ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. The Parties and Contested Domain Name.
Complainant is Westfair Foods, Ltd., 3225 12th St. N.E., Calgary, Alberta, T2E 7S9, Canada. Email via Jay David Elving at firstname.lastname@example.org (Westfair Foods, Ltd.). Complainant is represented by Mary Jane Lemenchick, 60 Queen Street, Suite 1000, Ottawa, Ontario K1P 1C3, Email email@example.com.
Registrant is Brent Zelizney, 114 Meglund Pl., Saskatoon, Saskatchewan S7H 4Z7, Canada. Email firstname.lastname@example.org and/or email@example.com. Registrant is represented by Brent Zelizney, 114 Meglund Pl., Saskatoon, Saskatchewan S7H 4Z7, Canada. Email firstname.lastname@example.org and/or email@example.com.
Contested Domain Name: "westfairfoods.com". The Clerk of eResolution verified the Registrar as Network Solutions, Inc. Registrant asserts the Registrar is WorldNic Name Host email address firstname.lastname@example.org.
2. Procedural History.
The electronic version of the Complaint form was filed on-line through eResolution's Website on March 17, 2000. The hardcopy of the Complaint Form was received on March 23, 2000. Payment was received on March 20, 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 Registrant;
Verify if the contested Domain Name resolved to an active Web page;
Verify if the Complaint was administratively compliant.
The inquiry led the Clerk of eResolution to the following conclusions: the Registrar is, NETWORK SOLUTIONS, INC. the Whois database contains all the required contact and billing information, the contested Domain Name resolves to an inactive Web page and 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 Registrant on March 28, 2000. That date is the commencement date of the administrative proceeding.
On March 28, 2000, the Clerk's office notified the Complainant, the Registrant, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On April 16, 2000, the Registrant submitted, via eResolution internet site, his response. The signed version of the response was received on April 18, 2000.
On April 21, 2000, the Clerk's Office contacted a panelist, and requested him to act as panelist in this case.
On April 21, 2000 the panelist accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. However, the panelist declared that he was affiliated to one of the parties in the complaint.
On April 26, 2000 the Clerk's Office sent declaration of independence and impartiality to the parties in accordance with section 10 of eResolution Supplemental Rules, granting the parties 10 days to ask for the recusation of the panelist and send their opinions to the Clerk's Office.
On May 5, 2000 the Clerk's Office received request of recusation of the panelist from the Registrant.
On May 15, 2000 the Clerk's Office decided to grant the request for recusation, according to Supplemental Rule 10 (c).
On May 16, 2000 the Clerk's Office contacted Mr. Richard Faulkner and requested him to act as panelist in this case.
On May 17, 2000, Mr. Richard Faulkner accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality
On May 17, 2000, the Clerk's Office forwarded a user name and a password to Mr. Richard Faulkner, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On May 17, 2000, the parties were notified that Mr. Richard Faulkner had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 30, 2000.
3. Factual Background.
Complainant and Registrant are both domiciled in the country of Canada.
Complainant, Westfair Foods Ltd. stated that it is the owner of 39 pending and registered trade-marks in Canada, including the registration of the Trade-mark / Marque De Commerce "WESTFAIR" (see Complainant Annex 1). The trade-mark WESTFAIR was registered in 1963 Registration / Enregistrement Number TMA133,857 and was renewed for a further 15 year term in 1993. The trade-mark WESTFAIR covers a variety of food products, medicinal products and household articles. A full description of the goods covered by the Complainant's registered trade-mark WESTFAIR, was provided to the Panel in Annex 1. Westfair Foods Ltd. asserted that it has used the trade-mark WESTFAIR in Canada since at least as early as December 1963 and continues to use the trade-mark WESTFAIR in Canada, in connection with a wide variety of food products and grocery items, including tea, coffee, cocoa, extracts, baking powder, spices, canned fruits, canned vegetables, canned fish, canned soups, candies, chocolate bars, confectionery, namely all varieties of candy and salted nuts, flour, rolled oats, cereals, including breakfast cereals, biscuits, jams, jellies, marmalade, nuts, honey, pickles, vinegar, peanut butter, dried and evaporated fruits, olives, mincemeat, canned milk, catsup; brooms; matches; alum, borax, boracic acid, camphorated oil, castor oil, cod liver oil, creolin, epsom salts, essence of peppermint, friars balsam, glycerine, glycerine and rosewater, iodine, peroxide of hydrogen, liquid petrolatum, sulphur, turpentine, acetyl-salicylic-acid tablets; and poultry, fresh or frozen.
Complainant, Westfair Foods Ltd. further asserted that it enjoys an exclusivity in the registration of the word WESTFAIR as a trade-mark. It further represented, without contradiction, that there are no other pending applications or registrations comprising the word WESTFAIR, currently on the Canadian Trade-marks Register. Westfair Foods Ltd. stated that it is a federally incorporated company in Canada and is in the business of retail and wholesale food distribution in western Canadian. Westfair Foods' market was represented to stretch from British Columbia to north-western Ontario and northward to the Yukon and Northwest Territories. The Complainant stated, again without any contrary assertion by Registrant, that it has used its tradename Westfair Foods Ltd. in Canada, in connection with the business of retail and wholesale food distribution services since at least as early as 1961. Westfair Foods Ltd. represented that it owns the Domain Names "westfair.ca", which was registered on February 6, 1997 and "westfair.com", which was registered on October 17, 1998. (attached to Complaint as Annex 2)
The Domain Name registered by Registrant and at issue in this Complaint is "westfairfoods.com" (the "Domain Name").
Complainant states, again without contradiction, that it continues in the operations for which it obtained its' original and subsequent Trade marks as well as the Domain Names "westfair.ca" and "westfair.com".
Registrant specifically admits that he offered to sell the Domain Name at issue to the Complainant. Significantly, he does not specify how that offer of sale was made to Complainant, nor the contents of that offer. Neither does he provide copies of any of the documentation constituting that offer of sale. Registrant neither admits, denies, nor addresses the point that he owns or controls the web site referenced in Complainants claim. Neither does he admit, deny or address the Complainant's assertion that he is the real person who may be emailed at the address email@example.com. That web site has previously and continues to currently attempt to sell the Domain Name at issue.
No specific price for the Domain Name is stated. Rather the web site states:
DOMAIN NAME FOR SALE
You now have a chance to own this lucrative address. Contact us at firstname.lastname@example.org. All potential buyers will be kept private and confidential. We will be holding a private auction on a future date. This one time offer will run for only 72 hours.
If interested now, feel free to make an offer/bid at this current time. If we agree to your offer we will contact you.
US currency only.
Businesses and people from around the world are welcome to bid. If we are not satisfied with the final bid we reserve the right to decline and we will publicly advertise availability of this site.
Thank you for participating.
Please remember all offers/bids create a binding contract on yourself.
In other words real offers/bids only!
It is expressly noted that this web site is and it has been functional and displaying this message during the entire pendency of this Panel's deliberations.
Registrant has actual notice of these proceedings according to the ICANN Regulations, has responded to the Complaint and has participated in this arbitration.
4. The Parties' Contentions.
The Complainant asserts that the Domain Name westfairfoods.com is confusingly similar with the Complainant's trade-mark WESTFAIR, which has been registered and used in Canada, since December 1963. It further asserts that the Domain Name westfairfoods.com is confusingly similar to the Complainant's tradename WESTFAIR FOODS LTD., which has been used by the Complainant in Canada, since 1961. The Domain Name at issue westfairfoods.com consists of a invented portion, "westfair", and a generic portion "foods". Complainant maintains that the addition of the generic portion "foods" only serves to increase the similarity and risk of confusion with Complainant's trade-mark, since the Complainant's trade-mark is registered and used in association with a variety of food products. Therefore it claims that the as a result of the longstanding and extensive use that Complainant has made of its trade-mark and tradename in Canada, and the degree of similarity between the Domain Name and the Complainant's trade-mark and tradename, there is a very strong likelihood that the Domain Name westfairfoods.com would be viewed as belonging to the Complainant or having a connection to the activities of the Complainant.
The Complainant states that Registrant, Brent Zelizney, has no right or legitimate interest in the Domain Name westfairfoods.com. Mr. Zelizney is not known by the name WESTFAIR FOODS, nor does he operate a business known by the name of WESTFAIR FOODS. Mr. Zelizney has owned the Domain Name since January 5, 2000, long after the Complainant has established rights in the trademark WESTFAIR and the tradename WESTFAIR FOODS LTD. Since January 5, 2000, Mr. Zelizney, has not established any genuine commercial interest in using the Domain Name.
Complaint's Assertion of Bad Faith:
It is the Complainant's assertion that the Domain Name westfairfoods.com has been registered and used primarily for the purpose of selling or transferring the Domain Name to the Complainant or other parties, for valuable consideration in excess of documented out of pocket costs related to the transfer of the Domain Name. It also attached as Annex 3, a copy of an e-mail communication sent to Mr. David Elving at Westfair Foods Ltd. on January 14, 2000. That e-mail communication facially states that it was sent by Brent Zelash from the e-mail address: email@example.com. The e-mail communication does not clearly state an offer to sell the Domain Name to the Complainant, however it conveys an intent to embarrass or inconvenience the Complainant by selling the Domain Name to a competitor of the Complainant. Complainant further expressly noted that the name Brent Zelash would appear to be fictitious. The Complainant represented that a search of the Whois database reveals that the e-mail address firstname.lastname@example.org is owned by Brent Zelizney, the Registrant of the Domain Name westfairfoods.com and attached the results of that search as Annex 4. Finally, Complainant attached as Annex 6, a copy of the web page which appears under the Domain Name westfairfoods.com. That web page is reproduced in Section 3, supra, and is entitled "THIS DOMAIN NAME FOR SALE". It invites interested parties to bid on the Domain Name by private auction. The Complainant suggests that the offer of a private auction appears genuine as the web site contains language informing bidders that "all offers/bids create a binding contract on yourself." Complainant claims that while no monetary value has been placed on the Domain Name, the offer of a private auction is indicative of an intent to obtain financial consideration that far exceeds any possible out-of-pocket costs for the transfer of the Domain Name. It asserts that view is further supported by various statements which appear on the website, reserving the right to decline any bid which does not meet with the owners approval, a willingness to publicly advertise the availability of the Domain Name and the description of the Domain Name westfairfoods.com as a "lucrative address".
Complainant concludes by reiterating that the dominant portion of the Domain Name, "westfair" is an invented word. Invented words are not usually considered lucrative as Domain Names, unless they have achieved meaning as an identifier of the source of goods for a particular trader. The "lucrative" value of a Domain Name consisting of an invented word, is claimed to only result from the fame and goodwill created in the word "westfair" as a source of food products. Consequently, Complainant contends that since the Registrant has undertaken no legitimate business activity through the Domain Name westfairfoods.com, the only way this Domain Name can be said to have become "lucrative" is through the registration and extensive use of the trade-mark WESTFAIR and tradename WESTFAIR FOODS LTD., made by the Complainant. The statement that the web address www.westfairfoods.com is a "lucrative" address, is asserted to constitute an admission by the Registrant of the Domain Name, that the Domain Name is confusingly similar to the well known trade-mark and tradename of the Complainant. Finally, the Complainant claims that stating that the Domain Name is a lucrative address is an obvious attempt to drive up the value of the offers or bids and to obtain financial consideration which exceeds the documented out-of-pocket costs that should be associated with transferring the Domain Name.
Consequently, Claimant maintains that the Registrant's sole purpose in registering the Domain Name was to profit from its sale or transfer. It claims that the fact and evidence it has submitted demonstrate that the Registrant registered the Domain Name in bad faith and he is using the Domain Name in bad faith because he is offering the Domain Name for sale on a web site that he owns or controls. [Such use, i.e., offering to sell the Domain Name, constitutes using the Domain Name in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001, Administrative Panel Decision (WIPO Jan. 14, 2000).]
Registrant asserts that he began developing a website and, "due to difficulties in finding more common names for a Domain Name, we used a name combining the words "west", "fair" and "foods". This was, at the time, thought to be an original name." He further maintains that one of the fundamental underpinnings of the internet is freedom of speech and expression. Consequently, considering the rapid growth of websites this (freedom of speech and expression) has become increasingly important as "variations on common words of the English Language are the only way you can now register a Domain Name."
Registrant states that the Complainant does not have a registered trade mark in the name "Westfair Foods" and that Westfair Foods Ltd. does not have exclusive rights to the use of the words "west" or "fair" in the English language. Additionally, he maintains that the Domain Name "westfairfoods.com" was researched and cleared prior to registration and that it is the practice of the Registrar, Network Solutions Inc., that no name similar to or resembling an existing registered name can be registered by Network Solutions Inc.
Finally, Registrant states that "the Domain Name was registered during the development of the website. When we discovered that it was somewhat similar to the Complainant's trade mark, we offered to sell the Domain Name to the Complainant in order to avoid any future misunderstandings." He concludes by asserting that "the internet remains an environment which should foster freedom of speech amongst its users. The fact that a larger corporation can claim exclusive proprietary interest in words is contrary to the principles of freedom of speech that should govern these types of disputes."
Consequently, Registrant's contentions, where relevant, are considered as generally denying Claimant's assertions and that it has the right to any remedy.
Complainant, Westfair Foods, Ltd. requests that the ownership of the Domain Name at issue be transferred to Westfair Foods, Ltd..
5. Discussion and Findings.
The ICANN Policy in Paragraph 4.a. requires Westfair Foods, Ltd. to prove, with respect to the Domain Name at issue, each of the following:
(i) The Domain Name at issue is identical or confusingly similar to a trademark or service mark in which Westfair Foods, Ltd. has rights; and
(ii) Brent Zelizney has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The ICANN Policy in Paragraph 4.b delineates four exemplar circumstances, that for the purposes of Paragraph 4(a)(iii), supra, are clear evidence of the registration and use of a Domain Name in bad faith.
The ICANN Policy at Paragraph 4.c. sets out three exemplar defenses which, if proved by Registrant, shall demonstrate Registrant's rights or legitimate interests to the Domain Name for purposes of Paragraph 4(a)(ii), supra.
a. Identity or Confusing Similarity
Westfair Foods, Ltd. urges that the Domain Name at issue is within the concept of "confusing similarity". Thus, Complainant has the burden of establishing that the Domain Name at issue is "confusingly similar" to its corresponding marks and/or trade name.
The Domain Name at issue is patently substantially identical and confusingly similar to the corresponding Westfair Foods, Ltd. Trade mark and trade name. This is especially true in the context of the Internet. Registrant's interesting observation that "Complainant does not have a registered Trade mark in the precise name "Westfair Foods" " misunderstands, or ignores, the concept of "confusing similarity". The assertion that the Domain Name is not confusingly similar to the corresponding mark is not remotely credible. Whilst the Parties in this case are Canadian, this Panel is assisted and persuaded by the reasoning of the United States Court of Appeal for the Second Circuit in the case of Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246, 53 U.S.P.Q. 2D (BNA) 1570, "For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown Domain Name is simply to type in the company name or logo with the suffix .com. n3" Any consumer attempting to do so presently would not be directed to Westfair Foods, Ltd. Instead they would reach the web site offering them an opportunity to participate in a "private auction" of the Complainant's Trade mark and trade name.
b. Rights or Legitimate Interests
Brent Zelizney's basic defense on this point consists of the assertion that "due to difficulties in finding more common names for a Domain Name, we used a name combining the words "west", "fair" and "foods". This was, at the time, thought to be an original name." The Panel expressly notes that Zelizney does not challenge (1) the validity of any of the Westfair Foods, Ltd. marks, (2) Westfair Foods, Ltd.'s rights in those marks with respect to Westfair Foods, Ltd. goods and/or services, (3) the reputation or goodwill inherently associated with those marks, or (4) any fact represented by Westfair Foods, Ltd. as to its' present or future use of the marks.
Brent Zelizney does not deny Westfair Foods, Ltd.'s assertion that he has no active website under the Domain Name at issue. The Panel recognizes that the Parties in this matter are Canadian, yet it is clear to this Panel that Zelizney's registration of this Domain Name is precisely the type of undesirable behavior envisioned by the United States Congress when it articulated the public policy of the United States by passing the Anticybersquatting Consumer Protection Act of 1999 and the Court of Appeals in Sporty's Farm, supra. That Court pointedly quoted the United States Senate stating "cybersquatters have become increasingly sophisticated as the case law has developed and now take the necessary precautions to insulate themselves from liability. For example, many cybersquatters are now careful to no longer offer the Domain Name for sale in any manner that could implicate liability under existing trademark dilution case law." The Court went on to note that "(the American) Congress passed the ACPA. (Anticybersquatting Consumer Protection Act) 'to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet Domain Names with the intent to profit from the goodwill associated with such marks -- a practice commonly referred to as 'cybersquatting'." S. Rep. No. 106-140, at 4. The Parliaments of Canada and the United Kingdom may choose to enact similar legislation. The Internet has already addressed these issues through the enlightened Procedures, Rules and Regulations of ICANN, which provide this Panel with the authority to determine these disputes. This also makes available the most persuasive logic and authority of the developing jurisprudence and legislation from every forum and jurisdiction that has also struggled with these issues.
The paucity of the evidence submitted by Registrant demonstrates that had Brent Zelizney legitimately intended to use the Domain Name at issue for any purpose other than to sell it at a profit, he could easily have adduced more persuasive evidence in support of his position.
c. Bad Faith.
The registration and use of the Domain Names at issue in bad faith according to the exemplars contained in the ICANN Regulations is obvious. It is uncontroverted that the Domain Name at issue has not been used in commerce on an active website by Brent Zelizney.
The totality of the evidence adduced by Claimant clearly demonstrate that the Domain Name was primarily registered for the purposes of either selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the Domain Name. The requisite Bad Faith is sufficiently established. It is therefore unnecessary to further document this finding by the specific incorporation of the contents of the email communication from "Brent Zelash" directed to David Elving, nor to ascertain the actual real identity of "Brent Zelash". However, the Panel would pointedly note that such communications are repugnant to the ancient public policy of all civilized nations and have long been affirmatively proscribed by the laws of the United Kingdom, Canada, the members of the Commonwealth and the Untied States.
d. Paragraph 4.c. Defenses.
Registrant, Brent Zelizney, has failed to prove any of the three circumstances set out in ICANN Policy at paragraph 4.c., viz.:
(i) before any notice to Brent Zelizney of the dispute, he used or was preparing to use the Domain Name in connection with a bona fide offering of goods or services, or
(ii) Brent Zelizney or a related entity has been commonly known by the Domain Name, or
(iii) Brent Zelizney is making 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".
e. Equal Treatment and Due Process.
Registrant, Brent Zelizney, knew, or reasonably should have known when he registered the Domain Name at issue. He agreed to and accepted the Procedures, Rules and the Regulations established by the Registrar and its' successors. The Panel recognizes it has a duty to treat the parties equally and to afford them a fair opportunity to present their case. Likewise the Panel is expressly acknowledged to possess the power to determine the admissibility, relevance, materiality and weight of the evidence. The Parties have freely and actively participated in this case and all of the Parties respective submissions, statements and representations have been considered for their relevance, materiality and admissibility. All have been given due and appropriate weight.
6. Conclusions, Decision and Award.
The evidence, submissions of the Parties and the guidance of the ICANN Regulations cause this Panel to conclude and decide that (a) the Domain Name registered by Brent Zelizney and at issue herein is virtually identical to the corporate name, trade name and registered mark(s) of Westfair Foods, Ltd., (b) Brent Zelizney has no legitimate interests in respect of the Domain Name, and (c) the Domain Name at issue was registered and is being used in bad faith by Brent Zelizney.
Accordingly, the Panel hereby Awards, directs, requires and orders that the registration of the Domain Name at issue, "westfairfoods.com" be transferred from Brent Zelizney to Westfair Foods, Ltd.
Thus done and signed in Dallas, Texas, United States of America on May 30, 2000.
(s) Hon. Richard D. Faulkner, J.D., LL.M., F.C.I.Arb.