ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant is Microcell Solutions, a telecommunications company in Montreal and the owner of a service mark registration for FIDO. Respondent is the B-Seen Design Group, a Toronto company specializing in the design of promotional web pages, and the registrant of the contested domain name, fido.com.
2. Procedural History:
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 23th, 2000. The hardcopy of the Complaint Form was received on February 23th, 2000. Payment was received on the same date. Upon receiving all the required information, eResolution's clerk confirmed that the Registrar is Network Solutions Inc., and that the Whois database contains all the required contact information and including the billing contact. The clerk also determined that, on February 25th, 2000, the Contested Domain Name resolved to an inactive Web page and that the Complaint is administratively compliant. 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 25th, 2000. That date is the commencement date of the administrative proceeding.
On February 25th, 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 March 16th, 2000, the Respondent submitted the response form and the annexes. On March 21st, 2000, the Clerk's Office submitted five (5) names of candidates to act as a third panelist to the parties and required that they rank them in preference order. On March 24th, 2000, the Complainant wrote to the clerk's office to mention that one of the candidates was in conflict of interests with them. On March 27th, 2000, the Clerk's Office submitted a new list of candidates to act as a third panelist to the parties and required that they rank them in preference order. On April 3rd, 2000, the Clerk's Office received the parties' preferences of candidates to act as the third panelist. On April 10th, 2000, the Clerk's Office received the Declaration of Impartiality and Independence from the three members of the Panel. eResolution appointed Ms. Jessica Litman to be the President of the Panel. On April 10th, 2000, the Clerk's Office forwarded a user name and a password to the three members of the Panel, allowing them to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On April 10th, 2000, the parties, the Registrar and ICANN were notified that Ms. Litman, Mr. Richard Hill and Mr. Michael Froomkin have been appointed and that a decision was to be, save exceptional circumstances, handed down on April 25th, 2000. On April 13th, 2000, the panel granted the complainant's request to submit a rebuttal on or before April 17, and allowed the respondent until April 21 to submit a reply. The panel extended the deadline for its decision to May 10, 2000.
On April 14, complainant filed a document it denominated a "reply" to B-Seen's response. On April 19, respondent submitted its "rebuttal" to complainant's reply.
3. Factual Background
Complainant Microcell markets wireless digital mobile telephone services throughout Canada under the FIDO mark. It applied to register the mark in Canada in November, 1995, and introduced its FIDO services in 1996. Registration issued under serial number TMA475,321 on April 28, 1997. Microcell later registered a second FIDO mark for its services, and has applied to register a number of variations (e.g., FIDOmatic, FIDOData). Microcell has engaged in extensive advertising to promote its services and its FIDO mark. Microcell registered the fido.ca domain name in 1996, and operates a website associated with its FIDO services at www.fido.ca
Respondent B-Seen is a small Toronto website development firm. In June, 1997, it registered the Fido.com domain name. To date, it has not used the domain name to operate an active website. B-Seen has a website at www.bseen.com to promote its services as a designer of interactive web commercials. B-Seen has registered a number of other domain names not currently in active use. Most of these involve combinations of generic terms. E.g., clearancestuff.com, sexcommericals.com.
In January, 2000, Microcell's CEO telephoned B-Seen to discuss B-Seen's registration of fido.com. The parties' accounts of this conversation differ, but they agree that Microcell offered to pay B-Seen for the registered domain name. According to both accounts, B-Seen indicated that it intended to use the fido.com domain for an Internet search engine, and had refused a previous offer to purchase the domain for $350,000. Six days later, Sean Dalton of Microcell visited B-Seen in person and offered to pay $20,000 for the fido.com domain name. B-Seen refused, and again claimed that it intended to operate a search engine at fido.com.
4. Parties' Contentions
Microcell asserts that, both because FIDO is an inherently distinctive mark for mobile telephone services, and as a result of its massive advertising campaigns, its FIDO mark is highly distinctive throughout Canada. It argues that the fido.com domain name is identical to Microcell's FIDO mark, and that any use of the fido.com domain by any entity other than Microcell will therefore confuse millions of consumers familiar with Microcell's FIDO mark. Microcell argues, further, that B-Seen could not have been unaware of the FIDO mark and the potential for confusion when it registered the fido.com domain name in 1997. Under Canadian trademark law, Microcell argues, B-Seen had the obligation to select a domain name that was not confusingly similar to the FIDO mark. Further, Microcell argues, B-Seen has yet to make any bona fide use of the fido.com domain. Finally, Microcell insists that B-Seen's purpose in registering fido.com was primarily for the purpose of reselling it to Microcell for an exorbitant price. "The refusal to amicably transfer the domain name coupled with the declared intention, true or false, to operate a search engine through fido.com is conclusive proof of B-Seen's bad faith, which began with registration and continues today." Complaint at 128.
B-Seen argues that the FIDO mark is weak, both because it is a common nickname for a dog and because of widespread third party use. B-Seen registered fido.com to create an Internet-search engine, taking advantage of the fact that dogs are known for their searching ability and that "fido" is an acronym for the phrase "find it directly online". Under Canadian trademark law, B-Seen argues, its use of the fido.com domain for an Internet search engine would not be actionable, because of the weakness of the mark and because of the differences between the parties' services. B-Seen explains that it has not developed the search engine it intends to operate because it is a small, start-up company, which is getting its projects off the ground one by one. B-Seen argues that it at no point intended to sell fido.com to Microcell or anyone else, and has in fact consistently refused all offers to purchase the domain name. In any event, since B-Seen has not yet used the fido.com domain, it claims that it has done nothing prohibited either by Canadian trademark law or by the UDRP.
5. Discussion and Findings
Both Microcell and B-Seen ask the panel to apply the law Canadian courts would apply in a trademark infringement lawsuit. They have submitted a variety of annexes for the purpose of persuading the panel that the registered FIDO mark is or is not highly distinctive, and have made a number of arguments designed to show that if B-Seen were to operate a website at www.fido.com, it would or would not be actionable under Canadian trademark law.
Complainant seems to have misunderstood the text of the Policy and the nature of these proceedings, since most of its brief and almost all of its evidentiary annexes relate to the use of the FIDO mark in connection with complainant's marketing campaigns.
Paragraph 4(a)(i) of the Policy only requires claimant to prove that it has a valid trademark identical or confusingly similar to the domain name, thus extensive submissions regarding the actual use of the mark in advertising or marketing campaigns are irrelevant for this panel, although they may be of great importance before a court of law investigating alleged violation of national trademark laws. Indeed, the scope of this panel's inquiry is much narrower. In accordance with the UDRP, we must determine only whether Microcell has shown:
A. Similarity of domain name to mark:
There is no real dispute that that "fido" portion of fido.com is identical or confusingly similar to Microcell's FIDO mark.
B. Respondent's rights or legitimate interests in the domain name:
B-Seen has attempted to show that it has a legitimate interest in the fido.com domain because it has the bona fide intention to use the fido.com domain name for an Internet search engine in the future. B-Seen appears to have registered a domain name that seemed to it to be likely to be useful for something (perhaps a search engine) someday. B-Seen has taken some preliminary steps toward developing its ideas to use fido.com for a search engine site, but has not yet made concrete preparations to move forward on the project. Microcell argues that all of B-Seen's preparations were pretextual, undertaken to conceal its bad faith, but has presented no evidence to support that claim. The panel concludes that Microcell has failed to show that B-Seen has no legitimate interests in the domain name.
C. Bad faith Registration and Use:
Microcell has failed to show bad faith registration, and failed to show bad faith use.
1. Bad Faith Registration:
Microcell's allegations of bad faith registration are premised on its assumption that as owner of the FIDO mark, it has earned the exclusive right to use fido in domain name space, and the registration of a domain name in derogation of that right must therefore be a bad faith registration. Although Microcell asserts that B-Seen registered the domain name for the purpose of selling it to Microcell, it has not shown any behavior on B-Seen's part that would support its interpretation. According to the evidence presented to this panel, B-Seen never offered to sell the domain name to Microcell. When Microcell offered to buy the domain name for a sum considerably in excess of B-Seen's out of pocket costs, the parties agree that B-Seen refused to sell the domain name. Microcell asks the panel to infer that B-Seen's refusal demonstrates its intent to force Microcell to offer an exorbitant sum for the domain. There is no basis in the record for such an inference, nor any reason to believe that B-Seen would have expected Microcell to be willing to spend substantial sums to acquire fido.com. Microcell has since 1996 operated a website at www.fido.ca, and, as its exhibits demonstrate, has done so with great success. Furthermore, registration of a common or generic name such as FIDO can hardly be considered indicative of bad faith, absent other factors (whereas registration of a an unusual term such as Vodaphone could, in itself, be considered suspicious, absent other factors). Even when a common name has become highly distinctive of a particular product because massive advertising has generated substantial secondary meaning, another party might legitimately register the common name because of its primary meaning. In any event, the panel notes that at the time B-Seen registered fido.com, Microcell had only recently launched the promotional campaign it documents so thoroughly in the material attached to its complaint.
2. Bad Faith Use:
Microcell's only allegation of use of the domain name by B-Seen is its insistence that B-Seen's refusal to transfer the domain name was really part of its scheme to sell the domain name to Microcell by silently forcing Microcell to offer ever-increasing amounts of money to buy it. Microcell fails to support its allegation with evidence; it does not even submit contemporaneous internal memos or e-mails that might have provided some corroboration for the allegations it makes. This panel is aware of the fact that other arbitrators have interpreted the UDRP to support a conclusion that offering to sell a domain name, without more, can constitute bad faith use under the UDRP. Nothing in the UDRP, however, permits us to conclude that not offering to sell a domain name, without more, constitutes bad faith use. There is no basis for construing B-Seen's refusal to sell the fido.com domain as bad faith use under the UDRP.
The ICANN UDRP permits this panel to order the cancellation or transfer of a domain name if a trademark owner shows that the domain name is identical or confusingly similar to its mark, that respondent has no rights or legitimate interests in respect of the domain name, and that respondent has both registered and used the domain name in bad faith. The panel finds that Microcell has failed to show that B-Seen has no rights or legitimate interests in the domain name, or that B-Seen registered or used fido.com in bad faith. Therefore we find in favor of respondent B-Seen, and order that the domain name fido.com remain with the respondent B-Seen.
Thus done and signed on May 2nd, 2000
(s) Jessica Litman, Presiding Panelist
(s) Richard Hill
(s) A. Michael Froomkin