WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rogers Cable Inc v Arran Lal

Case No. D2001-0201

 

1. The Parties

1.1 The Complainant is Rogers Cable Inc, a company incorporated under the laws of the Commonwealth of Canada; and

1.2 The Respondent is Arran Raja Lal, of Groest 86-77, 1211ED, Hilversum, The Netherlands.

 

2. Domain Name and Registrar

2.1 The domain name upon which this complaint is based is <rogersvideo.com>. The registrar of the domain name as at the date of the Complaint is Network Solutions Inc ("NSI").

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Centre") by email on February 7, 2001 and in hard copy by courier on

February 12, 2001. The cover letter to the Complaint stated that the fees were to be made by wire transfer to WIPOís account. The Complaint stated that a copy of the Complaint was sent to the Respondent by fax, courier and first class post (including all Annexes) and by email (not including annexes), and that a copy had been sent to Network Solutions Inc. by first class post.

3.3 Upon receipt of the email copy of the Complaint, the Centre sent the Complainant an "Acknowledgment of Receipt of Complaint" on February 12, 2001 by email, with a copy being sent to the Respondent by post/courier, facsimile and email.

3.4 The Centre sent a Request for Registrar Verification to NSI on February 13, 2001 by email. NSI responded to the Centreís request by email on February 15, verifying (1) Network Solutions was in receipt of the Complaint, (2) that NSI was the Registrar for the domain name in dispute, (3) that the Respondent was the current registrant of the domain name in dispute, (4) the Respondentís contact details, (5) that Network Solutionsí 4.0 Service Agreement was in effect in relation to the domain name, and (6) that <rogersvideo.com> had an Ďactiveí status.

3.5 The Panel notes that although the domain name in dispute was registered on

July 9 1997, long before ICANN adopted the Policy, for the reasons outlined in Part IV of the Complaint this dispute is properly within the jurisdiction of the Policy.

3.6 The Centre sent the Notification of Complaint and Commencement of Administrative Proceeding on February 16, 2001 to the Respondent by post/courier, facsimile and email, and to the Complainant by email.

3.7 The Centre received the Response from the Respondent on March 5, 2001. The Response included a request that the dispute be dealt with by a single member panel. The Centre sent an Acknowledgment of Receipt (Response) to both the Respondent and Complainant on March 7, 2001 by email.

3.8 The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on

March 16, 2001 via email. A copy was also sent to the Panel on the same date by email.

3.9 All procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following information was asserted as fact in the Complaint and remains uncontested.

The Complainant has a division that operates a chain of 238 video stores in Canada known as "Rogers Video". That chain has been carrying on business since 1988 and serves approximately 500 000 customers per week in English-speaking Canada. The Complainant advertises the "Rogers Video" chain in Canadian TV, print and radio promotions. The Complainant dedicates considerable resources to differentiate its brand, particularly as a source of "family-friendly" entertainment. The Complainantís current website <rogersvideo.ca> sells movies but not adult movies.

4.2 The Complainantís Trade Marks

The Complainant claims that registration of its trademark is not required in Canada and but is acquired through use of the mark in commerce. The Complainant claims to have used the trademark "Rogers Video" since 1988 in connection with the sale and rental of movies.

The Panel notes that the Complainant has not claimed to "use" its trademark in the business of producing videos commissioned by its customers; rather its use of the mark relates to a business in which the Complainant receives a license from relevant video copyright holders permitting it to sell or rent a particular video to members of the Canadian public who have become "members" of a particular store operated by or on behalf of the Complainant.

4.3 Activities of the Respondent

The following information was asserted as fact in the Response and remains uncontested.

The Respondent is the sole proprietor of a business in Holland (and a number of other jurisdictions, not including Canada) in the business of custom production, direction, writing and arrangement of private video and photographic productions of an erotic nature and has operated this business under his own name since 1994. The Respondent does not distribute videos, but rather is a specialist in one-off productions made for specific clients. The Respondent has been selling its video production services under the name "Rogers Video" over the Internet since 1994.

From 1994 to 1997, the Respondent operated earlier versions of the present website currently situated on <rogersvideo.com> on virtual hosting services such as <demon.co.uk>, <hot-lava.com> and <geocities.com>. These websites had domain names such as: <www.hot-lava.com/rogersvideo>; <www.geocities.com/RogersVideo>; <www.rogersvideo.demon.co.uk>. The Panel notes that <www.geocities.com/RogersVideoNL>/ is still in existence and contains an entrance page substantially similar to the one currently served from the Respondentís website, <www.rogersvideo.com> and a link to the Ďindexa.htmlí page on the Respondentís website.

Entry into the Respondentís website requires the clicking on two "Rogers Video" logo links at the bottom of the Ďindex.htmlí and Ďindexa.htmlí page. A visitor is then presented with a pop-up window which asks the visitor to confirm their understanding of the erotic nature of the site and that they wish to proceed further into the site.

 

5. The Complainantís Contentions in the Complaint

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that the domain name in dispute is identical or confusingly similar to its unregistered mark ROGERS VIDEO, and the domain name in dispute incorporates the whole of the Complainantís registered mark ROGERS VIDEO.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interest in the domain name in dispute. In particular, the Complainant submits that the Respondent had notice of the dispute in 1997, long before he began making commercial use of the domain in 2000; the Respondent did not begin to operate the current website until after he was informed that the Complainant disputed his use of the domain name; and that the Respondentís business is not commonly known as Rogers Video.

In reference to the requirement of paragraph 4(a)(iii) of the Policy, the Complainant asserts that the Respondent has registered and is using the domain name in dispute in bad faith. In support of this allegation, the Complainant claims that the Respondentís previous and current use of the domain was and is not bona fide and that it is an obvious attempt to divert customers away from the Complainantís website.

The Complainant asserts that the Respondent has also registered a number of other domain names that link to< www.rogersvideo.com> which bear a striking similarity to the trademarks of other famous Canadian companies (<royalbankofcanada.com>; <marksandspencers.com>; <citizensbankofcanada.com>).

The Complainant asserts that the Respondent acquired the domain name <rogersvideo.com> primarily for the purpose of selling it to the Complainant at a price substantially greater than the Respondentís out-of-pocket expenses, and that when the Complainant showed interest in acquiring that domain name, the Respondent insisted on payment of several thousand dollars.

The Complainant asserts that the Respondent was aware of the Complainantís unregistered trademark at the time of registering the domain name <rogersvideo.com>.

 

6. The Respondentís Contentions in the Response

The Respondentís name is Arran Raja Lal, professionally known as "Arran Roger Lal", "Roger" being an Anglicisation of the East Indian name "Raja".

The Respondent asserts that he has spent substantial time and effort establishing his business over the Internet and by reputation. The Respondentís business has produced over 150 private video productions since 1994 as well as expanding its discreet photography and film processing business.

The Respondent takes offence at the Complainantís description of his business as "pornographic" and asserts that it is a "legal erotically artistic service".

The Respondent asserts that the Complainant cannot claim to be injured by the association of its name with erotic films as the Complainant admits to selling adult films through its video stores (though not on its website).

But for the many verbal and written threats of a lawsuit from the Complainant, the Respondent claims that he would have served the current content from <rogersvideo.com> from the date it was registered, rather than 2000.

The Respondent asserts that the Javascript pop-up alert on the indexaa.html page of its site gives customers reasonable notice of the content contained on its site and complies with standard practices used by websites hosting adult content to ensure that minors do not access the site.

The Respondent asserts that his website has always been known by the name "Rogers Video" and submits evidence of previous generations of the website and that those websites have operated almost continuously on a variety of hosts since 1994.

The Respondent asserts that in 1997 he only removed content from the contested domain because of fear that he could not afford to defend against legal action proposed by the Complainant.

The Respondent asserts that the only reason he used a Canadian ISP to host the website was because of the low cost of acquiring those services compared to ISPís in the UK or Netherlands.

The Respondent contests the Complainantís assertion as to the purported degree of public knowledge of the Complainantís unregistered trademark on the basis that prior to 1997, the Canadian ISP that hosted the Respondentís website did not mention any potential conflict or similarity between the Respondentís and the Complainantís respective business names.

The Respondent asserts that he reactivated the hosting of the current content on <rogersvideo.com> based upon the failure of the Complainantís previous counsel to continue correspondence relating to the Respondentís ownership of that domain name.

The Respondent asserts that his use of the domain name <rogersvideo.com> is not confusingly similar to the Complainantís unregistered trademark as the Respondent and the Complainant operate in different industries. The Respondent asserts that the Complainantís business involves the rental and sale to the general public of videos produced by third parties whilst the Respondentís business involves the creation and processing of photographs and films commissioned by particular clients. Those photographs and films are never sold or rented to the general public. The Respondent asserts that the only similarity between his business and the Complainantís is that both involve the extremely broad term "video".

The Respondent asserts that his business has acquired goodwill in numerous jurisdictions including the UK, Netherlands, Spain and the Caribbean and does not extend to Canada (the sole jurisdiction in which the Complainant claims to have goodwill). The Respondent asserts that as the Complainantís goodwill is limited to Canada, knowledge of the Complainantís business cannot be inferred upon a person residing in Europe.

The Respondent asserts that he only received actual notice of the Complainantís trademark from correspondence sent to him by the Complainant in late 1997 (after the Respondent had registered <rogersvideo.com>).

The Respondent asserts that statistics for visitors to his website do not show any measurable evidence of extensive visitors to the site with Canadian IP addresses or from the Complainantís website. The Respondent asserts that more than 99% of visitors to his site do not leave the site directly to go to the Complainantís IP address.

The Respondent asserts that that he did not register the domain name <rogersvideo.com> with the intention of disrupting the Complainantís business and that he has offered to the Complainant to do anything possible to minimise or eliminate any confusion. The Respondent asserts that if any visitor confusion did arise, it would be merely momentary confusion before the visitor would be aware that the Respondentís business and the Complainantís business are unrelated Ė Teletech Customer Care Management (California), Inc v Tele-Tech Co [citation]

The Respondent asserts that the results of a search on <www.Google.com> for "Rogers Video" and "Rogerís Video" lists the Complainantís website first and the Respondentís website third. The Respondent asserts that this shows that a person searching for the Complainantís website is unlikely to be confused into visiting the Respondentís site. The Respondent asserts that as the search for "Rogerís Video" lists the Complainantís website first (though the Complainantís trademark does not contain an apostrophe), the Complainant is actually intentionally structuring its website to create confusion between that website and the Respondentís website. The Panelís search for "Rogerís Video" using the Google search engine generated a result list with the Respondentís site third and fourth on the list, the Complainantís site fifth on the list, and with WebMD at the top of the list and a "Rogerís Video" page on a Focaltec site listed second. The Panel observes that the Focaltec site appears to be based in Vancouver Canada but without any apparent connection to either the Complainant or the Respondent.

The Respondent asserts, and the Panelís own search confirms, that the search results list significant numbers of websites that appear unrelated to either the Complainant or the Respondent but which include some occurrence of the words "rogers" and "video" in sufficient proximity to satisfy the search engineís algorithm.

The Respondent asserts that his intention when registering the domain name <rogersvideo.com> was to have a domain name that was easy to pronounce and recognise. The Respondent asserts that the Anglicisation of his East Indian name is a common practice amongst East Indians who wish to conduct business in a predominantly Caucasian environment. The Respondent asserts that he chose the domain name because the majority of Europeans that he met invariably mispronounced "Raja" as "Roger" and that he has been commonly known by his friends and in business as "Roger" for the past 25 years.

The Respondent asserts that his business was known as "Rogerís Video" since its inception and each successive generation of his website has been identified by that name.

The Respondent asserts that the only reason his correspondence with the Complainant was signed "A.Lal" is because Yahoo Mail automatically inserts the first initial and last name at the bottom of each email. The Respondent asserts that he does not know how to remove this "feature".

The Respondent asserts that he has a valid and subsisting registered trademark for his business name in the Benelux region that was first filed in 1999. The Respondent asserts that he acquired common law rights to that trademark prior to 1994 (but does not state the jurisdiction in which those rights existed). The Respondent asserts that the Complainant received actual notice of the Respondentís trademark application for "Rogerís Video" during the publication period but the Complainant did not contest the Respondentís right to that trademark.

The Respondent asserts that he did not register or use the domain name <rogersvideo.com> in bad faith. The Respondent asserts that he has not registered any domain name other than rogersvideo.com and has never resided in Canada. The Respondent denies that he was the registrant of <royalbankofcanada.com>; <citizensbankofcanada.com> or <marksandspencers.com>.

The Respondent asserts that his use of the domain name <rogersvideo.com> identifies the bona fide goods and services that he has sold under that business name since 1994. The Respondent asserts that the name Rogerís Video serves to generically describe the products for sale on the website.

The Respondent asserts that he did not register the domain name <rogersvideo.com> with the intention of selling it to the Complainant. The Respondent asserts that the initial approach to sell the domain name was made by the Complainant and was not solicited by the Respondent.

The Respondent denies the Complainantís allegation that the Respondent tried to sell the domain name for a sum greater than out of pocket expenses.

The Respondent asserts that he suggested to the Complainant alternative domain names that the Complainant could register. The Complainant has in fact registered those domain names.

The Respondentís asserts that his only offer to sell the domain name was by way of a counter-offer made in an attempt to avoid "expensive legal action" proposed by the Complainant.

The Respondent asserts that he has also received unsolicited offers from third parties attempting to purchase the domain name <rogersvideo.com>.

 

7. Discussion and Panel Finding

7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

7.2 Domain Name identical or confusingly similar to the Complainantís Marks

The domain name in dispute is <rogersvideo.com>. The Complainant has an unregistered trademark in Canada for the mark ROGERS VIDEO. The .com gTLD suffix is incapable of being a distinguishing element in the domain name, and spaces cannot be included in a domain name. The Panel finds that the domain name in dispute is identical to a trademark in which the Complainant has rights.

7.3 Respondent has no rights or legitimate interests in the Domain Name

The Respondent has a registered trademark in the Netherlands for ROGERíS VIDEO. The Panel notes that the contested domain name is also identical to that trademark as an apostrophe cannot form part of a domain name.

The Respondent has shown that he has operated a business involving the production and developing of commissioned photographs and videos since 1994. Whilst the Respondentís name is Arran Raja Lal, the Panel accepts the Respondentís evidence that he has traded under the Anglicised version of ĎRajaí, namely ĎRogerí, at least since that time.

The Respondent has shown that he has operated his business under the name "Rogerís Video" since 1994. He has hosted that business on ISPís offering him the best commercial rates available at that time. The Respondent has shown that he has been commonly known as "Roger" for over 25 years and that his business has been commonly known on the Internet as "Rogerís Video" since at least 1995.

The Panel notes that the Complainant stated that its business operates solely within Canada and that the Complainant holds no goodwill or trademarks outside Canada. Although initially sceptical, the Panel simply has no evidence that the Respondentís use of a Canadian-based ISP is other than co-incidental.

The Respondent provided copies of receipts and other evidence that he offered his photographic and film production and development business from the domain name <rogersvideo.com> in 1997 prior to receiving any communications from the Complainant.

The Panel finds that the Respondent has shown that he used the contested domain name in connection with bona fide offerings of goods and services prior to notice of this dispute or notice of the Complainantís unregistered Canadian trademark.

The Complainant asserted that the Respondent has registered the domain name to divert customers from the Complainantís website to the Respondentís website. The Panel has no evidence to support this allegation. The Respondent does not engage in the Complainantís business of renting or selling to the public videos produced by third parties and therefore does not divert customers away from the Complainantís website.

Whilst the Panel doubts that any reasonable visitor to the Respondentís site would confuse it with the Complainantís business, if such confusion was to occur, the Panel agrees with the Respondentís submission that this would only be momentary. The Respondentís strong initial warning notice on his website clarifies the nature of the site and the content it contains. The Panel believes that a Canadian citizen who was aware of the Complainantís "family friendly" policy would not be misled into believing that the Complainant was the operator of the Respondentís website. It is also plain from an initial viewing of the Respondentís website that he is based near Amsterdam in Holland, and that there is no mention of Canada.

The Complainant has failed to show that the Respondent has no rights or legitimate interests in respect of the domain name, and therefore has not shown that paragraph 4(a)(ii) of the Policy applies.

7.4 Domain Name has been registered and is being used in bad faith

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:

"Ö the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faithÖ" (emphasis added).

In order to show that the Respondent registered the domain name in bad faith, the Complainant has alleged that the Respondent registered the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct.

The Complainant alleges that the Respondent registered but did not hold any rights in the following domain names: <citizensbandofcanada.com>; <royalbankofcanada.com> and <marksandspencers.com<. The Respondent denies having registered any domain names other than rogersvideo.com. The Complainant has presented no evidence to substantiate its serious allegations. Indeed, like much of the Complaint, there is extensive citation of prior decisions in support of the Complainantís submissions, and in most cases the citations are indeed consistent with the submission. However, the facts of this case make the submission unsound. The Complainantís evidence showed that the relevant financial institutions and retailers owned the trademarks corresponding to the domain names alleged to have been registered by the Respondent. However, the Complainant provided no evidence to link the Respondent to those domain names. The Complainantís evidence needed to create a factual matrix to support the submissions made is, on this element of the Policy, seriously deficient; indeed, there is no evidence whatsoever!

Given the seriousness of the allegations, the Panel has taken the opportunity to conduct its own whois searches. Whilst these can often be inconclusive since the historical status of a domain name is generally not shown, the only evidence available to the Panel on the issue is the current whois information. That corroborates the Respondentís denial of ever having registered the domain names in question. By way of example, <royalbankofcanada.com> belongs to a Stephen Philip of Ontario, Canada, with no apparent connection with the Respondent. The <marksandspencers.com> domain name is registered in the name of Marks and Spencer PLC of Middlesex, England.

The Complainant has not attempted to prove (as distinct from allege) that the Respondent has engaged in a pattern of registering domain names with the intention of selling them to the trademark owners for a sum greater than out-of-pocket costs directly related to the domain name.

The Complainant has also alleged that the Respondent used the domain name in an intentional attempt to attract for financial gain Internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the registrantís website or of a product or service on the Respondentís website.

The Complainant alleged that the Respondent was aware of the Complainantís trademark when registering the domain name. There is no evidence that the Respondent was aware of the Complainantís unregistered trademark when the Respondent registered the domain name <rogersvideo.com>.

The Complainant alleges that <rogersvideo.com> is the most intuitive and obvious domain name for a well-known Canadian business that owns the trademark "Rogers Video". The Panel does not agree. The Complainant has shown no evidence that its business operates, holds any trademarks or any goodwill outside of Canada. The Complainantís unregistered trademark consists of common words. The Respondent has provided evidence of a number of businesses operating in different jurisdictions that each use the generic words "Roger" and "Video" in their business name.

The Complainant has provided no evidence that the Respondent offers from his website any goods or services of a similar nature to those offered by the Complainant. The Panel accepts the Respondentís argument that the only thing in common between the Complainantís business and the Respondentís business is that each involve the broad medium of "video". The Complainant rents and sells to the Canadian public videos produced by third parties. The Respondent produces and develops custom videos and photographs on behalf of clients in the Netherlands and in other jurisdictions (not necessarily including Canada). The Panel finds that the Respondent does not offer goods or services of a similar nature to those offered by the Complainant.

The Complainant asserts that the Respondent registered the disputed domain name with the intention of diverting customers away from the Complainantís business (which operates solely in Canada). The Respondent has provided website logs showing the nationality of visitors to the Respondentís site (based on the location of the servers from which they were referred). Of the over 40 000 visitors to the site in the two months to March 3, 2001, twelve countries accounted for over 99% of that site traffic. Canada was not one of those twelve countries. Visitors from the United States constituted slightly more than 5% of site traffic.

The website traffic analysis strongly suggests that the number of the Complainantís potential customers visiting the Respondentís website is at most insignificant, and therefore the extent to which the Respondentís business is diverting customers away from the Complainantís website is also, at most, insignificant.

The Complainant has cited a single anonymous complaint from a customer who mistakenly believed that the Complainant operated the Respondentís website. This single complaint is insufficient to show evidence of intent by the Respondent to divert customers away from the Complainantís website or to disrupt the business of the Complainant. The Respondentís website contains a pop-up window which clearly states the adult/erotic nature of the content of the website. Whilst one can understand the Complainantís concern that any person seeking its Ďfamily-friendlyí site might be confronted with the Respondentís site, any assumption that the two businesses are connected would in fact be erroneous, and not attributable to any act or omission for which the Respondent is responsible. The Panel notes that the Policy is not designed to deal with disputes about competing reputations of, or confusion between, two established businesses in different countries using similar trade marks and domain names, and rejects as unhelpful the Complainantís repeated but unsubstantiated characterisation of the Respondentís conduct as cybersquatting. The Complainant would have been better served by a Complaint with objective supporting evidence for its submissions instead of repeated perjorative allegations and submissions which on close analysis are unsupported by evidence.

The registration of a generic top-level domain name by an existing legitimate business in one jurisdiction that is also sought after by another existing legitimate business in another jurisdiction cannot per se be evidence of an intention to disrupt the otherís business.

The Complainant has asserted that the Respondent has attempted to sell the disputed domain name to the Complainant for an amount greater than the out-of-pocket expenses directly related to the domain name. The Respondent has provided email transcripts dating back to 1999 indicating that the Complainant made the first offer to the Respondent to acquire the disputed domain name and that the offer by the Respondent referred to by the Complainant was in fact a counter-offer.

There is no evidence of bad faith in the actions of the Respondent in making a counter-offer for an amount greater than the Respondentís out-of-pocket expenses. The Respondent indicated by email to the Complainant the extent to which it had developed goodwill in its business name and the domain name in jurisdictions outside Canada. The counter-offer from the Respondent was merely for an amount which would compensate the Respondent for the goodwill it would lose by transferring the domain name to the Complainant and the costs of generating new an equivalent amount of goodwill under a new business name or domain name. Given that the Respondent has been operating a business for over six years, the demand for compensation in excess of the costs of registering the Respondentís domain name are commercially explicable. Nothing in the Policy requires the Panel to treats such a demand as inexplicable absent bad faith.

The Panel finds that the Complainant has also failed to prove paragraph 4(a)(iii) of the Policy.

 

8. Decision

8.1 The Complainant obviously feels strongly about the consequences of its customers and potential customers mistakenly visiting the Respondentís site. However, attempting to characterise the Respondent as a cybersquatter, and the making of unsubstantiated allegations in order to attract the operation of the Policy, is an entirely inappropriate solution, and the Panel would wish to dissuade other potential complainants from seeking to utilise the Policy to resolve disputes for which it is entirely ill-equipped or intended.

8.2 The Complainant having failed to prove all of the requirements of paragraph 4(a) of the Policy, the Complaint is dismissed.

 


 

Philip N. Argy
Sole Panelist

Dated: March 30, 2001