ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant is Loblaws, Inc., a corporation with offices located in Toronto, Ontario, Canada. The respondent is Yogeninternational, an entity of unknown form with an address listed on Network Solution's WHOIS of Etobicoke, Ontario, Canada. The contested domain name is presidentschoicesocks.com.
2. Procedural History
The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy") adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.
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 leads the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, Inc, the 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 firstname.lastname@example.org and for no.valid.email@WORLDNIC.NET.
On April 26, 2000, the Clerk's Office received an error message for namehost@WORLDNIC.com.
On April 26, 2000, the Clerk's Office requested for the Complainant to choose a mutual jurisdiction.
On May 19, 2000, the Clerk's Office received from the Complainant, his choice of jurisdiction. It was then posted online and the parties were notified.
At this date, the Clerk's Office still did not receive any Response form from the Respondent.
On May 24, 2000, the Clerk's Office contacted Mr. Kevin W. Grierson, and requested for him to act as panelist in this case.
On May 25, 2000, Mr. Kevin W. Grierson, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On May 26, 2000, the Clerk's Office forwarded a user name and a password to Mr. Kevin W. Grierson allowing him to access the Complaint Form and the evidence through eResolution's Automated Docket Management System.
On May 26, 2000, the parties were notified that Mr. Kevin W. Grierson had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 8, 2000.
3. Factual Background.
The Complainant has presented evidence of 39 current and pending Canadian trade-mark registrations incorporating the mark "President's Choice" for various goods and services, with use beginning in 1984. "President's Choice" is a registered mark for, inter alia, hosiery (specifically, pantyhose), sweatshirts, and t-shirts.
The Respondent registered the domain name "presidentschoicesocks.com" with Network Solutions, Inc., on 15 January, 2000.
4. Parties' Contentions
A. Complainant's Contentions.
Complainant contends that:
- Respondent's domain name presidentschoicesocks.com is "nearly identical" or confusingly similar to the Complainant's "President's Choice" marks;
- Respondent has no right to use the domain name "presidentschoicesocks.com" because of Complainant's use and registration of various marks incorporating the term "President's Choice;
- Respondent should be considered to have registered and used the domain name presidentschoicesocks.com in bad faith because of Complainant's longstanding usage of the "President's Choice" mark, and because "it is not possible to conceive of a plausible circumstance which the Registrant could legitimately use the domain name."
B. Respondent's Contentions.
The Respondent has not filed a response to the complaint or responded in any way to either the Complainant or the Clerk's Office.
Under Paragraph 4(a) of the ICANN Policy, a complainant must prove all of the following in order to prevail in a complaint: (1) that the domain name in question is "identical or confusingly similar to a trademark or service mark in which the complainant has rights"; (2) that the registrant "has no rights or legitimate interests in respect of the domain name"; and (3) that the domain name "has been registered and is being used in bad faith." The Panel will examine each of the factors in turn.
Whether the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant has registered or applied for registration for numerous marks containing the phrase "President's Choice." The Complainant has not, however, registered the mark "President's Choice Socks." Given that the words "President" and "Choice" are common words in English, the Panel declines to find that the domain name is identical to the marks proffered by the Complainant.
The Panel does find that the domain name presidentschoicesocks.com is confusingly similar to the Complainant's marks. The Canadian Trade-mark Act, to which both parties are subject, provides as follows :
Section 6. When mark or name confusing. (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section. (2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
Trade-marks Act, R.S.C., Ch. T-13, section 6 (1985). The Complainant has registered the mark "President's Choice" for numerous categories of goods and services, including hosiery, and has used such marks since 1984. Respondent is listed with the Registrar as being located in the province of Ontario, which is also the location given for the Complainant. Given the Complainant's continued use of its marks for well over a decade, the panel finds that consumers would naturally associate the domain name presidentschoicesocks.com with the owner of the "President's Choice" marks, and that the domain name presidentschoicesocks.com is therefore confusingly similar to the Complainant's marks.
Rights of Respondent in Domain Name. The Complainant asserts that the Respondent has no rights in the domain name presidentschoicesocks.com, and in support thereof refers to its numerous trade-mark registrations for the mark "President's Choice" and variations of the same. Respondent has failed to file any response, and thus there is no evidence before the Panel that the Respondent has any rights in the domain name at issue. Based upon both the number of Complainant's registered marks and the breadth of goods and services covered by those marks, and in the absence of any showing that the Respondent has any rights in the domain name, the Panel concludes that Respondent has no rights or legitimate interest in the domain name presidentschoicesocks.com.
Registration and Use of Domain Name in Bad Faith. Given Complainant's extensive use of the mark "President's Choice" in the same region in which the Respondent is located, and the confusing similarity between Complainant's marks and Respondent's domain name, the Panel is inclined to find that the domain name presidentschoicesocks.com was registered in bad faith. Such bad faith registration would not be dispositive, however, as the Complainant must show both bad faith registration and bad faith use. Because the Panel finds that the domain name has not been used in bad faith, the Panel declines at this time to rule on whether the Complainant has established bad-faith registration.
The requirement of bad-faith use is troublesome in this case, as there is no evidence that the Respondent has used the domain name for any purpose whatsoever. The URL resolves to a standard "under construction" page provided by Network Solutions, Inc. There is no evidence before the Panel that the site has been offered for sale to the Complainant or anyone else. An e-mail sent by the Clerk's Office to email@example.com did not reach a valid address.
The Panel is aware that prior panels have found bad-faith use under such circumstances. The panel in Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd. (WIPO D2000-0086), for example, cited British law for the proposition that the mere "threat to infringe Plaintiff's well known trade marks" by registration of a domain name in bad faith constitutes bad faith use. This Panel, however, respectfully disagrees with such a finding, which would, in effect, render the additional requirement of bad faith use entirely meaningless.
The Supreme Court of Canada has indicated that
The proper construction of a statutory provision flows from reading the words of the provision in their grammatical and ordinary sense and in their entire context, harmoniously with the scheme of the statute as a whole, the purpose of the statute, and the intention of Parliament. The purpose of the statute and the intention of Parliament, in particular, are to be determined on the basis of intrinsic and admissible extrinsic sources regarding the Act's legislative history and the context of its enactment.
R v. Gladue,  1 S.C.R. 688 at para. 25. The Panel will therefore consider appropriate extrinsic evidence of the intentions of the Policy's framers. The Second Staff Report to ICANN (which can be found at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm) specifically addressed comments directed toward the requirement that both bad faith registration and use be shown:
Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example:
A. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.
The Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy submitted for the Board Meeting of October 24, 1999. Needless to say, ICANN chose to leave the dual requirement of both bad faith registration and bad faith use undisturbed. This Panel therefore determines that bad faith registration, without more, is not sufficient to constitute bad faith use.
Other cases finding bad faith "use" despite an apparent lack of use by respondent contained other indicia of bad faith not present here. In Telstra Corporation Limited v. Nuclear Marshmallows (WIPO D2000-0003), for example, the respondent had taken deliberate steps to conceal its true identity by providing false information to the registrar. Telstra, paragraph 6.3. The respondent in Home Interiors & Gifts, Inc. v. Home Interiors (WIPO D2000-0010) placed a counter at the disputed web site, which the panel found to be "an advertisement that the web site is for sale and . . . an indicator of its value." Home Interiors, paragraph 6. In addition, in both of the aforementioned cases, the marks registered were identical to the registered marks of the complainants, and respondents may have been preventing the complainants from registering their marks in violation of paragraph 4(b)(ii) of the ICANN Policy.
In short, the Panel, although it has serious misgivings about the nature of the domain name and the Respondent's rights therein, does not believe that such misgivings entitle it to ignore the plain language of the rules that bind both parties and the Panel. Complainant must show both bad faith registration and bad faith use of the domain name. The Panel is not free to substitute the word "or" for the word "and," whatever the apparent wisdom of such a substitution.
Nor does the Respondent's failure to file any kind of response permit a decision in favor of the Complainant. The Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules) provide only that in the event the Respondent fails to file a brief, the decision is to be "based upon the complaint" alone. Paragraph 5(e) of ICANN Rules. The Panel finds that the Complainant has failed to set forth sufficient facts to establish a finding of bad faith use of the domain name, and accordingly will not order the transfer or cancellation of the domain name.
This decision should not prevent the Complainant from returning to this forum should the Respondent begin using its domain name in some fashion. The nature of such use would obviously affect the analysis of both the bad faith registration and bad faith use elements of the ICANN Policy, and could, given the Panel's findings regarding the first two factors, bring a different result.
The Panel concludes that:
A. the domain name registered to Yogeninternational and at issue in this proceeding is confusingly similar to the registered mark "President's Choice" owned by Loblaws, Inc; and
B. Yogeninternational has no rights or legitimate interests with regard to the domain name.
C. The Panel declines, however, to find that the domain name is being used in bad faith by Yogeninternational, and therefore
Complainant's request to transfer the domain name to it is DENIED.
Norfolk, Virginia, USA, 9 June 2000
(s) Kevin W. Grierson