ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant Loblaws, Inc. is a large retail store chain, which has marketed a variety of products under the private brand PRESIDENT'S CHOICE since 1984. Loblaws owns more than 30 Canadian trademark registrations reflecting variations on the PRESIDENT'S CHOICE mark, and more than 10 U.S. registrations as well.
Respondent Presidentchoice, Inc./Presidentchoice.com is owned by Guita M. Azimi. Ms. Azimi registered the domain presidentchoice.com with Network Solutions in January, 2000. She registered the domains presidentchoice.net and presidentchoice.org the following month. On February 21, Loblaws sent a letter to Ms. Azimi demanding that she cease any use of the words "President Choice" as part of a domain name, and that she immediately transfer her domain names to Loblaws. Azimi responded with a letter stating her intention to defend her registration of the presidentchoice.com domain.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on March 28, 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 confirmed that the Registrar is Network Solutions Inc., and that the Whois database contains all the required contact information and including the billing contact. The clerk also determined that the Contested Domain Name resolved to an inactive Web page and that 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 13, 2000, the Respondent requested a ten-day delay to file a response. On April 17, the Clerk's Office granted the delay. Respondent submitted her response on April 28, 2000. On May 23, 2000, the parties were notified that Jessica Litman had been appointed the panelist in the dispute, and that a decision was to be, save exceptional circumstances, handed down on June 5, 2000. On May 30, Complainant requested permission to file additional material under ICANN Rule 12. The same day, Respondent filed additional material in response to Complainant's filing. The panel accepted both parties' filings on June 1, and extended the time for the decision until June 9.
3. Factual Background
Loblaws owns many PRESIDENT'S CHOICE marks in Canada and the United States. It has used the mark on a wide range of supermarket products, and has plans for further expansion of the brand. Loblaws operates a general corporate website at http://www.loblaw.com and a financial services site at http://www.preschoicefinancial.com. Loblaws is not the owner of presidentschoice.com, presidentschoice.net, or presidentschoice.org. Those domains are owned by the Brown-Forman Corporation, which holds a U.S. trademark registration for THE PRESIDENT'S CHOICE bourbon whiskey. Loblaws has recently registered eleven PRESIDENT'S CHOICE-related domain names, including presidentschoicefoods.com, presidentschoicemobile.com, presidentschoiceonline.com, presidentschoiceworld.com, presidentschoicephotos.com, and presidentschoicemusic.com, but, as of the end of May, it had not yet put up active websites at any of its presidentschoice [product].com family of domains.
Guita Azimi registered presidentchoice.com in January 2000, for the purpose of conducting an embroidery and web design business over the Internet. She has presented evidence indicating that, on February 10, 2000, she signed a contract with a business named Tracey Alterations & Embroidery authorizing Azimi to distribute Tracey's embroidered apparel over the Internet for a 15% commission. In early February, Azimi consulted with a Toronto firm on the design for a presidentchoice.com website. Azimi also presented six bills for presidentchoice.com's design services, sent to Tracey Alterations & Embroidery on January 24, February 6, and March 22, and to a Mr. Hossein-Shams on February 14, March 3, and April 10, all apparently related to logo design. In April, well after Loblaws filed its complaint, Azimi obtained a business license from the City of Walnut Creek California in the name of "Presidentchoice Inc./Presidentchoice.com." The license describes the business as "Web Page Design." Also in April, Azimi apparently arranged with a company named Enterprise Systems Solutions for web hosting services.
4. Parties' Contentions
Loblaws argues that Azimi's presidentchoice domain names are confusingly similar to both its PRESIDENT'S CHOICE trademarks and its presidentschoice [product].com domain names, and that a consumer would believe them to be related to Loblaws's business activities. Loblaws points to the fact that Azimi has no active website or online presence associated with any of the presidentchoice domains as evidence that she has no rights or legitimate interests in the domain names. As evidence of Azimi's bad faith, Loblaws points to the fact that its marks are well known in connection with a variety of different products. The goodwill associated with its PRESIDENT'S CHOICE family of marks is so substantial that "[i]t is not possible to conceive of a plausible situation in which the Registrant could legitimately use the domain name."
Azimi denies that she was aware of the PRESIDENT'S CHOICE trademarks before registering the presidentchoice.com domain. She suggests that because the mark comprises common words, and because her business is unrelated to any business for which Loblaw's has used the PRESIDENT'S CHOICE mark, her domain names are not confusingly similar to Loblaw's marks. Azimi points to the fact that the presidentschoice.com domain is operated not by Loblaws but by Brown Forman, an unrelated third party with independent trademark rights in the phrase, to support her contention that consumers are unlikely to be confused. Because Azimi registered the domain only six weeks before she received Loblaw's cease and desist letter, she had not yet had an opportunity to launch her business and establish her website, but she points to the evidence in the record as showing her bona fide efforts to do so. The significant preparations toward launching her business, she insists, show that she registered the domain names in good faith. Pointing to Loblaws' multiple registrations for PRESIDENT'S CHOICE related domains, Azimi suggests that Complainant is acting in bad faith in order to exclude anyone from using a domain name similar to its mark for any goods or services, regardless of whether it has a legitimate interest in doing so itself. Azimi accuses Loblaws of engaging in reverse domain name hijacking under Rule 15(e) of ICANN's UDRP Rules.
5. Discussion and Findings
Complainant has the burden under section 4 of the UDRP of showing that the Respondent's domain name is identical to or confusingly similar to its trademark, that Respondent has no rights or legitimate interests in the domain name, and that Respondent has both registered and used the domain name in bad faith.
A. Similarity of domain name to mark: presidentchoice.com, presidentchoice.net and presidentchoice.org are not identical to the PRESIDENTS CHOICE mark, but they are unquestionably similar. The issue of confusing similarity is a close one. As Loblaws notes, the domain name differs from its mark only by the omission of the possessive "s". As Azimi notes, the mark comprises two common words combined in an undistinctive phrase, which is used by more than one entity as a trademark. Further, the facts that a third party with independent trademark rights operates a website at www.presidentschoice.com and that none of Loblaws' eleven "presidentschoice[product].com" domain name registrations use the "presidentchoice" string act to reduce confusion. On balance, meaningful consumer confusion seems possible but not likely.
B. Respondent's rights or legitimate interests in the domain name:
Paragraph 4(c) of the UDRP provides that a registrant may demonstrate its rights or legitimate interests in its domain name by showing any one of the following:
(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.
Loblaws, which has the burden of proof on this issue, would have the panel draw the inference that Azimi has no legitimate interests in the domain name because she has not yet established an online presence at the presidentchoice.com domain, she was not previously known by the "Presidentchoice" name and Loblaws hasn't licensed her use of its PRESIDENT'S CHOICE mark. Azimi has, however, presented uncontroverted evidence that before she received Loblaw's February 21 letter notifying her of the dispute, she had made demonstrable preparations to use the president.com domain in connection with a bona fide business. Loblaws has failed to show that Azimi has no rights or legitimate interests in the presidentchoice.com domain name. See Kittinger Company v. Kittinger Collector, Case No. AF-0107 (May 8, 2000); Meredith Corp. vs. CityHome, Inc.. Case No. D 2000-0223 (May 18, 2000). The situation with respect to the presidentchoice.org and presidentchoice.net domains is somewhat different. Azimi has presented no evidence indicating any intention to use either domain for any purpose.
C. Bad faith Registration and Use:
Loblaws has failed to show bad faith registration, and failed to show bad faith use. Indeed, it has presented no evidence on this issue at all. Its argument reduces to an allegation that its PRESIDENT'S CHOICE trademark is so highly distinctive that no legitimate use of the presidentchoice.com is imaginable, so Azimi must have registered the domain names in bad faith.
Paragraph 4(b) of the UDRP describes the following circumstances as probative of a registrant's 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.
Nothing in the record indicates that Azimi at any time entertained a plan to sell or transfer any of the domains to Loblaws or to anyone else. Loblaw presented no evidence that Azimi registered any of the three domain names in order to prevent Loblaws from registering them, nor that she has ever registered any domain name in addition to the three contested in this proceeding. Loblaws introduced no evidence that Azimi intended to disrupt its business. Nothing in the record warrants the inference that Azimi's purpose in registering the three domains was to attract customers by creating confusion about the relation of her site with the Loblaws' family of PRESIDENT'S CHOICE products. Finally, Loblaws has introduced no evidence that Azimi has use the domain name at all, much less used it in bad faith. See Microcell Solutions v. B-Seen Design Group, Case No. AF-00131 (May 2, 2000)
D. Reverse Domain-Name Hijacking
Azimi alleges that Loblaws brought this proceeding in bad faith. Rule 15(e) of ICANN's UDRP rules provide that:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The fact that Loblaws filed the Complainant without any evidence of Respondent's bad faith registration or use of the domain name, and apparently without investigating whether Respondent had rights or legitimate interests in the domain name, is indicative of bad faith. See Shirmax Retail Ltd. v. CES Marketing Group Inc., Case No. AF-0104 (Mar. 20, 2000). Loblaws apparently filed the complaint in the mistaken belief that the UDRP was designed to be a preemptive tool to protect distinctive marks from the threat of dilution. The policy is much narrower: it reaches only bad faith domain name registrations, and those only when the registrant has no legitimate interest in the domain name.
I find the Complainant's apparent failure to investigate whether Respondent had rights or legitimate interests in the presidentchoice.com domain name troubling. Complainant was presumably aware of other owners of PRESIDENT'S CHOICE marks for other products, and of another trademark owner's registration and use of the presidentschoice.com domain. In a case where the trademark, although a well-known supermarket brand, is a common English phrase used as a mark by other businesses, the failure to conduct a cursory investigation seems especially unreasonable. Nonetheless, because the UDRP is new, and Complainant was proceeding on an incorrect but common misapprehension as to its scope, I am reluctant to find that it filed the complaint in bad faith. See Breakthrough Software, Inc. v. Hendrick Huigen, Case No. AF-0122 (April 13, 2000); Interep National Radio Sales, Inc. v. Internet Domain Names, Inc.., Case No. D2000-0174 (May 26, 2000).
The ICANN UDRP permits me to order the cancellation or transfer of a domain name if a trademark owner shows that the domain name is identical or confusingly similar to its mark, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent registered the domain name in bad faith, and that Respondent has used the domain name president.com in bad faith. I find that Complainant has failed to show that Respondent has no rights or legitimate interests in respect of the presidentchoice.com domain name, and has failed to show that Respondent registered or used any of the three contested domain names in bad faith. I therefore find in favor of Respondent with respect to all three contested domain names, presidentchoice.com, presidentchoice.org, and presidentchoice.net, and reject the complaint.
Ann Arbor, Michigan June 7, 2000
(s) Jessica Litman