ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Via Rail Canada Inc. ("Via Rail"), an independent Crown Corporation, whose office is located in Montreal, Quebec, Canada. The Respondent is Mean Old Man Productions, a legal entity whose civic address is located in Thornhill, Ontario, Canada. The contested domain name is viarail.com; the Registrar is Network Solutions Inc.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on 2 March 2001. The hardcopy of the Complaint Form and annexes were received on 5 March 2001. Payment was received on 7 March 2001.
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 inactive 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 5 March 2001. The requested information was received 6 March 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 9 March 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 administrative contact and to the technical contact. The copy sent to the technical contact was returned to eResolution. But according to the Canada Post tracking system, the copy sent to the administrative contact was delivered. In addition, all the faxes were sent successfully.
The emails to firstname.lastname@example.org, email@example.com and to Adrian@canscape.com were returned 'undeliverable'.
On 14 March 2001, a representative of the technical contact called the case administrator in order to get more information. The requested information was provided to him.
The Respondent had actual notice of the administrative proceedings.
The Respondent did not submit a Response either electronically through eResolution's website or by providing a signed, hardcopy version by other means.
On 2 April 2001, the Clerk's Office contacted me, Mr. David Lametti, and requested that I act as panelist in this case.
On 3 April 2001, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On 5 April 2001, the Clerk's Office forwarded a user name and a password to me, allowing me to access the Complaint Form and the evidence through eResolution's Automated Docket Management System.
On 5 April 2001, the parties were notified that I, Mr. David Lametti, had been appointed and that a decision was to be, save exceptional circumstances, handed down on 19 April 2001. Server maintenance at McGill University prevented me from receiving the user name and password; these were sent by fax on 11 April 2001. As a result, the deadline for a decision was extended to 25 April 2001.
3. Factual Background
Via Rail is an independent Crown corporation founded in 1977 and has its corporate offices in Montreal. It operates Canada's national passenger rail service in all regions of the country. This comprises more than 460 trains weekly on 14 000 kilometers of track, connecting over 450 Canadian communities. It currently employs approximately 2900 people. In the year 1999 alone, the Complainant carried almost 3.8 million passengers. Via Rail has appeared on most of its advertising materials since its inception.
In addition to its registered trade name, Via Rail has registered a number of trademarks in Canada and the USA for every aspect of its enterprise: rail travel, (electronic) ticketing and reservations, travel rewards and loyalty schemes, courier services, etc. All these use tend to use the word "via" in conjunction with another word alluding to the service, parallel to the linking of "via" and "rail" for passenger rail services. "Via" is also used on its own. (See Annex documents D004715-4719.) Via Rail also has registered viarail.ca.
The respondent registered the domain name viarail.com on 16 September 1996.
On 21 September 2000, Mr. Mike Gaudreau, a Via Rail employee in its technical services department, sent an email to Mr. Greg Mardon, who is the person listed as the administrative contact and billing contact in the registration for viarail.com with Network Solutions Inc. Gaudreau also sent the same email on the same date, to the person appearing as the technical contact, Mr. Adrian Warner. In that email, the Complainant (through Gaudreau) advised the Respondent (through Mardon and Warner) that the Complainant wished to obtain the transfer of ownership of the domain name viarail.com. Mardon was asked to fill out the form entitled "Registrant Name Change Agreement". On the same date, the Complainant received an email message informing that the emails sent to Greg Mardon and Adrian Warner at the email addresses appearing in the registration for viarail.com, were not received and that there was a mail delivery failure (Annex D004728 and D004729). Gaudreau then sent via courier a copy of the emails addressed to Greg Mardon and Adrian Warner along with a copy of the Registrant Name Change Agreement to Mean Old Man Productions to the address appearing on the registration. Once again the emails requested the transfer of ownership of viarail.com to the Complainant Via Rail.
In late September 2000, Mardon contacted Gaudreau by telephone following the receipt of the document for the transfer of ownership of the domain name viarail.com. The parties agreed that they would meet to discuss the matter and the Complainant indicated its wish to have said domain name transferred to Via Rail.
The parties met on 19 October 2000 and discussed transferring the domain name viarail.com to the Complainant. Mardon refused to sign the transfer documents on behalf of Mean Old Man Productions and refused to hand over the domain name for unspecified reasons.
On 6 December 2000, the Complainant then decided to send a cease and desist letter on December 6th, 2000 through its legal counsel. The cease and desist letter was served by registered mail and by email and enjoined the Respondent to voluntarily transfer the domain name to Via Rail free of any consideration (Annex D004730). The Respondent never answered the cease and desist letter.
This proceeding was launched with eResolution on 2 March 2001.
4. Parties' Contentions
The Complainant Via Rail alleges:
1.That the domain name viarail.com is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, as per Policy paragraph 4(a)(i).
Via Rail submits that the domain name viarail.com contains the full and complete trademark and trade name in which it has full trademark and trade name ownership rights, and in which the Complainant has built up considerable good will. It argues that the domain name viarail.com is identical to the Complainant's trade name VIA RAIL and is either identical or very similar to the Complainant's trademarks registered both in Canada and in the United-States, but for the ".com" TLD. The Complainant submits that internet users generally understand that ".com" or any other gTLD used as a suffix is related more to the structure of the internet than they are to the activities, nature or name of an entity maintaining a presence on the Internet at that particular domain name. Moreover , it is contended that the fact that the domain name viarail.com does not have a space between "via" and "rail" is not significant. Thus, viarail.com is identical to the Complainant's trade name VIA RAIL and is either identical or very similar to the various trade-marks comprised of the term "Via" and some other component all of which are registered in Canada and in the United States.
2. That the Respondent has no rights or legitimate interests in the domain name, as per Policy paragraph 4(a)(ii).
The first set of arguments articulating the Complainant's position (paragraphs 17 - 22 of the Complaint Form) is that the Respondent has deliberately chosen the Complainant's distinctive name and valid domain name for no valid or legitimate reason. The word "viarail" does not exist in either English of French. Later, when asked by a Via Rail representative to transfer the name to Via Rail, the Respondent refused to hand over the name without providing any justification, and refused to respond to the cease and desist order.
In the second set of arguments (paragraphs 24 - 26 of the Complaint Form), it is submitted that the Respondent has never used the domain name viarail.com with any bona fide offering of goods or services, nor has it shown any plans to do so. Via Rail also points out that the Respondent is not known by the domain name viarail.com, and has never made use of it. Finally it contends that the Respondent must show a legitimate interest in the domain name viarail.com.
3. That the Respondent registered the name in bad faith, as per Policy paragraph 4(a)(iii).
The Complainant contends that the Respondent knew or should have known of the Complainant's VIA trademarks and VIA RAIL trade name at the time he registered the domain name viarail.com on 16 September 1996, given its wide spread use and its registration in Canada and in the United-States.
Moreover, it asserts that paragraph 4(b) of ICANN policy is not intended to be the exclusive criteria of bad faith. The Complainant contends that bad faith can also exist in situations were the domain name contains in its entirety, and is, for all essential purposes, Complainant's well-known trademarks
The Complainant submits that even passive holding of a domain name can amount to bad faith: while viarail.com is not active, it precludes the Complainant from using the full extent of its trademark and trade name rights
As noted above, the Respondent did not file a response.
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). As I shall note below, I need to draw one such inference to assist in deciding this matter.
Identical or Confusingly Similar
There no question here that the Respondent's domain name viarail.com is identical to the Complainant's trade name VIA RAIL, and confusingly similar to its series of registered VIA trademarks. Complainant rightly points out that the focus of the inquiry is on the part of the domain name that precedes the TLD: here that is identical to the trade name. It is also true that the missing space comprises no significant distinction, whether justified by for technological limitations in the present domain name system or, as I prefer, by the fact that the omission of the space does not serve the function of distinguishing the impugned domain name from a valid trademark or trade name in a qualitative comparison of similarity. They are effectively the same mark or name. In any event, the domain name without a space and trademark or name with one are so similar that there is no question the average user would confuse them. Thus the domain name and Via Rail's registered marks and name are at least confusingly similar in any trademarks analysis.
The Panel thus concludes that the Complainant has proven the requirements of Policy paragraph 4(a)(i).
Rights or Legitimate Interest
While there is some confusion apparent in the Complaint Form on the nature of the question of the Respondent's legitimate interest or rights - no doubt caused by the structure of the ICANN Policy itself - there is enough substance to the Complainant's contentions for it to have met its burden of proof on this matter.
The criterion of illegitimacy - or framed in terms of the Respondent, of the determination of the Respondent's legitimate right or interest - focuses in my view on the objective or relatively objective links that the Respondent has to the domain name in question. These connections might arise either at the outset through a natural or visible connection of the Respondent's business name, trademark, bona fide offering of goods and services, or bona fide non-commercial use to the domain name. These connections might also develop over time through the nature of the Respondent's bona fide activities as they relate to the domain name. These connections might be obvious given current uses or practices in the instances just mentioned, or they might be demonstrable, as in the case of planned connections to a domain name for these various bona fide activities in the future. The question is whether the Respondent, on the evidence, can be shown to have no such connection to - and hence no such legitimate interest or right in - the domain name.
Contrary to the Complainant's assertion in paragraph 26 of the Complaint Form, it is not incumbent on the Respondent to show a legitimate interest in the domain name. While paragraph 4(c) of the Policy articulates a non-exhaustive list of factors that will demonstrate a legitimate interest on the part of the Respondent, and while the provision frames this list from the Respondent's perspective, nothing in this paragraph changes the ultimate burden on the Complainant of proving no legitimate interest clearly stated in paragraph 4 (a).
Thus understood, the Complainant's first set of contentions on the question of illegitimacy that revolve around the Respondent's behaviour (paragraphs 17 - 22 of the Complaint Form) are in fact immaterial to this determination, as they do not relate to the question of the connection that the Respondent has or does not have to the domain name. (They are relevant to the question of bad faith.)
The Complainant's second set of contentions are more to the point. In fact they do go the argument that the Respondent has no such link to the domain name, and the contentions are framed alluding to the potential factors of legitimacy set out in paragraph 4(c). It is pointed out by the Complainant that the Respondent is not commonly known by the domain name viarail.com or by "viarail". I would add that it is also clear from the facts that the person who registered the name on behalf of the Respondent Mean Old Man Productions, Mardon, has no observable link to the domain name either. Thus, on balance, it is appropriate to conclude that there is no observable link between the domain name and the Respondent based on past or current bona fide activities. Moreover, the Respondent has done nothing to build a link to the domain name in the future. As the Complainant has shown, the Respondent has not used the domain name for any offering of goods and services: as determined, the website remains inactive. Moreover, the Respondent had held the name for four years without doing anything. What is more, the Complainant has argued by inference that the Respondent has not on the facts shown any intention to use the name in any way: given four years of inactivity, this is a fair inference to draw. A long period of inactivity with respect to the registered domain name, given laws of inertia, is good evidence of further inactivity in the future. From this it is fair to conclude that the Respondent has been shown to have no legitimate interest or rights in the domain name.
The Panel thus concludes that the Complainant has met the requirements of Policy paragraph 4(a)(ii).
Unlike illegitimacy, the criterion of bad faith goes to the circumstances surrounding the registration or use of the domain name by the Respondent, and focuses on the Respondent's intentions, either as they are stated explicitly or as can be inferred from the Respondent's actions and the facts of the matter. A list of partial criteria is articulated at paragraph 4(b) of the Policy, and the burden of proving bad faith falls on the Complainant.
There is no question that both mere registration and passive holding can amount to an act of bad faith under certain circumstances. 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: see Le Groupe Videotron, Ltée v. Savelyev (AF-0451). Moreover, passive holding can amount to bad faith in that it may prevent a party with a legitimate interest from embodying its intellectual property in a domain name, may serve to misdirect internet traffic, etc. See Telstra Corporation Ltd v. Nuclear Marshmallow (D2000-0003).
With respect to passive holding, the Respondent's behaviour reinforces the inference that the registration was not effected for any bona fide reason. I accept the Complainant's contention in paragraphs 18-23, (inaccurately listed, in my view, under the title "Illegitimacy" on the Complaint Form) that the Respondent throughout the communications with the Complainant has resisted attempts to resolve the matter amicably and ignored a cease and desist order. I draw the inference, as I am entitled by paragraph 14(b) of the Rules, that the failure to respond to this dispute resolution proceeding is consistent with the Respondent's previous pattern of behaviour and is additional evidence of bad faith with respect to the registration and holding of the domain name.
With respect to mere registration constituting bad faith, outlined in paragraph 29 of the Complaint Form, the Complainant asks in essence that the Panel infer bad faith from registration, given the embodiment in the domain name of what is in trademark terms known as a "strong mark" i.e. a mark that is unique, is a fanciful or coined term, or has attained widespread recognition and has accumulated large degree of good will over time. This is especially true in Canada where both parties are domiciled.
With regard to the possibility of inferring bad faith from merely registering a domain name that is identical or confusingly similar to 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 because of its well-known or longstanding reputation, or has otherwise a great deal of accumulated goodwill by some other means, might effectively preclude any legitimate or good faith registration or use of an identical or similar domain name.
I believe such is the case in this proceeding. VIA RAIL as a trade name is intrinsically unique and has become very well-known in Canada over a long period of time; as the Complainant has shown, the name and associated trademarks embody a great deal of goodwill. They have been used for many years - the trade name since 1977 - and have been used in Via Rail's advertising. I accept the contention that virtually every Canadian has heard of Via Rail. As such, no one presently domiciled in Canada can possibly envisage coining a similar term in the abstract, or indeed entertain the possibility of using "viarail" or "via rail" in good faith for any purpose whatsoever. See Le Groupe Videotron, Ltée v. Savelyev (AF-0451); Les Promotions Atlantiques Inc. v. Stéphane B. (AF-0286). Merely registering the domain name must have been undertaken in bad faith, since the domain name cannot possibly be used in any way without violating the trademark and trade name rights of the Complainant.
I would only repeat a word of caution in allowing such conclusions: 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 Complainant has done so here.
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).
The panelist concludes:
1. That the domain name viarail.com 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 viarail.com be transferred to the Complainant.
Date: April 23, 2001
Montreal , Canada
(s) David Lametti