ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Parties and Contested Domain Name 1.1 The Complainant is Packaging World Inc., an Ontario corporation carrying on business in Metropolitan Toronto, Ontario, Canada and other areas.
1.2 The Respondent is Zynpak Packaging Products Inc., with an office in Concord, Ontario, Canada.
1.3 The disputed domain name is packagingworld.com. The Registrar for the domain name is Network Solutions Inc. of Virginia, United States of America.
1.4 This proceeding is pursuant to ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy") and ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). The Network Solutions Inc. Domain Name Registration Agreement regarding the packagingworld.com domain name subjects the Respondent to Network Solutions Inc.'s Dispute Policy, which is currently the Policy.
2. Procedural History
2.1 Based upon information provided by eResolution's Clerk's Office, the procedural history regarding this matter is as follows:
2.1.1 The electronic version of the Complainant's complaint form was filed on-line through eResolution's Web site on May 25, 2000. The hardcopy of the complaint form was received by the Clerk's Office on May 29, 2000. Payment was received by the Clerk's Office on May 30, 2000. The Complainant's choice of jurisdiction was received by the Clerk's Office on June 19, 2000.
2.1.2 Upon receiving all the required information, eResolution's Clerk's Office proceeded to: (i) confirm the identity of the Registrar for the contested domain name; (ii) verify the Registrar's Whois database and confirm all the required contact information for the Respondent; (iii) verify if the contested domain name resolved to an active Web page; and (iv) verify if the complaint was administratively compliant.
2.1.3 The inquiry led eResolution's Clerk's Office to the following conclusions: (i) the Registrar is Network Solutions, Inc.; (ii) the Whois database contained all the required contact information; (iii) the contested domain name resolved to an active Web page; and (iv) the complaint is administratively compliant.
2.1.4 On May 25, 2000, eResolution's Clerk's Office sent an email to the Registrar to obtain a copy of the Registration Agreement. The requested document was received on May 31, 2000.
2.1.5 The Clerk's Office then proceeded to send a copy of the complaint form and the required cover sheet to the Respondent, in accordance with paragraph 2(a) of the Rules.
2.1.6 The Clerk's Office fulfilled all its responsibilities under paragraph 2(a) of the Rules in connection with forwarding the complaint to the Respondent on June 21, 2000. That date is the commencement date of this administrative proceeding.
2.1.7 On June 21, 2000, the Clerk's Office notified the Complainant, the Respondent, the Registrar, and ICANN of the date of commencement of this administrative proceeding.
2.1.8 The emails sent by the Clerk's Office to the Respondent via the email addresses stipulated in the Whois database were returned "undeliverable". Nevertheless, faxes sent by the Clerk's Office to Jeffrey Levine, the Respondent's Administrative Contact and Billing Contact according to the Network Solutions Inc. Whois database, were transmitted successfully.
2.1.9 The Clerk's Office sent by UPS to the Respondent's various addresses stipulated in the Network Solutions Inc. Whois database copies of the complaint form and all annexes and the required cover sheet, giving notice of the commencement of this administrative proceeding. According to the UPS tracking system, all packages were delivered.
2.1.10 On July 7, 2000, Michael Levine, on behalf of the Respondent, spoke by telephone with a Case Administrator at the Clerk's Office and then sent an email to the Clerk's Office requesting a 10-day extension to submit a response to the complaint. On the same date, the Clerk's Office sent a reply email to Michael Levine granting the Respondent until July 14, 2000 to submit its response.
2.1.11 On July 14, 2000 a representative of the Respondent spoke by telephone with a Case Administrator at the Clerk's Office and requested a username and password in order to access eResolution's private Web site. During that same telephone conversation the Respondent's representative requested information regarding how the Respondent could demonstrate its rights and legitimate interests in the contested domain name. The Clerk's Office advised the Respondent's representative to read paragraph 4 of the Policy. On that same date, the Clerk's Office sent an email to the Respondent providing the requested username and password required to access eResolution's private Web site.
2.1.12 As of July 17, 2000, the Respondent had not submitted any response to the complaint.
2.1.13 On July 18, 2000, the Clerk's Office contacted Bradley J. Freedman and requested that he act as Panelist in this proceeding.
2.1.14 On July 19, 2000, Bradley J. Freedman agreed to act as Panelist in this proceeding and filed the necessary Declaration of Independence and Impartiality.
2.1.15 On July 19, 2000, the Clerk's Office forwarded a username and a password to Bradley J. Freedman, allowing him to access the complaint form, the response form (if and when filed), and the evidence submitted by the parties through eResolution's Automated Docket Management System.
2.1.16 On July 19, 2000, the parties were notified that Bradley J. Freedman had been appointed as Panelist in this proceeding, and that a decision was to be, save exceptional circumstances, handed down on August 1, 2000.
2.2 As of the date of this decision, the Panel has not received any response to the complaint.
3. Factual Background
3.1 The following facts and matters are asserted by the Complainant or derived from evidence submitted by the Complainant in support of the complaint:
3.1.1 The Complainant and the Respondent are competitors in the packaging supplies business. They both operate in Metropolitan Toronto, Ontario, Canada and surrounding areas.
3.1.2 The Complainant's registered corporate name is "Packaging World Inc.". It was incorporated under that name in November 1991. The Complainant's principal market is Metropolitan Toronto, Ontario, Canada and surrounding areas in southern Ontario, Canada. It has also sold to customers across Canada and from the United States, Europe, Australia and Africa.
3.1.3 The Complainant uses PACKAGING WORLD as a trade-name and as a trade-mark in association with a wide variety of packaging products and packaging-related services. The Complainant also uses a trade-mark comprised of the words PACKAGING WORLD and a logo depicting an open box containing a globe. The Complainant uses its trade-marks on letterhead, stationery, flyers, advertisements, delivery slips, its building sign, its truck, telephone directory advertisements, cardboard boxes, and on the Complainant's Web site.
3.1.4 The Complainant's annual sales during the past five years have increased steadily from approximately $600,000 to approximately $2 million.
3.1.5 The Complainant's trade-marks are not registered. On December 14, 1998, the Complainant submitted to the Canadian Registrar of Trade-marks an application to register its PACKAGING WORLD AND DESIGN trade-mark for use in association with various packaging wares and services. Registration of that mark has not been rejected or granted.
3.1.6 The Complainant is the registered owner of the domain name packagingworldinc.com and operates a Web site using that domain name. The Complainant intends to expand the use of its Web site to communicate with its customers, potential customers, suppliers and others and to expand its geographic market. The Complainant desires to use the packagingworld.com domain name for its Web site.
3.1.7 The Respondent's corporate name is Zynpak Packaging Products Inc. It has an office in Concord, Ontario, Canada. The Respondent sells various kinds of packaging materials and other industrial supplies. The Respondent does not make any use of the words "packaging world" anywhere in its business.
3.1.8 The Respondent, as a direct local competitor of the Complainant, was at all times aware of the Complainant. The Respondent hears of the Complainant from common customers and common suppliers. Until recently the Respondent's offices were located four blocks from the Complainant's offices, and the Respondent's offices are now located three major streets to the north of the Complainant's offices. The Complainant and the Respondent are both listed in the Toronto Central West and Toronto East Yellow Pages telephone directories under the same advertising category, Packaging Materials.
3.1.9 In March 1998, Jeffrey Levine, the Respondent's Administrative and Billing Contact stipulated on Network Solutions Inc.'s Whois database, attended at the Complainant's premises in an attempt to sell packaging products to the Complainant, and sent to the Complainant a follow-up letter on behalf of Loosefill Packaging Corporation, which the Complainant asserts is related to the Respondent. A copy of the letter, which indicates that Loosefill Packaging Corporation has the same business address as the Respondent, has been filed in support of the Complaint.
3.1.10 According to Network Solutions Inc.'s Whois database, the Respondent registered the packagingworld.com domain name in August 1998. The Complainant learned of this when it sought to register that domain name in December 1998. Since the packagingworld.com domain name was already registered by the Respondent, the Complainant registered the packagingworldinc.com domain name instead.
3.1.11 In December 1998, the Complainant's solicitor wrote a demand letter to the Respondent, but the letter was unanswered. The Complainant's solicitor then spoke to the Respondent's Mr. Levine by telephone regarding the packagingworld.com domain name, but Mr. Levine claimed that the Respondent was entitled to register the domain name and the matter was not resolved.
3.1.12 For some time the packagingworld.com domain name was inactive. The Complainant says that it did not take any legal steps regarding this matter based upon advice it received from its solicitor and because the Policy was not in force.
3.1.13 In April 2000, one of the Complainant's customers attempted to access the Complainant's Web site and discovered that the packagingworld.com domain name was being used by the Respondent for its own Web site. Additional customers and suppliers have since complained about reaching the Respondent's Web site when attempting to access the Complainant's Web site by using the packagingworld.com domain name.
3.1.14 At the time the complaint was filed, the Respondent's Web site could be reached through the packagingworld.com domain name and also the zynpak.com domain name. Web page printouts submitted by the Complainant indicate that on May 18, 2000 the "hit counter" for the Respondent's Web page at packagingworld.com indicated 3913 hits, and the "hit counter" for the Respondent's Web page at zynpak.com indicated 2922 hits. The Panel notes, however, that as of the time of this decision the packagingworld.com domain name no longer connects with the Respondent's Web site.
3.1.15 The Complainant learned, by indirect inquiries through unnamed sources, that the Respondent planned to sell the packagingworld.com domain name to a United States-based magazine known as Packaging World, which is unrelated to either the Complainant or the Respondent.
3.2 The Respondent has not filed any response to the Complainant's complaint, and has not answered the Complainant's factual assertions or evidence in any other manner.
4. Parties' Contentions
4.1 The Complainant contends that the packagingworld.com domain name is identical or confusingly similar to the Complainant's trade-name and trade-marks, that the Respondent has no legitimate interest or rights in the packagingworld.com domain name, and that the Respondent registered and used the packagingworld.com domain name in bad faith. Regarding the bad faith element, the Complainant contends that the Respondent registered the packagingworld.com domain name in order to prevent the Complainant from doing so and in order to further various bad faith objectives, such as using the packagingworld.com domain name for its own Web site in an attempt to divert the Complainant's customers and potential customers searching for the Complainant's Web site, or selling the domain name to a third party. The Complainant also contends that the Respondent's conduct constitutes common law passing-off and will cause consumer confusion and harm to the Complainant and its goodwill and reputation.
4.2 As previously indicated, the Respondent has not filed any response to the Complainant's complaint, and has not answered the Complainant's contentions in any other manner.
5. Discussion and Findings
The Respondent's Default
5.1 Rules paragraph 10(a) requires the Panel ensure that each party is given a fair opportunity to present its case. Rules paragraph 14 reads as follows:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
5.2 The Respondent was given notice of this proceeding and requested an extension of time to file its reply to the complaint. The Respondent was granted the requested extention by eResolution's Clerk's Office. As previously indicated, the Respondent has failed to file any reply to the complaint and has not sought to answer the Complainant's assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the complaint.
5.3 The Respondent's default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a), as discussed below. See Cortefiel S.A. v. Quintas, Case No. D2000-0140; Shore Media Ventures Inc. v. Both Worlds Inc., Case No. AF-0228; and Softquad Software Inc. v. Eleven-Eleven Ltd., Case No. AF-0143.
5.4 Rules paragraph 15(a) provides that the Panel shall decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the complaint. In the circumstances, the Panel's decision is based upon the Complainant's assertions and evidence and inferences drawn from the Respondent's failure to reply. See MatchNet plc v. MAC Trading, Case No. D2000-0205; SeekAmerica Networks Inc. v. Masood , Case No. D2000-0131; and The Pep Boys Manny, Moe and Jack of California v. E-Commerce, Case No. AF-1045.
5.5 Some of the Complainant's assertions are not supported by direct evidence. For example, the Complainant has not submitted copies of its solicitor's correspondence with the Respondent or evidence from any of its customers or suppliers who were mislead by the Respondent's use of the packagingworld.com domain name. While a more comprehensive evidentiary record may have assisted the Panel, it is not expressly required by the Policy or the Rules. The Panel also notes that the Complainant has certified, in its complaint, that the information contained in the complaint is to the best of the Complainant's knowledge complete and accurate and the assertions in the complaint are warranted under the Rules and applicable law. The Panel concludes that the gaps in the Complainant's evidence are not fatal to its complaint.
5.6 Rules paragraph 15(a) provides that the Panel shall decide the complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since both the Complainant and the Respondent are based in Ontario, Canada, the Panel will look to the rules and principles of Canadian law to the extent that it would assist the Panel in determining whether the Complainant has met the burden imposed by Policy paragraph 4(a). See: Ellenbogen v. Pearson, Case No. D2000-0001; Cellular One Group v. Vanguard Cellular Systems, Inc., Case No. D2000-0268; Winterson v. Hogarth, Case No. D2000-0235; Which? Limited v. Halliday, Case No. D2000-0019; Strålfors AB v. P D S AB, Case No. D2000-0112; and Ingersoll-Rand Co. v. Gully, Case No. D2000-0021.
The Requirements of the Policy
5.7 Policy paragraph 4(a) provides that the Policy applies only if: (i) the packagingworld.com domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the packagingworld.com domain name; and (iii) the packagingworld.com domain name has been registered and is being used in bad faith by the Respondent. The burden is on the Complainant to prove each of those three elements.
(i) The Complainant's Trade-mark Rights
5.8 Policy paragraph 4(a)(i) requires the Complainant to prove that the packagingworld.com domain name is identical or confusingly similar to a trade-mark in which the Complainant has rights. The Policy does not require that the Complainant have a registered trade-mark. It is sufficient that the Complainant have rights in an unregistered, common law trade-mark. See for example Bennett Coleman & Co Ltd. v. Lalwani, Cases No. D2000-0014 and 2000-0015; Roberts v. Boyd, Case No. C2000-0210; Winterson v. Hogarth, Case No. D2000-0235; MatchNet plc. v. MAC Trading, Case No. D2000-0205; Gateway Inc. v. Cadieux, Case No. D2000-0198; and Potomac Mills Limited Partnership v. Gambit Capital Management, Case No. D2000-0062.
5.9 The Complainant asserts rights in the unregistered trade-marks PACKAGING WORLD and PACKAGING WORLD AND DESIGN. Under Canadian law, trade-marks serve to identify the source of wares and services, and to distinguish a trader's wares and services from those of other traders. The ability to distinguish, known as distinctiveness, is the cardinal requirement of a trade-mark. The Canadian Trade-marks Act, section 2, defines "distinctive" in relation to a trade-mark as meaning "a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them".
5.10 There is a spectrum of distinctiveness, from non-distinctive words which are clearly descriptive of the character of wares or services, to words which are suggestive but not clearly descriptive, to words which are arbitrary, fanciful or invented. Distinctiveness may be inherent or acquired. Inherent distinctiveness may be strengthened through use. Acquired distinctiveness (also known as "secondary meaning") refers to a trade-mark's ability, acquired through use, to distinguish the source of wares or services with which it is associated. Where a descriptive term has acquired distinctiveness, the descriptive connotation of the mark is subordinated to its dominant secondary or distinctive meaning in relation to the wares or services with which it is associated.
5.11 Distinctiveness may be inferred from the inherent distinctiveness of the mark and its use. Evidence of intentional copying may support an inference that the copied mark is distinctive, and that there is goodwill or reputation in the copied mark.
5.12 The Complainant has asserted substantial sales of wares and services in association with its trade-marks, and has provided evidence of the manner in which its marks are used in the ordinary course of its businesses. Further, the Respondent's use of the Complainant's mark as a domain name is some evidence that the mark has value. Finally, the Panel notes that the Canadian Trade-marks Register contains registrations for a number of "world" trade-marks, such as SCIENCE WORLD, PLANT WORLD, LEISURE WORLD, and FURNITURE WORLD, which is some support for the view that marks incorporating a descriptive term and the word "world" may be distinctive.
5.13 On balance, the Panel is satisfied that the Complainant's trade-marks have acquired goodwill and distinctiveness in the geographic area in which they are used by the Complainant, and are sufficient to support the Complainant's complaint under the Policy.
5.14 The second level domain in packagingworld.com is identical to the Complainant's PACKAGING WORLD trade-mark. The second level domain in packagingworld.com is also identical to the word portion of the Complainant's PACKAGING WORLD AND DESIGN trade-mark. Given that design elements cannot be captured in a domain name, the logo portion of the Complainant's PACKAGING WORLD AND DESIGN trade-mark is irrelevant for the purpose of this analysis.: See Football Club des Girondins de Bordeaux v. Arr, Case No. D2000-0149; and General Machine Products Company Inc. v. Prime Domains, Case No. NAF FA0001000092531.
5.15 For these reasons, the Panel finds that the Complainant has established that the packagingworld.com domain name is identical or confusingly similar to a trade-mark in which the Complainant has rights.
(ii) The Respondent's Rights and Legitimate Interests
5.16 Policy paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights or legitimate interests in the packagingworld.com domain name. Generally, the burden on a complainant in respect of this requirement ought to be relatively light, because it is difficult for a complainant to prove that a respondent has no rights or legitimate interests in a domain name, and such information is known to and within the control of the respondent. See Educational Testing Service v. Netkorea Co., Case No. D 2000-0087. Further, where a respondent has not submitted a reply to the complaint, an unduly strict application of this requirement may inappropriately reward the respondent for its default.
5.17 The Complainant asserts that the Respondent does not use the term "packaging world" in its business other than the impugned registration and temporary use of packagingworld.com domain name. The Respondent's Web site does not use the term "packaging world". The Respondent has not contested the Complainant's assertions or contentions in this regard, and the Panel concludes that an inference adverse to the Respondent is appropriate.
5.18 The Respondent's registration and temporary use of the of the packagingworld.com domain name, which the Panel finds to be in bad faith (as discussed below), is not sufficient to establish any rights or interests in the domain name in the sense contemplated by Policy paragraph 4(a)(ii). See National Football League Properties Inc. v. One Sex Entertainment Co., Case No. D2000-0118; and The Hamlet Group Inc. v. Lansford, Case No. D2000-0073.
5.19 Further, in the circumstances, and particularly the direct competitive relationship between the Complainant and the Respondent, it is difficult to conceive of any legitimate use that the Respondent could make of the packagingworld.com domain name. Use of the domain name would tend to misrepresent an association with the Complainant and its goodwill, and would likely infringe the Complainant's trade-mark rights under Canadian law. See Slep-Tone Entertainment Corporation v. Sound Choice Disc Jockeys Inc., Case No. FA#2002000093636.
5.20 For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the packagingworld.com domain name.
(iii) Bad Faith Registration and Use
5.21 Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the packagingworld.com domain name in bad faith. Policy paragraph 4(b) provides as follows:
For the purposes of Paragraph 4(a)(iii), 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.
5.22 Based upon the Complainant's assertions and evidence, and in the absence of any assertions or evidence to the contrary by the Respondent, the Panel finds that the Respondent registered the packagingworld.com domain name primarily for the purpose of disrupting the business of a competitor, namely the Complainant.: See Mission KwaSizabantu v. Post, Case No. D2000-0279; NetGrocer Inc. v. Tahiliani, Case No. FA0002000093768; and SGS Société Générale de Surveillance S.A. v. Inspectorate, Case No. D2000-0025.
5.23 The findings of fact upon which this conclusion is based are as follows:
(a) The Respondent and the Complainant are direct, local competitors.
(b) The Respondent knew of the Complainant and its trade-marks before registering the packagingworld.com domain name.
(c) After being advised of the Complainant's desire to use the packagingworld.com domain name, the Respondent temporarily used the packagingworld.com domain name for its own Web site. This resulted in comments and complaints by the Complainant's customers and suppliers who attempted to access the Complainant's Web site by using the packagingworld.com domain name.
(d) The Complainant attempted to register the packagingworld.com domain name, but was prevented from doing so by the Respondent's prior registration.
(e) The Complainant wishes to use the domain name in association with its own Web site.
5.24 The Respondent has apparently stopped using the packagingworld.com domain name for an active Web site. Nevertheless, the Respondent did use the packagingworld.com domain name for its Web site for some time. This temporary use is sufficient to satisfy the requirements of the Policy. See Ingersoll-Rand Co. v. Frank Gully (d.b.a. Advcomren), Case No. D2000-0021.
5.25 The Panel also finds that the Respondent used the packagingworld.com domain name to intentionally attract, for commercial gain, Internet users to the Respondent's Web site by creating a likelihood of confusion with the Complainant's trade-mark as to the source, sponsorship, affiliation or endorsement of the Respondent's Web site or the products and services advertised on that Web site. This conclusion is based upon the facts stipulated in paragraph 5.23 above and the inference, in the absence of any assertions or evidence to the contrary by the Respondent, that the Respondent intended the reasonably foreseeable consequences of its conduct.
5.26 For these reasons, and in light of Policy paragraph 4(b), the Panel finds that the Respondent registered and used the packagingworld.com domain name in bad faith within the meaning of Policy paragraph 4(a).
5.27 The Policy provides that where the requirements of Policy paragraph 4(a) are established, a Panel may order that the registration of an impugned domain name either be transfered to the Complainant or cancelled. The Complainant requests that the registration of the packagingworld.com domain name be transferred from the Respondent to the Complainant.
5.28 For the reasons set forth in this decision, the Panel concludes that the appropriate remedy is a transfer of the registration of the packagingworld.com domain name from the Respondent to the Complainant.
6.1 The Complainant has established each of the three requirements stipulated in Policy paragraph 4(a). The Panel directs that the registration of the packagingworld.com domain name be transferred from the Respondent to the Complainant.
7.1 Made in Vancouver, British Columbia, Canada, July 28, 2000.
(s) Bradley J. Freedman