ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and contested domain names
The Complainant is Bata Industries Ltd., a corporation headquartered in the City of Toronto, Ontario, Canada. The Respondent is Bentley Online Ltd., a corporation headquartered in the City of Victoria, British Columbia, Canada. The domain names at issue are 'batashoes.com' and 'bata-shoes.com', and these domain names were registered with Network Solutions, Inc.
2. Procedural history
The electronic version of the Complaint form was filed on-line through eResolution's Website on March 21, 2000; the hardcopy of the Complaint Form was received on March 27, 2000. Payment was received on March 24, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
(a) confirm the identity of the Registrar for the contested domain name;
(b) verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
(c) Verify if the contested domain name resolved to an active Web page;
(d) Verify if the Complaint was administratively compliant.
The inquiry led the Clerk of eResolution to the following conclusion:
(1) the Registrar is Network Solutions Inc.;
(2) the Whois database contains all the required contact information including the billing contact;
(3) the contested domain name resolves to an inactive Web page;
(4) 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 April 4, 2000. That date is the commencement date of the administrative proceeding.
On April 4, 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 April 26, the Clerk's Office tried again to contact the Respondent but received no answer.
The Respondent never submitted his response.
On April 28, 2000, the Clerk's Office contacted a first panelist, and requested for him to act as panelist in this case. The Clerk's Office did not received any response from this first panelist.
On May 3, 2000, the Clerk's Office contacted Mr. Giovanni Ziccardi, and requested him to act as panelist in this case.
On May 5, 2000, Mr. Giovanni Ziccardi, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On May 5, 2000, the Clerk's Office forwarded a user name and a password to Mr. Ziccardi, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On May 5, 2000, the parties were notified that Mr. Ziccardi had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 19, 2000.
3. Factual Background
Bata Industries Limited is the holder, in Canada, of several registered trademarks and trademark applications for goods and services concerning shoes, shoe soles, shoe machinery, retail stores selling shoes, work boots and safety boots.
In addition to the Canadian registered trademarks Bata Industries Limited and its associated companies within the world-wide Bata Shoe Organization have registered the Bata trademark throughout the world (1.291 registrations).
All of these registrations are trademarks in respect of shoes or are service marks for the retail sale of shoes.
Bata Industries Limited is in the business in Canada of manifacturing, importing and distributing shoes, as well as operating a chain of approximately 250 retail stores carrying on business under the name 'Bata' which sell Bata shoes.
Bentley Online Ltd. registered the domain names 'batashoes.com' and 'bata-shoes.com' incorporating the trademark 'Bata'.
On March 7, 2000, Bata Industries Limited requested a transfer of the domain names 'batashoes.com' and 'bata-shoes.com'. In connection with such request, Bata Industries Limited offered to reimburse the Registrant for its out-of-pocket expenses paid to Network Solutions Inc. to register all of the the domain names and offered to reimburse the Registrant for its out-of-pocket expenses in connection with signing the Registrant Name Change Agreement form before a Notary Public, as required by Network Solutions Inc.
The Respondent has declined to provide the completed Registrant Name Change Agreement form in return for the reimbursment of the expenses referred to above, and legal counsel for the Registrant has advised Bata Industries Limited that Bentley Online Ltd. would be willing to submit a counter-proposal to Bata Industries Limited if such counter proposal would be of interest to Bata Industries Limited.
4. Parties' contentions
The Complainant contends that Respondent has registered two domain names incorporating a mark which is identical to the trademark registered and used by the complainant, that Respondent has non rights or legitimate interest in respect of the domain names at issue and that Respondent has registered and is using the domain names in bad faith.
The Responent did not send any response to this Panel. The annexed documents (letter from the legal firm Gary W. Kinar, March 16, 2000) and e-mails from Richard Zwicky (March 7, 2000) are the only documents coming from the Respondent examined by this Panel. In these documents, the Respondent only prospects a generic counter proposal.
5. Discussion and findings
a) Copy or similarity
First of all, the domain names 'batashoes.com' and 'bata-shoes.com' incorporate the word 'Bata', and 'Bata' is a registered trademark in Canada of Bata Industries Limited and has been registered throughout the world by Bata Industries Limited and its associated companies in the world wide Bata Shoe Organization.
According to this Panel, the juxtaposition of the words 'Bata' and 'shoes' in the domain names 'batashoes.com' and 'bata-shoes' infer an immediate and logic association between these domain names as 'Bata Industries Limited', not only due to the reference to Bata but also because Bata is recognized as the largest manufacturer and retailer of shoes in the world.
Probably the domain names 'batashoes.com' and 'bata-shoes.com' were deliberately chosen by Bentely Online to identify the respective Internet domain names with Bata Industries Limited, and are confusingly similar with the shoe business being carried on by Bata Industries Limited all over the world, and are deliberately intended to be deceive persons into inferring an association with Bata Industries Limited, which does not in fact exist.
The complainant has provided full evidence of the registration of the 'Bata' mark in the United States and all over the world. It is clear that the domain names 'batashoes.com' and 'bata-shoes.com' have been carefully crafted, chosen and registered by the Registrant so as to refer to the business name and trademark 'Bata' as well as the nature of business lawfully carried on by Bata, namely, shoes. The combination 'Bata' + 'shoes' reminds immediatly to the the business of the wolrdwide famous shoes company Bata.
So the first requirement is satisfied: the contested domain names are confusingly similar to trademarks and service marks in which the complainant has rights and incorporate a registered trademark.
According to this Panel, the Registrant has no lawful right to use the name or trademark 'Bata' incorporated in domain names at issue. First of all, no officer, director of shareholder of Bentley Online has any lawful right to the use of the name or trademark 'Bata'. Bentley is not in the business of manufacturing or importing or distributing shoes, of the sale of shoes at retail to consumers and, moreover, the Registrant is not using either the domain name 'batashoes.com' or the domain name 'bata-shoes.com' in connection with any active business.
Last but not least, the Registrant has also advised the Complainant that it has no intention of using these domain names now or in the future in any manner which would conflict with Bata Industries Limited (see the e-mail 7 March, 2000 coming from Mr. Zwicky, annex B).
The Registrant has no lawful right to use the the name or trademark Bata, is not in the business of manufacturing or importing or distributing shoes, is not in the business of the sale of shoes at retail to consumers, is not using either the domain name 'batashoes.com' or the domain name 'bata-shoes.com' for any active business or for any legitimate purpose whatsoever.
According to this Panel, also the second requirement is satisfied: Bentley Online has no rights or legitimate interests in respect of the domain name.
c) Bad faith
According to this Panel, the Registrant had no bona fide intention at the time of registration of the domain names 'batashoes.com' and 'bata-shoes.com' to use either the domain name 'batashoes.com' or the domain name 'bata-shoes.com' for any legitimate purpose.
Rather, the Registrant's sole intention was probably to use, and to date it has used, both of said domain names solely to preclude the legitimate person entitled to those domain names, Bata Industries Limited, from registering and using same.
The web site is not active, and the Registrant has advised the Complainant that it has no intention of using these domain names now or in the future in any manner which would conflict with Bata Industries Limited (see annex B and C).
The Registrant has registered 21 domain names comprising major Canadian manufacturers, distributors and retailers, including batashoes.com, bata-shoes.com, athletesworld.com and athletes-world.com (also Athletes World is a registered trademark in Canada and throughout the world of Bata Industries Limited and its associate Bata companies and is used to identify a chain of retail stores specializing in athletic footwear). See Annex C with the summary of the various domain names registered at Network Solutions Inc. by the Registrant.
This Panel believes that the Registrant, by declining the offer of reimbursement of expenses in return for the transfer of the domain names and by alluding to a counter-proposal, intended to seek compensation from Bata Industries Limited for the domain names, over and above the reimbursement of expenses offerred in good faith by Bata Industries Limited.
Several actions by Bentley Online constitute evidence, according to this Panel, that the registration and the use of the domain names 'batashoes.com' and 'bata-shoes.com' were undertaken in bad faith.
First, the Registrant has probably registered the domain names 'batashoes.com' and 'bata-shoes.com' primarily for the purpose of selling, renting, or otherwise transferring the said domain name registrations to Bata Industries Limited, the lawful owner of the Bata trademarks, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
Second, the Registrant has registered the domain names 'batashoes.com' and 'bata-shoes.com' in order to prevent the Bata Industries Limited, the owner of the 'Bata' trademark, from reflecting the 'Bata' trademark in a corresponding domain name and that the Registrant has engaged in a pattern of such conduct affecting other well-known registered trademarks.
Third, the Registrant, by using the domain name, 'batashoes.com' and 'bata-shoes.com' as stated above, has intentionally attempted to attract, for potential commercial gain, Internet users to a web site, or other on-line location, which it would control, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its web site with Bata Industries Limited or likelihood of confusion as to a product or service which might be offered on its web site and the products or services offered by Bata Industries Limited under the BATA trademark.
The Registrant represented and warranted in Section 2 of the Service Agreement between the Registrant and Network Solutions Inc. that to the best of its knowledge and belief neither the registration of the domain name 'batashoes.com' nor the domain name 'bata-shoes.com' nor the manner in which it intended to use such domain names would directly or indirectly infringe the legal rights of a third party.
The Registrant knew or ought to have known that such representation and warranty was false and misleading and that use of the word 'Bata' as part of the domain name (especially in conjunction with the word 'shoes') would infringe and violate the rights of Bata Industries Limited.
The Registrant has no association whatsoever with the shoe business nor with Bata Industries Limited and accordingly, the said representation and warranty was not made in good faith.
Respondent has not established a web site through use of the domain names at issue, nor has the respondent otherwise made use ot the domain name.
In the Whois search results that Bentley Online Ltd. Registered 21 domain names included several domain names with the words bata and Athletes Wordl, trademarks of bata Limited (Annex c).
In March 16, 2000, a letter from Gary W. Kinar Law Corporation to the Legal services of Bata Industries Limited declares that the mere ownership of an Internet domain name does not constitute a misrepresentation, that Bentley's business and products are substantially different from Bata's and that the respondent has not in any event used the disputed domain names in the course of any trade.
So there was no use, in the technical sense, of the domain name.
Richard Zwicky of Bentely Online declares in a e-mail (Annex B) that they are not using the domain names in question, and would not at any time in the future seek to use them in any manner which would conflict with bata Industries Limited in any way.
So why Bentley registered domain names with incorporated valuable trademarks of Bata Industries Limited?
This panel think that the Registrant registered the domain names 'batashoes.com' and 'bata-shoes.com' solely to preclude Bata Industries Limited from registering the domain name 'batashoes.com' and 'bata-shoes.com' for use in association with its own shoe businesses ,and that such purpose is illegitimate.
According to this Panel, the domain name has been registered and is being used in bad faith.
The evidence, submissions of one of the parties, examination of documents from the other party, ICANN Regulations compel this Panel to conclude and decide that:
a) the domain names registered by Bentley Online Ltd. are confusingly similar to the registered trademark Bata of Bata Industries Ltd, a mark in which the complainant has rights, and incorporate the tradmeark 'Bata', worldwide known for its association to shoes.
b) Bentley Online has no legitimate interest in respect of the domain name. Has not been commonly known by this domain name, and the Respondent is not making legitimate non commerciale or fair use of the domain name.
c) The domain name at issue was registered and is being use in bad faith by Bentley Online, creating a likelihood of confusion with respect to complainant's mark as to its source, affiliation or sponsorship of Respondent's website.
The respondent did not submit any act and so has failed to prove any of the three circumstances set out in ICANN Policy at Paragraph 4 (c).
Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3 (c), the Panel orders that the registration of the domain names at issue, 'batashoes.com' and 'bata-shoes.com', be transferred from Bentley Online Ltd. to Bata Industries Ltd.
This done and signed in Castelfranco Emilia, Modena, Italy, on May 19, 2000.
(s) Giovanni Ziccardi