ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The parties in this case are 1215757 Ontario Inc., carrying on business as Saxo as Complainant and Oleksandr Zhadan as Respondent. There is one contested domain name: saxonchocolates.com. The Registrar is Tucows International Corp.
2. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the eCommerce Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The electronic version of the Complaint form was filed on-line through eResolution's Website on December 19, 2000. The hardcopy of the Complaint Form and annexes were received on December 20, 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 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 Tucows Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to a 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 December 19, 2000. The requested information was received on January 9, 2001.
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 January 9, 2001. This date is the official commencement date of the administrative proceeding.
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.
On January 28, 2001, the Respondent submitted, via eResolution Internet site, his Response. The signed version of the Response was received on February 8, 2001.
On February 9, 2001, the Clerk's Office contacted Mr. Edward Chiasson, Q.C. and requested that he act as panelist in this case.
On February 13, 2001, Mr. Chiasson accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On February 13, 2001, the Clerk's Office forwarded a user name and a password to Mr. Chiasson, allowing him to access the Complaint Form, the Response Form and the evidence through eResolution's Automated Docket Management System.
On February 13, 2001, the parties were notified that Mr. Edward Chiasson had been appointed and that a decision was to be, save exceptional circumstances, handed down on February 27, 2001.
Having reviewed the record in this case, the Administrative Panel is satified that all technical requirements for the prosecution of this proceeding were met.
3. Factual Background
The following information is derived from the Complaint.
In 1994, SAXON CHOCOLATES was registered as a sole proprietorship by Johan De Greef, the owner of the company. Subsequently, in 1996, the company was incorporated as 1215757 Ontario Inc., carrying on business as SAXON CHOCOLATES in Canada.
Saxon Chocolates has been, and continues to be, used as both a trade name and trademark for the Complainant since 1994 in Canada and in the United States. The Complainant has been selling belgian chocolates in assocation with the trade name and trademark saxon chocolates since 1994.
The Complainant's product offering in association with the saxon chocolates trade name and trademark has developed goodwill in Canada and in the United States over the past six years as a supplier of high quality belgian chocolates. The use of the trade name and trademark saxon chocolates is an integral part of the Complainant's business and fundamental to its financial success.
The saxon chocolates trademark is also the subject of a Canadian trademark application filed on September 13, 2000 for the following wares and services: wares: belgian chocolates, namely, assorted chocolate truffles, chocolate dipped fortune cookies and assorted chocolate novelties; belgian chocolate dipped pretzels, truffle cups and spoons, almond bark, chocolate hazelnut bark, Christmas bark and fondue dripping chocolate; chocolate dripped gingerbread cookies; services: importation, manufacturing and wholesale sales of belgian chocolates.
The Complainant intends to expand its belgian chocolate products line in association with the trade name and trademark saxon chocolates and intends to sell its products via the internet, preferably with the domain name saxonchocolates.com.
The Complainant intended to register the subject domain name and had developed a business plan with that objective.
On May 13, 2000, the subject domain name was registered to Intellware Lab, with an address of 165 La Rose Avenue, Suite 715, Toronto, Ontario, Canada. The administrative and billing contact for the web site is Oleks Zhadan, of the same address.
Intellware Lab is a sole proprietorship registered to Oleksandr Zhadan, residing at 165 La Rose Avenue, Unit 715, Toronto, Ontario. The sole proprietorship was registered on April 14, 2000.
The Respondent's wife, Olena Zhadan, whose address is also 165 La Rose Avenue, Unit 715, Toronto, Ontario, Canada, was employed with Saxon Chocolates from October 13, 1999.
As an employee, Mrs. Zhadan was privy to and learned confidential and proprietary information belonging to the Complainant in respect of Saxon Chocolates and its business plans with respect to the development of a web site using the subject domain name. Mrs. Zhadan signed a Confidentiality Agreement in favour of Saxon Chocolates on May 8, 2000.
Mrs. Zhadan was terminated on August 15, 2000, following the discovery that the Respondent had registered the subject domain name.
The Complainant has registered the domain name saxonchocolates.net.
The web site to which the subject domain name resolves is not active and is under construction.
The Complainant has not authorized the Respondent to use the name "saxonchocolates".
The Complainant sent to the Respondent a cease and desist letter dated September 7, 2000. No reply was received.
The following information is derived from the Response.
Prior to registering the subject domain name the Respondent searched for registrations and found nothing using the combination of the words "saxon" and "chocolate".
The Respondent did not know the Complainant's business plan.
The Respondent has not offered the subject domain name for sale to the Complainant and says that he "is not going to do so".
The web page to which the domain name saxonchocolates.net resolves is under construction.
4. Parties' Contentions
Copy or Similarity
The Complainant says that it has rights to the words "saxon chocolates" and that the subject domain name is confusingly similar to its name and mark "saxon chocolates".
Noting the absence of any commercial use of the subject domain name and the relationship of the Respondent's wife to the Complainant, it is asserted that the Respondent has no legitimate interest in the subject domain name.
Bad faith is said to derive from all of the circumstances surrounding the registration of the subject domain name.
Copy or Similarity
The Respondent points to the fact that it searched and found no registration which combined the words "saxon" and "chocolates". He also says that he is unaware of the Complainant's business plan.
The Respondent appears to suggest that his wife does not know the Complainant's business plan and states that he has not and will not offer the subject domain name for sale to the Complainant.
The Respondent says that both of the relevant web sites are under construction and should be treated equally.
The Respondent asserts that he is a member of ICANN, knows the rules and would not break them. He notes that he registered the subject domain name before the Complainant applied to register its trademark.
He also says: "If the Complainant wants to know the Respondent's intentions concerning this web site he can wait till the expiration in May 2001".
5. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent's 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 the web site or location or of a product or service on the web or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
It is not disputed that the Complainant has used the words "saxon chocolates" in its business and that it has developed considerable good will by doing so. It has taken steps to register the words as a trademark and has a prima facie right to them through use.
The subject domain name essentially is identical to the Complainant's name and mark. Many ICANN Administrative panels have so found in similar circumstances.
The fact that the Respondent searched and found no registration of the combination of the words "saxon" and "chocolates" is barely relevant to the issue and certainly does not rebut the Complainant information concerning its use and intentions.
The Administrative Panel finds that the Complainant has met the requirements of paragraph 4(a)(i).
The Respondent has made no use of the subject domain name and has provided no information on which it could be concluded that he has a legitimate interest in the subject domain name.
Neither his comments concerning his wife's knowledge nor his statement that he has not and does not intend to sell the subject domain name to the Complainant are not relevant to this issue.
The Administrative Panel finds that the Complainant has met the requirements of paragraph 4(a)(ii).
The Complainant relies on the WIPO decisions in Stella D'Oro Biscuits (D2000-12) and Nabisco (D2000-0032) for the proposition that "…bad faith can be inferred from circumstantial evidence, including the fact that the domain name has not been used in commerce by the Respondent." The cases, which concerned the same Respondent and which were decided by the same Administrative Panel, do not support a finding of bad faith based solely on this fact. In both cases there was evidence of an illegitimate offer for sale. They support the fact that consideration of bad faith must take into account all of the information made available to an Administrative Panel.
In this case, the Respondent's wife worked for the Complainant. She does not say that she did not know the Complainant's plans. She did sign a confidentiality agreement. Whether she or the Respondent knew the Complainant's plans is less important than the fact that the Respondent clearly knew of the Complainant's use of the words "saxon chocolates".
He offers no reason why he would register the words or why he would take the trouble to confirm that they were not registered. His cavalier comment that the Complainant can wait to find out what use he intends to make of the subject domain name, tells against him. A complainant is not required to wait until actual harm occurs before obtaining redress in an ICANN proceeding.
The course of conduct of the Respondent and his comments in this proceeding, which largely were not relevant to the issues in this proceeding, provide ample evidence that he registered and used the subject domain name in bad faith.
The Administrative Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the evidence and its findings, the Administrative Panel concludes that the Complainant has established its case. The Complainant asks that the subject domain name be transferred to it.
The Administrative Panel so orders.
Vancouver, British Columbia, Canada, February 15, 2001
(s) Edward Chiasson, Q.C.