v.
B-SEEN DESIGN GROUP INC.
[Indexed as: Mircocell v. B-Seen]
[Indexed as: fido.com]
eResolution
Administrative Panel Decision
Case File AF-0131
Commenced: 25 February 2000
Judgment: 2 May 2000
Presiding Panelist: Jessica Litman
Domain name - Domain name dispute resolution policy - Trademark - Service Mark - Confusingly similar - Bad faith registration - Bad faith use - Legitimate Interests - Common Name - Generic Name - Canadian law - Canada.
Complainant is Microcell Solutions, a telecommunications company and the owner of a service mark registration for FIDO. Respondent is the B-Seen Design Group, a company specializing in the design of promotional web pages, and the registrant of the contested domain name, fido.com.
In June, 1997, Respondent registered the Fido.com domain name. To date, it has not used the domain name to operate an active website.
Complainant offered to pay Respondent for the registered domain name. Respondent refused the offer, which was in excess of out of pocket expenses. Respondent indicated that it intended to use the fido.com domain for an Internet search engine, and had refused a previous offer to purchase the domain for $350,000.
Held, Name Not Transferred to Complainant
Both Complainant and Respondent ask the panel to apply the law Canadian courts would apply in a trademark infringement lawsuit. The scope of this panel's inquiry is much narrower. In accordance with the UDRP, the Panel must determine only whether Complainant has shown each of the three items found in Paragraph 4(a)(i) of the Policy.
1. There is no real dispute that that "fido" portion of fido.com is identical or confusingly similar to Complainant's FIDO mark.
2. Respondent has attempted to show that it has a legitimate interest in the fido.com domain. The Panel found that they had a bona fide intention to use the fido.com domain name and have taken some preliminary steps toward developing its ideas to use fido.com for a search engine site. The panel concludes that Complainant has failed to show that Respondent has no legitimate interests in the domain name.
3. Complainant's allegations of bad faith registration are premised on its assumption that as owner of the FIDO mark, it has earned the exclusive right to use fido in domain name space.
Complainant has not shown any behavior on Respondent's part that the domain name was registered for the purpose of selling it: Respondent never offered to sell the domain name to Complainant. Respondent's refusal to sell for an amount more than out of pocket costs is not, without more, a basis in the record for an inference of bad faith.
Furthermore, registration of a common or generic name such as FIDO can hardly be considered indicative of bad faith, absent other factors. Even when a common name has become highly distinctive, another party might legitimately register the common name because of its primary meaning. In any event, the panel notes that at the time Respondent registered fido.com, Complainant had only recently launched the promotional campaign.
The Complainant has failed to prove a lack of rights and legitimate interests by the Respondent. There was also no evidence of bad faith on the part of the Respondent.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Rules for Uniform Domain Name Dispute Resolution Policy
Panel Decision referred to
--
Litman, Panelist: -
1. Parties and Contested Domain Name
Complainant is Microcell Solutions, a telecommunications company in
Montreal and the
owner of a service mark registration for FIDO. Respondent is the B-Seen
Design Group, a Toronto company specializing in the design of promotional
web pages, and the registrant of the contested domain name, fido.com.
2. Procedural History:
The electronic version of the Complaint form was filed on-line through
eResolution's
Website on February 23th, 2000. The hardcopy of the Complaint Form
was received on
February 23th, 2000. Payment was received on the same date. Upon receiving
all the
required information, eResolution's clerk confirmed that the Registrar
is Network Solutions Inc., and that the Whois database contains all the
required contact information
and including the billing contact. The clerk also determined that,
on February 25th, 2000,
the Contested Domain Name resolved to an inactive Web page and that
the Complaint is administratively compliant. 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
fulfilled all its
responsibilities under Paragraph 2(a) in connection with forwarding
the Complaint to the
Respondent on February 25th, 2000. That date is the commencement date
of the administrative proceeding.
On February 25th, 2000, the Clerk's office notified the Complainant,
the Respondent, the
concerned Registrar, and ICANN of the date of commencement of the administrative
proceeding. On March 16th, 2000, the Respondent submitted the response
form and the
annexes. On March 21st, 2000, the Clerk's Office submitted five (5)
names of candidates to act as a third panelist to the parties and required
that they rank them in preference order. On March 24th, 2000, the Complainant
wrote to the clerk's office to mention that one of the candidates was in
conflict of interests with them. On March 27th, 2000, the Clerk's Office
submitted a new list of candidates to act as a third panelist to the parties
and required that they rank them in preference order. On April 3rd, 2000,
the Clerk's Office received the parties' preferences of candidates to act
as the third panelist. On April 10th, 2000, the Clerk's Office received
the Declaration of Impartiality and Independence from the three members
of the Panel. eResolution appointed Ms. Jessica Litman to be the President
of the Panel. On April 10th, 2000, the Clerk's Office forwarded a user
name and a password to the three members of the Panel, allowing them to
access the Complaint Form, the Response Form, and the evidence through
eResolution's Automated Docket Management System.
On April 10th, 2000, the parties, the Registrar and ICANN were notified
that Ms. Litman,
Mr. Richard Hill and Mr. Michael Froomkin have been appointed and that
a decision was to be, save exceptional circumstances, handed down on April
25th, 2000. On April 13th, 2000, the panel granted the complainant's request
to submit a rebuttal on or before April 17, and allowed the respondent
until April 21 to submit a reply. The panel extended
the deadline for its decision to May 10, 2000.
On April 14, complainant filed a document it denominated a "reply" to
B-Seen's
response. On April 19, respondent submitted its "rebuttal" to complainant's
reply.
3. Factual Background
Complainant Microcell markets wireless digital mobile telephone services
throughout
Canada under the FIDO mark. It applied to register the mark in Canada
in November,
1995, and introduced its FIDO services in 1996. Registration issued
under serial number TMA475,321 on April 28, 1997. Microcell later registered
a second FIDO mark for its services, and has applied to register a number
of variations (e.g., FIDOmatic, FIDOData). Microcell has engaged in extensive
advertising to promote its services and its FIDO mark. Microcell registered
the fido.ca domain name in 1996, and operates a website associated with
its FIDO services at www.fido.ca
Respondent B-Seen is a small Toronto website development firm. In June,
1997, it
registered the Fido.com domain name. To date, it has not used the domain
name to
operate an active website. B-Seen has a website at www.bseen.com to
promote its services as a designer of interactive web commercials. B-Seen
has registered a number of other domain names not currently in active use.
Most of these involve combinations of generic terms. E.g., clearancestuff.com,
sexcommericals.com.
In January, 2000, Microcell's CEO telephoned B-Seen to discuss B-Seen's
registration
of fido.com. The parties' accounts of this conversation differ, but
they agree that Microcell offered to pay B-Seen for the registered domain
name. According to both accounts, B-Seen indicated that it intended to
use the fido.com domain for an Internet
search engine, and had refused a previous offer to purchase the domain
for $350,000.
Six days later, Sean Dalton of Microcell visited B-Seen in person and
offered to pay $20,000 for the fido.com domain name. B-Seen refused, and
again claimed that it intended to operate a search engine at fido.com.
4. Parties' Contentions
Microcell asserts that, both because FIDO is an inherently distinctive
mark for mobile
telephone services, and as a result of its massive advertising campaigns,
its FIDO mark
is highly distinctive throughout Canada. It argues that the fido.com
domain name is identical to Microcell's FIDO mark, and that any use of
the fido.com domain by any entity other than Microcell will therefore confuse
millions of consumers familiar with Microcell's FIDO mark. Microcell argues,
further, that B-Seen could not have been unaware of the FIDO mark
and the potential for confusion when it registered the fido.com domain
name in 1997. Under Canadian trademark law, Microcell argues, B-Seen had
the obligation to select a domain name that was not confusingly similar
to the FIDO mark. Further, Microcell argues, B-Seen has yet to make any
bona fide use of the fido.com domain. Finally, Microcell insists that B-Seen's
purpose in registering fido.com was primarily for the purpose of reselling
it to Microcell for an exorbitant price. "The refusal to amicably transfer
the domain name coupled with the declared intention, true or false, to
operate a search engine through fido.com is conclusive proof of B-Seen's
bad faith, which began with registration and continues today." Complaint
at 128.
B-Seen argues that the FIDO mark is weak, both because it is a common
nickname for
a dog and because of widespread third party use. B-Seen registered
fido.com to create
an Internet-search engine, taking advantage of the fact that dogs are
known for their
searching ability and that "fido" is an acronym for the phrase "find
it directly online".
Under Canadian trademark law, B-Seen argues, its use of the fido.com
domain for an
Internet search engine would not be actionable, because of the weakness
of the mark
and because of the differences between the parties' services. B-Seen
explains that it has not developed the search engine it intends to operate
because it is a small, start-up company, which is getting its projects
off
the ground one by one. B-Seen argues that it at
no point intended to sell fido.com to Microcell or anyone else, and
has in fact consistently refused all offers to purchase the domain
name. In any event, since B-Seen has not yet used the fido.com domain,
it claims that it has done nothing prohibited either
by Canadian trademark law or by the UDRP.
5. Discussion and Findings
Both Microcell and B-Seen ask the panel to apply the law Canadian
courts would apply
in a trademark infringement lawsuit. They have submitted a variety
of annexes for the
purpose of persuading the panel that the registered FIDO mark
is or is not highly
distinctive, and have made a number of arguments designed to
show that if B-Seen
were to operate a website at www.fido.com, it would or would
not be actionable under
Canadian trademark law.
Complainant seems to have misunderstood the text of the Policy
and the nature of these
proceedings, since most of its brief and almost all of its evidentiary
annexes relate to the
use of the FIDO mark in connection with complainant's marketing
campaigns.
Paragraph 4(a)(i) of the Policy only requires claimant to prove
that it has a valid
trademark identical or confusingly similar to the domain name,
thus extensive
submissions regarding the actual use of the mark in advertising
or marketing
campaigns are irrelevant for this panel, although they may be
of great importance before
a court of law investigating alleged violation of national trademark
laws. Indeed, the
scope of this panel's inquiry is much narrower. In accordance
with the UDRP, we must
determine only whether Microcell has shown:
that the fido.com domain name is identical or confusingly similar to its FIDO mark,
that B-Seen has no rights or legitimate interests
in respect of the fido.com domain
name, and
that B-Seen has registered and used the domain name fido.com in bad faith.
A. Similarity of domain name to mark:
There is no real dispute that that "fido" portion of fido.com
is identical or confusingly
similar to Microcell's FIDO mark.
B. Respondent's rights or legitimate interests in the domain name:
B-Seen has attempted to show that it has a legitimate interest
in the fido.com domain
because it has the bona fide intention to use the fido.com domain
name for an Internet
search engine in the future. B-Seen appears to have registered
a domain name that
seemed to it to be likely to be useful for something (perhaps
a search engine) someday.
B-Seen has taken some preliminary steps toward developing its
ideas to use fido.com
for a search engine site, but has not yet made concrete preparations
to move forward on
the project. Microcell argues that all of B-Seen's preparations
were pretextual,
undertaken to conceal its bad faith, but has presented no evidence
to support that claim.
The panel concludes that Microcell has failed to show that B-Seen
has no legitimate
interests in the domain name.
C. Bad faith Registration and Use:
Microcell has failed to show bad faith registration, and failed to show bad faith use.
1. Bad Faith Registration:
Microcell's allegations of bad faith registration are premised on its
assumption that as
owner of the FIDO mark, it has earned the exclusive right to use fido
in domain name
space, and the registration of a domain name in derogation of that
right must therefore
be a bad faith registration. Although Microcell asserts that B-Seen
registered the domain name for the purpose of selling it to Microcell,
it has not shown any behavior on B-Seen's part that would support its interpretation.
According to the evidence presented to this panel, B-Seen never offered
to sell the domain name to Microcell. When Microcell offered to buy the
domain name for a sum considerably in excess of B-Seen's out of pocket
costs, the parties agree that B-Seen refused to sell the domain name. Microcell
asks the panel to infer that B-Seen's refusal demonstrates its intent
to force Microcell to
offer an exorbitant sum for the domain. There is no basis in the record
for such an inference, nor any reason to believe that B-Seen would have
expected Microcell to be
willing to spend substantial sums to acquire fido.com. Microcell has
since 1996 operated a website at www.fido.ca, and, as its exhibits demonstrate,
has done so with great success. Furthermore, registration of a common or
generic name such as FIDO can hardly be considered indicative of bad faith,
absent other factors (whereas registration of a an unusual term such as
Vodaphone could, in itself, be considered suspicious, absent other factors).
Even when a common name has become highly distinctive of a particular product
because massive advertising has generated substantial secondary meaning,
another party might legitimately register the common name because of its
primary meaning. In any event, the panel notes that at the time B-Seen
registered fido.com, Microcell had only recently launched the promotional
campaign it documents so thoroughly in the material attached to its complaint.
2. Bad Faith Use:
Microcell's only allegation of use of the domain name by B-Seen is its
insistence that
B-Seen's refusal to transfer the domain name was really part of its
scheme to sell the
domain name to Microcell by silently forcing Microcell to offer ever-increasing
amounts
of money to buy it. Microcell fails to support its allegation with
evidence; it does not even submit contemporaneous internal memos or e-mails
that might have provided some
corroboration for the allegations it makes. This panel is aware of
the fact that other arbitrators have interpreted the UDRP to support a
conclusion that offering to sell a domain name, without more, can constitute
bad faith use under the UDRP. Nothing in
the UDRP, however, permits us to conclude that not offering to sell
a domain name,
without more, constitutes bad faith use. There is no basis for construing
B-Seen's refusal
to sell the fido.com domain as bad faith use under the UDRP.
6. Conclusions
The ICANN UDRP permits this panel to order the cancellation or
transfer of a domain
name if a trademark owner shows that the domain name is identical
or confusingly
similar to its mark, that respondent has no rights or legitimate
interests in respect of the
domain name, and that respondent has both registered and used
the domain name in
bad faith. The panel finds that Microcell has failed to show
that B-Seen has no rights or
legitimate interests in the domain name, or that B-Seen registered
or used fido.com in
bad faith. Therefore we find in favor of respondent B-Seen, and
order that the domain
name fido.com remain with the respondent B-Seen.
7. Signatures
Thus done and signed on May 2nd, 2000
(s) Jessica Litman, Presiding Panelist
(s) Richard Hill
(s) A. Michael Froomkin
Domain Name Not Transferred