ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Bata Industries Limited of 59 Wynford Drive, Toronto, Ontario Canada M3C 1K3.
The Respondent is Bentley Online Ltd. of 3362 Hatley Drive, Victoria British Columbia Canada V9C
The contested domain names are Athletesworld.com and Athletes-world.com which are stated to be registered with Network Solutions Inc.
2. Procedural History
The Complainant filed a complaint submission under the ICANN Uniform Domain Name Dispute Resolution Policy, (the "ICANN Policy") on June 5, 2000 and notice was provided to the Respondent and to Gary W. Kinar, Law Corporation, legal counsel representing the Respondent, in conformance with the applicable rules of procedure. No response to the complaint has been filed by, or on behalf of, the Respondent.
3. Factual Background
The Complainant and its associated companies in the global Bata Shoe Organization are primarily engaged in the business of manufacturing and distributing footwear products. In 1978 the retail concept known as Athletes World was conceived, developed and implemented in Canada, and subsequently throughout the world. The retail concept specializes in athletic and leisure footwear, clothing and accessories. The Complainant and its associated companies currently operate approximately 205 Athletes World stores in Canada and approximately 300 Athletes World stores globally.
The Complainant is the holder in Canada of the following registered trademarks and trademark application; (a) ATHLETES WORLD registered January 18, 1980 as TMA 239,352 (b) ATHLETES WORLD & DEVICE registered February 1, 1980 as TMA 239,635 (c) OUT THERE BY ATHLETES WORLD registered May 3, 1999 as TMA 511,475, and (d) ATHLETES WORLD OUT THERE application 869,661 applied for September 30, 1998 and allowed for registration April 13, 2000. In addition the Complainant and its associated companies have registered the ATHLETES WORLD trademark extensively throughout the world
The Respondent has registered the domain names Athletesworld.com and Athletes-world.com. The Respondent does not carry on any business activities related to the domain names and the domain sites are inactive. The Respondent has no association whatsoever with the Athletes World businesses being carried on in Canada, or throughout the world. The Respondent is not associated in any way with the Complainant, or any of its associated companies, either in fact or in law.
The Respondent has registered a total of 21domain names which contain the name and brand identities of the Complainant, other major companies and business concepts related to the shoe, leather and luggage industries. The Respondent does not carry on any business activities related to those domain names. On May 19, 2000 as a result of proceeding AF-0157 under the ICANN Policy, two of those domain names, batashoes.com and bata-shoes.com, were ordered to be transferred from the Respondent to the Complainant.
In section 2 of the Service Agreement between the Respondent and the registrar Network Solutions Inc., the Respondent represented and warranted that, to the best of its knowledge and belief, neither the registration of the contested domain names, nor the manner in which it intended to use such domain names would directly or indirectly infringe the legal rights of a third party.
A series of communications occurred between the Complainant, the Respondent and legal counsel for the Respondent. On March 7, 2000 the Complainant requested in writing that the Respondent transfer the contested domain names to the Complainant. The Complainant forwarded to the Respondent transfer documentation for signature and return and offered to reimburse the Respondent for its out-of-pocket expenses for the initial registration and subsequent transfer of the contested domain names. The Respondent has not signed and returned the transfer documentation.
On March 07, 2000 the Respondent communicated with the Complainant by e-mail advising that "we are not using the domain names in question, and would not at any time in the future seek to use them in any manner which would conflict with Bata Industries in any way." The Respondent indicated that he would be discussing the matter with legal counsel.
On March 16, 2000 legal counsel for the Respondent communicated with the Complainant by e-mail, advising that the Complainant's proposal was not acceptable, and soliciting an invitation to present a counter-proposal. The Complainant commenced proceedings against the Respondent under the ICANN Policy
3. Parties' Contentions
The Complainant alleges that the contested domain names registered by the Respondent are identical or confusingly similar with the registered trademarks and trademark applications of the Complainant. The Complainant also alleges that the Respondent has no rights or legitimate interest in respect of the contested domain names.
The Complainant additionally contends that the conduct of the Respondent indicates that the domain names have been registered and used in bad faith. The Respondent is not using either of the contested domain names for any active business or any legitimate purpose, but by "warehousing" them has precluded the lawful use of the domains by the Complainant. In particular the Respondent registered the domain names for the purpose of (a) selling, renting or otherwise transferring the domain name registration to the Complainant for consideration in excess of its documented out-of-pocket expenses (b) preventing the Complainant from reflecting its trademarks in corresponding domain names, and the Respondent has enagaged in a pattern of similar conduct affecting other well known trademarks, and (c) intentionally attempting to attract, for potential commercial gain, Internet users to a web site which the Respondent would control, by creating a likelihood of confusion as to the source, sponsorship affiliation or endorsement of the web site by the Complainant, or a likelihood of confusion as to products or services which might be offered on the web site, and products of services offered by the Complainant under its trademarks.
In addition, the Complainant contends that the Respondent knew or ought to have known, that the representation and warranty expressed by the Respondent in the Service Agreement with Network Solutions Inc. at the time of registration was false and misleading, and that the use of the words Athletes World as part of a domain name would infringe and violate the legal rights of the Complainant.
The remedy requested by the Complainant is the transfer of the contested domain names to the Complainant.
The Respondent did not file a response to the submission of the Complainant.
4. 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 establish:
(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 names Athletesworld.com and Athletes-world.com contain exactly the same words in the same sequence as they appear in the ATHLETES WORLD, ATHLETES WORLD & DEVICE, and OUT THERE BY ATHLETES WORLD registered trademarks and ATHLETES WORLD OUT THERE trademark application of the Complainaint. Accordingly it is the finding of the Panel that each of the contested domain names is identical or confusingly similar to the trademarks of the Complainant.
With respect to the issue of any legitimate rights or interest of the Respondent in the contested domain names, Paragraph 4(c) of the ICANN Policy shows how a Respondent can demonstrate rights or an interest in a domain name. While 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 contested domain names, that the Respondent has not made any use, or demonstrable preparations to use, the contested domain names in connection with a bona fide offering of goods or services, 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.
Accordingly it is the finding of the Panel that the Respondent has no rights or legitimate interests in the contested domain names.
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 conduct of the Respondent in rejecting the Complainant's offer to provide monetary reimbursement for documented out-of-pocket expenses associated with the initial registration and subsequent transfer of the domain names to the Complainant, and in solicitating an invitation to submit a counter proposal, supports the proposition that the Respondent sought to obtain valuable consideration from the Complainant in excess of the threshhold established in the ICANN Policy for transfers in good faith.
The activities of the Respondent in registering numerous domain names which were identical or confusingly similar to well known companies and commercial brand identities established a pattern of conduct which is inconsistent with any legitimate purpose. In the absence of any associated business activity or other demonstrated legitimate purpose, these circumstances support the inference that the purpose of registration of the contested domain names was to prevent the Complainant from reflecting its trademarks in corresponding domain names.
No sufficient evidence was provided to support the contention that the Respondent intentionally attempted to attract, for commercial gain, Intenet users to a web site by creating a likelihood of confusion with the trademarks of the Complainant.
Having regard to the lengthy and extensive public use of the trademarks by the Complainant in Canada since at least 1980, well prior to the registration of the contested domain names, the possibility that the Respondent, located in Canada, initiated those registrations without an awareness of the pre-existing brand identity established by the Complainant, is a very remote prospect. This is particularly the case where the Respondent has also registered domain names which include the corporate name of the Complainant, substantiating the actual awareness of the Respondent of the existence of the Complainant and its business activities. These circumstances support the contention that the Respondent did not act in good faith in connection with the representations and warranties made to obtain registration of the contested domain names.
The Respondent has failed to respond to the commencement of these proceedings and take the opportunity to establish any legitimate purpose for registration of the contested domain names, or any legitimate use of the contested domain names.
Accordingly it is the finding of the Panel that the Respondent registered and used the contested domain names in bad faith.
For the foregoing reasons the Panel concludes that, with respect to the contested domain names Athletesworld.com and Athletes-world.com:
(a) each of the contested domain names registered by the Respondent is identical or confusingly similar to the trademarks of the Complainant;
(b) the Respondent has no rights or legitimate interests in respect of the contested domain names; and
(c) each of the contested domain names registered by the Respondent 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 names Athletesworld.com and Athletes-world.com be transferred to the Complainant.
Dated at Toronto, Canada, July 23, 2000
(s) David Marcel Robinson