v.
Richard Scopp Doing Business as Canadas Best
[Indexed as: Can-best v. Scopp]
[Indexed as: canbest.com]
eResolution
Administrative Panel Decision
Case No.AF-0213
Commenced: 19 May 2000
Judgement: 20 June 2000
Presiding Panelist: Jean-FranHois Buffoni
Domain name Domain name dispute resolution policy Trademark Identical Confusingly similar Legitimate rights Bad faith Association Reverse Domain name hijacking.
Complainant was registered owner of the domain name, can-best.com
in connection with technical services. Respondent registered the
domain name, canbest.com in connection with a pornographic site.
Complainant alleged that Respondents domain name is identical to its own
domain name, that Respondent has no legitimate interests in the name, and
that the name was registered and used in bad faith. Complainant also
alleged that its business would be hurt because of the association with
Respondents domain name.
Held, Name Not Transferred to Complainant.
The presence or absence of a hyphen is insufficient to claim that
the name is not identical, or at the very least, confusingly similar.
Thus, Respondents domain name is at the very least confusingly similar
to Complainants domain name.
Respondent used the name with a bona fide purpose, and has done
so even before it received notice of the complaint. Although Respondent
has not acquired trademark or service mark rights in the name, it has been
commonly known by the domain name. Therefore, Respondent does have
legitimate rights in the name.
Respondent has not registered or used the name in bad faith.
There is no evidence that Respondent intended to sell or otherwise transfer
the name, nor is there evidence to show that Respondent intended to disrupt
Complainants business in any way or create confusion.
There was no Reverse Domain Name Hijacking as there are no elements
of bad faith on Complainants part.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Buffoni, Panelist: -
Complainant: CAN-BEST BUILDING SCIENCES CORPORATION
Respondent: RICHARD SCOPP DOING BUSINESS AS CANADA'S BEST
Case Number: AF-0213
Contested Domain Name: canbest.com
Panel Member: Jean-François Buffoni
1. The Parties and Contested Domain Name
See caption above.
2. Procedural history
CAN-BEST Building Sciences Corporation (hereinafter Complainant) filed
a complaint on-line through eResolution's web site on May 3, 2000. The
hardcopy of the complaint form was received on May 8, 2000. The eResolution
Clerk forwarded a copy of the complaint to Respondent Richard Scopp doing
business as Canada's Best (hereinafter Respondent) on May 19, 2000, which
is the commencement date of the administrative proceeding.
Respondent submitted a response on May 26, 2000. On June 6, the undersigned
panel member agreed to act as a panelist, and on June 7, the parties were
notified of the appointment of the panelist.
3. Factual Background
Complainant registered the domain name can-best.com on July 14, 1998.
Complainant's short name CAN-BEST stands for Canadian Building Envelope
Science and Technology, a company which offers research and technical services
in building envelope. Complainant's primary place of business appears to
be Brampton, Ontario, Canada.
Respondent registered the contested domain name canbest.com on April
22, 1999 for an operation that is alleged by Complainant to be "a hard
core pornographic web site." Respondent's primary place of business appears
to be Toronto, Ontario, Canada.
4. The Parties' Contentions
Complainant asserts:
(1) that the domain name canbest.com is identical to its domain name
can-best.com with the exception of hyphenation;
(2) that Respondent has no right or legitimate interest in respect
of the domain name canbest.com in that
i. the contested domain name does not appear to be based on, nor be
a part of or an abbreviation of any legally registered entity or to be
a trade name or a trademark that belongs to its registered owner;
ii. to the average user, the contested domain name is identical to
Complainant's name;
iii. the fact that Respondent's domain name is presently used to operate
a hard core pornographic web site is degrading by association to, and potentially
damaging to, Complainant's business operations;
(3) that Respondent's domain name has been registered and is being
used in bad faith in that
i. Respondent has deliberately disguised its identity at the time of
registering the domain name and continues to do so;
ii. Complainant has concerns that it could be the target of a harassment
campaign or the target of an entity's crusade to discredit of harass its
operation;
iii. Respondent operates a hard core pornographic web site.
In conclusion, the Complainant urges the panel to give the Complainant
the benefit of the doubt in recovering its name and "to curb out any suspected
illegal activities that are littering our Internet."
Respondent denies the Complainant's allegations:
i. on the ground of similarity, Respondent claims that the hyphen is
sufficient to distinguish its domain name from that of Complainant;
ii. as to the illegitimacy ground, Respondent asserts that its domain
name canbest.com is based on its registered company name (Canada's Best)
on May 12, 1999, that name being the name under which it operates, files
taxes and pays its bills;
iii. on the ground of bad faith, Respondent explains that it chose
the contested domain name canbest.com because it was the closest approximation
to its registered company name, adding that other domain names such as
canadasbest.com or canadas-best.com would have been preferable at the time,
but they were already taken. Up until now, Respondent had never heard of
the Complainant, it does not consider it a competitor and there is no logical
reason for which it would want to surreptitiously attract Complainant's
customers to its site;
iv. in answer to the argument based on the description that Respondent's
site is a hard core pornographic web site, Respondent claims that it is
debatable whether this is an accurate description of the site but adds
that the point is moot since the fact that Complainant finds the content
of its site objectionable is neither a necessary nor a sufficient condition
for transferring the disputed domain name.
5. Discussion and Findings
Under the ICANN Policy paragraph 4(a), a complainant has the obligation
to prove each of the following: i) that the domain name at issue is identical
or confusingly similar to the complainant's trademark; ii) that the respondent
has no rights or legitimate interests in the domain name; and iii) that
the domain name has been registered and is being used in bad faith. The
ICANN Policy in paragraph 4(b) provides four examples of circumstances
which, for the purposes of paragraph 4(a)(iii), supra, are clear evidence
of the registration and use of a domain name in bad faith. The ICANN Policy
at paragraph 4(c) sets out three examples of defences which, if proved
by the respondent, shall demonstrate the respondent's rights or legitimate
interests to the domain name for purposes of paragraph 4(a)(ii), supra.
If the complainant successfully proves all three elements of paragraph
4(a), then this panel has the authority under paragraph 4(i) to require
the cancellation of the respondent's domain name registration, or to order
that it be transferred to the complainant. According to paragraph 15(e),
the panel also may consider whether the complaint was brought in an attempt
at "reverse domain name hijacking" or otherwise in bad faith.
a. Identity or Confusing Similarity
Paragraph 4(a)(i) of the ICANN Policy requires that the domain name
be identical or confusingly similar to the complainant's trademark.
The panel finds the presence or absence of hyphenation in the instant
case does not suffice to rule out the conclusion that canbest.com is virtually
identical to can-best.com. If that conclusion is wrong, then there is no
doubt that canbest.com is at the very least confusingly similar to can-best.com.
The panel therefore finds that the test of paragraph 4(a)(i) of the
ICANN Policy has been satisfied.
b. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the ICANN Policy raises the issue whether the
respondent has any rights or legitimate interests in respect of the domain
name. Paragraph 4(c) sets out three examples of circumstances which demonstrate
the existence of such rights or legitimate interests of the respondent
in the domain's name. These examples are not exhaustive.
Based on its evaluation of all the evidence, the panel finds that before
any notice to Respondent of the dispute, that is since the Spring of 1999,
Respondent used the domain name in connection with a bona fide offering
of goods or services. The panel also finds that Respondent has been commonly
known by the domain name, even if it has acquired no trademark or service
mark rights.
Since these two findings fall squarely under two of the above-mentioned
examples, it being understood that each of those examples is sufficient
in itself, Respondent has demonstrated its rights or legitimate interest
in the domain name for the purposes of paragraph 4(a)(ii). Therefore, Complainant
has failed to discharge its burden to prove the second essential element
of the complaint.
c. Bad Faith Registration and Use
Strictly speaking, since the Complainant has failed to prove the second
essential element of the complaint, the panel need not address the issue
of bad faith registration and use. Nevertheless, the panel finds it expedient
to summarily dispose of that issue as well.
Paragraph 4(a)(iii) raises the issue whether the domain name has been
registered and is being used in bad faith. Paragraph 4(b) supplies a non-exhaustive
list of four examples of situations which, if any of them is found by the
panel to be present, shall be evidence of the registration and use of a
domain name in bad faith.
As for the non-exhaustive list of examples of paragraph 4(a)(iii),
the panel finds as follows:
i. The evidence does not show that Respondent has acquired the domain
name primarily for the purpose of selling, renting or otherwise transferring
the domain name registration to Complainant or to a competitor of Complainant;
ii. The evidence does not show that Respondent has registered the domain
name in order to prevent Complainant from reflecting its mark in its corresponding
domain name;
iii. The evidence does not show that Respondent has registered the
domain name primarily for the purpose of disrupting the business of a competitor;
iv. The evidence does not show that Respondent has intentionally attempted
to attract Internet users to its web site by creating a likelihood of confusion
with Complainant's mark as to the source, sponsorship, affiliation or endorsement
of its web site or its products.
This means that none of the four examples provided by the ICANN Rules
to show evidence of registration and use in bad faith has been found to
exist in the instant case. Although, as mentioned above, these examples
are not exhaustive, they give a good indication of the scope and objectives
of the ICANN Policy. More particularly, it is clearly outside the scope
of the ICANN Policy to "curb out" activities which allegedly are "littering"
the Internet. Beyond the analysis of the four examples in question, the
panel finds that Complainant has not adduced evidence of bad faith registration
and use within the scope and objectives of the ICANN Policy. Therefore,
the panel finds that Complainant has also failed to prove the third element
set forth in paragraph 4(a) of the ICANN Policy.
d. Reverse Domain Name Highjacking
In light of the panel's conclusion that Complainant has not proven
two of the three elements set forth in the applicable rule, it seems appropriate
to consider whether Complainant brought the complaint in bad faith. Paragraph
15(e) of the ICANN Rules provides, "If after considering the submissions
the Panel finds that the complaint was brought in bad faith, for example
in an attempt at Reverse Domain Name Hijacking or was brought primarily
to harass the domain-name holder, the Panel shall declare in its decision
that the complaint was brought in bad faith and constitutes an abuse of
the administrative proceeding." "Reverse Domain Name Hijacking" is defined
in paragraph 1 of the ICANN Rules as "using the Policy in bad faith to
attempt to deprive a registered domain-name holder of a domain name."
This panel finds no elements of bad faith on Complainant's part and
Respondent has alleged none. In fact, it is difficult to conceive how Complainant
would want to "highjack" the domain name canbest.com when it already has
can-best.com.
6. Conclusions
For the reasons set forth above, the panel concludes that Complainant
has proved only one of the three elements set forth in paragraph 4(a) of
the ICANN Policy, and therefore decides that the relief sought by Complainant
should not be granted.
MONTREAL (Quebec), Canada, June 20, 2000.
.
Domain Name Not Transferred