ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. The Parties and Contested Domain Name
See caption above.
2. Procedural history
CAN-BEST Building Sciences Corporation (hereinafter Complainant) filed a complaint on-line through eResolution's web site on May 3, 2000. The hardcopy of the complaint form was received on May 8, 2000. The eResolution Clerk forwarded a copy of the complaint to Respondent Richard Scopp doing business as Canada's Best (hereinafter Respondent) on May 19, 2000, which is the commencement date of the administrative proceeding.
Respondent submitted a response on May 26, 2000. On June 6, the undersigned panel member agreed to act as a panelist, and on June 7, the parties were notified of the appointment of the panelist.
3. Factual Background
Complainant registered the domain name can-best.com on July 14, 1998. Complainant's short name CAN-BEST stands for Canadian Building Envelope Science and Technology, a company which offers research and technical services in building envelope. Complainant's primary place of business appears to be Brampton, Ontario, Canada.
Respondent registered the contested domain name canbest.com on April 22, 1999 for an operation that is alleged by Complainant to be "a hard core pornographic web site." Respondent's primary place of business appears to be Toronto, Ontario, Canada.
4. The Parties' Contentions
(1) that the domain name canbest.com is identical to its domain name can-best.com with the exception of hyphenation;
(2) that Respondent has no right or legitimate interest in respect of the domain name canbest.com in that
i. the contested domain name does not appear to be based on, nor be a part of or an abbreviation of any legally registered entity or to be a trade name or a trademark that belongs to its registered owner;
ii. to the average user, the contested domain name is identical to Complainant's name;
iii. the fact that Respondent's domain name is presently used to operate a hard core pornographic web site is degrading by association to, and potentially damaging to, Complainant's business operations;
(3) that Respondent's domain name has been registered and is being used in bad faith in that
i. Respondent has deliberately disguised its identity at the time of registering the domain name and continues to do so;
ii. Complainant has concerns that it could be the target of a harassment campaign or the target of an entity's crusade to discredit of harass its operation;
iii. Respondent operates a hard core pornographic web site.
In conclusion, the Complainant urges the panel to give the Complainant the benefit of the doubt in recovering its name and "to curb out any suspected illegal activities that are littering our Internet."
Respondent denies the Complainant's allegations:
i. on the ground of similarity, Respondent claims that the hyphen is sufficient to distinguish its domain name from that of Complainant;
ii. as to the illegitimacy ground, Respondent asserts that its domain name canbest.com is based on its registered company name (Canada's Best) on May 12, 1999, that name being the name under which it operates, files taxes and pays its bills;
iii. on the ground of bad faith, Respondent explains that it chose the contested domain name canbest.com because it was the closest approximation to its registered company name, adding that other domain names such as canadasbest.com or canadas-best.com would have been preferable at the time, but they were already taken. Up until now, Respondent had never heard of the Complainant, it does not consider it a competitor and there is no logical reason for which it would want to surreptitiously attract Complainant's customers to its site;
iv. in answer to the argument based on the description that Respondent's site is a hard core pornographic web site, Respondent claims that it is debatable whether this is an accurate description of the site but adds that the point is moot since the fact that Complainant finds the content of its site objectionable is neither a necessary nor a sufficient condition for transferring the disputed domain name.
5. Discussion and Findings
Under the ICANN Policy paragraph 4(a), a complainant has the obligation to prove each of the following: i) that the domain name at issue is identical or confusingly similar to the complainant's trademark; ii) that the respondent has no rights or legitimate interests in the domain name; and iii) that the domain name has been registered and is being used in bad faith. The ICANN Policy in paragraph 4(b) provides four examples of circumstances which, for the purposes of paragraph 4(a)(iii), supra, are clear evidence of the registration and use of a domain name in bad faith. The ICANN Policy at paragraph 4(c) sets out three examples of defences which, if proved by the respondent, shall demonstrate the respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii), supra. If the complainant successfully proves all three elements of paragraph 4(a), then this panel has the authority under paragraph 4(i) to require the cancellation of the respondent's domain name registration, or to order that it be transferred to the complainant. According to paragraph 15(e), the panel also may consider whether the complaint was brought in an attempt at "reverse domain name hijacking" or otherwise in bad faith.
a. Identity or Confusing Similarity
Paragraph 4(a)(i) of the ICANN Policy requires that the domain name be identical or confusingly similar to the complainant's trademark.
The panel finds the presence or absence of hyphenation in the instant case does not suffice to rule out the conclusion that canbest.com is virtually identical to can-best.com. If that conclusion is wrong, then there is no doubt that canbest.com is at the very least confusingly similar to can-best.com.
The panel therefore finds that the test of paragraph 4(a)(i) of the ICANN Policy has been satisfied.
b. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the ICANN Policy raises the issue whether the respondent has any rights or legitimate interests in respect of the domain name. Paragraph 4(c) sets out three examples of circumstances which demonstrate the existence of such rights or legitimate interests of the respondent in the domain's name. These examples are not exhaustive.
Based on its evaluation of all the evidence, the panel finds that before any notice to Respondent of the dispute, that is since the Spring of 1999, Respondent used the domain name in connection with a bona fide offering of goods or services. The panel also finds that Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.
Since these two findings fall squarely under two of the above-mentioned examples, it being understood that each of those examples is sufficient in itself, Respondent has demonstrated its rights or legitimate interest in the domain name for the purposes of paragraph 4(a)(ii). Therefore, Complainant has failed to discharge its burden to prove the second essential element of the complaint.
c. Bad Faith Registration and Use
Strictly speaking, since the Complainant has failed to prove the second essential element of the complaint, the panel need not address the issue of bad faith registration and use. Nevertheless, the panel finds it expedient to summarily dispose of that issue as well.
Paragraph 4(a)(iii) raises the issue whether the domain name has been registered and is being used in bad faith. Paragraph 4(b) supplies a non-exhaustive list of four examples of situations which, if any of them is found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
As for the non-exhaustive list of examples of paragraph 4(a)(iii), the panel finds as follows:
i. The evidence does not show that Respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant;
ii. The evidence does not show that Respondent has registered the domain name in order to prevent Complainant from reflecting its mark in its corresponding domain name;
iii. The evidence does not show that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;
iv. The evidence does not show that Respondent has intentionally attempted to attract Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its web site or its products.
This means that none of the four examples provided by the ICANN Rules to show evidence of registration and use in bad faith has been found to exist in the instant case. Although, as mentioned above, these examples are not exhaustive, they give a good indication of the scope and objectives of the ICANN Policy. More particularly, it is clearly outside the scope of the ICANN Policy to "curb out" activities which allegedly are "littering" the Internet. Beyond the analysis of the four examples in question, the panel finds that Complainant has not adduced evidence of bad faith registration and use within the scope and objectives of the ICANN Policy. Therefore, the panel finds that Complainant has also failed to prove the third element set forth in paragraph 4(a) of the ICANN Policy.
d. Reverse Domain Name Highjacking
In light of the panel's conclusion that Complainant has not proven two of the three elements set forth in the applicable rule, it seems appropriate to consider whether Complainant brought the complaint in bad faith. Paragraph 15(e) of the ICANN Rules provides, "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." "Reverse Domain Name Hijacking" is defined in paragraph 1 of the ICANN Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
This panel finds no elements of bad faith on Complainant's part and Respondent has alleged none. In fact, it is difficult to conceive how Complainant would want to "highjack" the domain name canbest.com when it already has can-best.com.
For the reasons set forth above, the panel concludes that Complainant has proved only one of the three elements set forth in paragraph 4(a) of the ICANN Policy, and therefore decides that the relief sought by Complainant should not be granted.
MONTREAL (Quebec), Canada, June 20, 2000.
(s) Jean-François Buffoni