ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The parties are Loblaws Inc. (Complainant) and Charlo Barbosa (Respondent). The contested domain name is "canadiansuperstore.com".
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on March 27, 2000. The hardcopy of the Complaint Form was received on March 30, 2000. Payment was received on the same date.
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 Respondent;
- 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 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 Respondent on April 3, 2000. That date is the commencement date of the administrative proceeding.
On April 3, 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 3, 2000, the Clerk's Office received an error message for the address firstname.lastname@example.org
On April 26, 2000, the Clerk's Office asked the complainant to make a choice of jurisdiction in this case. It was received by the Clerk's Office on May 19, 2000, and was then posted online and the parties were notified.
On May 25, 2000, the Clerk's Office contacted Ms. Natasha C. Lisman, and requested that she acts as panelist in this case.
On May 30, 2000, Ms. Natasha C. Lisman accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On May 30, 2000, the Clerk's Office forwarded a user name and a password to Ms. Natasha C. Lisman, allowing her to access the Complaint Form and the evidence through eResolution's Automated Docket Management System.
On May 30, 2000, the parties were notified that Ms. Natasha C. Lisman had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 18, 2000.
On June 12, 2000, the Panel issued a request under Rule 12 of ICANN Rules for Uniform Domain Name Dispute Resolution Policy that Complainant submit on or before June 17, 2000 two documents that were mentioned in, but were not annexed to, its Complaint, namely: Complainant's representative's "cease and desist" letter dated February 21, 2000 and the response to same by Respondent's solicitor, Mr. Richard Liu.
Complainant's representative submitted the requested documents, together with a cover letter containing certain representations, on June 16, 2000. Following its receipt of this submission, the Panel extended the time for its decision until June 21, 2000.
On June 19, 2000, Complainant's representative requested permission to submit new comments and materials and the Panel granted the request, received the new submission and extended the time for its decision until June 23, 2000. Due to technical difficulties, the issuance of the panel's decision was delayed until June 26, 2000.
3. Factual Background
The allegations and evidence submitted by Complainant, Loblaws Inc. ("Loblaws"), show that it is a large food wholesaler and retailer in Canada, with its principal place of business in Toronto. It is the current owner of one registered Canadian trademark for THE REAL CANADIAN SUPERSTORE and two registered Canadian trademarks for THE REAL CANADIAN SUPERSTORE & Design, which design is a representation of an eleven-point maple leaf. According to the registration print-outs contained in Complainant's Appendix 1, the original registrant and owner of these trade-marks was Westfair Foods, Inc. Loblaws has not offered any explanation of its relationship to Westfair Foods, Inc. However, the trade-mark registration documentation shows that Loblaws succeeded to the ownership of all three trade-marks in July, 1990 and this change of ownership was promptly registered. The same documents show that all three trademarks have been in use in Canada since at least June 25, 1984 in connection with the "operation of a retail business selling groceries and foodstuffs, providing drug store services, and operating a department store," and that the third trade-mark also covers the promotion of children's ski camps and horse shows. Complainant's Annex 2 is a Business Locator print-out listing eighteen establishments called "Real Canadian Superstore" in different communities in Canada, including two separate ones in Vancouver, British Columbia.
Because eResolution received no response from or on behalf of Respondent Charlo Barbosa ("Mr. Barbosa") either to Loblaws's Complaint and its subsequent supplemental submissions, or to any of the communications to the parties and their representatives by eResolution's Case Administrator and the undersigned, the record contains a paucity of information about Mr. Barbosa. He is the registrant, with Network Solutions, Inc., of the contested domain name, canadiansuperstore.com, and his postal address is in Vancouver, British Columbia, Canada. As confirmed by the Clerk of eResolution, the contested domain name resolves to an inactive Web page, and the Clerk's email to the address email@example.com elicited an error message. At the time of his registration of the contested Domain Name, Mr. Barbosa was represented by a Barrister and Solicitor, Mr. Richard Y. Liu of Vancouver. Complainant's first supplemental submission shows that Mr. Liu continued to represent Mr. Barbosa at least through February 28, 2000, when he replied on behalf of Mr. Barbosa to a letter addressed to Mr. Barbosa demanding, among other things, that he immediately cease and desist from using the words "Canadian Superstore" and relinquish his domain name. In his response, Mr. Liu stated that his "client has registered and reserved the said domain name for his own use" and declines to transfer it, but did not disclose the nature of Mr. Barbosa's use of the subject domain name.
According to Complainant's investigation, the results of which form its second supplemental submission, Charlo Barbosa is the registrant of fourteen other domain names, only one of which resolves to an active website and his connection to this website is ambiguous.
Loblaws contends that Mr. Barbosa should be ordered to transfer the contested domain name to Loblaws because the domain name is confusingly similar to its registered marks, Mr. Barbosa has no rights or legitimate interest in it and should be deemed to have registered and used it in bad faith. In support of its contentions regarding Mr. Barbosa's rights, interests, and state of mind, Claimant relies on two items of affirmative evidence: the inactive nature of his website and his registration of multiple other domain names, all but one also to inactive sites, which, Claimant contends, shows that Mr. Barbosa is a domain name speculator. In addition, Claimant urges that the longstanding and widespread use of its registered marks in connection with stores throughout Canada, and particularly two stores in Respondent's city, Vancouver, compel the inference that Respondent's use of the contested Domain Name was knowingly illegitimate.
Mr. Barbosa's contentions are unknown due to his failure to submit a response to Loblaws' Complaint.
5. Discussion and Findings
Paragraph 4(a) of ICANN Uniform Domain Name Dispute Policy ("UDRP") requires a complainant to assert and prove each of the following elements:
1. the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. the registrant of the contested domain name has no rights or legitimate interest in respect of the domain name;
3. the contested domain name has been registered and is being used in bad faith.
As has been noted in other UDRP decisionsi, the lack of any provisions for discovery under ICANN Policy imposes certain limitations on UDRP proceedings. In many cases, these limitations affect the ability of a complainant to discharge its burden of proof as to the last two elements because the relevant evidence as to the registrant's rights or interests in a domain name and its state of mind in registering and using it is exclusively or primarily in the possession of the registrant.
Where a respondent diligently complies with its obligations under Paragraph 5 of ICANN Rules, the problem is largely obviated because the respondent supplies the evidence that is otherwise unavailable to the complainant.ii However, where, as in the present proceeding, a respondent wholly disregards its obligations and submits no response, the ability of the complainant to meet its burden of proof can be severely impaired and, on a literal reading of ICANN Policy and Rules concerning the allocation of the burden of proof, fatally so. The Panel, in such cases, has no authority to make a decision akin to a default judgment; under Rule 14(b), it may only draw such inferences from the respondent's failure to respond "as it considers appropriate." However, under Rule Paragraph 5(e), the panel must still "decide the dispute based upon the complaint." This suggests that in some cases, a panel may find the evidence submitted by the complainant, even as amplified by reasonable adverse inferences drawn against the respondent, to be insufficient to satisfy the complainant's burden as to the second and/or third Paragraph 4(a) element.
Indeed, in the present case, were the Panelist to apply this interpretation of the allocation of the burden of proof under ICANN Policy and Rules, she would be compelled to find against Loblaws. Although Loblaws' representative appears to have done her best to marshal evidence, inferences, and arguments in support of the propositions that Mr. Barbosa should be deemed to have no right or legitimate interest in the contested domain name and to have registered and used it in bad faith, the results of her efforts are simply not enough. The inactivity of a website, without more, does not evidence lack of right or interest in the domain name. While the registration of numerous other domain names to inactive websites may suggest a pattern of speculative activity, such suggestion is dispelled in this case by Mr. Liu's flat refusal to transfer the contested domain name rather than offer to transfer it for consideration exceeding Mr. Barbosa's out-of-pocket costs. Finally, the fact that Mr. Barbosa may have had actual or constructive knowledge of the similarity of his domain name to the name of a well known chain of stores is simply not probative of either his rights or interests or his intent: for example, if his use is fair within the meaning of Section 4(c)(iii) of ICANN Policy, it is legitimate even if knowing.
Notwithstanding the foregoing, this Panelist rejects the literal interpretation of ICANN Policy and Rules because, by punishing complainants for failing to proffer evidence that is unavailable to them and creating an incentive to respondents, particularly those without meritorious defenses, to gain tactical advantage by evading their obligation to respond, it is inconsistent with the spirit and intent of ICANN Policy to create an efficient and fair dispute resolution procedure. An alternative interpretation, is to distinguish between the burden of proof in the sense of the burden of persuasion and the burden of production and allow for the shifting of the latter. Under this approach, once a complainant produces sufficient evidence that the contested domain name is identical or confusingly similar to the complainant's trademark or service mark, the burden of production should shift to the respondent to introduce evidence demonstrating its rights to and legitimate interest in the domain name, as well as its good faith in registering and using it. If the respondent meets this burden of production, then the burden shifts back to the complainant to rebut the respondent's evidence. If, on the other hand, the respondent either submits no response or its response presents insufficient evidence to satisfy its burden of production, a finding of the absence of right, or legitimate interest, or good faith on the part of the respondent becomes compelled as a matter of law, rather than merely permitted as an inferenceiii. Placing the burden of production on elements two and three on respondents is fully consistent with ICANN Rule 5(i), which requires a respondent to submit affirmative evidence and not merely deny complainant's allegations.
Applying this approach to the present proceeding, the Panelist finds that Loblaws has met its burden of production and persuasion with respect to the first element. It is the registered successor in interest to the trademark THE REAL CANADIAN SUPERSTORE and two trademarks THE REAL CANADIAN SUPERSTORE & Design. Although the contested domain name, canadiansuperstore.com, is not identical to Loblaws' trademarks in their entirety, it is confusingly similar because it is identical to a sufficient portion of the verbal component of these trademarks that, more probably than not, a reasonable Internet user would perceive it as the address of a web site of the well known chain of Canadian stores operating under the banner THE REAL CANADIAN SUPERSTORE.
With respect to the second and third elements, the Panelist concludes that, in the absence of any proffer of evidence by Mr. Barbosa as to his rights or legitimate interests in the contested domain name and the state of mind with which he registered and has used it, he must, as a matter of law, be deemed to have no such rights or interests and to have registered and used it in bad faith. While the evidence, inferences, and arguments proffered on these issues by Loblaws do not, in and of themselves, compel the same conclusion, they are certainly consistent with it.
For the foregoing reasons, the Panelist concludes that the Complainant has met its burden under Paragraph 5(a) of ICANN Policy and, in accordance with Paragraph 3(c), orders that the domain name canadiansuperstore.com be transferred to the Complainant.
June 23, 2000
Boston, Massachusetts, USA
(s) Natasha C. Lisman
See, e.g. Eauto v. Triple S. Auto Parts d/v/a King Fu Yea Enterprises, Inc., WIPO Case No. D2000-00047 and Royal Bank of Canada v. Xcross, eResolution Case No. AF-0133.