ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: HOTLINE COMMUNICATIONS LIMITED
Respondent: TOMASZ FOLTYNSKI
Case Number: AF-0263
Contested Domain Name: hotlinecommunications.com
Panel Member: James Jude Bridgeman
 

 

1. Parties and Contested Domain Name

The Complainant is Hotline Communications Limited having an address at 672, Dupont Street, Suite 500, Toronto, Ontario, M6G 1Z6, Canada.

The Respondent is Tomasz Foltynski, having an address at 300, George Street, # 316, Toronto, Ontario, Canada.

The Domain name in dispute is "hotlinecommunications.com"

2. Procedural History

The electronic version of the Complaint Form was filed on-line through eResolution's www site on June 22, 2000. The hardcopy of the Complaint Form was received on June 26, 2000. Payment was received on the same date.

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's Office 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 email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on June 22, 2000. The requested information was received June 26, 2000.

The Clerk's Office 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 (hereinafter "the Policy")

The Clerk's Office fulfilled all its responsibilities under paragraph 2(a) of the Policy in connection with forwarding the Complaint to the Respondent on June 29, 2000. That date is the commencement date of these Administrative Proceedings.

On June 29, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of these Administrative Proceedings.

On July 17, 2000, the Respondent submitted, via eResolution Internet site, his Response. The signed version of the Response was received on July 18, 2000.

On, July 24, 2000, the Clerk's Office contacted Mr. James Jude Bridgeman and requested that he act as Administrative Panelist in this case.

On July 25, 2000, Mr. James Jude Bridgeman accepted to act as Administrative Panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On July 25, 2000, the Clerk's Office forwarded a user name and a password to Mr. James Jude Bridgeman, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On July 25, 2000, the Parties were notified that Mr. James Jude Bridgeman had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 7, 2000.

3. Factual Background

The Complainant is the owner of Canadian registered trademark "HOTLINE COMMUNICATIONS" Registration No. TMA 528,197, filed on May 1, 1998 and registered on May 23, 2000, for use in association with the following wares: "computer software to facilitate communications between persons using the internet, and between persons using local area computer networks or networks which are virtual private networks in that they appear to users of such networks to be private networks but in fact make use of the internet (intranet), the said computer software permitting multiple host computer operators or servers and multiple computer users who are remote from the host computer operators or servers to access, share, transfer or modify common (collaborative) electronic documents or contents of computer memory, the contents of which electronic documents or computer memory include one or more of the following forms of expression, namely, electronic mail, text, graphics, audio, video, audio, visual, voice, and other data in a digital form of expression."

In addition the Complainant is the registered owner of the three other Canadian registered trademarks viz. "HOTLINE CLIENT" - Canadian Trademark Registration No. TMA 520,787, filed on May 1, 1998 and registered on December 21, 1999; "HOTLINE TRACKER" -- Canadian Trademark Registration No. TMA 520,789, filed on May 1, 1998 and registered on December 21, 1999; and "HOTLINE SERVER" -- Canadian Trademark Registration No. TMA 520,788, filed on May 1, 1998 and registered on December 21, 1999.

These four Canadian registered trademarks viz. "HOTLINE COMMUNICATIONS", "HOTLINE CLIENT", "HOTLINE TRACKER" and "HOTLINE SERVER" are registered as associated marks.

In addition to the Canadian registrations, the Complainant is the owner of a pending application in the USA for registration of the trademark "HOTLINE" in classes 9 and 35 viz. pending U.S. Trademark application Serial No. 75/760,837, filed on July 23, 1999 and based upon use since at least as early as July 15, 1997. This USA application was approved for publication on June 6, 2000. It is noted that on the printout of the search from the US Patent & Trademark Office database provided by the Claimant as an annex to the Complaint, that the Complainant's address on this application is stated to be 67, Mowat Avenue, Suite 548, Toronto, Canada.

The Complainant provides computer software via its www site at "hotlines.com".

The Respondent is also engaged in the computer software business. He is a professional www site developer and programmer of Internet software. The Respondent registered said domain name "hotlinecommunications.com" on or about January 6th, 2000.

Prior to the commencement of these Administrative Proceedings, the Parties have been in communication with each other. This correspondence commenced with a letter sent by the Complainant to the Respondent dated April 25, 2000. In said letter counsel for the Complainant wrote to the Respondent complaining of the registration by the Respondent of the said domain name "hotlinecommunications.com"

Said letter advised the Respondent of the Complainant's registered trademarks and that the Complainant claimed to enjoy a substantial goodwill and reputation in inter alia the trademark "HOTLINE COMMUNICATIONS" and provided the Respondent with certain details of proceedings in which the Complainant claimed to have secured an injunction from the U.S. Federal Court to enjoin the use of the "hotline.com" trade mark and domain name by a third party.

The Complainant advised the Respondent that it was aware that the said domain name "hotlinecommunications.com" was being offered for sale by the Respondent and claimed that any advertisement or display of the said domain name "hotlinecommunications.com" or suggestion that the said domain name is for sale is an infringement of the Complainant's rights. Inter alia the Complainant stated that it has an established Internet based business providing computer software and operating through its www site at "hotlines.com". In conclusion, the Complainant demanded that the Respondent immediately assign to the Complainant the said domain name "hotlinecommunications.com."

The Respondent did not respond to this letter immediately, but in due course communication was established between the representatives of the Complainant and the Respondent. In the course of negotiations the Respondent offered to sell the said domain name "hotlinecommunicatins.com" to the Complainant for the sum of $9,500.00CDN. The Complainant counter-offered to purchase the domain name for $3,500.00 CDN. No agreement was reached by the Parties and the Complainant initiated these Administrative Proceedings.

4. Parties' Contentions

Complainant's submissions

The Complainant requests a decision directing the transfer of the said domain name to the Complainant. In support of this claim, the relevant submissions of the Complainant can be stated as follows:

As to whether the said domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant's trademark "HOTLINE COMMUNICATIONS", registered in Canada is identical to the domain name "hotlinecommunications.com" forming the subject matter of the Complaint. The Complainant submits that the domain name is identical to the trademark notwithstanding the addition of the top level domain suffix ".com"

"HOTLINE" is the first word and the predominant element or aspect of each of the "HOTLINE" trademarks, aforesaid. Each of the "HOTLINE" trademarks was filed in Canada on May 1, 1998 on the basis of proposed use.

The Complainant submits the Respondent has no rights or legitimate interest in said domain name and that he has admitted that he registered the domain name to sell it on in conjunction with his programming work.

As to whether the Respondent has registered and is using the said domain name in bad faith, the Complainant points to the fact that the Respondent offered to sell the said domain name hotlinecommunications.com to the Complainant for CDN $9,500.00. The Complainant submits that there is no evidence that the Respondent has incurred any development costs in connection with the www site. The Complainant further submits that there is no evidence that the Respondent is preparing to use the domain name "hotlinecommunications.com" in connection with a bona fide offering of goods or services by the Respondent. The Complainant claims that to the contrary, the correspondence from the Respondent's representative dated June 9, 2000 and June 18, 2000 is a clear statement that the web site linked to the URL "hotlinecommunications.com" is a "bare" web site and that the Respondent's only intended use of the domain name is to sell it on, possibly to a telecom company.

The domain name "hotlinecommunications.com" is not being used by the Respondent as an active address. Instead, one encounters a message at that web site: "Hotlinecommunications.com HOTLINE Communications Group Web site and business for sale Watch this space for exciting news coming soon...international publishing, education, communications."

The Complainant submits that the Respondent is not making fair use of the domain name "hotlinecommunications.com". The said domain name links to what has been described by the Respondent as a "bare" www site on which is posted an offer (by what the Complainant believes to be a fictitious entity "HOTLINE Communications Group") to sell "hotlinecommunications.com".

The Complainant submits that it's registered trademarks and pending application are prima facie valid and distinctive of the Complainant. The association of the Respondent's "fly-by-night", "bare" www site with the Complainant's trademarks is likely to tarnish the Complainant's trademarks and is misleading in that it creates the false impression that said "HOTLINE Communications Group", (which the Complainant submits is the fictitious entity), is in some way associated with the Complainant.

The Complainant submits that such conduct is inconsistent with any demonstration by the Respondent of a legitimate interest in the domain name pursuant to the provisions of paragraph 4(c)(iii) of the Policy.

The Complainant further alleges that an e-mail sent by the Respondent's representative dated Sunday, June18, 2000, contains a threat to sell the domain name "hotlinecommunications.com" to a competitor of the Complainant, namely, a telecom company, contrary to paragraph 4(b)(i) of the UDNDRP.

Respondent's submissions

The Respondent has acknowledged that the Complainant is the owner of and has established use of the trademark "HOTLINE COMMUNCIATIONS" and the corporate name "HOTLINE COMMUNICATIONS LTD". The Complainant has further acknowledged that the said trademark is similar to the said domain name. However, the Respondent points out that the Complainant had every opportunity to register said domain name over a period of two years i.e. the period between the date on which the Complainant claims to have first used the said trademark and the date on which the Respondent registered the domain name.

The Respondent states that because the Complainant failed to register said domain name when it had the opportunity so to do. The Complainant discovered too late that the said domain name had been registered and is now engaged in "reverse domain name hijacking".

Furthermore, the Respondent refutes the Complainant's claim to the exclusive right to use the words "HOTLINE" and points out that these words are registered as a trademark by a third party.

The Respondent claims that when he registered the domain name, he was not aware of the existence of the Complainant or of the Complainant's trademarks and so he did not register the said domain name in bad faith.

The Respondent argues that since he is engaged in the business of www site development and is offering "goods and services" in connection with this business, it should follow that he has an entitlement to register domain names such as the domain name in issue in these proceedings in order to sell the domain name along with these goods and services. It is implicit in his arguments that these activities amount to a bona fide offering of goods or services for the purposes of establishing his rights or legitimate interest in the domain name in issue in these proceedings as set out in paragraph 4(c) (i) of the Policy.

The Respondent claims to operate many www sites, and that he creates and develops www sites for a living. This is his only employment and he claims to have every right to "ply his trade" which he does in good faith. He has created the following www sites for clients: "sodacentre.com"; "merseyheating.com", "canadacredit.com" (Credit Bureau of Canada); "excellenceinart.com", "artclub2000.com" and "saleauto.com". The Respondent argues that there is an established trade in domain names and this can be seen in newspaper advertisements and on www sites. The Respondent claims to have registered numerous other domain names in the course of his business, including "e-commercedevelopment.com", "interpersonaldevelopment.com", "economicalert.com", "nonverbalcommunications.com", "decorgallery.com" and "canadaonlineinvestor.com".

The Respondent submits that it follows that there was no need to satisfy the Complainant that he had such "legitimate interest" in the domain name since in the Respondent's submission it is sufficient that the ownership of the site was well known to both Parties.

Furthermore the Respondent refutes the Complainant's claim that he registered and is using the said domain name in bad faith.

The Respondent argues that he was not aware of the Respondent or the trade mark "HOTLINE COMMUNICATIONS" until he received the Respondents cease and desist letter dated April 25, 2000. The Respondent submits that as a professional www site developer and programmer of Internet software he would have been "shooting himself in the foot" to consciously register a name knowing that the owner of such name or a similar name would challenge his ownership.

The Respondent further submits that the Complainant acknowledged and "ligitimized" the Respondents ownership rights in the domain name when the Complainant rejected the Respondent's offer to sell the domain name in dispute for $9,500.00CDN and counter-offered $3,500.00 CDN.

Addressing the Complainants allegation that the Respondent has failed to establish an active site at the domain address, the Respondent argues that there is no rule or requirement that the owner of a www site must do anything with a www site as the Complainant argues. The Respondent argues that if a store owner can hang a sign "Gone Fishing" on his door, a www site owner can display whatever he may decide when he "fishes" for clients. The Respondent submits that he is offering the domain name "hotlinecommunications.com" to clients along with his other www site development services. He submits that this domain name is a "generic" name and has wide applicability to many potential users.

As to the Complainants argument that the Respondent demonstrated bad faith by failing to develop a site, the Complainant points out that he is in the business of developing sites for clients and asks why he should be required to start development work and incur expenses before he has secured a client to purchase the site and before he has taken instructions as to how to develop the site as required by the client?

The Respondent concludes that the real issue herein appears to be a matter of price and the Complainant's resistance to pay the vendor's "fair" price, driven by the fact that the Complainant was late to register his name of choice.

5. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-

(i) the domain name in dispute 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 said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

Identical or confusingly similar

It is clear to this Administrative Panel that the domain name "hotlinecommunications.com" is identical or confusingly similar to the Complainants trademark "HOTLINE COMMUNICATIONS" and this is accepted by both Parties to these proceedings.

The Respondent however argues that the domain name is what he describes as a "generic" domain name. This Administrative Panel understands this to mean that the words do not have the necessary qualities to distinguish the Complainants business activities from those of its competitors. This Administrative panel does not accept this argument of the Respondent. In the view of this Administrative Panel, the combination of the words "HOTLINE" and the word "COMMUNICATIONS" creates a distinctive trademark and domain name and this is not a descriptive word or what the Respondent describes as a "generic" term.

While it is accepted that the word "HOTLINE" may have been adapted by third parties, it seems clear to this Administrative Panel that that the addition of the word "COMMUNICATIONS" lends additional distinctiveness. In reaching this conclusion this Administrative Panel is conscious that the word "COMMUNICATIONS" is a descriptive word or to use the Respondent's phrase a "generic" word, however the distinctiveness arises in the combination of the elements.

This Administrative Panel is satisfied that the Complainant has established that the said domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Rights or Legitimate Interest of the Respondent in the Domain Name

The Policy sets out how the Respondent can demonstrate rights to and legitimate interests in the domain name in responding to a Complaint. Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name in issue or a name corresponding to the said domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the said domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

This Administrative Panel is satisfied that the combination of the words "HOTLINE" and "COMMUNICATIONS" creates a distinctive trademark and domain name. These words in combination have been adapted by the Complainant as a trademark and have been used by the Complainant as a trademark to distinguish its wares and services for a number of years.

The Complainant has established that it has exclusive rights to use these words as a trademark in Canada and the USA in relation to certain computer software wares and services. The Complainant has also established a prima facie case that the Respondent, who also claims to be engaged in the computer software industry and makes no claim to be engaged in any other industry, has no rights or legitimate interest in the said name.

The Respondent has argued that since he is engaged in the business of www site development and is offering "goods and services" in connection with this business, it should follow that he has an entitlement to register a domain name, such as the domain name in issue in these proceedings, in order to sell that domain name along with these goods and services. This Administrative Panel makes no determination as to whether the Respondent is entitled to engage in such a trade in domain names in general, however it is clear that it would not be lawful for the Respondent to engage in any activity involving the use of a domain name by the Respondent or any client of the Respondent which amounts to infringement of trademarks or passing off.

The tests set out in paragraph 4 (c) of the Policy are non-exhaustive, nonetheless the Respondent has not advanced any other argument for his claim to have any rights or legitimate interest in the domain name. The Respondent relies for his argument on paragraph 4 (c)(i) of the Policy that before any notice to the Respondent of the dispute, the Respondent had made use of, or had made demonstrable preparations to use, the domain name in issue in connection with a bona fide offering of goods or services.

The Respondent makes no claim to put his case within the ambit of the tests in paragraph 4(c)(ii) or paragraph 4(c)(iii) of the Policy. There is no question of the Respondent being commonly known by the said domain name and he admits that he is engaged in commercial activity.

This Administrative Panel rejects the Respondent's arguments based on paragraph 4(c) (i) of the Policy. On the evidence before this Administrative Panel, the www site at the "hotlinecommunications.com" address is not used by the Respondent to offer goods or services and the Respondent has admitted that he has taken no demonstrable steps to develop the www site. It is his expressed intention not to use the domain name himself, but to endeavour to sell the domain name, preferably as part of a package to include www site development work and software. It is clear to this Administrative Panel that the Respondent has not engaged in any activity which would amount to use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c) (i) of the Policy.

This Administrative Panel is satisfied that the Respondent has not acquired any rights or legitimate interest in the said domain name through activities contemplated by the paragraph 4 (c)(i) of the Policy or otherwise.

Registration and use in bad faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) 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; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has 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 onus is on the Complainant to prove each element of the test. The Respondent has admitted that he registered the domain name primarily for the purpose of selling the domain name registration for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.

The question arises as to whether the Respondent registered the domain name with the intention of selling this domain name to the Complainant or to a competitor of the Complainant?

The Complainant has established that it is the owner of a distinctive trademark and that it has taken steps to protect this trademark in both Canada and the USA. The Respondent, however, claims that he was not aware of the existence of the Complainant or of the Complainant's trademarks when he registered the said domain name. At the same time the Respondent claims to be full-time engaged in the business of www site development and as part of the activities of this business he registers domain names and offers them for sale.

While not going so far as to say that in every case the mere fact that a trade mark is registered would be sufficient to put a respondent anywhere in the world on constructive notice of the existence of the trademark and its registered owner, this Administrative Panel is satisfied that in the circumstances of this case, it would be incumbent on the Respondent to do more than merely deny such knowledge.

In coming to this conclusion this Administrative Panel notes that in this case, the Respondent resides in the same city as the Complainant. The Complainant has registered trademarks in the jurisdiction in which the Respondent resides. The Complainant has established a prima facie case that the Complainant's trade marks have become well known to Canadians and this is illustrated by the fact that the Complainant was the subject of an article in the October issue of Saturday Night magazine.

Furthermore the Respondent claims to be engaged in essentially the same business as the Complainant i.e. computer software development. The Complainant has provided prima facie evidence that it has an established Internet based business operating through its www site at "hotlines.com".

The above circumstances, taken together with the fact that the Respondent has offered to sell the said domain name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name and has indicated that he intended to sell the domain name to a telecommunications company is sufficient to satisfy this Administrative Panel, on balance, that the Respondent registered and is using the said domain name in bad faith.

Conclusions

The Administrative Panel decides that the Respondent has registered the domain name "hotlinecommunications.com" identical or confusingly similar to the Complainant's trademark, that the Respondent has no rights or legitimate interest in respect of said domain name and that the Respondent has registered and is using said domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name "hotlinecommunications.com" should be transferred to the Complainant.

Signature

At Dublin, Ireland

Date: 31 July 2000

(s) James Jude Bridgeman

Presiding Panelist