ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is BusinessWay Computer Centers Inc. having a postal address at 1486, Sauve Ouest, Montreal, Quebec H4N 1C5 and a physical address at 117 Gun Avenue, Pointe-Claire, Quebec, H9R 3X2, Canada.
The Respondent is Logo Excellence having a postal address at 1211, Eddington, Houston, Texas, 77023, USA.
The contested domain name is businessway.net.
2. Procedural History
The electronic version of the Complaint form was filed online through eResolution's Website on May 11, 2000. Payment was received on May 23, 2000. The hardcopy of the Complaint Form and the choice of jurisdiction were received on June 6, 2000. The Coversheet was received on June 8, 2000.
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 Register.com, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on May 25, 2000. The requested information was received June 2, 2000.
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 "Policy").
The Clerk fulfilled all its responsibilities under Paragraph 2(a) of the Policy in connection with forwarding the Complaint to the Respondent on June 9, 2000. That date is the commencement date of the administrative proceeding.
On June 9, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
The Respondent did not submit a response, neither via the eResolution Internet site nor a signed version.
However the technical contact, GreatDomains.com inc., replied by email on June 28, 2000 declaring that it's only connection with the domain name businessway.net is that it provided a free parking service on it's server. The hard copy was received on July 4, 2000. A copy of this reply was sent by the technical contact to the Complainant and the Respondent, by email and by first class mail.
The e-mail sent to email@example.com and firstname.lastname@example.org are the only ones to have been returned 'undeliverable'.
The Complaint, official notification and all the annexes were sent by UPS to the Respondent's various addresses. According to the UPS tracking system, all were delivered.
On July 4, 2000, the Clerk's Office contacted James Jude Bridgeman, and requested that he act as panellist in this case.
On July 4, 2000, James Jude Bridgeman accepted to act as panellist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 5, 2000, the Clerk's Office forwarded a user name and a password to James Jude Bridgeman, allowing him to access the Complaint Form, and the evidence through eResolution's Automated Docket Management System. No Response Form had been filed.
On July 5, 2000, the Parties were notified that James Jude Bridgeman had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 18, 2000.
3. Factual Background
The Complainant has furnished evidence that there is a Canadian registered trademark BUSINESSWAY registration number TMA403187. The application for registration of said trademark was filed by the Complainant on June 14, 1990 and was advertised on June 19, 1991. The trademark was registered on October 10, 1992 in respect of wares being "computers and components thereof, softwares (sic)" and in respect of services being "operation of a business, selling, importing, exporting computers an d components, manufacturing of softwares (sic) to customers' specifications, providing after sales services and maintenance services relating to computers and components thereof".
It appears from the evidence submitted that the Complainant is no longer the registered owner of this trademark registration and that the registration has been assigned to Mr. Faris Heddo of 8 Du Domaine Street, N.D. Ile Perrot 7JP 2R9, Quebec, Canada. It would appear that the assignment was made on or about October 2, 1992 and registered on March 4, 1994.
Furthermore the Complainant claims that in March 2000, the Complainant applied to register a service mark in the USA in respect of services being: "Operating retail stores, mail order catalogue services and electronic retail services all relating to the internet, computers, computer parts, computer accessories and computer software."
The Complainant has also registered the following www domain names: businessway.com, businessway.org, businessway.ca and businessway.cc
The Complainant has been using the BUSINESSWAY name since 1988 in the computer retail and service industry. The Complainant operates 6 retail stores in Canada and is projecting its expansion into the USA this year. The Complainant has been selling computer products on the Internet since 1996 using the businessway.com domain name.
4. Parties' Contentions
The Complainant has requested this Administrative Panel to direct that the said domain name businessway.net be transferred to the Complainant.
In support of this request, the Complainant submits that BUSINSESSWAY has been a registered Canadian Trademark of the Complainant since 1988 and that the Complainant "advertises, markets and sells under the BusinessWay name" and operates, and advertises www sites at the following domains: businessway.co>, businessway.org, businessway.ca and businessway.cc.
The Complainant also submits that the Respondent does not conduct any business that requires the use of the said domain name businessway.net and that the Respondent has no legitimate interest in respect of the said domain name.
As regards bad faith, the Complainant submits that the Respondent registered the said domain name businessway.net for the sole purpose of re-sale.
It appears from the Complainant's submissions that there was a number of contacts between Mr Heddo, the President of the Complainant company and Mr Byron Hoffman who is the Administrative Contact and the Billing Contact of the Respondent.
According to the Complainant's submissions, prior to this dispute, commencing in December 1999 the Complainant was involved in another dispute relating to the said domain name businessway.net with a third party. In the course of that earlier dispute, it is claimed that the Complainant threatened bring legal action against the said third party. In the event, on or about March 2, 2000, the third party agreed to relinquish the registration. The Administrative Panel notes that this is not supported by the documentation filed. Although the Complainant is claiming that these actions were taken by the Complainant, it would appear that it was actually Mr Heddo himself and not the Complainant company, who instructed the lawyers, claimed ownership of the trademark and threatened the proceedings.
The Complainant then claims that when the said domain name was relinquished, the Complainant endeavoured to register it, but before it could do so, the domain was registered by the Respondent. In this regard the Administrative Panel notes that the documentation furnished by the Complainant would seem to indicate otherwise. In this instance also it would appear that it was Mr Heddo himself who sought to register this domain name and not the Complainant.
Mr Heddo, who is the President of the Complainant corporation, made contact with Mr Hoffman, who is the Administrative Contact and the Billing Contact for the Respondent.
On April 14, 2000 Mr. Hoffman ageeed to transfer the said domain name to the Complainant in return for a payment of $500 USD. The Respondent had paid only $70 USD to register the said domain name.
Mr Heddo agreed to this payment because he thought it would be the quickest way to resolve this ongoing issue. Subsequently the Respondent did not fulfill its obligations under the agreement. Mr Heddo was contacted by Mr Hoffman and directed to a www site on which the said domain name was being offered for auction with an asking price of $100,000 USD.
Mr. Heddo called Mr. Hoffman to get clarification concerning this turn of events. Mr. Hoffman's response was that he had changed his mind and that now he desired to sell the domain name for $100,000 USD or best offer.
There was no Response filed by the Respondent.
5. Discussion and Findings
Under the paragraph 4 (a) of the Policy the Complainant bears the burden of proving that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As the Respondent has not filed a Response, this Administrative Panel must accept the facts as presented by the Complainant.
As regards the question of whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, there is some confusion in the evidence submitted by the Complainant.
While the Complainant is claiming to own the Canadian registration for the trademark BUSINESSWAY, the evidence submitted does not support this claim. It would appear from the documentation submitted and in particular from the print out of the results of the search of the Canadian Intelllectual Property Office database, that the Canadian registration was assigned to Mr Heddo pursuant to an assignment dated October 2, 1992 and registered on March 4, 1994.
The ownership of the trademark registration is further addressed in correspondence between the law firm which represents the Complainant in these proceedings and a third party relating to an earlier dispute. In a letter dated January 7, 2000 the law firm stated as follows: "Nous avons été consulté par monsieur Faris Heddo, détenteur de la marque de commerce BUSINESSWAY au Canada." A subsequent letter from the same firm on February 24, 2000 contains the following statement "… please find enclosed copy of the registration of the Trade Mark BUSINESSWAY by our client., Mr Faris Heddo." This correspondence was furnished as background to these proceedings.
Furthermore in the Complainant's submissions in the Complaint Form as filed, it is stated that Mr Heddo told Mr Hoffman that Mr Heddo was the owner of the trademark.
On the other hand the Complainant claims that it is the owner of the pending application for registration of the said trademark in the USA. The documentation furnished by the Complainant does not clearly indicate the name of the applicant, but in the absence of any submissions from the Respondent, this Administrative Panel accepts the Complainant's claims in this regard.
Furthermore, Mr Heddo, the assignee and owner of the Canadian registration is the President of the Complainant corporation and he has joined in the submissions. In doing so, he has expressly agreed that the Complainant is the owner of the said trademark BUSINESSWAY. Mr Heddo has also made submissions to the effect that the Complainant has "been using the BusinessWay name since 1988 in the computer retail an service industry". He further states that the Complainant "has been selling on the internet since 1996 using the www businessway.com domain name.
Ideally Mr Heddo should have joined with the Complainant in these Administrative Proceedings or set out the respective rights of the Complainant and Mr Heddo in respect of the said trademarks with less ambiguity.
Under the Policy it is sufficient for the Complainant to establish that it "has rights" in a trademark to which the domain name in issue is identical or confusingly similar. It is not necessary for a complainant to establish ownership.
While there seems to be some inconsistency and ambiguity in the submissions of the Complainant relating to the ownership of the said trademark, on balance, this Administrative Panel is satisfied that the Complainant "has rights" in the trademark.
In some instances the Complainant would appear to use the word mark with two capital letters viz. BUSINESSWAY while other circumstances only the first letter is capitalised viz. BUSINESSWAY and in the print-out from the database of the Canadian Intellectual Office the mark is represented in capital letters viz. BUSINESSWAY. In the view of this Administrative Panel, this is essentially a word mark.
From any comparison of visual appearance or the sound of the trademark and the said domain name businessway.net, it is obvious that the domain name in issue is identical or confusingly similar to the said trademark.
The Respondent's Rights or Legitimate Interests
Mr Hoffman is both the Administrative Contact and the Billing Contact for the Respondent. It may well be that Logo Excellence is in fact Mr Hoffman's trading name or alias and this would seem to be indicated by his statement that he registers domain names as a hobby. In any event, it seems clear that Mr Hoffman is either the Respondent or at least that he is authorised to act on behalf of the Respondent.
On his own admission, Mr Hoffman has stated that he registered the said domain name for the purposes of re-sale. In the circumstances and in the absence of any submissions from the Respondent this Administrative Panel accepts that Complainant's submissions that the Respondent has no rights or legitimate interest in the said domain name.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out the guidelines to be used in determining whether a domain name has been registered and is being used in bad faith. It provides inter alia that if found by the Panel to be present, circumstances indicating that the Respondent has registered or has 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 the Respondent's documented out-of-pocket costs directly related to the domain name, shall be evidence of the registration and use of a domain name in bad faith.
In the absence of any submissions by the Respondent, the Complainant has established a prima facie case that the Respondent has offered to sell the domain name to the Complainant firstly for the sum of $500 USD and subsequently put the domain name on public auction on the internet with an asking price of $100,000. In the circumstances outlined above, this is sufficient to satisfy this Administrative Panel that the Respondent has registered and is using the said domain name businessway.net in bad faith.
This Administrative Panel is satisfied that the Complainant has established that said the domain name businessway.net is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the said domain name that the said domain name has been registered and is being used by the Respondent in bad faith. This Administrative Panel therfore directs that the said domain name businessway.net should be transferred to the Complainant.
At Dublin, Ireland
July 18, 2000
(s) James Jude Bridgeman