ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
BLUE WAVE PRODUCTIONS LTD.
POWDER BLUES LTD.
(b) Contested Domain Name
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on November 22, 2000. The hardcopy of the Complaint Form and annexes were received on December 21, 2000. Payment was received on December 1st, 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 essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions Inc, 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 obtain confirmation and a copy of the Registration Agreement on November 22, 2000. The requested information was received on November 27, 2000.
The Clerk 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. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on December 21, 2000. This date is the official commencement date of the administrative proceeding.
All emails to the postmaster@powderblues and to the administrative and technical contacts were delivered. All the faxes were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
Or The Respondent did not submit a Response neither via eResolution's website nor a signed version.
On January 15, 2001, the Clerk's Office contacted Mr. Frank Long, and requested that he acts as panelist in this case.
On January 17, 2001, Mr. Frank Long, accepted to act as panelist in this case. On January 22, 2001, Mr. Long filed the necessary Declaration of Independence and Impartiality.
On January 22, 2001, the Clerk's Office forwarded a user name and a password to Mr. Frank Long, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On January 22, 2001, the parties were notified that Mr. Frank Long had been appointed and that a decision was to be, save exceptional circumstances, handed down on February 6, 2001.
3. Factual Background
a. A band known as the Powder Blues, formed in 1978, and has performed and been on the airwaves all over the world. See Complaint, Exhibit C.
b. Band first used the name Powder Blues in public in May of 1978 and filed for a trademark in March of 1983. See Complaint, Exhibit C.
c. A current national registration of POWDER BLUES as a trademark for goods and services, namely clothing and musical entertainment respectively. See Complaint , Exhibit A.
d. Band representative applied for, and was granted, the domain name POWDERBLUES.COM. See Complaint, Exhibit C.
e. The domain name went unregistered briefly. Complainant failed to renew the registration upon its expiration. See Complaint, Exhibit C.
f. The owner of the contested domain name is a company, located in the United Kingdom and currently doing business under the name "Powder Blues, Ltd." See Complaint, Exhibit B.
g. The "current domain name holders [is] . . . using the name powder blues for their clothing wares . . . ." See letter of December 11, 2000, attached to the Complaint.
h. Current owner of URL refused Complainant's letter request to transfer the domain POWDERBLUES.COM in exchange for POWDERBLUES.NET. See Complaint, Exhibit C.
4. Parties' Contentions
a. Contested Domain Name(s), Registrar(s)
Domain Name: powderblues.com
Registrar: Network Solutions, Inc.
b. Mark in Question and Other Goods and Services
* Mark in Question
APPLICATION NUMBER: 0500507
REGISTRATION NUMBER: TMA291918
STATUS: REGISTERED FILED: 1983-03-18
REGISTRANT: Blue Wave Productions Ltd., 60-2182 West 12th Avenue, Vancouver, V6K 2N4 British Columbia
REPRESENTATIVE FOR SERVICE: Carver and Company, 3000 Royal Centre, P.O. Box 11130, 1055 West Georgia Street, Vancouver British Columbia V6E 3R3
TRADEMARK: Power Blues
DISCLAIMER TEXT: The right to the exclusive use of the word BLUES is disclaimed apart from the trademark.
WARES: T-shirts, sweatshirts, jackets, hats and buttons.
SERVICES: Musical band entertainment services.
CLAIMS: used in CANADA since at least as early as May 1978 on wares. Used in CANADA since at least as early as 1978.
ACTION DATE BF COMMENTS filed 18 March 1983 Registered 15 June 1984 Renewed 15 June 1999
DP: 1999/06/25 RD: 1999/06/14 Agent name changed 25 January 2000 Rep for service name changed 25 January 2000.
* Other goods and services
c. Grounds on which the complaint is made
*Copy or Similarity
Complaint: "The contested domain name is the same as our registered trade mark. We had the domain name until it lapsed due to an oversight."
Complaint: Letter attached as Exhibit C states, in pertinent part:
1. A band known as the Powder Blues, formed in 1978, and has performed and been on the airwaves all over the world.
2. Band first used the name Powder Blues in public in May of 1978 and filed for a trademark in March of 1983.
3. Band representative applied for, and was granted, the domain POWDERBLUES.COM.
4. The domain went unregistered briefly.
5. Current owner of URL refused Complainant's letter request to return the domain POWDERBLUES.COM
Complaint: "When our ownership in the domain name "PowderBlues.Com" lapsed due to an oversight, the Respondent registered the same domain name so as to benefit from the international good will which we have developed in the name over the years. Their use of the domain name will confuse the public that they are connected with the Powder Blues and its associated wares."
d. Related Matters
*Remedy Sought: Transfer to complainant
*Other Proceedings: None
5. Discussion and Findings
Policy Applied and Evidence Considered
In any mandatory administrative proceeding under the ICANN Uniform Domain Name Dispute Resolution Policy, "the complainant must prove that each of th[e following] three elements are present":
(1) the contested "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights";
(2) the owner of the contested domain name has "no rights or legitimate interests in respect of the domain name"; and
(3) the contested "domain name has been registered and is being used in bad faith."
See Uniform Dispute Resolution Policy, adopted August 26, 1999, approved October 24, 1999, section 4(a).
In evaluating whether these factors exist, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") require the panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." See Rules as approved by ICANN on October 24, 1999, § 15(a).
In this case, the only "statements and documents submitted" by either party have been submitted by the complainant. The Clerk submitted the complaint and all related documents to the respondent and confirmed their delivery. Nonetheless, the respondent failed or refused to respond. See Procedural History above.
The respondent's failure or refusal to submit any evidence does not preclude this panel from deciding this dispute. Rather, the respondent's inaction leaves the panel in a position of deciding this matter based on complainant's submissions, the Rules and any applicable rules and legal principles. As far as the respondent's inaction is concerned, the Rules provide that: "In the event that a Party, in the absence of exceptional circumstances, does not comply with any provision of or registrant under these Rules or any request from the panel, the panel shall draw such inferences therefrom as it deems appropriate." See Rules § 14(b).
Copy or Similarity
As regards the first element required for relief in this case, the Policy is silent on the facts and circumstances to be considered by the panel in assessing this element of proof.
In its review of the complainant's submission, the panel observed that the contested domain name "powderblues.com" is identical to a trademark in which the complainant holds a current registration in Canada for goods and services, namely clothing and musical entertainment respectively. See Exhibit A to the complaint.
As uncontested evidence of national trademark rights, the registration establishes that the complainant has rights in a trademark identical to the contested domain name. Therefore, the panel finds that the complainant satisfies the first element of proof required for the requested relief.
As regards the second element required for relief in this case, the Policy states that, to determine whether the owner of a contested domain name can "demonstrate . . . rights or legitimate interests to the domain names for purposes of [this element of proof]," the panel may evaluate "all evidence presented," with particular regard to whether:
(i) "before any notice to [the contested-domain-name owner] of the dispute, [the contested-domain-name owner] 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) "[the contested-domain-name owner] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the contested-domain-name owner] ha[s] acquired no trademark or service mark rights; or"
(iii) "[the contested-domain-name owner] [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."
See Policy, § 4(c).
In its review of the submissions by the complainant in this case, the panel observed that complainant's own submissions indicate that the owner of the contested domain name appears to have both a trade name and a trademark identical to the contested domain name. The owner of the contested domain name is a company, located in the United Kingdom and currently doing business under the name "Powder Blues, Ltd." See Complaint, Exhibit B. Furthermore, complainant's letter of December 11, 2000, also attached to the complaint, refers to "the current domain name holders [sic]. . . using the name powder blues for their [sic] clothing wares . . . ."
In this case, the complainant's own submissions establish that the owner of the contested domain name either has used, or is prepared to use, the name in connection with genuine trade activities or has used the name to identify itself. Therefore, the panel finds that the complainant failed to establish that the owner of the contested domain name has no rights or legitimate interest in respect of the contested domain name.
As stated in the Policy, proof of each element is required for relief under the Policy and the complainant bears the burden of proof on each element. See Policy § 4(a). In this case, the complainant failed to establish that the second of the three required elements is present. Therefore, the complainant is precluded from obtaining relief under the Policy, whether or not the evidence is sufficient to prove that the contested domain name was registered and is being used in bad faith. Accordingly, the panel need not examine the complainant's evidence, submitted as proof of the third element.
Complainant's request for relief is denied.
February 6, 2001
(s) Frank G. Long