ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
The Parties and Contested Domain Name
See caption above.
2. Procedural History
2.1 Les Promotions Atlantiques Inc./Atlantic Promotion (Complainant) filed a complaint on-line through eResolution's web site on July 19, 2000. The hardcopy of the complaint form was received on July 27, 2000. The eResolution Clerk forwarded a copy of the complaint to Respondent Stéphane B. doing business as Divertissements Cyber2000 (Respondent) on July 31, 2000, which is the commencement date of the administrative proceeding.
2.2 As of August 22, 2000, Respondent had not submitted a response. The undersigned panel member agreed to act as a panelist on August 24, 2000. On August 28, 2000, the parties were notified of this appointment. As of this date, the panelist has received no indication that Respondent would have submitted any response.
3. Factual Background
3.1 Complainant, a Canadian based company, located in Longueuil, Québec, owns various trademarks, including the trademark STARFRIT used and registered in connection with various types of kitchen wares. Complainant own three trademark registrations for the trademark STARFRIT in North America: two Canadian registrations dated February 5, 1988 and April 29, 1988 respectively and one American registration dated May 13, 1997. According to its registrations, the STARFRIT trademark has been extensively used in Canada since at least as early as December 1987 and in the United States since at least as early as December 1993. Complainant asserts that its trademark STARFRIT has gained recognition and has achieved a strong reputation, first throughout Canada and then world-wide, more particularly through TV live demonstration shows and infomercials aired across Quebec and Canada since the late 1980's. Over a million STARFRIT products have been sold in several countries at an estimated combined volume of 16 million Canadian dollars per year for the last three years, making the trademark STARFRIT one of Complainant's most valuable assets.
3.2 In the Spring of 2000, Respondent, of Montreal, Québec, registered the contested domain name starfrit.com. Prior to April 18, 2000, according to Complainant, the starfrit.com site merely displayed the words "ENTRER ICI" (French for "ENTER HERE"). By clicking on those words, a web visitor would activate a hyperlink to baise-moi-com, an adult site containing explicit sexual material. On April 18, 2000, Complainant sent to Respondent a cease and desist letter claiming that it owned the rights in the trademark STARFRIT and complaining that its business was being harmed by Respondent's conduct. Respondent did not expressly respond to the letter, but in the following days, according to the Complainant, Respondent modified its computer language so that users who now wanted to access the starfrit.com web site were automatically re-routed to the home page of the Internet search engine page Yahoo!, operating under Yahoo.com.
3.3 After receipt of the cease and desist letter, Respondent proceeded to another change. As appears from Complainant's documents, even though the domain name remained under the personal name and trade name of Respondent, a New-Zealand postal address was substituted to the formal Quebec address under the Registrant, Administrative and Billing Contact sections of the Network Solutions Whois registration form.
4. The Parties' Contentions
4.1 Complainant asserts in essence:
(a) that the domain name starfrit.com is identical to its trademark STARFRIT
(b) that Respondent has no right or legitimate interests in respect of the domain name starfrit.com in that
i. STARFRIT is a fanciful and invented word resulting from Complainant's ingenuity and has no meaning other than as Complainant's trademark;
ii. Respondent has failed to respond to Complainant's cease and desist letter;
iii. until recently Respondent operated a "pornography site" interfering with Complainant's business operations;
(c) that Respondent's domain name has been registered and is being used in bad faith in that
i. Respondent, by re-routing the visitors of the starfrit.com site to the Yahoo search site after receiving the cease and desist letter, has admitted having used the domain name in bad faith;
ii. even though Respondent has now re-routed net traffic, an Internet user who would type the following address: http://www.faitdufric.com/starfrit/ (which address appears at the bottom of one of the exhibits) would still access the starfrit.com home page as it appeared prior to the sending of the cease and desist letter;
iii. Respondent, by substituting a New Zealand address on the Network Solutions Whois registration form after receiving the cease and desist letter, has again admitted having used the domain name in bad faith;
iv. Respondent has made a link to the baise-moi.com adult content site and has created a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its adult content site or location or of a product or service.
4.2 In conclusion, Complainant requests the panel to order the transfer of the domain name starfrit.com from Respondent to Complainant.
4.3 Respondent has filed no response.
5. Discussion and Findings
5.1 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.
5.2 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 defenses which, if proven by the respondent, shall demonstrate the respondent's rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii), supra. Paragraph 14(b) of the ICANN Rules provides that if a party, in the absence of exceptional circumstances, does not comply with any provision of the Rules, the panel shall draw such inferences from such failure as it considers appropriate. If the complainant successfully proves all three elements of paragraph 4(a), then the 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
5.3 Paragraph 4(a)(i) of the ICANN Policy requires that the domain name be identical or confusingly similar to the complainant's trademark.
5.4 It is obvious to the panel that the domain name starfrit.com is identical or confusingly similar to the trademark STARFRIT. The panel therefore finds that the test of paragraph 4(a)(i) of the ICANN Policy has been satisfied.
b. Rights or Legitimate Interests
5.5 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.
5.6 In view of all the evidence before it, the panel finds that Complainant has met its burden of proof. It is appropriate to draw an adverse inference from Respondent's failure to reply to the Complaint and to articulate its rights or legitimate interests in the domain name starfrit.com. Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a right to or legitimate interests in these domain names. Although the human mind is often said to be without bounds, to think that Respondent might have come to coin the word STARFRIT without any knowledge of, or influence from, Complainant's trademark would require from this panel an exercise in magical thinking that it is not prepared to make. Accordingly, the panel accepts the statements of Complainant that Respondent has no such rights or interests. The panel therefore finds that the test of paragraph 4(a)(ii) of the ICANN Policy has been satisfied.
c. Bad Faith Registration and Use
5.7 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. In particular, paragraph 4(b)(iv) provides this circumstance of bad faith: "by using the domain name, [a registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location."
5.8 In view of all the evidence before it, the panel finds that Complainant has met its burden of proof. The panel finds that Complainant has demonstrated that Respondent, by registering and using the domain name starfrit.com, was intentionally attempting to attract, for commercial gain, internet users to the baise-moi.com web site by creating confusion with the trademark STARFRIT of Complainant. The panel further finds that in doing so, Respondent has created a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. Given Complainant's allegations that the sponsorship and/or endorsement of the activities found on said web site of baise-moi.com cause grave harm to Complainant, the panel considers it appropriate to draw an adverse inference from Respondent's failure to reply to the Complaint on this point. The panel therefore finds that the test of paragraph 4(a)(iii) of the ICANN Policy has been satisfied.
For the above reasons, the panel concludes that Complainant has proven all three elements set forth in paragraph 4(a) of the ICANN Policy and that the remedy sought should therefore be granted. Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the panel orders the domain name starfrit.com to be transferred to Complainant.
MONTREAL (Quebec), Canada, September 8, 2000.
(s) Jean-François Buffoni