ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Cara Operations Limited, 6306 Airport Road, Mississauga, Ontario, Canada. The Respondent is Wave Comunicaciones, C.A., an entity giving an address at Terraza A Del Club Hipico, Edificio Ocamo, Apt 12b, Caracas, Distrito Federal, Venezuela. The contested domain name is swisschalet.com. The domain name at issue is registered with Network Solutions, Inc. in Herndon, Virginia, United States of America.
2. Procedural History
The Complaint in this matter was filed on-line through eResolution's website on December 6, 2000. The hardcopy of the Complaint Form and annexes were also received on that date, as was payment in the prescribed amount for a single member panel.
The Clerk at eResolution confirmed the identity of the Registrar for the contested domain names, verified the Registrar's Whois Database and confirmed all the essential contact information for the Respondent, verified that the contested domain name resolved to an active website and verified that the Complaint was administratively compliant. The Clerk at eResolution sent an email to the Registrar and requested a copy of the Registration Agreement for the disputed domain name, which agreement was received on December 11, 2000.
On December 13, 2000, the Clerk transmitted 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 "Uniform Rules"). This date is the official commencement date of the administrative proceeding.
On December 19, 2000, the Respondent requested an extension in which to file the Response form. On December 20, 2000, the Clerk granted an extension until January 5, 2001.
On January 4, 2001, the Respondent sent eResolution a hardcopy of the Response form. Despite requests from the Clerk, Respondent failed and refused to transmit the Response electronically. Respondent was notified that it was in default, absent a ruling otherwise from the Panel.
On January 17, 2001, the Clerk contacted Scott Donahey and requested that he act as Panelist in this case. On January 19, 2001, Scott Donahey accepted the position and filed the necessary Declaration of Independence and Impartiality. On January 22, 2001, the parties were notified that Scott Donahey had been appointed and that a decision was to be, save exceptional circumstances handed down on February 5, 2001. On January 23, 2001, the Panel ruled that the Response, even though not submitted in electronic copy as required and repeatedly requested, would be received.
On January 29, 2001, the Panel received a request from the Complainant to add additional Respondents. Because the registrant of the domain name was already a respondent, and because the only relief available against a respondent is the transfer or cancellation of the domain name at issue, Complainant's request was denied.
3. Factual Background
Complainant is the owner of numerous trademarks and service marks for the mark SWISS CHALET. The mark was first registered in Canada in 1967 in connection with food for human consumption and related restaurant items, and has since been registered in the United States (December 22, 1992), the United Kingdom (June 10, 1982), the Soviet Union (June 9, 1993), Japan (August 31, 1993), and several other countries. Since the 1950's, Complainant has used the marks in signage and advertising to promote its restaurant business in Canada and elsewhere. Complainant operates 181 restaurants in the United States and Canada specializing in rotisserie chicken and ribs under the SWISS CHALET mark. This includes 135 SWISS CHALET restaurants in Ontario alone, and ten within the Ottawa/Kanata region, including one in Kanata proper.
The domain name at issue was registered on December 21, 1999, by an entity named Impreshun.com, located at 10 Stokes Crescent, Kanata, Ontario, Canada. On April 6, 2000, Impreshun.com emailed the Complainant, identified itself as the broker for an unnamed owner, and offered to lease, rent, or otherwise transfer the use of the domain name to Complainant. Complaint, Annex 5. The sender of the email was identified as Allan J. Grimard, President & CEO of Impreshun.com. Sometime between April 14, 2000, and May 10, 2000, Impreshun.com transferred the domain name at issue to Respondent, and on May 10, 2000, documents requesting transfer of the registration were submitted to Network Solutions. The transfer request document identifies Allan Grimard as both the owner of Impreshun.com and the owner of Wave Comunicaciones, C.A. Response, Annex 6.
After having tried unsuccessfully to contact Mr. Grimard by email and telephone, on May 26, 2000, Swiss Chalet contacted Mr. Grimard by email and requested that he cease and desist use of the domain name at issue and either cancel the registration or transfer it to Complainant. Mr. Grimard suggested that the parties should reach "an amicable resolution." Id. Thereafter Complainant requested that Mr. Grimard provide the name and contact information of the owner, and that all use of the domain name cease. Id. Upon being informed by Mr. Grimard of the transfer, Complainant attempted to contact the administrative contact at the facsimile number given, and the facsimile would not go through. Complaint, Annex 7
Respondent used the domain name at issue to resolve to a website that posted a slogan "Everything Swiss Under One Roof" and the text, "Have an idea or opportunity for this site? Contact us, we would like to hear from you." Complaint, Annex 8. Several attempts at communication follow, and the details of their completion are disputed.
In regard to the initial letter from Mr. Allan Grimard, as President & CEO of Impreshun.com, dated April 6, 2000, Respondent states: "Not being Impreshun.com, Wave Comunicaciones cannot comment on the intent of the Letter Dated April 6, 2000. However; it could be interpreted as an offering of service rather than an attempt to sell or lease the domain name." [Sic]
Respondent reportedly intends to use the site as a web portal by which various users of the name "Swiss Chalet" can be linked.
4. Parties' Contentions
Complainant contends that the domain name at issue is confusingly similar or identical to the trademarks and service marks in which Complainant has rights, that Respondent has no right or legitimate interest in respect of the domain name, and that Respondent has registered and is using the domain name in bad faith.
Respondent contends that the domain name at issue is confusingly similar or identical not only to Complainant's mark but to the marks of numerous other entities or individuals who have registered marks, that Respondent intends to use the domain name to resolve to a portal web site to link to all of the "Swiss Chalet" named businesses, and that Respondent did not register the domain name at issue, nor is it using it in bad faith.
5. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
Respondent concedes that the domain name at issue is identical or confusingly similar to the trademarks and service marks in which Complainant has rights.
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain name at issue. This shifts the burden to Respondent to come forward with evidence of such rights or legitimate interests. Do the Hustle, LLC v. Tropic Web, ICANN Case No. D2000-0624. Respondent failed to meet its burden. The Respondent is not commonly known by the domain name. 4(c)(ii). Nor is the Respondent making noncommercial or fair use of the domain name at issue. Policy, 4(c)(iii). Under the Policy, 4(c)(i) requires a showing of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute. No evidence of such demonstrable preparations prior to May 26, 2000, the date of notice of the dispute, was proffered. The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent claims that it did not register the domain name at issue, so that it could not have registered it in bad faith. The Panel notes that Respondent submitted evidence that shows that Allan Grimard is the owner of the registrant of the domain name and also of the Respondent. Response, Annex 6. It is disingenuous of Respondent to suggest that Respondent is separate and distinct from the registrant. Talk City, Inc. v. Michael Robertson, ICANN Case No. D2000-0009. Moreover, the offer to rent or lease the name by the self described "CEO & President" and owner of the domain name registrant who is also the owner of Respondent is attributable to Respondent, and Respondent and its owner cannot be allowed to manipulate these entities in order to escape responsibility. SGS Societe Generale de Surveillance S.A. v. Inspectorate, ICANN Case No. D2000-0025. Offers to rent or lease a domain name, as those set out in the unsolicited email from the owner of Respondent dated April 6, 2000, constitute offers to sell, especially where, as here, they are accompanied by an offer "to discuss this or any other option." Complaint, Annex 5. Policy, 4(b)(i); Neuberger Berman Inc. v. Alfred Jacobsen, ICANN Case No. D2000-0323. Accordingly, the Panel finds that the domain name at issue was registered and is being used in bad faith.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name swisschalet.com be transferred to the Complainant.
Dated: January 30, 2001
Palo Alto, California
(s) Scott Donahey