ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: LE GROUPE VIDEOTRON, LTÉE.
Respondent: MR. ALEXANDER SAVELYEV
Case Number: AF-0451
Contested Domain Name: videotron.tv
Panel Member: David Lametti
 

 

1. Parties and Contested Domain Name

The Complainant is Le Groupe Videotron, Ltée., a company based in Canada, and whose office is located in Montreal, Quebec, Canada. The Respondent is Mr Alexander Savelyev , a resident of Montreal, Quebec, Canada. The contested domain name is videotron.tv; the Registrar is dotTV.

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on September 22, 2000. The hardcopy of the Complaint Form was received on September 29, 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 led the Clerk's Office of eResolution to the following conclusions: the Registrar is dotTV, the Whois database contains all the required contact information but the billing contact, the contested Domain Name resolves to an inactive 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 September 25, 2000. The requested information was received October 3, 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 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 October 4, 2000. That date is the commencement date of the administrative proceeding.

On October 4, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

On October 5, 2000, the Clerk's Office received a message from the domain name holder, Mr. Alexander Savelyev. The Clerk's Office replied the same day. The Respondent had actual notice of the Administrative proceeding.

On October 25, 2000, the Respondent still had not submitted any response.

On October 26, 2000, the Clerk's Office contacted me, David Lametti, and requested that I act as panelist in this case.

On October 30, 2000, the Respondent requested a five-day delay in order to respond.

On October 30, 2000, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On October 30, 2000, the Clerk's Office forwarded a user name and a password to me, David Lametti, allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On October 30, 2000, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 13, 2000.

Immediately after I was empanelled, I dealt with the request of October 30, 2000 from the Respondent for a five-day extension such that he could file a response. The request was rejected on 1 November 2000, and the parties were notified on that same date. The reasons for that preliminary ruling are appended to this decision.

3. Factual Background

The Complainant, Le Groupe Vidéotron, Ltée, [Videotron] a Canadian based company, located in Montreal, Quebec owns various trade-marks, including the well-known trade-mark VIDEOTRON that is used and registered in several countries ,and used mainly in connection with telecommunication and multimedia services and products. Videotron is, at the present time, the largest cable television company in Quebec in terms of number of subscribers. It has a broadband network that reaches more than 2.3 million homes, and offers various interactive television services, pay TV and pay-per-view, as well as high-speed internet access. Videotron is also is a leading telecommunication service and content provider in Canada and in the United States, under the trade-mark and trade-name VIDEOWAY, and is now attempting to expand its activities to various aspects of electronic publishing, including television content webcasting. In addition, Videotron and TVA Group Inc. created infinit.com in 1999 and acquired a majority share of Netgraphe, Canada's leading French-language internet publisher, and owner of La Toile du Québec, the most popular portal in Quebec. It was also recently the subject of an unsuccessful, high-profile takeover bid by Rogers Communications Inc. and a later successful takeover by Quebecor, Inc.

The Respondent registered the domain name videotron.tv on April 5, 2000 [Whois search of dotTV register]. Using annexes 5-8 (Documents D003277-3280), I have reconstructed the events subsequent to that registration chronologically as follows:

On June 17, 2000, the Respondent sent an email to Videotron's general email address notifying Videotron that the domain name had been "reserved" for the company by the Respondent.

On June 26, 2000, a Videotron representative sent what appears to be a standard response to customer inquiries, asking the Respondent to phone Videotron to speak to a service representative. The Respondent replied that same day, saying he did not want service, but was "offering" a domain name to the Complainant.

On July 12, 2000, the solicitor for Videotron, Me Hugues Richard, sent a "cease and desist" letter to the Respondent, and asking the Respondent to transfer the domain name to Videotron. The Respondent replied to Richard by email on July 12, 2000, including copies of previous emails to the general Videotron email address, saying he was doing Videotron a favour. Richard responded via email on July 17, 2000, asking how much the Respondent wanted for the transfer.

There appears to have been a telephone conversation between the Respondent and Richard on July 18, 2000, a fact admitted by both parties in subsequent email correspondence. Richard's email response to the conversation on July 27, 2000 was to ask the Respondent to confirm the amount of $1000 claimed as registration costs incurred by the Respondent in registering the domain name. Richard also asked that the Respondent confirm that a non-identified party had made an initial oral offer of $10,000 CDN as a transfer price, which was not accepted by Richard, and then the party subsequently reduced the offer to $5000 CDN. Respondent, in an email response that same day, vehemently denied the offer/reduced offer scenario, claiming that he was expecting only the $1000 in costs and "thinks" [sic]. He also reminded Richard that he, the Respondent, owned the domain name videotron.tv.

A final exchange of emails began on July 28, 2000. Richard responded to previous day's message by asking how much the Respondent wanted for the transfer. The Respondent asked for $5000 in expenses. Richard asked for documentation of these expenses on July 31, 2000. The Respondent claimed to have the documentation "just in case". Richard repeated his request for particulars such that his client could evaluate the costs.

The complaint was filed with eResolution on September 22, 2000.

4. Parties' Contentions

The Complainant alleges:

1.That the domain name videotron.tv is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, as per Policy paragraph 4(a)(i).

The gist of the complaint is that Videotron is a well known trademark, having the lion's share of the Quebec cable market. The Complainant owns or has applied for nine registered trade and service marks in Canada, and two in each of the United Kingdom and Barbados, all involving the mark VIDEOTRON or other related marks, and all in connection with telecommunication and multimedia services. The Complainant also points out its increased profile as a result of competing take-over bids by high-profile Canadian media companies, as well as its attempt to gain a larger share of internet service and content provision.

The Respondent's registered domain name videotron.tv, with the exception of the ccTLD "tv", is identical to Videotron's most well known trademark.

The Complainant invites me to draw analogies from Canadian and US trademark provisions, to recent cybersquatting legislation in the latter jurisdiction, as well as to the common law action of passing off and to the general provisions of civil liability under the Civil Code of Quebec.

2. That the Respondent has no rights or legitimate interests in the domain name, as per Policy paragraph 4(a)(ii).

The Complainant alleges that the Respondent's behaviour indicates that he never had any legitimate interest in the name or any legitimate intent to use the "videotron" name. Rather the Respondent registered the name by his own admission to do Videotron a service (by allowing the company to avoid auctions and other troubles) as well as to profit by selling the name to Videotron. The Complainant infers that if the Respondent merely wanted to help Videotron, he would have responded favourably to the "cease and desist letter" and transferred the name.

This is supported by the fact that "videotron" is a fanciful name in either French or English, Canada's two official languages, and as a word has no relation to anything except the Complainant's business.

3. That the Respondent registered the name in bad faith, as per Policy paragraph 4(a)(iii).

The Complainant's argument here, in essence, has two prongs. First, it is argued that the Respondent's behaviour demonstrates clearly that he registered the name with every intention to sell the name to Videotron for a profit. The amounts allegedly requested for transfers, the amount of claimed costs, as well as the failure to respond positively to the "cease and desist" letter, is evidence of bad faith. This is said to demonstrate that the Respondent's intention was to register the domain name in dispute primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant.

Second, the Complainant effectively asks the Panel to infer bad faith given the presence of a what is in trademark terms known as a "strong mark" i.e. a mark that is unique, has attained widespread recognition and has accumulated large degree of good will over time. This is especially true in Quebec where both parties are domiciled. Moreover, this is reinforced, it is argued, where the domain name and the trademark are effectively identical. Previous decisions, two decided under the ICANN Rules and Policy and one under the common law, are offered in support of this reading.

As noted above, the Respondent did not file a response on time, and offered no support for exceptional circumstances meriting an extension of time limits for filing (see annexed decision.).

5. Discussion and Findings

It is well established that these proceedings can go ahead despite the Respondent's failure to file a response. The ICANN rules envisage this possibility. The ICANN Rules and Policy allow such proceedings to proceed, but still require that the Complainant bear the burden of proving the complaint in the absence of a response. However, the Panel is allowed to infer whatever is appropriate from the absence of any failure to follow the ICANN Rules or Policy - including a failure to respond - according to the ICANN Rules paragraph 14(b). I need not draw any such inferences here, however, as the facts before me are sufficient to decide the matter.

Identical or Confusingly Similar

The mark VIDEOTRON is a strong mark, being a fanciful term and having been registered in Canada since 1983. Videotron itself is a high-profile company, which is a household name in Quebec. It is an inescapable conclusion that the domain name videotron.tv, a name is effectively identical to the trademark, is at the very least confusingly similar. Moreover, a great deal of its reputation - and perhaps most of it - comes from providing cable TV services in the province of Quebec; adding ccTLD ".tv" only serves to reinforce this image, and either the shared identity or the confusion of the mark and the domain name.

This degree of similarity in its geographical context easily suffices for the requisite standard of confusion envisioned by the ICANN Rules. While not necessary to do so, this decision also gains support by reference to trademark standards found in either Canadian or US statutory law, or the common law of passing off, which also applies in Canada and Quebec. If such a domain name were to be used on a website or in advertising, the average internet user/consumer would immediately conclude that the domain name was owned by Videotron. At the very least, it would depreciate the goodwill of Videotron and its trademark.

The Panel thus concludes that the Complainant has proven the requirements of Policy paragraph 4(a)(i).

Rights or Legitimate Interest

The second question is slightly more difficult. Here the Panel must decide whether the Respondent has a legitimate interest in the name "videotron". The ICANN Policy paragraph 4(a)(ii) gives three examples of circumstances where there is a legitimate interest. The examples pertain to the offering of services, or to a legitimate non-commercial use of the name. While there is no response filed, it is clear from the Respondent's email exchanges with the Complainant and its lawyer that the Respondent has not made use of the name in any way for the provision of any kind of commercial or non-commercial service, let alone one that is legitimate (i.e. one that was not in and of itself an infringement of trademark). It is also clear from the exchanges that the Respondent never had any such purpose; rather, at best, he was trying to do the Complainant a favour. This purpose, in and of itself, is not in my view a legitimate interest in the name. In any event, even if true, the Respondent should have transferred the domain name on the receipt of the "cease and desist" letter, if not earlier and asked for only his actual costs (with documented receipts). As shown in Annex 9 (D003281), he was asking for much more than $100 US dotTV registration fee. Moreover, it was the Respondent who first approached the Complainant with an "offer".

In addition, it is virtually impossible to conceive of any legitimate interest, that any Montrealer -- francophone, anglophone or allophone -- other than the Complainant could have in such a well known and fanciful name as "videotron". As a name, it is too well established, too well known and too unique to be given any other use in Quebec or even Canada, let alone one even nominally related to the internet.

The Panel thus concludes that the Complainant has met the requirements of Policy paragraph 4(a)(ii).

Bad Faith

The Complainant's allegation falls under the rubric of paragraph 4 (a)(iii), according to the various criteria articulated in paragraph 4(b): in particular the criterion of paragraph 4(b)(i), that that the registration was undertaken primarily with purpose of selling the name to the Complainant. As set out above, the Complainant in effect first alleges that the Respondent's behaviour is itself evidence of bad faith and, secondly, that we could infer bad faith from the fact that VIDEOTRON is such a strong mark.

Regarding the first claim, paragraph 4(a)(iii) seems to imply that both registration and use are necessary for a finding of bad faith. Hence one might argue in this case that there was no actual use of the domain name, the criteria listed in paragraph 4(b) make it perfectly clear that any of the enumerated examples (as well as others, since the list is not exhaustive) constitute acts of bad faith. As such, it is clear from paragraph 4(b) that the "and" in paragraph 4(a)(iii) must be read disjunctively since at least one of the examples in paragraph 4(b) (and possibly three of the four examples) refer only to registration and not use.

With respect to the behaviour of the Respondent, one must begin by noting that from the evidence it is clear that the Respondent did not have any intention of using the name other than to sell to the Complainant. The Respondent approached Videotron, quite out of the blue, offering the domain name and pointing out how the new "tv" ccTLD might be important to Videotron. Regarding costs, the Respondent claimed costs much higher than the cost of registration, namely $1000 and later $5000 CDN. This latter figure seemed to have come after a telephone conversation where the Complainant alleges the same figure as a counter-offer to a rejected higher asking price. In both cases, the figure was unsubstantiated, and the Complainant has shown the actual registration cost with dotTV to be $100 US. This evidence is enough in my view to make a finding of bad faith on the part of the Respondent. While the Complainant's allegation of an initial oral offer by the Respondent of $10,000 CDN for transfer seems plausible, I need not rule on it to make a finding of bad faith.

With respect to inferring bad faith from merely the registration of a strong trademark, I agree with the Complainant's contention that such might be a possibility in some cases. The listing of examples of bad faith in paragraph 4(b) is not exhaustive. A strong trademark, where unique because of its coined origins or well known or longstanding reputation and accumulated goodwill, might effectively preclude any legitimate or good faith registration or use. I believe such is the case in this dispute; no one presently domiciled in Quebec can possibly envisage using "videotron" in good faith. The authorities offered in this regard by the Complainant, while not binding, are certainly persuasive. I would only offer a word of caution in allowing such conclusions in future: one must be careful not to unwittingly shift the burden of proof in the resolution of these disputes. In my view, the burden of showing that a trademark is so strong in a particular jurisdiction or geographical area such that it automatically constitutes bad faith to merely register a similar name ought to remain with the complainant.

The Panel thus concludes that the Complainant has met the criterion of Policy paragraph 4(b)(i) and thus the requirements of Policy paragraph 4(a)(iii).

6. Conclusions

The panelist concludes:

1. That the domain name videotron.tv is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. That the Respondent has no rights or legitimate interests in the domain name; and

3. That the Respondent has registered the domain name in bad faith.

Therefore, pursuant to paragraphs 4(i) of the Policy and the section 15 of the Rules , the Panel orders that the domain name videotron.tv be transferred to the Complainant.

7. Signature

Date: November 13, 2000 Montreal , Canada

(s) David Lametti

Presiding Panelist

Appendix: Ruling in Preliminary Matter

Date sent: Wed, 01 Nov 2000 16:42:26 -0500
From: Eresolution Admin E-mail Eresolution@eResolution.com
Subject: FW: AF0451/videotron.tv/Preliminary issue
To: "David Lametti (E-mail)"

Dear Sir,

Please find below the message I just sent to both Parties regarding your
preliminary issue.

Regards.

Clerk's Office

-----Original Message-----
From: Eresolution Admin E-mail
Sent: November 1, 2000 4:41 PM
To: Respondent'; 'Complainant'
Subject: AF0451/videotron.tv/Preliminary issue


To both Parties,

Please find below the Panel's preliminary issue regarding the extension
requested by the Respondent.

For further information, please do not hesitate to contact the undersigned.

Regards.

Case Administrator/Administrateur de dossiers
eResolution - Integrity online
clerk@eresolution.com
www.eresolution.com

4200, boul Saint-Laurent, suite 711
Montreal, Quebec,
H2W 2R2, CANADA
tel: (514) 908-2900
fax: (514) 908-2901

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Dear eResolution Clerk:

I have considered the Respondent's request for an additional 5
days to file a response in eResolution case AF0451 (domain name:
videotron.tv).

According to the ICANN Rules, section 5(e), "If a Respondent does
not submit a response, in the absence of exceptional
circumstances, the Panel shall decide the dispute based upon the
complaint."

The Respondent is required by this provision to demonstrate
"exceptional circumstances". This has not been done. The
Respondent confirmed notification of the initiation of this procedure
on 5 October 2000, and asked for the extension on 30 October
2000. The Respondent in my view is required to show that
exceptional circumstances prevented him from responding
throughout that time period. Only one unsubstantiated assertion
has been made, and no evidence has been adduced that the
circumstances were in any way exceptional. In these
circumstances, ICANN Rules require the proceeeding to go ahead
with only the Complainants's submission.

Respondent should note that even without a response, the
Complainant at all times shall bear the burden of proving the
substance of the complaint according to the various criteria set out
in the ICANN Policy and Rules.

David Lametti
Montreal, 1 November 2000