ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Loblaws Inc. a corporation subsisting under the laws of Canada, with offices located at 22 St. Clair Avenue East, Suite 1500, Toronto, Ontario Canada M4T 2S8.
The Respondent is identified as Technology Education Center, of 1802 10149 Saskatchewan Drive, Edmonton, Alberta, Canada, T6E 6B6, based on the description of the registered holder of the domain name which is the subject of this proceeding. That description does not appear to be a formal legal entity and may be merely a trade name or style. The registered administrative contact and billing contact associated with that domain name is a person named Irfan Qureshi with an e-mail address of email@example.com and a telephone number of (403) 951-5689 which corresponds with an area code in Alberta, Canada. Accordingly references to the Respondent shall include both Irfan Qureshi and Technology Education Center.
The domain name at issue is realcanadiansuperstore.com, registered with Network Solutions Inc.
2. Procedural History
The Complainant filed a submission under the ICANN Uniform Domain Name Dispute Resolution Policy , (the "ICANN Policy") on March 27, 2000 and notice was provided to the Respondent in conformance with the applicable rules of procedure. The Respondent did not file a response to the submission of the Complainant.
3. Factual Background
The Complainant is a retail business which sells groceries and foodstuffs, provides drug store services and operates department stores. The Complainant is the largest food wholesaler and retailer in Canada and has approximately 44 store that operate in Canada under the THE REAL CANADIAN SUPERSTORE brand identity. The Complainant is the owner of one registered Canadian trademark for THE REAL CANADIAN SUPERSTORE and two registered Canadian trademarks for THE REAL CANADIAN SUPERSTORE and design. The trademarks have been used in Canada in association with the business of the Complainant since as early as June 1984, a period of over 15 years, well prior to the registration of the domain name at issue.
The Respondent registered the domain name realcanadiansuperstore.com. The domain name does not appear to be actively used as a web site. The Respondent is also the registrant of 21 other domain names, including numerous domains which are similar to well known brand identities of major commercial enterprises. These domains include e-nec.com, e-ikea.com, e-xerox.com, e-jcrew.com, e-novell.com, e-toshiba.com, e-titleist.com, e-nortel.com and e-starbucks.com. None of these domain names appear to be the subject of an active web site.
The Complainant through its representative, sent a letter to the Respondent by registered mail and e-mail to the addresses shown in the domain name registry records requesting that the Respondent cease and desist from using the words real canadian superstore as part of any trading style, domain name or otherwise in the operation of any business, and to apply to transfer that domain name to the Complainant. No response was received.
4. Parties' Contentions
The Complainant alleges that the Respondent has registered a domain name which is identical or confusingly similar with the registered trademarks of the Complainant. In addition the Complainant alleges that the Respondent should be considered as having no rights or legitimate interest in respect of the domain name, and that the domain name has been registered and used in bad faith. The remedy requested by the Complainant is the transfer of the domain name to the Complainant.
The Respondent did not file a response to the submission of the Complainant
5. Discussion and Findings
Paragraph 15(a) of the Rules under the ICANN Policy provides that the Panel shall:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the ICANN Policy, requires the Complainant to show:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
The domain name realcanadiansuperstore.com is composed of substantially the same words in the same order as the Complainant's THE REAL CANADIAN SUPERSTORE trademarks. The Panel finds that the domain name of the Respondent is substantially identical and confusingly similar with the trademarks of the Complainant.
Paragraph 4(c) of the ICANN Policy shows how a Respondent can demonstrate rights or an interest in the domain name at issue. Whilst the general onus of proof rests on a Complainant, the failure by a Respondent to demonstrate the application of paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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."
The Complainant has presented evidence that there does not appear to be any active web site or online presence connected to the domain name at issue, that the Respondent has not made any use, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, that the Respondent has not been commonly known by the domain name, and that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or apply for the use of any domain name incorporating any of those trademarks. No evidence to the contrary was presented to the Panel by the Respondent.
Consequently the Panel concludes that the Respondent has no rights or legitimate interests in the domain name at issue.
Paragraph 4(b) of the ICANN Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Panel finds that the Respondent has registered and used the domain name realcanadiansuperstore.com in bad faith for the following reasons:
The lengthy and extensive public use of the trademarks by the Complainant in Canada prior to the registration of the domain name renders the possibility that the Respondent located in Canada, initiated that registration without awareness of the pre-existing brand identity established by the Complainant, an extremely remote prospect.
The activities of the Respondent in registering numerous domain names similar to well known commercial brand identities establishes a pattern of conduct which is inconsistent with any legitimate purpose. These circumstances also support the inference that the purpose of registration was to prevent the Complainant from reflecting its trademark in a corresponding domain name .
The failure by the Respondent to respond to any communications from the Complainant or the commencement of these proceedings and take the opportunity to establish any legitimate purpose for registration of the domain name, or any legitimate use of the domain name.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4 (i) of the ICANN Policy, the Panel requires that the registration of the domain name realcanadiansuperstore.com be transferred to the Complainant
Dated at Toronto, Canada, June 12, 2000
(s) David Marcel Robinson