Businessway Computer Centers Inc.
v.
Logo Excellence
[Indexed as: Businessway v. Logo Excellence]
[Indexed as: BUSINESSWAY.NET]
eResolution
Administrative Panel Decision
Case Number: AF-0217
Commenced: 9 June, 2000
Judgment: 18 July, 2000
Presiding Panelist: James Jude Bridgeman.
Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use Visual Appearance Sound Public auction Registered for re-sale.
Complainant has furnished evidence that there is a Canadian registered
trademark BUSINESSWAY, however, Complainant is no longer the registered
owner of this trademark registration. The registration has been assigned
to Mr. Faris Heddo.
Mr Heddo, is the President of Complainant corporation and he has
joined in the submissions. Mr. Heddo has expressly agreed that Complainant
is the owner of the said trademark BUSINESSWAY. Complainant also
claims that it is the owner of a pending application for registration of
the said trademark in the USA. Complainant has also registered the www
domain names, businessway.com, businessway.org, businessway.ca and businessway.cc.
After several communications between Complainant and Respondent,
Respondent informed Complainant that he desired to sell the domain name
for $100,000 USD or best offer.
Held, Name Transferred to Complainant.
As the Respondent has not filed a Response, this Administrative Panel must accept the facts as presented by the Complainant.
While there seems to be some inconsistency and ambiguity in the submissions of the Complainant relating to the ownership of the said trademark, on balance, this Administrative Panel is satisfied that the Complainant "has rights" in the trademark.
From any comparison of visual appearance or the sound of the trademark
and the said domain name businessway.net, it is obvious that the domain
name in issue is identical or confusingly similar to the said trademark.
Respondent has no rights or legitimate interest in the domain name
as he has registered it solely for the purpose of re-sale. Such registration
also constitutes bad faith use and bad faith registration.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
--
Bridneman, Panelist: -
1. Parties
The Complainant is BusinessWay Computer Centers Inc. having a postal
address at 1486, Sauve Ouest, Montreal, Quebec H4N 1C5 and a physical address
at 117 Gun Avenue, Pointe-Claire, Quebec, H9R 3X2, Canada.
The Respondent is Logo Excellence having a postal address at 1211,
Eddington, Houston, Texas, 77023, USA.
The contested domain name is businessway.net.
2. Procedural History
The electronic version of the Complaint form was filed online through
eResolution's Website on May 11, 2000. Payment was received on May 23,
2000. The hardcopy of the Complaint Form and the choice of jurisdiction
were received on June 6, 2000. The Coversheet was received on June 8, 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 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 leads the Clerk of eResolution to the following conclusions:
the Registrar is Register.com, 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 e-mail was sent to the Registrar by eResolution Clerk's Office to
obtain a copy of the Registration Agreement on May 25, 2000. The requested
information was received June 2, 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 "Policy").
The Clerk fulfilled all its responsibilities under Paragraph 2(a) of
the Policy in connection with forwarding the Complaint to the Respondent
on June 9, 2000. That date is the commencement date of the administrative
proceeding.
On June 9, 2000, the Clerk's office notified the Complainant, the Respondent,
the concerned Registrar, and ICANN of the date of commencement of the administrative
proceeding.
The Respondent did not submit a response, neither via the eResolution
Internet site nor a signed version.
However the technical contact, GreatDomains.com inc., replied by email
on June 28, 2000 declaring that it's only connection with the domain name
businessway.net is that it provided a free parking service on it's server.
The hard copy was received on July 4, 2000. A copy of this reply was sent
by the technical contact to the Complainant and the Respondent, by email
and by first class mail.
The e-mail sent to [email protected] and [email protected]
are the only ones to have been returned 'undeliverable'.
The Complaint, official notification and all the annexes were sent
by UPS to the Respondent's various addresses. According to the UPS tracking
system, all were delivered.
On July 4, 2000, the Clerk's Office contacted James Jude Bridgeman,
and requested that he act as panellist in this case.
On July 4, 2000, James Jude Bridgeman accepted to act as panellist
in this case and filed the necessary Declaration of Independence and Impartiality.
On July 5, 2000, the Clerk's Office forwarded a user name and a password
to James Jude Bridgeman, allowing him to access the Complaint Form, and
the evidence through eResolution's Automated Docket Management System.
No Response Form had been filed.
On July 5, 2000, the Parties were notified that James Jude Bridgeman
had been appointed and that a decision was to be, save exceptional circumstances,
handed down on July 18, 2000.
3. Factual Background
The Complainant has furnished evidence that there is a Canadian registered
trademark BUSINESSWAY registration number TMA403187. The application for
registration of said trademark was filed by the Complainant on June 14,
1990 and was advertised on June 19, 1991. The trademark was registered
on October 10, 1992 in respect of wares being "computers and components
thereof, softwares (sic)" and in respect of services being "operation of
a business, selling, importing, exporting computers an d components, manufacturing
of softwares (sic) to customers' specifications, providing after sales
services and maintenance services relating to computers and components
thereof".
It appears from the evidence submitted that the Complainant is no longer
the registered owner of this trademark registration and that the registration
has been assigned to Mr. Faris Heddo of 8 Du Domaine Street, N.D. Ile Perrot
7JP 2R9, Quebec, Canada. It would appear that the assignment was made on
or about October 2, 1992 and registered on March 4, 1994.
Furthermore the Complainant claims that in March 2000, the Complainant
applied to register a service mark in the USA in respect of services being:
"Operating retail stores, mail order catalogue services and electronic
retail services all relating to the internet, computers, computer parts,
computer accessories and computer software."
The Complainant has also registered the following www domain names:
businessway.com, businessway.org, businessway.ca and businessway.cc
The Complainant has been using the BUSINESSWAY name since 1988 in the
computer retail and service industry. The Complainant operates 6 retail
stores in Canada and is projecting its expansion into the USA this year.
The Complainant has been selling computer products on the Internet since
1996 using the businessway.com domain name.
4. Parties' Contentions
Complainant's Contentions
The Complainant has requested this Administrative Panel to direct that
the said domain name businessway.net be transferred to the Complainant.
In support of this request, the Complainant submits that BUSINSESSWAY
has been a registered Canadian Trademark of the Complainant since 1988
and that the Complainant "advertises, markets and sells under the BusinessWay
name" and operates, and advertises www sites at the following domains:
businessway.co>, businessway.org, businessway.ca and businessway.cc.
The Complainant also submits that the Respondent does not conduct any
business that requires the use of the said domain name businessway.net
and that the Respondent has no legitimate interest in respect of the said
domain name.
As regards bad faith, the Complainant submits that the Respondent registered
the said domain name businessway.net for the sole purpose of re-sale.
It appears from the Complainant's submissions that there was a number
of contacts between Mr Heddo, the President of the Complainant company
and Mr Byron Hoffman who is the Administrative Contact and the Billing
Contact of the Respondent.
According to the Complainant's submissions, prior to this dispute,
commencing in December 1999 the Complainant was involved in another dispute
relating to the said domain name businessway.net with a third party. In
the course of that earlier dispute, it is claimed that the Complainant
threatened bring legal action against the said third party. In the event,
on or about March 2, 2000, the third party agreed to relinquish the registration.
The Administrative Panel notes that this is not supported by the documentation
filed. Although the Complainant is claiming that these actions were taken
by the Complainant, it would appear that it was actually Mr Heddo himself
and not the Complainant company, who instructed the lawyers, claimed ownership
of the trademark and threatened the proceedings.
The Complainant then claims that when the said domain name was relinquished,
the Complainant endeavoured to register it, but before it could do so,
the domain was registered by the Respondent. In this regard the Administrative
Panel notes that the documentation furnished by the Complainant would seem
to indicate otherwise. In this instance also it would appear that it was
Mr Heddo himself who sought to register this domain name and not the Complainant.
Mr Heddo, who is the President of the Complainant corporation, made
contact with Mr Hoffman, who is the Administrative Contact and the Billing
Contact for the Respondent.
On April 14, 2000 Mr. Hoffman ageeed to transfer the said domain name
to the Complainant in return for a payment of $500 USD. The Respondent
had paid only $70 USD to register the said domain name.
Mr Heddo agreed to this payment because he thought it would be the
quickest way to resolve this ongoing issue. Subsequently the Respondent
did not fulfill its obligations under the agreement. Mr Heddo was contacted
by Mr Hoffman and directed to a www site on which the said domain name
was being offered for auction with an asking price of $100,000 USD.
Mr. Heddo called Mr. Hoffman to get clarification concerning this turn
of events. Mr. Hoffman's response was that he had changed his mind and
that now he desired to sell the domain name for $100,000 USD or best offer.
Respondent's Contentions
There was no Response filed by the Respondent.
5. Discussion and Findings
Under the paragraph 4 (a) of the Policy the Complainant bears the burden
of proving that:
(i) the domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect
of the domain name; and
(iii) the domain name has been registered and is being used in bad
faith.
As the Respondent has not filed a Response, this Administrative Panel
must accept the facts as presented by the Complainant.
As regards the question of whether the domain name is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights, there is some confusion in the evidence submitted by the Complainant.
While the Complainant is claiming to own the Canadian registration
for the trademark BUSINESSWAY, the evidence submitted does not support
this claim. It would appear from the documentation submitted and in particular
from the print out of the results of the search of the Canadian Intelllectual
Property Office database, that the Canadian registration was assigned to
Mr Heddo pursuant to an assignment dated October 2, 1992 and registered
on March 4, 1994.
The ownership of the trademark registration is further addressed in
correspondence between the law firm which represents the Complainant in
these proceedings and a third party relating to an earlier dispute. In
a letter dated January 7, 2000 the law firm stated as follows: "Nous avons
été consulté par monsieur Faris Heddo, détenteur
de la marque de commerce BUSINESSWAY au Canada." A subsequent letter from
the same firm on February 24, 2000 contains the following statement "
please find enclosed copy of the registration of the Trade Mark BUSINESSWAY
by our client., Mr Faris Heddo." This correspondence was furnished as background
to these proceedings.
Furthermore in the Complainant's submissions in the Complaint Form
as filed, it is stated that Mr Heddo told Mr Hoffman that Mr Heddo was
the owner of the trademark.
On the other hand the Complainant claims that it is the owner of the
pending application for registration of the said trademark in the USA.
The documentation furnished by the Complainant does not clearly indicate
the name of the applicant, but in the absence of any submissions from the
Respondent, this Administrative Panel accepts the Complainant's claims
in this regard.
Furthermore, Mr Heddo, the assignee and owner of the Canadian registration
is the President of the Complainant corporation and he has joined in the
submissions. In doing so, he has expressly agreed that the Complainant
is the owner of the said trademark BUSINESSWAY. Mr Heddo has also made
submissions to the effect that the Complainant has "been using the BusinessWay
name since 1988 in the computer retail an service industry". He further
states that the Complainant "has been selling on the internet since 1996
using the www businessway.com domain name.
Ideally Mr Heddo should have joined with the Complainant in these Administrative
Proceedings or set out the respective rights of the Complainant and Mr
Heddo in respect of the said trademarks with less ambiguity.
Under the Policy it is sufficient for the Complainant to establish
that it "has rights" in a trademark to which the domain name in issue is
identical or confusingly similar. It is not necessary for a complainant
to establish ownership.
While there seems to be some inconsistency and ambiguity in the submissions
of the Complainant relating to the ownership of the said trademark, on
balance, this Administrative Panel is satisfied that the Complainant "has
rights" in the trademark.
In some instances the Complainant would appear to use the word mark
with two capital letters viz. BUSINESSWAY while other circumstances only
the first letter is capitalised viz. BUSINESSWAY and in the print-out from
the database of the Canadian Intellectual Office the mark is represented
in capital letters viz. BUSINESSWAY. In the view of this Administrative
Panel, this is essentially a word mark.
From any comparison of visual appearance or the sound of the trademark
and the said domain name businessway.net, it is obvious that the domain
name in issue is identical or confusingly similar to the said trademark.
The Respondent's Rights or Legitimate Interests
Mr Hoffman is both the Administrative Contact and the Billing Contact
for the Respondent. It may well be that Logo Excellence is in fact Mr Hoffman's
trading name or alias and this would seem to be indicated by his statement
that he registers domain names as a hobby. In any event, it seems clear
that Mr Hoffman is either the Respondent or at least that he is authorised
to act on behalf of the Respondent.
On his own admission, Mr Hoffman has stated that he registered the
said domain name for the purposes of re-sale. In the circumstances and
in the absence of any submissions from the Respondent this Administrative
Panel accepts that Complainant's submissions that the Respondent has no
rights or legitimate interest in the said domain name.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out the guidelines to be used in
determining whether a domain name has been registered and is being used
in bad faith. It provides inter alia that if found by the Panel to be present,
circumstances indicating 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 that Complainant,
for valuable consideration in excess of the Respondent's documented out-of-pocket
costs directly related to the domain name, shall be evidence of the registration
and use of a domain name in bad faith.
In the absence of any submissions by the Respondent, the Complainant
has established a prima facie case that the Respondent has offered to sell
the domain name to the Complainant firstly for the sum of $500 USD and
subsequently put the domain name on public auction on the internet with
an asking price of $100,000. In the circumstances outlined above, this
is sufficient to satisfy this Administrative Panel that the Respondent
has registered and is using the said domain name businessway.net in bad
faith.
6. Conclusions
This Administrative Panel is satisfied that the Complainant has established that said the domain name businessway.net is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the said domain name that the said domain name has been registered and is being used by the Respondent in bad faith. This Administrative Panel therfore directs that the said domain name businessway.net should be transferred to the Complainant.
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