ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Names
The Complainant is Bata Limited of Toronto, Ontario (Canada). In its Complaint, filed online with eResolution on July 21, 2000, Bata Limited sought the transfer of the domain names powershoes.com, powershoes.net and powershoes.org registered in the name of Virtuality LLC of Orion, Michigan (USA).
2. Procedural History
The electronic version of the Complaint Form was filed on-line through eResolution's Website on July 21, 2000. The hardcopy of the Complaint Form was received on July 26, 2000. Confirmation of payment was received on July 27, 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: on July 21, 2000 the Registrars were Alabanza Inc. and Network Solutions, Inc., their Whois databases contain all the required contact information except the billing contact, the contested Domain Names resolve to active Web pages 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 July 24, 2000. The requested information was received from Alabanza Inc on July 25, 2000. (for powershoes.net & powershoes.org)
However, by July 28, 2000 Network Solutions Inc. was no longer one of the Registrars. The Registrar for all three domain names as of this date is Alabanza Inc. A second e-mail was sent to Alabanza Inc. to obtain a copy of the Registration Agreement (in powershoes.com) on July 28, 2000. The requested information was received on August 1, 2000.
The Clerk's Office proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on August 2, 2000. That date is the commencement date of the administrative proceeding.
On August 2, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
All the emails were returned 'undeliverable'. The faxes were successful.
The complaint, official notification and all the annexes were sent via UPS to the Respondent. According to the UPS tracking system, all were delivered.
The Respondent submitted an electronic and a signed version of his response on August 22, 2000. The response was one day late. The Respondent's representative has been advised that his response is late and that he will have to request permission to present arguments as to the validity of the late response.
Between August 23, 2000, and August 28, 2000 the Clerk's Office contacted two other panelists, and requested that they act as panelist in this case. Neither was available at this time.
On August 28, 2000, the Clerk's Office contacted Mr. Riccardo Roversi, and requested that he act as panelist in this case.
On August 29, 2000, Mr. Riccardo Roversi accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On August 29, 2000, the Clerk's Office forwarded a user name and a password to Mr. Riccardo Roversi allowing him to access the Complaint Form and the evidence through eResolution's Automated Docket Management System.
On August 29, 2000, the parties were notified that Mr. Riccardo Roversi had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 11, 2000.
On September 1, 2000, lead panelist informed the Clerk's Office of its decision to allow the late filing of the response. On September 11, 2000, lead panelist exercised his power to prorogate the term for rendering the final decision until September 18, 2000.
3. Factual Background
Bata Limited is a Canada-based company leading an organization with associated companies in 70 different countries. Bata Limited operates in the field of manufacturing and marketing sports shoes and sportswear.
In the course of its business, Complainant registered the "power" trade mark in a number of countries, filing a total of 423 applications regarding the "power" trade mark alone or in connection with other words (see Annex 1 to Complaint Form).
According to Complainant's statements, Complainants first used the trademark "power" in commerce on December 1, 1972 and claimed priority accordingly when it registered the trademark in question in the United States, on October 28, 1975.
Bata Limited further states that it has used and is presently using the trade mark "power" primarily in respect of shoes and also in respect of clothing, sporting articles and shoes accessories.
Complainant has registered the domain name "powerfootwear.com", which resolves to an active web site where "power" is presented as a part of the Bata organization, which claims to be the world's largest shoe company.
Virtuality is an organization which, according to the same Respondent's statements, is focused on "Internet / Web Development and Marketing, Television Production and Virtual Reality Technology" (see Annex 2 to Response Form). Respondent filed, together with its response, a document denominated "business plan" (see Annex 2 to Response Form). On September 29, 1999 Respondent registered the domain names being the subject of this procedure.
4. Parties' Contentions
(i) Copy or Similarity
Complainant states that the domain names in question are confusingly similar to its trademark "power" since the same has been used by Complainant itself to market shoes since 1972. Complainant further remarks that the domain names registered by Respondent are confusingly similar to its domain name powerfootwear.com.
Respondent challenges Complainant's claim stating that the domain names in questions are not "sufficiently similar" to the registered trademark "power".
As far as illegitimacy is concerned, Complainant remarked that Respondent has no legal or contractual right to make use of the domain names powershoes.com, powershoes.net and powershoes.org. Complainant further underlines that Respondent is not making any use of the domain names in question.
Respondent's position is based on the assumption that Complainant does not have the exclusive right to use the trademark "power". This assumption is, in turn, based on the circumstance that the term "power" is very general and it has been used as a trademark by a number of businesses.
(iii) Bad Faith
In Complainant's opinion Respondent registered and is using the domain names in bad faith. In particular, Complainant states that Respondent's behaviour falls within the scope of application of:
- article 4(b)(i) of the ICANN Uniform Dispute Resolution Policy since Respondent expressly stated that it is ready to allow Complainant's use of the domain names against payment of a consideration,
- article 4(b)(ii) since Respondent has registered more than 50 domain names with Network Solutions Inc., including domain names reflecting famous trade marks as "Dodge", "Linux", "Sears" and "CBS";
as well as of article 4(b)(iii) and article 4(b)(iv) of the Policy.
Respondent replied, inter alia, that:
- Complainant has no legal right to use the name "powershoes";
- it was not aware of the existence of Bata Ltd until this procedure has been started;
- the domain names in question are "fanciful names", being used in conjunction with an internet - based service business and they are not being offered for sale;
- it is not involved in the activity of selling, or otherwise transferring, domain names for a profit and that all domain names registered by the same Respondent and mentioned by Complainant are in fact registered in conjunction with the word "now".
5. Discussion and Findings
This procedure is regulated by the ICANN Uniform Domain Name Dispute Resolution Policy and by the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). According to article 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), Complainant must submit evidence confirming that in a specific case all of the following three elements are present:
(i) that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights (Copy or Similarity); and
(ii) that respondent has no rights or legitimate interests in respect of the domain name (Illegitimacy); and
(iii) that the domain name has been registered and is being used in bad faith (Bad Faith).
Parties submissions and evidence relating to each of the above three elements will be dealt with in the following paragraphs.
(i) Identity or Similarity
Lead panelist is of the opinion that the domain names in question, although not identical, are certainly confusingly similar to the Complainant's trademark "power".
Complainant gave evidence of registration of said trademark in a very large number of countries. It further stated that this trade mark has been used in connection with the business of selling shoes since 1972 and that Bata is the largest shoe manufacturer in the world, selling more than 5 million pairs of shoes each year and thus having considerable goodwill in the same. Respondent did not dispute the above circumstances and the same should therefore be considered as proven.
Respondent's only argument is that Complainant did not register the "powershoes" or "power shoes" trade mark and, as a consequence, may not claim any right with respect to the domain names in question.
The question to be answered is, therefore, whether the holder of a registered trade mark has the right to prevent third parties from making use of that trade mark in connection with one or more other words which however, when used together, bring to mind the core business in respect of which the trade mark was registered and has been used.
As far as this question is concerned, and on the facts, lead panelist is of the opinion that the holder of a trade mark has such right, subject to its ability to prove that its goodwill is, at least partially, related to the trade mark and that the current registrant has built no substantial goodwill on the domain name in question. Where such evidence is given, the similarity test should be applied more widely in order to guarantee a proportionate protection to the trade mark and related goodwill (in this sense lead panelist cites America Online v. QTR Corp, case no. FA0001000092016 and Yahoo! Inc. v. Eitan Zviely, Case No. D2000-0273).
Lead panelist further holds that the above conclusion is further supported by the reference to the concept of "confusion" as far as similarity is concerned. While similarity is an objective test, the addition of the concept of "confusion" leads to the consideration of the effect on the market and, in turn, of the awareness in the public of the trademark.
By way of example, the approach suggested would permit to consider as 'confusingly similar', respectively, to "Microsoft" or IBM's "Aptiva" trade marks, new domain names like "microsoftgames" or "aptivacomputers" as the additional element in the domain name relates to the trademark owner's business.
On the facts, the domain name powershoes is a combination of the Complainant's registered trade mark and a word that clearly relates to the class of goods for which such mark was registered by Complainant, and in which Complainant has undisputed goodwill, while Respondent has certainly not presented evidence of any goodwill in the domain names.
Complainant has presented prima facie evidence of Respondent's lack of legitimate right or interest in the domain names in question. In particular, Respondent is not trading in shoes, its website was not activated before Complainant first informally disputed the registration, and no licence contract has ever been entered into by the parties.
As a consequence, the burden of proof of the legitimacy element passes to Respondent in accordance with paragraph 4(c) of the Policy (see Spincycle Inc. v Spin Cycle, case no. AF-0176).
Lead panelist holds that Respondent failed to submit evidence of its legitimate interest or right in the domain names. More specifically, Respondent is not known by the domain names as it expressly recognizes that its activity started very recently and the same will be advertised under the name of "The Now Corporation".
As far as the cases mentioned in paragraph 4(c)(i) and (iii) of the Policy are concerned, they require the joint evaluation of the existence of the bad faith element and, as a consequence, will be dealt with below.
(iii) Bad Faith
Bad faith registration and use are proven (also) where any one of the four circumstances listed in paragraph 4(b) of the Policy exists. Lead panelist holds that bad faith is proven by Respondent's statement in its business plan (see Annex 2 to Response Form) that it has acquired "a large amount of internet real estate TLDs" and that "these site would be leased to our customers, in part or in whole, and would only be sold under extreme circumstances".
This statement satisfied the bad faith requirement which refers not only to sale but also to "selling, renting or otherwise transferring" domain names.
As lead panelist stated in Consorzio Tutela del Formaggio Grana Padano v. Colombi (case no. AF - 0252), the circumstance that the domain names were registered and have been used in bad faith inevitably implies that Respondent may not claim to have legitimate interest or right in the domain names according to paragraph 4(c)(i) or (iii) of the Policy since both these provisions require the good faith of registrant.
For the above reasons, lead panelist holds that Complainant proved all three elements requested by the Policy and consequently orders that the domain names powershoes.com, powershoes.net and powershoes.org be transferred to the Complainant.
Signed on this 20th day of September 2000 in Milan by the lead panelist Riccardo Roversi