By Zak Muscovitch.

A panel of three Canadian domain name dispute arbitrators have unanimously determined that a Complainant engaged in Reverse Domain Name Hijacking (RDNH), and also ordered the Complainant to pay $5,000.00 towards the Respondent’s legal fees as a consequence. This is only the second case where a Panel has awarded costs to the Respondent in a CIRA domain name dispute.

In Canada, .ca disputes are subject to the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP). This particular CDRP dispute was managed by the British Columbia International Commercial Arbitration Centre. The esteemed three-member panel was comprised of R. John Rogers (chair), Elizabeth Cuddihy, Q.C., ICA, and Thomas Manson, Q.C., C.Arb.

The dispute was brought by Visionary Motorsports Ltd. of Edmonton, Alberta. The Complainant sought to transfer the domain name, ClevelandCyclewerks.ca from the Registrant, MC Motorsports Canada Ltd. The Registrant was represented by myself. I also represented the successful Registrant in the first such case where costs were awarded (the forsale.ca case in 2009).

The Panel found that the Complainant had submitted a Complaint which was not “complete and accurate”, and that the Complainant had asserted that it had “Rights” in a Trade-mark, when its License Agreement “clearly provided to the contrary”. The Panel also found that it was “hard pressed to understand how the Complainant is reasonably able to claim any colour of right to the Trade-Mark”, and further stated that “we struggle to understand how the Complainant could believe that it had a “colour of right” to seek transfer of the Domain Name”. The Panel also stated that, “there is a very strong suggestion that the Complainant has sought to use this process as a short cut to acquire the Domain Name”, and “the Complaint does constitute a serious attempt at RDNH on the Complainant’s behalf”.

The text of the decision is appended below, but it should be up on CIRA’s own website, shortly, in a much better format, and is already up on BCICAC’s own website.

IN THE MATTER OF A COMPLAINT MADE PURSUANT TO THE CANADIAN INTERNET REGISTRATION AUTHORITY DOMAIN NAME DISPUTE REGISTRATION RESOLUTION POLICY (v 1.3) AND RULES (v 1.4)


Complainant:                                      Visionary Motorsports Ltd.
Registrant:                              MC Motorsports Canada Ltd.
                           

Disputed Domain Name          clevelandcyclewerks.ca
                                                (the “Domain Name”)

Registrar:                               The Registrar of record is Go Daddy Domains Canada, Inc. Registrar Number 2316043

Panel:                                      R. John Rogers (Chair), Elizabeth Cuddihy, Q.C., ICA, and Thomas Manson, Q.C., C.Arb.
(the “Panel”)

Service Provider:                   British Columbia International Commercial Arbitration Centre
(the “BCICAC”)

BCICAC File:                         DCA-1479 – CIRA

PROCEDURAL HISTORY
The BCICAC is a recognized service provider pursuant to the Domain Name Dispute Resolution Policy (v 1.3) (the “Policy”) and Rules (v 1.4) (the “Rules”) of the Canadian Internet Registration Authority.  

The Complainant filed an undated complaint (the “Complaint”) with the BCICAC seeking an order in accordance with the Policy and the Rules directing that registration of the Domain Name be transferred from the Registrant to the Complainant.

The BCICAC determined the Complaint to be in administrative compliance with the requirements of Rule 4.2 and, by transmittal email dated March 14, 2013 (the “Transmittal Email”), forwarded a copy of the Complaint to the Registrant to serve as notice of the Complaint in accordance with Rules 2.1 and 4.3.  The Transmittal Email determined the date of the commencement of proceedings in accordance with Rule 4.4 and advised the Registrant that in accordance with the provisions of Rule 5 a response to the Complaint (“Response”) was to be filed within 20 days of the date of commencement of proceedings.  The Registrant requested an extension of time for delivery of its response and the BCICAC granted this extension as permitted under Rule 5.4.

The Registrant delivered the Response to BCICAC on April 10, 2013 in compliance with the Policy and the Rules.   As the Response included a claim for costs against the Complainant, pursuant to paragraph 4.6 of the Policy, the Complainant was permitted to respond to the claim for costs within 5 business days after receipt of the Response.

By a submission dated April 17, 2013, the Complainant responded to the Respondent’s claim for costs.

In an email dated April 18, 2013, the Registrant requested that the Panel use its discretion under the Policy and the Rules to grant the Registrant the opportunity to respond to the Claimant’s submission of April 17, 2013.  
By way of email dated April 24, 2013, the Panel determined that the Registrant would have until April 30, 2013 to provide an additional submission and that the Complainant would have the opportunity exercisable by May 3, 2013 to reply to this additional submission provided that the Complainant’s reply was strictly limited to responding to matters raised by the Registrant in its additional submission.  

In view of the time extensions granted to the parties, the Panel extended the date prior to which it would deliver its decision from May 3, 2013 to May 27, 2013.

PANEL APPOINTMENT
The Panel was appointed by the BCICAC as the three member hearing panel in this matter by letter dated April 15, 2013.   The Panel, having duly filed their Acceptance of Appointment and Statement of Independence and Impartiality with the BCICAC hereby determines that it has been properly appointed and constituted as the three member hearing panel to decide the Complaint in accordance with the Rules.

CANADIAN PRESENCE REQUIREMENTS
The Canadian Presence Requirements for Registrants v 1.3 (“Presence Requirements”) require that to be permitted to apply for registration of, and to hold and maintain the registration of, a .ca domain name, the applicant must meet at least one of the criteria listed in Section 2 of the Presence Requirements as establishing a Canadian presence.  Section 2(c) of the Presence Requirements specifies that a corporation incorporated under the laws of any province of Canada is permitted to apply for and to hold and maintain the registration of a .ca domain name.

The Complainant is a corporation incorporated pursuant to Alberta’s Business Corporations Act.  The Complainant, therefore, is entitled to have the Domain Name registered in its name and therefore meets the Presence Requirements.

ALL TECHNICAL REQUIREMENTS MET
Based upon the information provided by BCICAC, the Panel finds that all technical requirements for this proceeding have been met.

FACTS
As the Complainant and the Registrant appear to have different perspectives on the facts in this matter, each party’s position is presented separately.

COMPLAINANT’S INTERPRETATION OF THE FACTS

1.      The Complainant’s colour of right to the Domain Name is based upon a trade-mark.  This trade-mark is CLEVELAND CYCLEWERKS (the “Trade-Mark”).

2.      The Trade-Mark is the subject of Canadian Trade-mark Application No. 1,572,602 and U.S. Trade-mark Serial No. 85506918.

3.      The goods in association with which the Trade-Mark is used in Canada by the Complainant in a capacity which the Complainant describes to be the “Exclusive Licensee” of the Trade-Mark are motorcycles, motorcycle parts and motorcycle accessories.

4.      Similar goods are associated with the Trade-Mark in the US by Cleveland Cyclewerks LLC, a corporation incorporated pursuant to the laws of the State of Ohio, and the party which the Complainant describes as the Licensor of the Trade-Mark to the Complainant (the “Licensor”).

5.      In early 2011, the Licensor began discussions with potential Canadian distributors of motorcycles, motorcycle parts and motorcycle accessories to distribute similar products of the Licensor in Canada under the Trade-Mark.

6.      The Registrant and the Licensor were engaged in business discussions for the Registrant’s former business entity, True North Imports, to become the Licensor’s exclusive Canadian distributor and to that end signed a “Non-circumvention, Non-disclosure and Confidentiality Agreement” on March 3, 2010.

7.      However, the Complainant was eventually chosen by the Licensor as its exclusive Canadian distributor in April 2011 and this culminated in a letter agreement dated March 7, 2012 and a License Agreement dated April 1, 2012 (the “License Agreement”).  

8.      The Licensor suggested that the Registrant “work with the Complainant as to arrange a business relationship for access to” certain of the Licensor’s products for resale in Canada.

9.      The Registrant despite not being chosen as the Licensor’s exclusive Canadian distributor registered the Domain Name on August 27, 2011 without the knowledge or permission of the Licensor.

10.  The Complainant became aware of this registration in April of 2012 and advised the Licensor.

11.  The Domain Name was and continues to be a proprietary trademark of the Licensor and the Complainant as Exclusive Licensee and the Registrant has never had, nor shall have, rights in or to the Trade-Mark and has used the Trade-Mark in bad faith.

12.  Due to the “complicated factual history of the business matters” underlying this dispute, the Complainant has an honestly held belief that it, and not the Registrant, may claim the entitlement to the registration of a domain name in Canada that incorporates the Trade-Mark.

13.  Since early 2012, the Complainant has attempted to negotiate with the Registrant with respect to the transfer of the Domain Name from the Registrant to the Complainant.  Upon the break-down of these discussions, counsel acting on behalf of the Complainant and the Licensor, jointly, was instructed to issue to the Registrant a cease and desist demand letter dated May 22, 2012 claiming infringement of the Trade-Mark and requesting the immediate transfer of the Domain Name to the Complainant.

14.  The Registrant has not responded to this letter of May 22, 2012, nor has the Registrant responded to numerous subsequent attempts on the part of the Complainant to engage in informal dialogue to “resolve the issues at hand”.

15.  The Registrant is currently engaged in business activities that are in direct competition with the business activities of the Complainant.

16.  The use of the Domain Name by the Registrant is most likely to have a confusingly and negative public image impact on the Trade-Mark and cause confusion regarding the affiliation or sponsorship with the Complainant as the Exclusive Licensee of the Trade-Mark in Canada and as such, the Domain Name is likely to cause the diversion of commercial activity away from the Complainant.

17.  The following message is currently displayed at the webpage to which the Domain Name resolves:

We would like to inform you that we are no longer associated with Cleveland Cyclewerks LLC and will not be distributing its products in Canada.  We have rebranded our distribution company as MC Motorsports Canada Ltd. and will be distributing a variety of motorcycle products, some of which are comparable to CCW’s brand in style, quality and price.  We encourage you to visit our website at www.motorsportscanada.cato check out our products.

REGISTRANT’S INTERPRETATION OF THE FACTS

1.      On March 10, 2011 the Licensor’s representative, Scott Colosimo, sent an email to the Registrant’s principal, Michael Wells, with the phrase “Canadian Distribution Opportunity” in the subject line, discussing the appointment of Mr. Wells as the exclusive distributor of the Licensor’s motorcycles in Canada.  In this email, Mr. Colosimo states among other matters:

Michael, if you are to setup distribution for us in Canada, I would like the new company to be “Cleveland Cyclewerks Canada” or something similar.  We could do the domain ClevelandCycleWerks.ca.   

2.      Mr. Colosimo subsequently put Mr. Wells in touch with the Licensor’s North American distributor, P.I.T. Motor Ltd., or Parallel Intelligent Transportation, Inc. (“PIT”).

3.      In a letter dated September 1, 2011, PIT claims to be the “exclusive North American distributor for the Cleveland CycleWerks branded small displacement motorcycles” and purports to appoint “Cleveland CycleWerks Canada as the distribution arm in the country of Canada for the Cleveland CycleWerks line” upon receipt of initial purchase orders.  These initial purchase orders were subsequently provided.

4.      In a letter dated November 3, 2011 on the letterhead of the Licensor and addressed to Mr. Wells, the representative of the Licensor, Mr. Colosimo, states that Cleveland Cyclewerks Canada is “an authorized Canadian distributor of Cleveland CycleWerks branded motorcycles, parts, accessories and apparel”.

5.      The Registrant was incorporated on December 15, 2011 as Cleveland Cyclewerks Canada Inc.and changed its name to the present one on July 6, 2012.

6.      In an email dated January 6, 2012 from Mr. Colosimo addressed to Diana@on-nic.netwith a subject matter of “Regarding Cleveland CycleWerks Domain Registrations:”, Mr. Colosimo states, among other items:


Diana, this is Scott Colosimo, I am the legal owner of Cleveland CycleWerks LLC, we are a global brand.  As a global company we sell products in over 20 countries.

Mike Wells is my authorized distributor for Canada, and he is the legal owner of ClevelandCycleWerks.ca. 

7.      Thus, with the full authorization of the Licensor, Mr. Wells registered the Domain Name on August 27, 2011 and on December 15, 2011 incorporated the Registrant as Cleveland CycleWerks Canada Inc. 

8.      The Canadian trademark application referred to above was filed on April 2, 2012 and was filed on the basis of registration of a mark abroad.  This “registration of a mark abroad” was purported to be the US trademark application filed by the Licensor with the United States Patent and Trademark Office (“USPTO”).  

9.      This US trademark application for CLEVELAND CYCLEWERKS has been refused by the USPTO by way of an Office Action dated April 4, 2012 which stated, among other items, that “registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s good and/or services”.  A similar objection was included with a similar refusal contained in a subsequent Office Action dated October 27, 2012.

10.  There is, therefore, no registered US or Canadian trademark of CLEVELAND CYCLEWERKS.

11.  After Mr. Wells had been given the exclusive Canadian distributorship for the distribution of the Licensor’s products in Canada, by way of an email dated February 18, 2012, the Licensor introduced Mr. Wells to the Complainant and discussions ensued as to the possibility of the Complainant becoming a sub-distributor to the Registrant of the Licensor’s products in Canada.

12. By way of an email dated March 27, 2012 to Mr. Wells, Mr. Colosimo stated, among other items:


Mike, we would like to proceed with getting an agreement in place with both you and Visionary.  Have you made any progress with them, what is the status of your guys relationship?

13. The Registrant and the Complainant were not able to come to agreement as to their respective relationships with the Licensor and there were discussions of compensating the Registrant in the amount of $10,000 for inter alia the time and money it had put into the development of the Domain Name and the website to which the Domain Name resolves.

14. It is the position of the Registrant that the Licensor unlawfully rescinded the Registrant’s exclusive Canadian distribution rights and entered into the License Agreement dated April 1, 2012, a date 7 months after the registration of the Domain Name.
15. The License Agreement specifically provides that the Complainant does not have any rights in the Trade-Mark; rather the License Agreement contains specific provisions in Sections 8 and 10 thereof that the Complainant shall not acquire any rights to the Licensor’s proprietary marks and licensed intellectual property and that the Complainant acknowledges that the Licensor is the sole owner of the “Cleveland Cyclewerks” and “CCW” brand.


REMEDY SOUGHT
The Complainant seeks an order from the Panel instructing the Registrar of the Domain Name to transfer ownership of the Domain Name to the Complainant.

THE POLICY
The purpose of the Policy as stated in paragraph 1.1 of the Policy is to provide a forum in which cases of bad faith registration of .ca domain names can be dealt with relatively inexpensively and quickly.
Paragraph 4.1 of the Policy puts the onus on the Complainant to demonstrate this “bad faith registration” by proving on a balance of probabilities that:

1.      the Trade-Mark qualifies as a “Mark” as defined in paragraph 3.2 of the Policy;
2.      the Complainant had “Rights” in the Trade-Mark prior to the date of registration of the Domain Name and continues to have “Rights” in the Trade-Mark, 
3.      the Domain Name is “Confusingly Similar” to the Trade-Mark as the concept of “Confusingly Similar” is defined in paragraph 3.3 of the Policy;
4.      the Registrant has registered the Domain Name in “bad faith” in accordance with the definition of “bad faith” contained in paragraph 3.5 of the Policy; and
5.      the Registrant has no “legitimate interest” in the Domain Name as the concept of “legitimate interest” is defined in paragraph 3.4 of the Policy.

If the Complainant is unable to satisfy this onus, bad faith registration is not demonstrated and the Complaint fails.

MARK
The relevant portion of paragraph 3.2 of the Policy states that for the purpose of the Policy a “Mark” is:

(a)        a trade-mark, including the word elements of a design mark, or a trade name that has been used in Canada by a person, or the person’s predecessor in title, for the purpose of distinguishing the wares, services or business of that person or predecessor or a licensor of that person or predecessor from the wares, services or business of another person;

If the Trade-Mark qualifies as a “Mark” pursuant to paragraph 3.2 of the Policy, it would appear that if it had “rights” in the Trade-Mark, the Complainant commenced its use of the Trade-Mark in Canada following the execution of the License Agreement on April 1, 2012.

RIGHTS
As noted above, to succeed in this matter, the Complainant must demonstrate that it had “Rights” to the Trade-Mark” prior to the date of registration of the Domain Name.  The Domain Name was registered on August 27, 2011.  It would appear that the Complainant did not commence discussions with the Licensor until the February/March period of 2012.  Moreover, the License Agreement subsequently entered into between the Complainant and the Licensor would appear to provide that the Complainant had no “Rights” in the Trade-Mark.

CONFUSINGLY SIMILAR
Policy paragraph 3.3 provides that the Domain Name will be “Confusingly Similar” to the Trade-Mark if the Domain Name so nearly resembles the Trade-Mark in appearance, sound or the ideas suggested by the Trade-Mark as to be likely to be mistaken for the Trade-Mark

In the matter at hand, the Domain Name consists of the Trade-Mark, followed by the.ca suffix.   As paragraph 1.2 of the Policy defines the Domain Name for the purpose of this proceeding to exclude the .ca suffix, the portion of the Domain Name consisting of “CLEVELAND CYCLEWERKS” is relevant. 

The Domain Name, excluding the .ca suffix and the spacing between the two words, uses the same letters in the same order as the Trade-Mark.  The Panel therefore finds that the Complainant has satisfied the onus of demonstrating that the Domain Name is “Confusingly Similar” to the Trade-Mark in accordance with paragraph 3.3 of the Policy.

BAD FAITH
Under paragraph 3.5 of the Policy, the Registrant will be considered to have registered the Domain Name in bad faith if, and only if, the Complainant can demonstrate that the Registrant in effecting the registration of the Domain Name was motivated by, inter alia, any of the four general intentions set out in paragraph 3.5.  

Paragraph 3.5 provides as follows:

(a) the Registrant registered the domain name, or acquired the Registration, primarily for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant, or the Complainant’s licensor or licensee of the Mark, or to a competitor of the Complainant or the licensee or licensor for valuable consideration in excess of the Registrant’s actual costs in registering the
domain name, or acquiring the Registration;

(b)the Registrant registered the domain name or acquired the Registration in order to prevent the Complainant, or the Complainant’s licensor or licensee of the Mark, from registering the Mark as a domain name, provided that the Registrant, alone or in concert with one or more additional persons has engaged in a pattern of registering domain names in order to prevent persons who have Rights in Marks from registering the Marks as domain names;

(c) the Registrant registered the domain name or acquired the Registration primarily for the purpose of disrupting the business of the Complainant, or the
Complainant’s licensor or licensee of the Mark, who is a competitor of the
Registrant; or

(d) the Registrant has intentionally attempted to attract, for commercial gain, Internet users to the Registrant’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.

It is the submission of the Complainant that the Registrant registered the Domain Name in bad faith as demonstrated by the fact that:

1.      the Registrant registered the Domain Name primarily for the purpose of disrupting the business of the Complainant who was and continues to be a competitor of the Registrant; and/or

2.      the Registrant has intentionally attempted to attract, for commercial gain, internet users to the Registrant’s website by creating a likelihood of confusion with the Trade-Mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website;

3.      the Registrant continues to divert internet users from discovering the source and location of Cleveland Cyclewerks motorcycles, motorcycle parts and motorcycle accessories in Canada.


There is before the Panel no direct evidence of the Registrant’s intention in registering the Domain Name.  Such intention must therefore be based upon a common sense inference from the evidence before the Panel with respect to the communication between the Registrant and the Licensor prior to the registration of the Domain Name, the website to which the Registrant has caused the Domain Name to resolve, from the Registrant’s use of this website, and from the Registrant’s subsequent communication with the Licensor and the Complainant following the registration of the Domain Name.  

The facts before the Panel establish that:

1.      The Licensor’s representative appears to have authorized the Registrant’s representative to incorporate the Trade-Mark in the Domain Name prior to the registration of the Domain Name;

2.      Following the registration of the Domain Name, the Licensor’s representative appears to have confirmed the Registrant’s right to the Domain Name;

3.      According to the evidence submitted by the Complainant, the website to which the Domain Name resolves specifically states that the Registrant is “no longer associated with Cleveland Cyclewerks LLC and will not be distributing its products in Canada”.  The Panel is hard pressed to understand how, as alleged by the Complainant, the Registrant on this website is intentionally attempting to disrupt the Complainant’s business. 


The Panel therefore finds that the Complainant has not demonstrated that the Registrant registered the Domain Name in bad faith in accordance with the provisions of Paragraph 3.5 of the Policy. 

NO LEGITIMATE INTEREST
Paragraph 4.1 of the Policy requires that to succeed in the Complaint, the Complainant must provide some evidence that the Registrant has no legitimate interest in the Domain Name as the concept of “legitimate interest” is provided for in paragraph 3.4.

Paragraph 3.4 of the Policy provides that:

The Registrant has a legitimate interest in a domain name if:

(a) the domain name was a Mark, the Registrant used the Mark in good faith and the Registrant had Rights in the Mark;

(b) the Registrant used the domain name in Canada in good faith in association with any wares, services or business and the domain name was clearly descriptive in Canada in the English or French language of: (i) the character or quality of the
wares, services or business; (ii) the conditions of, or the persons employed in,
production of the wares, performance of the services or operation of the business;
or (iii) the place of origin of the wares, services or business;

(c) the Registrant used the domain name in Canada in good faith in association with any wares, services or business and the domain name was understood in Canada to be the generic name thereof in any language;

(d) the Registrant used the domain name in Canada in good faith in association with a non-commercial activity including, without limitation, criticism, review or news reporting;

(e) the domain name comprised the legal name of the Registrant or was a name,
surname or other reference by which the Registrant was commonly identified; or

(f) the domain name was the geographical name of the location of the Registrant’s
non-commercial activity or place of business.

In paragraphs 3.4 (d) “use” by the Registrants includes, but is not limited to, use to identify a web site.

There is evidence before the Panel that pursuant to paragraph 3.4(a) of the Policy the Registrant had Rights in the Trade-Mark and that the Registrant used the Domain Name in good faith prior to the break-down of its relationship with the Licensor and the appointment of the Complainant as the Licensor’s exclusive Canadian distributor.

On the face of it, the Domain Name appears to be descriptive of the place of origin of the wares, services or business of the Registrant as provided for in paragraph 3.4(b) of the Policy as the Registrant was at the date of registration of the Domain Name intending to distribute the Licensor’s products in Canada.

Similarly, it appears that the Domain Name when it was registered was a name by which the Registrant at that time was identified by as its corporate name at that time was Cleveland Cyclewerks Canada Inc. 

The Panel finds that there is ample evidence before it that the Registrant had at the time of registration of the Domain Name a legitimate interest in the Domain Name.

DECISION
The Panel finds that the Complainant has not satisfied the onus placed upon it by paragraph 4.1 of the Policy and is therefore not entitled to the remedy sought by it under the Complaint, namely an order that ownership in the Domain Name be transferred from the Registrant to the Complainant.

REGISTRANT’S CLAIM FOR COSTS
In the Response, the Registrant has included an application to the Panel requesting that the Panel exercise the authority granted to it pursuant to paragraph 4.6 of the Policy and order that the Complainant pay to the BCICAC in trust for the Registrant the sum of $5,000 for the purpose of deferring the Registrant’s costs.

Paragraph 4.6 of the Policy states as follows:

4.6 Bad Faith of Complainant. If the Registrant is successful, and the Registrant
proves, on a balance of probabilities, that the Complaint was commenced by the
Complainant for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of any Registration which is the subject of the Proceeding, then the Panel may order the Complainant to pay to the Provider in trust for the Registrant an amount of up to five thousand dollars ($5000) to defray the costs incurred by the Registrant in preparing for, and filing material in the Proceeding. The Complainant will be ineligible to file another Complaint in respect of any Registration with any Provider until the amount owing is paid in full to the Provider.

The Registrant bases its claim for costs on what it claims include the following examples of the Complainant’s bad faith:

1. The fact that when submitting the Complaint, the Complainant failed to include the certification required by Rule 3.2(o) of the Rules which requires that the Complaint conclude with the certification of the Complainant in the following form followed by the signature of the Complainant or its authorized representative:


CERTIFICATION OF COMPLAINANT IN THE MATTER OF A COMPLAINT IN RESPECT OF DOMAIN NAME REGISTRATION(S): 

1.      By initiating this Proceeding, the Complainant named below (the “Complainant”) agrees that it will be bound by the CIRA Domain Name Dispute Resolution Policy (the “Policy”) and the CIRA Domain Name Dispute Resolution Rules (the “Resolution Rules”) in respect of the Proceeding.

2.      The Complaint certifies that it is eligible to initiate the Proceeding under the Policy and that it does not owe to any Provider in trust any amount pursuant to a finding in a prior Proceeding that the Complainant commenced such Proceeding for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of the Registration which was the subject of that Proceeding.


3.      The Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate, that this Complaint is not being commenced for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of the Registration which is the subject of the Proceeding, and that the assertions in this Complaint are warranted under the Policy and the Resolution Rules and under applicable Canadian law, as it now exists or as it may be extended by a good faith and reasonable argument.

4.      The Complainant agrees that any claim or remedy which it may have concerning the domain name(s), the Registration(s), the dispute, the Proceeding or the dispute’s resolution shall be solely against the Registrant and agrees that in no event shall CIRA, the Registrant’s Registrar, the Provider or their respective directors, officers, members, agents, representatives or any Panellist be liable to the Complainant or any other person for any loss, damages or expense including, without limitation, any special, indirect, incidental, exemplary, punitive or consequential damages, or economic loss or damages resulting from loss of use, lost business revenue, lost profits or third party damages arising from or in any way connected with: 

(A)  the application of the Policy or the Resolution Rules by any of them;

(B)   a decision rendered by a Panel in a Proceeding;

(C)   CIRA’s compliance with any order, ruling, decision or judgment made by a Panel in a Proceeding or by any court, tribunal, board, administrative body, commission or arbitrator; or

(D)  any action taken or not taken by CIRA, the Registrant’s Registrar, a Provider, or a Panel in consequence of the Resolution Rules or the Policy; provided that in no event is this limitation of liability intended to limit the liability of the Provider for the Provider’s gross negligence or willful misconduct or a member of the Panel for the member’s gross negligence or willful misconduct.

5.      The Complainant will submit, with respect to any challenge to a decision in the Proceeding, to the jurisdiction of a superior court of a province or territory of Canada having jurisdiction over the Registrant pursuant to the rules of such court or, if no such court has jurisdiction pursuant to its rules, to the jurisdiction of the superior court of the province or territory in Canada in the city in which the Provider has its principal place of business in Canada, as posted on the Provider’s website, or the jurisdiction of the superior court in the City of Ottawa in the Province of Ontario.

6.      The Complainant acknowledges and agrees that, if, pursuant to the Policy the Panel orders the Complainant to pay an amount to defray the costs incurred by the Registrant in preparing for, and filing material in, the Proceeding:

(a)    the Complainant shall pay such amount to the Provider in trust for the Registrant within thirty (30) days of the date the Provider receives notice of the decision, failing which the Complainant shall be ineligible to file another Complaint in respect of any Registration after such thirty (30) day period until such monies are paid in full to the Provider; and

(b) such amount is a debt due from the Complainant to the Registrant payment of which may be enforced by the Registrant in a court of competent jurisdiction;
2.  The Complainant based its Complaint on non-existent trademarks, and failed to disclose that the US trademark application upon which the Canadian trademark application was based has been refused by the USPTO;

3.  The Complainant’s recital of the material facts upon which the Complaint was based was not   “complete and accurate” as required by paragraph 3 of the certification referred to above;

4.      The Complaint misrepresented the relationship that existed between the Registrant and the Licensor prior to the Complainant establishing a relationship with the Licensor; and

5.  Rather than a case of cyper-squatting, the matter before the Panel is more properly categorized as a business dispute arising from the termination of a distribution agreement and clearly outside the scope of these proceedings.


CLAIMANT’S RESPONSE TO REGISTRANT’S CLAIM FOR COSTS
As referred to above, the Claimant was entitled to respond to the Registrant’s claim for costs pursuant to paragraph 4.6 of the Policy.  

In its response, the Claimant directed the Panel’s attention to Vancouver Community College v. Eminata Group (CIRA 00148, April 26, 2010) and District of West Kelowna v. Baremetal.com.Inc. (CIRA 00137, previous panel decisions dealing with paragraph 4.6 of the Policy and instances where the panel found that the complainant had not acted in bad faith and therefor refused to grant an order for costs.

In its response, the Claimant submitted that the Trade-Mark is used in Canada by the Licensor and by the Complainant under the aegis of the License Agreement in association with the sale and distribution of motorcycles, motorcycle parts and motorcycle accessories.  The Claimant further submitted that the prosecution of the U.S. Trade-mark Serial No. 85506918 is an ongoing exercise with the USPTO and will not be resolved during the hearing of this matter.  And finally, the Claimant submitted that the Registrant cannot make the case that it has a legitimate interest in the Domain Name as the Licensor never completed an exclusive distribution or intellectual property license agreement for Canada.  It submits that the Licensor did not grant to the Registrant permission to use the Trade-Mark in the registration of the Domain Name and that the Complainant has “further completed an intellectual property license agreement with Cleveland Cyclewerks LLC with respect to the licensed use in Canada” of the Trade-Mark.

DECISION ON REGISTRANT’S CLAIM FOR COSTS
To be successful in its request that the Panel make an order pursuant to paragraph 4.6 of the Policy, the Registrant must convince the Panel that the Complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of the Domain Name.  In this context, the Registrant characterizes the conduct of the Complainant as engaging in what has been termed “Reverse Domain Name Hijacking”, or “RDNH”, and the Registrant submits that this RDNH on the part of the Complainant establishes that the Complainant is attempting, unfairly and without colour of right, to obtain a transfer to it of the Domain Name.

In Globe Media International Corporation v. Bonfire Developments Inc. (CIRA 00124, April 15, 2009) and subsequently, Globe Media International Corporation v. Bonfire Developments Inc. (CIRA 00135, May 9, 2009), the panel found that the complainant in that matter had engaged in RDNH and, after directing the registrant to make its submissions to the Provider on costs for a determination by the panel, subsequently made an order against the complainant pursuant to paragraph 4.6 of the Policy in the amount of $5,000.

The panel in Globe Mediawas faced with a situation similar to the matter at hand.  It observed in paragraph 7 of that decision that “a number of the allegations made on both sides would require a trier of fact with the capability to assess claims and witnesses”.
In coming to its decision that the complainant had engaged in RDNH, the panel in Globe Media observed that a panel must consider a number of factors, including the conduct of the complainant and the nature of the domain name.  

The matter at hand as has been asserted on numerous occasions by both the Complainant and the Registrant is really a matter that involves a disputed business relationship.  The Domain Name is merely one aspect of this dispute.  The dispute itself it better left to the courts and not to this forum.

In its Complaint, the Complainant:

1.      Did not include the certificate required by Rule 3.2(o);

2.      Until reference was made thereto by the Registrant in the Response, did not address the dealings among the Registrant, the Licensor and the Complainant, although the Complainant certainly knew about some aspects thereof;

3.      Again until referenced by the Registrant in the Response, made no mention of the License Agreement;

4.      When the License Agreement was produced in evidence, had no response to Sections 8 and 10 thereof which provide that the Claimant has no rights in the Trade-Mark; and

5.      Claims in its response to the Registrant’s claim for costs that an intellectual property agreement exists between the Claimant and the Licensor granting the Claimant rights in the Trade-Mark, although a copy of such intellectual property agreement has not been submitted in evidence before us.

We agree with the Registrant that the Complainant in its submissions has not been “complete and accurate” as required by paragraph 3 of the certification referred to above. 

We also question how the Complainant even with the advice of counsel could be claiming that it has “Rights” in the Trade-Mark when the License Agreement clearly provides to the contrary.  In the Vancouver Community College and District of West Kelowna decisions referred to us by the Complainant, the complainant in each of these situations had at least a colour of right to the Mark underlying the domain name.  In this matter, we are hard pressed to understand how the Complainant is reasonably able to claim any colour of right to the Trade-Mark.

Paragraph 4.6 requires that to be entitled to an order for costs, the Registrant must prove, on a balance of probabilities, that the Complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to obtain a transfer to it of the Domain Name.  Given that the Complainant has failed to establish any Rights in the Trade-Mark, we struggle to understand how the Complainant could believe that it had a “colour of right” to seek a transfer of the Domain Name.  

Rather, given the context of the dispute among the Registrant, the Licensor and the Complainant with respect to the distribution of the Licensor’s products in Canada, instead of seeking a remedy through a court of competent jurisdiction, there is a very strong suggestion that the Complainant has sought to use this process as a short cut to acquire the Domain Name.  In other words, that the Complaint does constitute a serious attempt at an RDNH on the Complainant’s behalf.

ORDER ON REGISTRANT’S CLAIM FOR COSTS
The Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking and that such activity on behalf of the Complainant constitutes an improper attempt under paragraph 4.6 of the Policy to obtain a transfer of the Domain Name to the Complainant.  

Therefore, the Panel has determined to exercise its authority pursuant to paragraph 4.6 of the Policy and to award the Registrant costs.

The Panel hereby orders that the Complainant pay to the BCICAC in trust for the Registrant the sum of $5,000 to defray the costs incurred by the Registrant in preparing for, and filing material in this matter.  

Dated:  May 27, 2013.

Elizabeth Cuddihy, Q.C., ICA, Panel Member, Thomas Manson, Q.C., C. Arb., 
Panel Member, and R. John Rogers, Panel Chair.
Per:

____________________________________
R. John Rogers, Panel Chair




By Zak Muscovitch.

Not all domain name disputes are covered by the UDRP. In fact, the UDRP is only intended to cover a certain kind of domain name dispute.

Back on October 24, 1999, ICANN’s Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, clearly stated what the intended scope of the UDRP was to be. 

The UDRP was to be for the:

administrative resolution for only a small, special class of disputes. Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide.”

Accordingly, the UDRP is only supposed to be used for true “cybersquatting” cases. Other kinds of domain names disputes, such as genuine disputes involving allegations of trademark infringement, contractual disputes, and business disputes, for example, are supposed to be brought to courts instead of to an ICANN dispute resolution provider.

In the recent case of Estate of Malcolm McLaren v. Paul Norstrum August, over the domain name malcolmmclaren.com, the UDRP Panelist, Bruce E. Myerson, correctly decided that the dispute was not within the proper scope of the UDRP. The case involved the estate of the late English fashion and music impresario, against a former associate of Mr. McLaren. The Panelist stated as follows:

“Based upon the allegations of the parties, the Panel finds that this is a business and/or contractual dispute between the Complainant and Respondent that falls outside the scope of the UDRP.  
For the foregoing reasons, the Panel concludes that the instant dispute falls outside the scope of the UDRP.” 

Not only did the Panelist correctly uphold the proper scope of the UDRP in terms of it not being intended to resolve genuine business disputes, but the Panelist also made important references to another aspect of domain name disputes that may cause a particular dispute to fall outside of the Policy, even where subject-matter wise, it ought to be within the scope of the Policy:


“Moreover, this case , is like the situation in [Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007)] in that:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible.  National courts are better equipped to take evidence and to evaluate its credibility.”

Accordingly, as the Panel pointed out, even where a particular domain name dispute may be a true “cybersquatting” case that should normally be adjudicated under the UDRP, because there are no cross-examinations, discoveries, and live trials in a UDRP proceeding, a Panelist ought to dismiss a complaint where it is not appropriate to make important factual determinations without such a full hearing that can only be provided by a court.

One of the most serious mistakes that I see intellectual property counsel make, is trying to fit a legitimate dispute into a UDRP rather than take the proper course of action and proceed with a regular court case.


GOOGLE just lost a dispute over the domain name, Oogle.com. This is the third time that I assisted a client in fending off a UDRP from Google The other cases were over Groovle.com and Goggle.com. Thank you to the Panelists for their time and decision and in particular to their well reasoned explanation of “beneficial ownership” which adds a lot of clarity to UDRP law.. The text of the case is below:

national arbitration forum

 

DECISION

Google Inc. v. Blue Arctic LLC
Claim Number: FA1206001447355

 

PARTIES

Complainant is Google Inc. (“Complainant”), of Mountain View, California, USA, represented by Anne H. Peck, Gavin L. Charlston and Morgan A. Champion of Cooley LLP, Palo Alto, California, USA.  Respondent is Blue Arctic LLC (“Respondent”), of Kissimmee, Florida, represented by Zak Muscovitch of The Muscovitch Law Firm, of Toronto, Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oogle.com>, registered with Moniker.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 6, 2012.
On June 8, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <oogle.com> domain name is registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oogle.com.  Also on June 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On July 2, 2012, Respondent submitted a Response.
On July 9, 2012, Complainant submitted an additional statement.  On July 10, 2012, Respondent submitted an objection to Complainant’s additional statement and, “in the alternative,” an “Additional Response of the Respondent.”  The Panel determines that these additional documents were timely submitted pursuant to the National Arbitration Forum’s Supplemental Rule 7 and, accordingly, the Panel accepts them.
On July 12, 2012, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as the Chair of the three-member Panel along with Reinhard Schanda and Professor David E. Sorkin as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
·         Complainant’s search engine “has become one of the largest, most highly recognized, and widely used Internet search services in the world.”
·         “The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin,” and Complainant’s “services have been publicly available under the GOOGLE mark since 1997.”
·         “As reflected in [Complainant’s] trademark registrations and affirmed by [Complainant’s] officers in filings made to the U.S. Patent & Trademark Office under penalty of perjury, [Complainant] has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997 and in connection with other products and services since early 1999.”
·         The Disputed Domain Name was “originally registered on February 7, 1999” and “transferred to the current registrant in late 2004.”
·         The Disputed Domain Name “resolves to a variety of adult websites” and “has previously been used to host websites that blatantly copy the Google logo, recreate the overall look and feel of the Google website, and create confusion as to whether the website is sponsored by, endorsed by, or affiliated with Google.”
·         The Disputed Domain Name is currently being offered for sale “on a common domain name auction site” for $300,000.
·         The Disputed Domain Name is confusingly similar to the GOOGLE trademark because it “merely delete[s]” one letter from a famous mark and “appears intended to capitalize on frequent user misspellings or typographical errors.”
·         Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,  “the GOOGLE Mark is so well known throughout the world that it is difficult to conceive of any purported rights or legitimate interests Respondent may claim in the Domain Name”; “Respondent is not commonly known as the Domain Name or any name containing Complainant’s GOOGLE Mark” because “there is no indication it is known by that name”; “Complainant has not authorized or licensed Respondent to use any of its trademarks in any way”; the Disputed Domain Name “currently resolves to a website offering sexual services and displaying pornographic and profane content”; the Disputed Domain Name is “an example of typosquatting”; and because “the Domain Name has historically resolved to websites mimicking the look and feel of Google’s home page . . . Respondent is now and has historically been capitalizing on the near identity between the Domain Name and Google’s famous trademark to generate revenue from consumers who are seeking Google’s services and arrive at Respondent’s website by mistake.”
·         Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “[t]he fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Name by Respondent, make it extremely unlikely that Respondent registered the Domain Name without independent knowledge of Google”; “even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith”; “[p]rior use and registration of the Domain Name by a third party is irrelevant for purposes of evaluating Respondent’s bad faith”; “Respondent’s current use of the Domain Name to divert Google’s users to a fee-based sexual networking site that contains pornographic and vulgar content establishes Respondent’s bad faith”; “Respondent’s recent use of the Domain Name to obtain users’ personal information through scam survey sites is evidence of phishing and represents bad faith” (internal punctuation omitted); “it is impossible to conceive of any potential legitimate use of the Domain Name”; “[w]here a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith” (internal punctuation omitted); “Respondent’s use of Complainant’s famous trademark in the Domain Name, combined with the offer to sell the domain for hundreds of thousands of dollars, amounts to bad faith use of the Domain Name”; and ““registration and use of a domain name that differs from Complainant’s mark by only the deletion of one letter indicates ‘typosquatting’, which is evidence of bad faith registration and use” (internal punctuation omitted).
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
·         A declaration provided by Christopher Neuman states that he is “the sole member and manager of” Respondent and that he “personally registered” the Disputed Domain Name on or about February 7, 1999, when, at the age of 13, he “carried on business under a fictional unregistered business name, namely Fusion3k Designs, and accordingly registered the Domain Name under Fusion3k Designs.”
·         In the declaration, Neuman states that he has “been the continuous and uninterrupted beneficial owner of the Domain Name since I originally created it on February 7, 1999,” and that the “only reason why I ever changed the nominal registrant details was to reflect my current business name, which evoled from Fusion3k Designs to Blue Arctic (another unregistered business name) to most recently Blue Arctic LLC, a registered company.”
·         The declaration further states: “My reason for registering the Domain Name was because in or about 1998 or 1999, I had become acquainted through the online world of software programming and website design, with another young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
·         The declaration further states: “Through my friendship with Oogle, I learned that Oogle had a personal website associated with the domain name, [<oogle.net>], which Oogle had selected due to Oogle’s online moniker of ‘Oogle’.  I noticed that Oogle had not registered [<oogle.com>] and proceeded to register the Domain Name with the intention of collaborating on a website with Oogle.”
·         The declaration further states: “At no time prior to my registration of the Domain Name did I ever for even a second consider that [<oogle.com>] was an attractive domain name due to the existence of [<google.com>] or the Complainant’s trademarks.”
·         The declaration further states that Neuman previously used the Disputed Domain Name in connection with an “online shopping website” and later intended to use it as “a forum for programmers.” 
·         The declaration further states: “In 2010 there were a few weeks where the Domain Name displayed a certain logo which was created and uploaded by a friend of mine, David Shiffman.  This logo resembled the Google logo but it had originally had a playful tag line of, ‘Due to the economy the G has been laid off’.  At the time we thought it was a funny and innocent usage, however upon reflection, I had it taken down after only a matter of weeks.”
·         The declaration further states: “The Domain Name was also temporarily used in connection with adult matchmaking services, but I thought that this was lawful and permissible.”
·         The name “Oogle” “has been used by numerous parties and business for many years, in connection with all manner of goods and services that have absolutely nothing to do with the Complainant.”  In support thereof, Respondent cites the following U.S. trademark registrations: Nos. 820,267; 1,329,546; 1,392,389; 2,496,755; 3,889,157; and 2,883,240.
·         “Harvard University has published a study which shows that over 15% of Americans use the term ‘Oogle’ as a word to describe gawking at someone, and 4.5% of Americans use the term ‘ogle’ and ‘oogle’ interchangeably.”
·         With respect to paragraph 4(a)(i) of the Policy: “The Respondent acknowledges that the Complainant has several registered trademarks for GOOGLE in connection with its widely known search engine and related services” and “[t]he Respondent further acknowledges that the Domain Name is sufficiently ‘confusingly similar’ to the Complainant’s current trademark rights for the purposes of meeting this part of the three-part test under the UDRP, based upon the Complainant’s date of first use of its registered trademarks.”
·         With respect to paragraph 4(a)(ii) of the Policy: “Years before any notice of this dispute, the Domain Name was used in connection with a bona fide offering of goods and services, namely the shopping website from 2000-2002 . . . and the programming related website from 2002-2003.”
·         With respect to paragraph 4(a)(iii) of the Policy: The Disputed Domain Name could not have been registered in bad faith because “the evidence shows that there can be no doubt that the genuine reason for registering the Domain Name in the first place, had nothing to do with the Complainant, who was barely known at that time in 1999”; changes in the name of the registrant of the Disputed Domain Name since 1999 are irrelevant and do not constitute a new registration because “Christopher Neuman has had uninterrupted and continuous beneficial ownership of the Domain Name from its original creation to-date.”
C. Additional Submissions
In its additional submission, Complainant contends, in relevant part, as follows:
·         “[O]ther than the testimony of Mr. Christopher Neuman, self-identified as the ‘sole member and manager’ of Respondent, Respondent provides no documentary evidence setting forth the ownership of the Domain Name prior to December 13, 2002, or the transfer of ownership from Fusion3k Designs, the owner of the Domain Name as of that date, to Respondent.”
·         “[T]he uncontroverted evidence establishes that Respondent has, since coming into possession of the Domain Name in late 2004, repeatedly and willfully used the Domain Name to take advantage of Google’s users and to trade off the goodwill in and extensive investment Google has devoted to the protection of the famous GOOGLE Mark.”
·         “[W]hile Respondent goes to great efforts to cast itself in a positive light, its knowing and willful abuse and deception of Google’s users over the course of many years, for its own financial gain, demonstrates a pattern of behavior that undermines its claims of good faith and makes clear its wrongful intent and motivation in registering and using the Domain Name.”
·         Complainant sent a demand letter to Respondent in September 2009; initially, Respondent offered to sell the Disputed Domain Name for $600,000 and, later, Respondent stopped used the Disputed Domain Name.  Then, in March 2010, Neuman contacted Complainant and indicated that he was “very interested in setting up a parking page for [<oogle.com>],” which would “give Google full access to the contents displayed on [<oogle.com>].”
·         “[T]he GOOGLE Mark had become very well known and recognized far prior to February 1999,” so “Respondent’s attempt to deny bad faith on this basis is therefore without merit.”
·         “Mr. Neuman avers that, even as a thirteen-year-old child, he was a ‘programmer and website designer’ and participated in ‘online chats and forum postings’ relating to ‘software programming and website design.’ . . . An individual with such experiences was likely to be highly aware of all available internet search engine options in 1999, and in particular, the well-regarded and highly publicized Google search engine.”
In its additional submission, Respondent contends, in relevant part, as follows:
·         “[T]he earliest available historical Whois information from 2002… clearly shows that Christopher Neuman was the administrator of the Domain Name, with identical address as the registrant, which was an unregistered business name that Christopher adopted at the age of 13.”
·         “[T]here is no reasonable basis for creating the fiction that the name was registered ‘like new’ by a stranger” in 2004.
·         A letter from Respondent’s attorneys dated September 21, 2009, in response to the demand letter sent by Complainant, states: “Our client registered [<oogle.com>] in February 1999 based on the nickname of one of our client’s friends, a programmer who went by the name ‘oogle’ on various message boards in the 1990’s . . . . In registering the domain name [<oogle.com>], our client was not in any way referring to Google, Inc.”
·         “[T]here is nothing inherently wrongful in offering to sell a domain name for in excess of out of pocket expenses, when the domain name was registered in good faith to begin with, i.e. was not registered because someone else‘s trademark rights.”

FINDINGS

The record does not support a finding that the Disputed Domain Name has been registered and is being used in bad faith.  As a result, and for the reasons set forth below, the Panel makes no findings with respect to whether the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights or whether Respondent has rights or legitimate interests in respect of the Disputed Domain Name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2)  Respondent has no rights or legitimate interests in respect of the domain name; and
(3)  the domain name has been registered and is being used in bad faith.
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy.  Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc., D2005-1246 (WIPO June 7, 2012) (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element . . . it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter, D2005-1289 (WIPO Jan. 31, 2006) (finding that, where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”).  Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – with respect to the Disputed Domain Name, the Panel makes no findings with respect to the first or second elements of the Policy.

Identical and/or Confusingly Similar

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the first element of the Policy, paragraph 4(a)(i), the Panel refrains from doing so.

Rights or Legitimate Interests

Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.

Registration and Use in Bad Faith

The Panel initially addresses the issue raised by Respondent that it has been the “beneficial owner”[1] of the Disputed Domain Name since it was created on February 7, 1999, even though the current registrant is identified as Blue Arctic LLC and the original registrant appears to have been Fusion3k Designs.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 3.7, states:
Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
This consensus view has been adopted in at least a few decisions that have referred to the concept of a “beneficial owner” of a domain name, including Intellogy Solutions, LLC v. Schmidt, D2009-1244 (WIPO Dec. 24, 2009).  In that case, the panel found that a “transfer did not effect any material change in the beneficial ownership of the domain name” given the relationship that one individual had to both registrants, including serving as a sole proprietor “doing business as” one registrant and as CEO of another registrant.
The beneficial owner concept also arose in Justin.tv, Inc. v. Amador Holdings Corp, FA 1436777 (Nat. Arb. Forum May 17, 2012).  There, the panel said:
When assessing bad faith registration, one normally need only trace the registration date back to the most recent transfer of the domain name . . . [but] [t]he strictness of the rule may be relaxed where a respondent can demonstrate that there has been no change in beneficial ownership between initial date of registration and last transfer. 
Although the panel in Justin.tv refused to accept that the current registrant of the disputed domain name had been the beneficial owner since its creation, this refusal was based in part on the presence of “various registrants” through the years, the “repeated use of privacy services” and [s]kepticism at th[e] [Respondent’s] explanation . . . invited by the copycat nature of the Respondent’s website.”
Similarly, in Int’l Truck Intellectual Prop. Co., LLC v. B, D2011-0599 (WIPO June 7, 2011), “the Respondent allege[d] that it has always been the underlying owner of the disputed domain name.”  But, the panel refused to accept this because “the evidence of record does not clearly establish an unbroken chain of underlying ownership” and “[t]here is in fact scant evidence in the record regarding the original registrant’s actual or intended use of this disputed domain name.”
Despite these mixed outcomes, the WIPO Overview 2.0 and the decisions cited above seem consistent on the following: With adequate explanation and in the absence of efforts to conceal a domain name registrant’s identity, the current registrant of a domain name may be considered to have been the beneficial owner of the domain name since its creation date, despite changes in the WHOIS record.  This Panel adopts this view, although it cautions that the rule should be applied only in narrow circumstances where the explanation is not unbelievable and is supported by appropriate evidence.
In light of the above, this Panel finds that the Respondent in this proceeding, Blue Arctic LLC, has been the beneficial owner of the Disputed Domain Name since it was created on February 7, 1999.
Accordingly, the Panel must determine whether the Disputed Domain Name “has been registered” in bad faith when registration occurred on February 7, 1999, despite the Respondent’s subsequent activities. See, e.g., RapidShare AG v. Ilya, D2010-1105 (WIPO Aug. 17, 2010) (“[T]he Complainants have failed to show that there was registration in bad faith”).
It is unclear whether, on February 7, 1999, Complainant had rights in the GOOGLE trademark.  For example, although the Complaint states that “Google has used the GOOGLE mark in U.S. commerce in connection with its services since September 1997,” Complainant apparently did not own any trademark registrations for the mark on February 7, 1999, and Complainant had received only limited media attention by that time.
In any event, regardless of whether Complainant had obtained any common law trademark rights as of February 7, 1999, Respondent has provided a declaration clearly stating that it (as beneficial owner of the Disputed Domain through registration by Mr. Neuman) registered the Disputed Domain Name not “due to the existence of Google.com or the Complainant’s trademarks” but instead due to his relationship with a “young programmer named Justin Tunney, who went under the online moniker of ‘Oogle’ or ‘Criminal Oogle’.”
Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.  See, e.g., Jumblatt v. SlantMedia, D2012-1011 (WIPO June 28, 2012) (“The Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”); Thump Records, Inc. v. WebPros, FA 446911 (Nat. Arb. Forum May 11, 2005) (referring to “[t]he limited scope of the Policy”); and Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum ) (referring to “the very narrow scope of the UDRP procedure”).
In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development.  The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.”  Trans Continental Records, Inc. v. Compana LLC, D2002-0105 (WIPO Apr. 30, 2002).
In any event, on the record before it, the Panel finds that Complainant has not prevailed in showing that the Disputed Domain Name “has been registered” in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <oogle.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg (chair), Reinhard Schanda and Professor David E. Sorkin, Panelists
Dated: July 25, 2012


[1] The concept of “beneficial owner” in this proceeding (where the registrant identified in the Whois database has changed prior to the filing of the complaint) is distinct from the concept of “beneficial owner” in cases in which a complaint was filed against a privacy or proxy service (and the identity of the registrant changed after the filing of the complaint).  See, e.g., Baylor Univ. v. Domains by Proxy, Inc., FA. 1145651 (Nat. Arb. Forum Apr. 11, 2008).

Released October 11, 2011.

NATIONAL ARBITRATION FORUM

DECISION

Google Inc. v. Goggle.com, Inc.
Claim Number: FA1108001403690

PARTIES
Complainant is Google, Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Goggle.com, Inc. (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm, Ontario, Canada.

REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are registered with ENOM, INC., registered with NETWORK SOLUTIONS, LLC., and registered with Domain Name Inc.

PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O’Connor as Chair.

PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2011; the National Arbitration Forum received payment on August 18, 2011.

On August 17, 2011, ENOM, INC. confirmed to the National Arbitration Forum that the domain name is registered with ENOM, INC., and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 18, 2011, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 18, 2011, Domain Name Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Domain Name Inc. and that Respondent is the current registrant of the name. Domain Name Inc. has verified that Respondent is bound by the Domain Name Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

On August 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@goggle.com, postmaster@goggle.net, and postmaster@goggle.org. Also on August 23, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on September 13, 2011.

Complainant submitted an Additional Submission on September 19, 2011 in compliance with Supplemental Rule 7. Respondent submitted an Additional Submission on September 21, 2011 in compliance with Supplemental Rule 7.

On September 27, 2011, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O’Connor as Chair.

RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS
A. Complainant
Complainant submits that it began operating under the GOOGLE name and mark in 1997. Complainant alleges that it uses its GOOGLE mark for its search engine and other Internet related services through its official domain name and website. Complainant presents numerous trademark registrations for its GOOGLE mark that it owns with governmental trademark authorities worldwide. Below is a sampling of such registrations:

United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,806,075 registered January 20, 2004);
IP Australia (“IPA”) (Reg. No. 1,049,124 registered April 4, 2005);
Barbados Corporate Affairs and Intellectual Property Office (“CAIPO”) (Reg. No. 81/20986 registered January 19, 2007); and
Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA539,576 registered January 12, 2001).

Complainant states that it had previously filed a UDRP proceeding against the original registrant of the disputed domain names. Complainant states that the parties entered into a confidential settlement agreement and the proceeding was dismissed. Complainant further states that since the domain names have been subsequently transferred to a third-party with whom it has no prior dealings, the agreement was not set forth in the Complaint. Those trademark rights, in any event, predate the transfer to Respondent.

Complainant contends that the disputed domain names are confusingly similar to Complainant’s GOOGLE mark. Those domain names contain a misspelled version of the GOOGLE mark where the domain names simply replace the letter “o” with the letter “g” and add a generic top-level domain (“gTLD”).

Complainant contends that it has not authorized Respondent to use or register the disputed domain names. Further, Complainant argues that Respondent is not commonly known by the disputed domain names even though the WHOIS information indicates that the registrant is “Goggle.com, Inc.” because an Internet search does not return any results for that company name as a legitimate business.

Complainant further argues that Respondent cannot claim to be offering legitimate goods and services through the domain names because it is diverting Internet users to a website that intends to copy the look and feel of Complainant’s website and deceiving users into signing up for expensive text messaging plans. Complainant contends that such use is invariably a “phishing” scam in which Respondent receives the personal and financial information of unsuspecting Internet users, and turns around to turn a profit with such information. Further, Complainant submits screen shot evidence to show that the website resolving from the domain name looks and feels just like Complainant’s official website while using a close variation of Complainant’s logos.

Complainant alleges that Respondent gained possession of the disputed domain names in 2007 or early 2008. Complainant argues that Respondent acquired the domain names in order to effectuate some kind of phishing scheme in which Internet users are made offers for devices such as an “iPad 2” so long as they give personal information and sign up for text message plans for cellular phones.

Lastly, Complainant contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the GOOGLE mark.

B. Respondent
Respondent states that

[T]he Complainant has failed to disclose that it entered into a Co-existence Agreement which entitled the Respondent to register and use the disputed domain names subject to certain terms and conditions which were complied with

Respondent asserts that it purchased and registered the domain names in good faith and on reliance of the Co-existence Agreement. Respondent attaches the Co-existence Agreement (between Complainant and Knowledge Associates, the original registrant) and a Purchase and Assignment Agreement2 (between the original registrant and a company identified as 1158860 Alberta, Ltd).

Further, Respondent submits a letter, which was sent to Complainant before the purchase giving Complainant the right of first refusal as required under the terms of the Co-existence Agreement. Respondent states that it purchased the domain names from the original registrant based upon the Co-existence Agreement that was expressly placed within the Purchase and Assignment agreement, and that it has followed the required sections of that agreement. Lastly, Respondent states that the very terms of the Co-existence Agreement expressly and specifically contemplated such a future sale of the domain names and permitted such, so long as certain aspects of the agreement were also agreed to by the new purchaser.

Respondent argues that the domain names all contain the separate and unique term “goggle,” and cannot be found to be confusingly similar to Complainant’s good mark. Further, Respondent references the Co-existence Agreement that states, “the word goggle will not be considered as a misspelling of the word google.”

Respondent argues that the term “goggle” of the domain names is a real and separate word from Complainant’s mark, therefore permitting the Panel to find that the domain names are not confusingly similar to Complainant’s mark.

Respondent also references the Complaint that states that “the manner in which Respondent is using the Domain Names” is the issue here. Respondent contends that such a statement is an admission by Complainant that the domain names are not similar to the GOOGLE mark, and that Complainant is trying to prove confusing similarity by bringing in Respondent’s use of the domain name instead of an objective analysis of the mark’s and the domain names’ similarities.

Respondent argues that, contrary to Complainant’s assertions, it is in fact known as “Goggle” because its corporate name is “Goggle.com, Inc.,” and that it has carried out business under this name for nearly four years. Respondent submits its corporate registration as part of its annexes to show that it is in fact registered as a business under the “Goggle.com, Inc.” name. Respondent further notes that its banking information is under the “Goggle.com Inc.” name and that it receives all payments from third-party advertisers under its corporate name.

Respondent contends that it is using the disputed domain names in the same manner as the previous registrant did for advertising and marketing solicitations. Respondent argues that such uses were known, accepted, and condoned by Complainant before it signed the Co-existence Agreement with the prior registrant. Respondent notes that it is able to conduct the same type of business activity under the disputed domain names because the Co-existence Agreement that Complainant signed contemplated such use by future purchasers.

Respondent contends that Complainant’s recent objection about the recent use of “an arguably similar graphic logo” does not nullify Respondent’s long-standing use of the domain names for its advertising and marketing solicitations. Respondent also states that it removed the allegedly infringing logo from its website since that time, and that it has only been used for a short period of time. Respondent maintains that it has not violated the terms of the Co-existence Agreement, and that it has rights in the domain names.

Respondent also argues that the term “goggle” of the disputed domain names is common and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain names, of its rights to use those names.

Respondent contends that Complainant

buried the fact of the existence of the Co-existence Agreement. The only reference to the fact of its existence was hidden away in the only footnote to its entire 15-page Complaint.

Respondent notes that the terms of the Co-existence Agreement were all followed, and that Complainant had the right to purchase the domain names per that agreement and chose to let Respondent register them instead. Respondent further notes that Complainant’s possible motive in bringing this UDRP claim is that it has recently launched a new mobile service called “Google Goggles,” and wishes to use the domain names for its own gain. Therefore, Respondent contends that Complainant knew at the time of filing this Complaint that Respondent did not register or use the domain names in bad faith.

C. Additional Submissions
1. Complainant
Complainant contends that the two agreements referred to by Respondent have no bearing on the resolution of this dispute. First, there is no evidence that the agreements create and govern a relationship between Complainant and Respondent. Second, Respondent is a bad faith actor who acquired the disputed domain names with a clear intent to profit from and associate them with the Google mark and who is using the domain names in a fraudulent manner.

Complainant asserts that merely using a corporate name identical to one of the disputed domain names is not sufficient to establish that Respondent is commonly known by the disputed domain names. Complainant further argues that Respondent even admits that the only reason it established its corporate name is for owning the domain names.

Complainant contends that Respondent’s assertion of the proposition that it can use a generic term in a domain name to establish a legitimate interest therein is not accepted. Complainant contends that Respondent’s cited cases for such a proposition all deal with a descriptive term that is being used for its descriptive qualities, which is not the case here. Complainant asserts that Respondent is not posting any content related to eye wear or goggles, but is using the domain names to defraud Internet users who believe they may be on Complainant’s website.

Complainant notes that uses of confusingly similar domain names for “survey sites” are part of growing schemes to generate revenue. Complainant argues that Respondent has increasingly used the domain name and the content within its website to confuse Internet users into believing that Complainant is associated with the domain name.

Complainant notes that Respondent

even adopted a logo so closely similar to Google’s famous mark (and well known ‘doodles’) that it gave rise to numerous complaints by Google’s consumers who had been deceived into believing Respondent’s website was affiliated with Google.

Complainant argues that Respondent’s use of the domain names to commercially profit in such a manner is evidence that Respondent registered and is using the domain names in bad faith.

Complainant argues that Respondent’s allegation of reverse domain name hijacking is “no more than a desperate effort by Respondent to maintain its illegal and highly profitable enterprise.” Further, Complainant asserts that Respondent cannot bring in the previous agreement that Complainant had with the original registrant because it was not a party to such an agreement, and either way the agreement is confidential in nature and should not be disclosed.

2. Respondent
Respondent contends that there is no provision in the Policy for a “reply.” Rule 12 confines the submission of additional material beyond the Complainant and the Response to submissions provided at a Panel’s request only. Supplemental Rule 7, providing for the filing of Additional Submissions, must be viewed in accordance with the National Arbitration Forum’s statement on its website that it is up to the Panel, in accordance with Rule 10, to decide whether such Additional Submissions will be considered.

Respondent contends that Complainant does not even mention its un-exercised right of first refusal or its status as a Third Party Beneficiary under the Co-existence Agreement. Because Respondent has not breached the Co-existence Agreement, Complainant has no recourse thereunder and is thus proceeding under the Policy.

Respondent contends that it is an Assignee and permitted beneficiary under the original Co-existence Agreement above thereby granting Respondent standing to bring in the contract. Respondent attaches an Assignment and Assumption Agreement (between 1158860 Alberta. Ltd. and the Respondent).

Therefore, Respondent contends that this contract needs to be interpreted, which falls outside the scope of the UDRP.

FINDINGS
Admissibility of Additional Submissions
As correctly noted by Respondent, there is a conflict between Rule 12 (which allows the Panel to request further statements and documents beyond the Complaint and Response) and Supplemental Rule 7 (which provides for the automatic fee-based filing of Additional Submissions). As in previous cases, this conflict is usually resolved by the Panel, which has the discretion under Rule 10(d) to “determine the admissibility… of the evidence.”

In this matter, the Panel finds that the Additional Submissions help the Panel in its resolution of the matter and therefore has considered them, at least to the extent that they contain material that could not reasonably have been included in the Parties’ initial submissions.

Policy
The Panel declines jurisdiction in this matter, as discussed below, and therefore makes no findings.

DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

The evidence and arguments relied on by the Parties, relating to the Policy, are extensive and ably done.

But, the Panel finds that this case is foremost a business and/or contractual dispute between two companies that falls outside the scope of the Policy.

In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.

When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.

The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:

[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. … The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

The GOOGLE mark in this case is the very one that is the subject of the Co-existence Agreement. The disputed domain names in this case appear to be the very ones that are the subject of the Co-existence Agreement.

That agreement set forth the rights and obligations of the original registrant and Complainant regarding the Google Mark and the disputed domain names. Those rights include a consent by Complainant to the original registrant’s ownership and/or use of the domain names therein on the terms and conditions of the Co-existence Agreement. This consent appears to continue beyond the effective date of that agreement.

Respondent states that it is entitled to the rights of the original registrant (by reason of either being an assignee or a third party beneficiary), and that it is complying with the obligations of the original registrant.

Complainant in essence says that the Co-existence Agreement is irrelevant to its present claim under the Policy, and that the agreement is confidential.

The Purchase and Sale Agreement purports to transfer the rights and obligations of the original registrant under the Co-existence Agreement to a third party. The Assignment and Assumption Agreement purports to transfer those rights and obligations to the Respondent. The Co-existence Agreement includes a provision restricting public statements by both parties.

Does the Co-existence Agreement apply to the disputed domain names? Does Respondent stand in the shoes of the original registrant? Does the consent of Complainant extend in time to the current actions of Respondent and in person to the Respondent? Has the Respondent complied with the obligations of the original registrant? Does the “no public statements” provision in the Co-existence Agreement prohibit its disclosure or use as a defense by Respondent?

These are factual and legal issues that go far beyond the scope of the Policy.

These are factual and legal issues that must be resolved before any consideration of confusing similarity, legitimate rights and interest, and bad faith under the Policy can be made.

And they are issues of considerable complexity, best addressed by a court or other body equipped to take and consider evidence related to their resolution.

DECISION
The Panel declines jurisdiction over this Complaint and over Respondent’s related claim of Reverse Domain Name Hijacking.

The case is thus dismissed.

David E. Sorkin and Sandra J. Franklin as Panelists and Bruce E. O’Connor as Chair Dated: October 11, 2012


The following ADNDRC press release was brought to my attention by IDNFORUMS.COM members.

Announcement on Domain Name Dispute Cases Handled by The Asian Domain Name Dispute Resolution Centre (Hong Kong Office) Hong Kong.

5 October 2009 – The Asian Domain Name Dispute Resolution Centre (ADNDRC) announced today that the ADNDRC Council has formed a special committee to investigate whether, in view of the potential claims which have been made against the Hong Kong Office of the ADNDRC and its personnel, there are potential liabilities of ADNDRC caused by any wrongdoings or misconduct on the part of ADNDRC administrative personnel in Hong Kong, in connection with its handling of domain name disputes. The special committee is comprised of Hon Justice Michael Hartmann (chair), Mr Robin Peard JP and Mr Fred Kan. The special committee will report its findings to the ADNDRC Council for such action as it deems appropriate. Allegations made against certain individual ADNDRC Panelists will be investigated by the ADNDRC Council directly. Pending the outcome of these investigations, the ADNDRC will make no public comment on the matters which are the subject of the investigation. About Asian Domain Name Dispute Resolution Centre (“ADNDRC”) (Hong Kong Office)

The Asian Domain Name Dispute Resolution Centre (“ADNDRC”) is one of only four (4) providers in the world and the first and only one located in Asia, of dispute resolution services in regards to generic top level domain names (gTLD’s), which are the top level domains approved by the Internet Corporation for Assigned Names and Numbers (ICANN), which appointed the ADNDRC as a domain name dispute provider on 3 December 2001. To learn more about the ADNDRC, please visit: http://www.adndrc.org/.
 
………………………
 
This is simply shocking that there have been serious enough complaints and reasons for the ADNDRC to have to commence an investigation of possible misconduct.
 
In the 10 years of domain name dispute resolution, an investigation of misconduct by an arbitration provider is unprecedented. We must watch the outcome of this very carefuly….

ADDENDUM:
Here are some more apparent details from another news item:
http://www.abnnewswire.net/press/en/61579/Cheung-Kong-(Holdings)-Limited.html


SLIDETV.com, Inc. today declared victory in its domain name dispute with Slide, Inc. in what has been described as a modern day David vs. Goliath story. The Redwood City, California-based internet marketing company now plans to turn the drama into a feature film…..Which is strange for two reasons: First, this UDRP dispute was back in August, so its a little late to “declare victory”. Second, the movie doesn’t sound like it will be an Official Jury Selection at Cannes any time soon. You can read a little more about it here. Anyhow, congrats to the UDRP winner in this NAF dispute.


Well, that must suck for Wizz Air, the Hungarian discount airliner…..

Panelist Sebastian Hughes provided an exceptionally well-reasoned and fair decision in a Complaint brought by the airliner against Texas Wizzair critic, Holden Thomas, proprietor of WizzAirSucks.com.

Although the Panelist found that, “the addition of the word “sucks” as a suffix in the disputed domain name does little to distinguish the disputed domain name from the Trade Marks, and that there is a clear likelihood of confusion between the disputed domain name and the Trade Marks”, the Panel properly denied the Complaint upon analyzing the other two parts of the three-part UDRP test (“legitimate interest” and “bad faith registration and use”).

The Panelist wrote on “Legitimate Interest”: The Panel finds no evidence to suggest the Respondent, in registering the disputed domain name and setting up the Website, has misleadingly diverted consumers to the Website. Other than a bald assertion of tarnishment, the Complainant has not made any submissions nor filed any evidence to suggest that the Website has been set up and used in order to tarnish the Trade Marks. In any event, fair use criticism does not amount to tarnishment and is not proscribed under the Policy (Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014).

The Panelist wrote on “Bad Faith”: In any event, in all the circumstances, the Panel is of the opinion that the use of the disputed domain name in respect of genuine and non-commercial criticism of the Complainant does not amount to bad faith registration and use.

Having read and reviewed domain name dispute cases for many years, and having represented clients in numerous domain name disputes as a domain name dispute lawyer, I found the Panelist’s decision to be extraordinarily well-balanced, and he applied the UDRP in a precise and comendable manner.

Good to see that free speech on the Internet has been protected by domain name law.


In an ICANN WIPO UDRP decision released today, the Complaint brought against the registrant (represented by me) of ARMOURGAMES.COM was dismissed by UDRP Panelist Alistair Payne. The Panelist found, inter alia, that the domain name registrant had a legitimate interest in the domain name because he registered it after conceiving of the domain name, and before the Complainant had used the American spelling, i.e. without the “u”, even though the Complainant had registered its domain name a week earlier. The Panelist found that since the Respondent registered the domain name before the Complainant had acquired any trademark rights in its mark/domain name, the Respondent could not have registered the domain name in bad faith:

There is no evidence that the Complainant had made any substantive use of its domain name or of a corresponding trade mark by this stage. At best the Complainant’s first use date is one week prior to the Respondent’s registration of the Disputed Domain Name, but in all likelihood according to the Wayback machine evidence submitted by the Respondent, the Complainant started actively using its domain name or any corresponding trade mark after this time. Certainly the Complainant had no registered trade mark rights at this time and it seems extremely unlikely on the evidence presented that it had any common law rights either.

This case demonstrates how a Panelist properly interepred the ICANN UDRP as it was intended; narrowly, i.e. it is not intended as a broad trademark enforcement mechanism, but merely to catch so-called “cybersquatters”.

A copy of the decision is available here.


In a remarkable decision by the Federal Court of Canada dated, January 9, 2009, the Honourable Madam Justice Simpson brilliantly dismissed an unmeritorious claim against a domain name owner – even though the domain name owner didn’t even defend.

The publisher of a local Toronto Iranian-Canadian newspaper, called Salam Toronto, had brought an action for trademark infringement against the domain name registrant of SALAMTORONTO.COM.

The newspaper publisher operated under the domain names salamtoronto.net and salamtoronto.ca. The publisher also had a registered trademark for SALAM TORONTO in connection with newpaper publication, since February, 2004. the publisher’s friend had previously registered the disputed domain name, SALAMTORONTO.COM on the publisher’s behalf, but had let it lapse. It was picked up by a “Salam Toronto” Immigration Services.

The Plaintiff publisher brought an action for tradmeark infringement against the domain name owner. The Plaintiff alleged that the domain name, a web site, an automated reply email from the Immigation company, and its letterhead, all “infringed” the Plaintiff’s registered trademark.

The Judge efficieintly and correctly dismissed the claim, even though it was undefended, simply because “”Salam Toronto” was an “inherently distinctive trademark” and was therefore “weak”. Furthermore, and more importantly, there was  “no confusion” between newspaper publication and immigration services.

This is a fundamental tenet of tradmeark law, where a mark is not particularly famous or distinctive, more than one trader can use the mark, albeit in connection with sufficeintly different wares or services.

Good for the judge and congratulations to the domain name owner!