Minit Canada Ltd. v. Steve Clark Enterprises

[Indexed as: Minit Canada v. Steve Clark Enterprises]
[Indexed as: THINGSENGRAVED.com / THINGS-ENGRAVED.COM]

eResolution Online Mediation and Arbitration Center
Administrative Panel Decision

Case Numbers: AF-0229a; AF-0229b
Commenced: 19 June 2000
Judgment: 30 August 2000

Presiding Panelist: Henri Alvarez

Domain names - Domain name dispute resolution policy - Canadian trademarks - Identical - Confusingly similar - No rights or legitimate interest - Bad faith registration - Bad faith use - Reverse Domain Name Hijacking - Existence of other trademark holders - Attemp to pass off or trade on the good will - Not commonly known as.

Complainant was registrant of Canadian Trademarks THINGS ENGRAVED and THINGS ENGRAVED and Design. Complainant has used the trademarks since 1974 and operates 53 “Things Engraved” stores across Canada. Respondent registered the domain names, thingsengraved.com and things-engraved.com. 

Held, Names Transferred to Complainant.

It is clear that the domain names THINGSENGRAVED.COM and THINGS-ENGRAVED.COM are identical or confusingly similar to the trademarks registered and used by Complainant. Virtual identity of a domain name with a registered trademark is sufficient to satisfy the requirement.

Respondent does not have, and has never had, plans which can be characterized as the bona fide offering of goods or services. The Respondent knew of Complainant at the time he registered the Domains and he attempted to pass off or trade on the good will of the Complainant. Furthermore, Respondent has not been commonly known by the Domains at issue, and has not been making a legitimate non-commercial or fair use of the Domains. Therefore, it is impossible to conclude that the Respondent has any rights or legitimate interests in the Domains. 

It is also clear that Respondent registered and used the Domains in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his own website by creating a likelihood of confusion with the Complainant’s Marks. The evidence indicates that Respondent was aware of Complainant and its business at the time the Domains were registered.
 
Respondent alleges that Complainant has brought the Complaint in a bad faith attempt at "reverse domain name hijacking". This allegation is based in part on the fact that there are trade-marks in the United States for "Things Engraved" which are not owned by the Complainant.  For the purposes of resolving the issue in dispute as between Complainant and Respondent in this case, the existence of any other trade-mark registrations is irrelevant. 

Policies referred to 

ICANN Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Rules referred to

ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, adopted October 24, 1999

Panel decision referred to

Shirmax Retail Ltd./Detaillants Shirmaz Ltee. v. CES Marketing Group Inc. case No AF00104, Administrative Panel Decision (eResolution, March 20, 2000)

Draw-Tite, Inc. v. Plattsburgh Spring Inc. WIPO Case No. D2000-0017 (March 14, 2000)

Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000)

Alvarez, Panelist: - 

The Parties
The Complainant is Minit Canada Ltd. of Kitchener, Ontario, Canada. 
The Respondent is Steve Clark Enterprises, the registrant of the domain names in issue. 

The Domain Name(s) and Registrar(s)
The domain names at issue are www.thingsengraved.com and www.things-engraved.com which are registered with Network Solutions, Inc., based in Virginia, U.S.A. (the ARegistrar@). 

Procedural History
The hardcopy of the Complaint Form was received on May 18, 2000. The electronic version of the Complaint form was filed on-linethrough eResolution's Website on May 19, 2000. eResolution Clerk's Office requested theComplainant's Choice of Jurisdiction May 19, 2000. The request for information was received on June 14, 2000. 

Upon receiving all the required information, eResolution Clerk's office proceeded to: 
- confirm the identity of the Registrar of the contested Domain Name; 
- Verify theRegistrar's Whois Database and confirm all the required contact information for Respondent; 
- verify if the contested Domain Names resolved to an active Web page; 
- verify if the Complaint was administratively compliant. 

The inquiry by theClerk's Office of eResolution indicates that: the Registrar is Network Solution, Inc., the Whois database contains all the required contact information and that thingsengraved.com resolves to an active Web page while things-engraved.com resolves to an inactive web page. Finally, the Complaint is administratively compliant. 

An email was sent to the Registrar by eResolutionClerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 19, 2000. The requested information was received May 27, 2000. 

The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet to the Respondent in accordance with paragraph 2(a) of theICANN's Rules for Uniform Domain Name Dispute Resolution Policy. 

TheClerk's Office fulfilled all its responsibilities under Paragraph 2(a) of the Rules in connection with forwarding the Complaint to the Respondent on June 19, 2000. That date is the commencement date of the administrative proceeding. 

On June 19, 2000, theClerk's Office notified the Complainant, the Respondent, the concerned registrar, and ICANN of the date of commencement of the administrative proceeding. 

The following e-mails were returned Aundeliverable@:
sclark.petawaw@sympatica.ca, brad.groshok@odyssey.on.ca,
sclark@canada.com, postmaster@things-engraved.com,
postmater@thingsengrave.com. 

The fax to Steve Clark Enterprises was not received. After a telephone contact from the Respondent, all documents were successfully emailed to him and he was provided with a password. 

The complaint, official notification and all the annexes were sent by courier to the Respondent and delivery was confirmed. 

On June 26, 2000, the Respondent requested 20 additional days to submit his response form. On June 26, the Respondent was granted a 5-day extension to submit its response form by theClerk's Office, until July 13, 2000. 

On July 9, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on July 17, 2000. The schedule of annexes was received on July 19, 2000. 

On July 24, 2000, theClerk's Office contacted Mr. Henri Alvarez, and requested that he act as the panellist in this case. On July 27, 2000 Mr. Henri Alvarez accepted to act as panellist in this case and filed the necessary Declaration of Independence and Impartiality. 

On July 27, 2000, theClerk's Office forwarded a user name and a password to Mr. Alvarez, allowing him to access the Complaint Form, the Response Form, and the evidence througheResolution's Automated Docket Management System. 

On July 27, 2000, the parties were notified that Mr. Alvarez had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 9, 2000. 

Having reviewed the initial submissions, the Panel requested that the parties make additional submissions on a number of issues. These additional submissions were made by the parties and received by the Panel in due course.

Factual Background
The Complainant has provided evidence that it has rights to use the following Canadian trade-marks: THINGS ENGRAVED (TMA313845) and THINGS ENGRAVED and Design (TMA313846) (collectively "the Marks") 

The Complainant has used the Marks since 1974 in Canada. The Complainant operates 53 "Things Engraved" stores across Canada and publishes a catalog twice a year which contains the Marks. The current registered owner of the Marks is Merchandising International S.A., a parent company of the Complainant. The Complainant has provided evidence that it is the sole and exclusive licensee for the Marks in Canada. 

The Respondent registered the domain names and www.things-engraved.com ("the Domains") on May 13, 1999. The Respondent is not a licensee of the Complainant, nor is he authorized to use the Marks. 

The Respondent registered a business under the name "Things Engraved" on June 24, 1999 and produced a business plan for the same on October 15, 1999. 
On December 16, 1999, Mr. George Craw, Property Manager for the Complainant, contacted the Respondent and stated that the Respondent's use of "Things Engraved" infringed the Complainant's trade-mark. 

The Respondent changed the appearance of the Domains on December 20, 1999 to replace reference to "Things Engraved" with "D&S Engraving". 

At some point after December 20, 1999, the Respondent changed the Domains again to a "referral/information style site". The Respondent accordingly changed the description of the activity conducted by his business "Things Engraved" with the appropriate government agency. 

After December 20, 1999, there ensued a series of contacts between the Complainant and Respondent. These contacts are sufficiently set out in the submissions and annexes provided by the parties. There is little conflict between the parties' evidence on these contacts and to the extent that there is conflict, it is not relevant to these proceedings and the Panel need not resolve the same. 

On January 19, 2000, a number of statements concerning the dispute were posted on by Sean Clark, the Respondent's brother. 

Between August 1999 and May 2000, the Respondent received numerous customer inquires via the Domains. Many of these customers were seeking to contact the Complainant. 

On May 19, 2000, this complaint was filed. 

5. Parties’ Contentions

(a) The Complainant 
The Complainant contends that Respondent has registered as domain names marks which are identical to the Marks, that Respondent has no rights or legitimate interests in respect of the Domains, and that Respondent has registered and is using the Domains in bad faith. 

(b) The Respondent 
The Respondent's primary contention is that he had at all material times a legitimate business plan to use the Domains in connection with the bona fide offering of goods or services. In addition, the Respondent alleges that the Complainant has brought the Complaint in a bad faith attempt at "reverse domain name hijacking". This latter allegation is based in part on the fact that there are trade-marks in the United States for "Things Engraved" which are not owned by the Complainant. 

6. Discussion and Findings
Paragraph 4(a) of the ICANN Policy ("the Policy") requires that the Complainant, in order to succeed, must prove each of the following: 

1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 
2. The Respondent has no rights or legitimate interests in respect of the domain name in issue; and 
3. The domain name has been registered and used in bad faith. 

Identity or Confusing Similarity 
As decided in Shirmax Retail Ltd./Detaillants Shirmaz Ltee. v. CES Marketing Group Inc. case No AF00104, Administrative Panel Decision (eResolution, March 20, 2000), mere identity of a domain name with a registered trademark is sufficient to satisfy the first element of the Policy. 

In this case, the Marks are identical to the Domains. As discussed in Shirmax, 
"where the addition of a top-level domain is the only difference-and especially where, as here, the top-level domain that appears in the domain name is the one that most closely describes the nature of the trademark (i.e., ".com" representing a commercial enterprise)-such virtual identicality seems sufficient to satisfy the requirement." 

This reasoning is directly applicable in the present case. Moreover, the addition of a dash in the www.things-engraved.com domain name is not significant for the purposes of the Policy (see, for example, Draw-Tite, Inc. v. Plattsburgh Spring Inc. WIPO Case No. D2000-0017 (March 14, 2000)). Again, such virtual identity is sufficient to satisfy the first requirement of the Policy. At the very least the Marks and the Domains are confusingly similar. 

The Respondent did not seriously challenge the Complainant's submissions on the foregoing points. Therefore, the Panel finds that the requirement of identity or confusing similarity of the Policy, paragraph 4(a)(i) is satisfied. 

Rights or Legitimate Interests 
Paragraph 4(c) of the Policy states the following: 
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or 
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or 
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 

The Respondent argues that pursuant to paragraph 4(c)(i) of the Policy, he has rights and legitimate interests in the Domains because he had demonstrable plans to use the Domains in connection with the bona fide offering of goods or services before receiving notice of the dispute. 

The Respondent concedes that he has not offered goods or services via the Domains. Initially, the Respondent displayed a "Things Engraved" logo on the Domains. After being contacted by a Mr. Craw, the Respondent removed the "Things Engraved" logo and changed his use of the site to a "referral/information style site". 

The Complainant argues that the Domains have never been used in connection with the bona fide offering of goods or services. The Complainant also argues that any plans of the Respondent to offer goods or services cannot constitute rights and legitimate interests because they are in bad faith and constitute and attempt to pass off on the goodwill of the Complainant. 

The Panel finds that the Respondent does not have, and has never had, plans which can be characterized as the "bona fide offering of goods or services". The Panel finds that the Respondent knew of the Complainant at the time he registered the Domains and that the Respondent has attempted to pass off or trade on the good will of the Complainant. There is ample evidence on this point. Perhaps the clearest evidence appears at paragraph 3(a) of the Respondent's additional submissions. In this paragraph the Respondent admits, by negative implication, that he knew of the Complainant prior to registering the Domains even though he didn't know the Complainant had registered trade-marks. These actions constitute bad faith as described below and on the whole of the evidence make it impossible to conclude that the Respondent has any rights or legitimate interests in the Domains. 

The Panel also finds that the Respondent has not been commonly known by the Domains at issue, and has not been making a legitimate non-commercial or fair use of the Domains. As mentioned, the Panel finds that that Respondent has attempted to pass off on the good will of the Complainant and to attract and obtain commercial gain from the customers of the Complainant. 

On the whole of the evidence available, the Panel finds that the Respondent has no rights or legitimate interest in the Domains and that the requirement of the Policy, paragraph 4(a)(ii) has been met. 

Bad Faith 
With respect to the requirement for registration and use in bad faith, the Complainant maintains that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his own website by creating a likelihood of confusion with the Complainant's Marks. In the Panel's view, this is a fair conclusion on the basis of the evidence available in this proceeding. 

As noted above, the evidence indicates that the Respondent was aware of the Complainant and its business at the time he registered the Domains. 

Further, the Respondent's own evidence discloses that the Respondent's use of the domain name , which is identical to the Marks, was and is misleading and diverts customers of the Complainant (see Respondent's exhibit C1-(3)). The Respondent has received, and attempted to misappropriate for his own profit, business inquiries directed to the Complainant (see Respondent's exhibit C1-(8)). The Respondent has also prevented the Complainant from resolving customer service complaints (see Respondent's exhibit C1-(1)). 

The domain name www.things-engraved.com does not resolve to an active website while the domain name does. The parties in this Complaint have treated the Domains as if there were only one domain in dispute. In the circumstances, the Panel finds that there is no basis upon which to distinguish between the two domain name registrations. The only difference is the fact that the former domain is passively held. As was decided in Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) positive action in respect of a domain name is not always required to demonstrate that a party is acting in bad faith. This conclusion applies in this case where the two Domains are virtually identical and one of them has actively been used in bad faith. The Panel accordingly finds no basis upon which to distinguish between the two domain names. 

The Complainant also alleges that the Respondent attempted to sell the Domains for a price in excess of his out of pocket expenses directly related to the Domains. The Complainant relies on the evidence of contacts between a Mr. Sandiford and the Respondent and the Complainant's counsel and the Respondent. Although the Panel finds that there is some evidence which supports the Complainant's position on this issue, the Panel considers it unnecessary to decide this issue given the conclusion outlined above on bad faith. 

The Panel finds that the Respondent has registered and is using the Domains in bad faith and that the requirement of the Policy paragraph 4(a)(iii) has been met. 

"Reverse Domain Name Hijacking" 
The Respondent alleges that the Complainant has brought the Complaint in a bad faith attempt at "reverse domain name hijacking". This allegation is based in part on the fact that there are trade-marks in the United States for "Things Engraved" which are not owned by the Complainant. The Complainant argues that for the purposes of resolving the issue in dispute as between the Complainant and the Respondent in this case, the existence of any other trade-mark registrations is irrelevant. The Panel agrees with this conclusion. If the owners of the registered trade-marks in the United States indeed are entitled to the Domains, it is always open for them to bring a complaint or lawsuit to obtain the Domains. The dispute which the Panel must decide in this case is confined to that between the Parties before it. The Panel accordingly dismisses the Respondent's allegation that the complaint was brought in a bad faith attempt at reverse domain name hijacking. 

7. Conclusions
On the basis of the statements and documents submitted and the reasons set out above, the Panel concludes that the Domains registered by the Respondent are 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 Domains, and that theRespondent's Domains have been registered and are being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domains be transferred to the Complainant. 

Domain Name Transferred