bald assertion that it has plans for commercial use of the name. No evidence is offered of advertising campaigns, market tests, focus groups, logo designs, or even of plans for advertising campaigns or plans for market tests or any other plans for outlays or commitments of resources made before receiving notice of this dispute toward the use of "TourPlan" in connection with a bona fide offering of goods or services.
I therefore conclude that the respondent domain name holder has not demonstrated any legitimate interest in "TourPlan" under the guidance of section 4.c(i).
For purposes of section 4.c(ii), the respondent domain name holder offers no evidence, and does not argue, that it is commonly known by the name "TourPlan." Indeed, it offers evidence to the contrary, that it is known as NanoSoft and its product as "TravelStudio." The domain name holder cannot therefore establish any legitimate interest in the name from the guidance provided by section 4.c(ii) of the ICANN Policy.
Section 4.c(iii) consists of two elements. First, the domain name holder can establish that its use of the name is not commercial. Second, the holder can establish that its use is for purposes other than tarnishing the complainant's mark or confusing consumers. Though there may well be cases in which these two elements have independent significance, I find that for purposes of this proceeding, the essential point of section (iii) is that some marks similar or identical to others can be used as domain names without causing confusion. A non-commercial use is one example of a type of use that under some circumstances might not cause confusion.
Here, however, the respondent domain name holder has already declared that its use of the name is for commercial purposes: its intention is to offer commercial services from its site, and to build brand awareness around the domain name. Consequently, I find that the domain name holder has not established a legitimate non-commercial interest in the name under the guidance of section 4.c(iii).
I am free to consider any other evidence besides that already alluded to concerning the domain name holder's rights or legitimate interests in the term "TourPlan." No such evidence, however, has been put forward. I am free to disregard the guidelines of sections 4.c(i), (ii), and (iii) and to draw on other guidelines, but I find no reason to do so. Indeed, I find the guidance of these sections to be both highly appropriate to this proceeding and on these facts, dispositive of my overall conclusion that the respondent domain name holder has not established any rights or legitimate interest in the term "TourPlan."
C. Bad Faith
Section 4.b of the Policy notes that arbitration panels shall consider as evidence of bad faith a set of factors. The Policy does not say that all these factors must be present for bad faith to be found, nor does it say that any of them must be present for bad faith to be found. It says rather that panels shall consider these factors as evidence:
Section (i) is aimed at those who hold domain names merely for sale to others. Though the circumstances of this case would make sale of the name a plausible reason for the domain name holder's original acquisition, nothing in the evidence put forward by either party suggests that this is the case. From the evidence, no offer of sale has been made or is intended. Bad faith therefore cannot be shown under this section of the Policy.
Section (ii) may be satisfied in part: a panel might conclude from the facts presented that the domain name holder is trying to prevent the complainant trademark holder from reflecting the mark in a domain name. But there is no evidence in the record that the domain name holder has engaged in a pattern of such conduct. Consequently, no bad faith can be shown under this section.
Section (iii) is directed to domain name holders who have "registered the domain name primarily for the purpose of disrupting the business of a competitor." The purpose of an individual's actions is much like the notion of "bad faith" itself: both require the fact finder to reach into the mind of an individual to assess thoughts and motives. Very rarely will any dispute bring forth direct evidence of an individual's thoughts and motives. One would hardly expect a party to come forward, for example, and assert that he or she acted in such and such a way because "I had bad faith" or "I desired to harm another."
Consequently, when reaching findings of purpose, motive, and the like, all dispute resolution systems, whether arbitration or full-blown court proceedings, depend on circumstantial evidence and the common sense inferences that reasonable people can draw from such evidence.
Here the issue is whether the respondent domain name holder has registered the term TourPlan for the purpose of disrupting a competitor.
Are the parties "competitors?" There is evidence that the parties are not in precisely the same business, at least at this point. The complainant mark holder provides software to the travel industry that is used for tour planning. The respondent domain name holder states that it intends to provide tour planning services, both to those individuals who want to plan a trip, and also to those in the travel industry involved with trip planning activities. The respondent also states that its future business is still largely undetermined, noting vaguely that it intends to use the name in "building new brands and business process[es] using the Internet."
The uncertainty of the respondent domain name holder's plans for using the TourPlan name complicates the determination of the degree to which the parties are in competition. Because this uncertainty has been caused by the respondent domain name holder's own activity or lack thereof, however, it is proper to give the complainant mark holder the benefit of the doubt: I therefore conclude that for the purposes of this dispute, whatever uncertainty exists should be resolved by a finding that the two parties are direct competitors, and I do so find.
I need not rest my decision on this conclusion, though, for "direct" competition is not a necessary finding. Regardless of the particulars, the parties are clearly, by their own evidence, engaged in or intending to engage in the tour and trip planning business. On a spectrum of competitiveness from "absolutely identical businesses" to "totally unrelated businesses," I find that the two businesses of the complainant and respondent are far closer to the "identical" end than to the "totally unrelated" end.
Consequently I find for these several reasons and for the purposes of this domain name dispute, that the two parties are indeed "competitors."
Inferences must now be drawn regarding the purposes for which the respondent domain name holder has registered the TourPlan name. Here I find the most telling bit of evidence to be the fact that the respondent is a former employee, described as a director, of the complainant company. There is some indication from the written complaint, which uses the term "dismissal" to characterize the respondent domain name holder departure from employment, that the domain name holder was forced to leave the employ of the complainant company. At the very least, the circumstances have the earmarks of a departure that was less than thoroughly amiable. Indeed, the respondent domain name holder does not argue anything to the contrary and makes no effort to refute the complainant's assertions or characterizations of his departure.
I therefore understand from this undisputed evidence the circumstances to be as follows: an employee/director more or less unhappily left his employ and shortly thereafter registered a domain name identical to a mark of his former employer and completely different from his own newly adopted marks, with no demonstrable plans or expenditure of resources made to exploit the registered domain name.
The most reasonable inference to draw from this circumstance is that the departing employee was attempting to disrupt the business of the former employer and was thus acting in bad faith, and I so infer.
As already noted, a panel is free to depart from the confines of the Policy if it concludes that other guidance is appropriate for a resolution of disputes. In particular, even if I were to conclude that the two parties here are not "competitors" at all, I would still be free to find that the evidence of "spite" is sufficient to compel the inference that the respondent domain name holder was acting in bad faith, and I do so find.
Under section (iv), a finding of bad faith is justified if the respondent domain name holder has "intentionally attempted to attract, for commercial gain, Internet users to [the holder's] web site … by creating a likelihood of confusion with the complainant's mark … ." The evidence of actual confusion in this case appears to be minimal. According to the respondent domain name holder's evidence, very few visitors have come to the TourPlan web site. Of course, the number of visitors can and likely will change with time, as more search engines or more advertising draw attention to the respondent domain name holder's site, but the panel's finding here must relate to the respondent's intention. So far, the evidence, including the small number of visitors to date, does not suggest that the respondent has at this point intended to draw visitors to its site through confusion. On the other hand, if the respondent domain name holder continues its acknowledged plans to build a business around the name "TourPlan," some confusion seems very likely indeed; it would border on the ridiculous to conclude that the respondent domain name holder is and would remain ignorant of that fact.
On the strength of the respondent domain name holder's knowledge of the certainty of future confusion, and notwithstanding the respondent's evidence that there has been little actual confusion to date, I am inclined to find that the respondent has intentionally attempted to draw visitors to its TourPlan site through confusion with the complainant's mark "TourPlan," and hence has exhibited bad faith. I stop short of actually reaching this finding, however, because having already reached such a conclusion under section (iii), I need not reach the equivalent finding under this section (iv).
The respondent also indicates that it is willing to alter the TourPlan web site to give a clear indication to visitors of the difference in the two businesses and thereby avoid confusion. If this panel were a court of law, it could issue an order to ensure that very result if it were otherwise convinced of the merits of the respondent's position. Regardless of what a court could or might do, however, a domain name arbitration panel does not have that authority. A panel can only issue one of three possible decisions: require the respondent domain name holder to transfer the domain name to the complainant; require that the respondent domain name holder give up its domain name registration; or require nothing at all.
Most notably, an arbitration panel has no authority to require that a domain name holder be allowed to continue using the domain name only so long as specified other conditions are met. Consequently, any assertions by a respondent domain name holder about steps that it will take, might take, or has already taken, to avoid confusion, are of little relevance in a domain name dispute. Without the authority to ensure that such steps will be taken or will continue to be taken even one day after its decision, let alone for the indefinite future, a domain name arbitration panel simply cannot give such assertions any significant weight.
As the most appropriate remedy for the circumstances of this dispute, I determine that the respondent domain name holder must transfer the TourPlan domain name to the complainant.
This decision of the Administrative Panel in Case No. AF-0096 was rendered on the 16th of March, 2000.
(s) I. Trotter Hardy
1. I am aware that domain names are case insensitive. One can spell a domain name as "tourplan" or "TOURplan" or "tOURpLAN" or in any other case and the same site will be located by any domain name server that has an entry for that name. I spell it "TourPlan" in this decision for the convenience of readers.