WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Transcontinental Media Inc v. Infa Dot Net Web Services/Mr. James M. Van Johns
Case No. D2001-0908
1. The Parties
The Complainant is Transcontinental Media Inc., 1 Place Ville-Marie, Suite 3315, Montreal (Quebec) Canada H3B 3N2 and is represented by Me Bruno Barrette, Brouillette Charpentier Fortin, General Partnership, 1100 Rene-Levesque Blvd., West 25th Floor, Montreal, Quebec, H3B 5C9.
The Respondent is Infa Dot Net Web Services/Mr. James M. Van Johns, PO Box 846, Johnstown, PA 15907-0846, USA.
2. The Domain Name and Registrar
The Domain Name is <canadian-living.com>.
The Registrar is Bulkregister.com, Inc.
3. Procedural History
The Complaint was received by WIPO by email and hardcopy form on July 16, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <canadian-living.com> ("the Domain Name") was registered through Bulkregister.com, Inc., and Infa Dot Net Web Services ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
It is convenient to mention here that the Complaint identifies the Respondent as being Mr. James M. Van Johns doing business as Infa Dot Net Web Services, whereas the Registrar identifies the Respondent simply as Infa Dot Net Web Services. For the purposes of this administrative proceeding and for reasons which will become apparent the Panel treats Infa Dot Net Services and Mr. M. Van Johns as being synonymous i.e. one and the same entity.
On July 24, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was August 13, 2001. No Response was received. On August 17, 2001, WIPO issued to the Respondent a Notification of Respondent Default.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On receipt of the papers in this case the Panel found that certain of the exhibits were incomplete. The omissions have since been rectified.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision is September 11, 2001.
4. Factual Background
The Complainant is the registered proprietor of the Canadian trade mark CANADIAN LIVING (number TMA 214, 798) for a wide variety of goods and services ranging from magazines to luggage products to broadcasting services.
The Complainant and its predecessors have used the trade mark both on its own and as a part of a family of other marks all of which are registered as trade marks in Canada, namely, CANADIAN LIVING FOUNDATION FOR FAMILIES, CANADIAN LIVING COOKS, CANADIAN LIVING TV, CANADIAN LIVING TESTED TILL PERFECT KITCHEN and THE CANADIAN LIVING PARENTS AND KIDS SHOW.
The trade mark CANADIAN LIVING has been used in Canada since 1976. The Complainantís website is at www.canadianliving.com.
On September 26 2000, the Respondent registered the Domain Name which is identical to the Complainantís domain name, save for a hyphen.
On March 15, 2001, Counsel for the Complainant sent to the Respondent by registered mail a cease and desist letter drawing the Respondentís attention to its rights and inter alia seeking transfer of the Domain Name. The letter was returned unclaimed by the Respondent.
On May 23, 2001, Counsel for the Complainant tried to send the March 15, 2001, letter by fax using the fax number mentioned in the Internic Whois Database. The transmission failed, the transmission report was marked by an NG code.
On May 28, 2001, Counsel for the Complainant sent a copy of the March 15, 2001, letter to the Respondent by email. This elicited the reply "I am unimpressed with your tactics. Identifying your first notice as your "final notice" to falsely imply that you have communicated previously is deceitful. Attempting to flood my e-mail box with nearly 4 meg of random characters (below) is disreputable." [N.B. The second sentence appears to the Panel to relate to an enclosed file which the Respondent could not open]. On May 29, 2001, Counsel for the Complainant sent another message via email detailing the previous attempts to contact the Respondent. The relevant part of the response was as follows:-
"Your claims of having attempted to previous communicate with me are feeble, at best, in light of the fact that your have no (sic), only, communicated by e-mail within a mere 2 days before your imaginary deadline.
This is, as you are no doubt aware, insufficient time with which to respond. I suspect that this was your plan all along. Again, I say, that I am unimpressed.
I have been unable to locate the owner of the domain name in question (we are a domain registration service, not itís owner), and the name, itself draws little or no traffic, so it is not of interest to us. Iím certain we could have had quite a reasonable discussion, had you chose this course of action".
The Domain Name is connected to a website holding page indicating that the website is under construction. On that holding page is a link to a website or websites publicising other products/services.
5. Partiesí Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainantís trade mark identified above. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant further contends that the Respondent has registered the Domain Name in bad faith and is using it in bad faith.
The Complainant points out that the Domain Name differs from its trade mark by merely a hyphen.
The Complainant draws attention to the fact that in its email message of May 29, 2001, the Respondent identified itself simply as a domain name registration service and not the owner of the Domain Name. The Complainant nonetheless contends that the owner is James M. Van Johns (the administrative contact) trading as Infa Dot Net Web Services.
Corporate searches conducted on behalf of the Complainant in the US Registries and in particular in the Secretary of State of Pennsylvania Registry failed to trace Infa Dot Net Web Services.
The Complainant contends that Mr. Van Johns and the Respondent are not co-operating in this matter or are acting in bad faith in that they refuse to acknowledge that either of them is the registered owner of the Domain Name.
In support of the bad faith claim the Complainant draws attention to the nature of the Domain Name (i.e. identical to the Complainantís trade mark save for the hyphen), the passive holding of it by the Respondent, the behaviour of the Respondent in the email exchanges, the failure of the Respondent to deal with the Complainantís complaint, the links to other commercial enterprises, the potential for confusion and finally the Respondentís track record in relation to domain name registration. In relation to this last point the Complainant produces copies of the decisions in cases FA 0009000095685 (American Anti-Vivisection Society v. Infa Dot Net Web Services) and WIPO Case No. D2000-0877 (ABX SA v ABX.COM). [N.B. In the latter case the respondent is clearly the Respondent acting under a pseudonym]. In both those cases the Respondent was held to have registered and used the domain name in issue in bad faith.
The Respondent has not responded formally. However, in the email exchange referred to above Mr. Van Johns indicates that the Respondent is simply a domain name registration service (not the owner of the Domain Name) and that he cannot trace the owner. He confirms that the Respondent has no interest in the Domain Name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rules, paragraph 14(b)).
In this case a consequence of the Respondentís failure to respond is that the Panel accepts as fact the Complainantís assertion that the Respondent is simply a trading name of Mr. Van Johns. A further consequence is that the Panel accepts as fact the basis for the Complainantís complaint, namely that the Respondent selected the Domain Name with the Complainant in mind, knowing of the Complainantís trade mark.
Identical or Confusing Similarity
The Complainantís trade mark is distinctive. The Domain Name differs from the Complainantís trade mark by merely a hyphen. The Panel has no hesitation in finding that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
Rights or Legitimate Interests of the Respondent
If the Respondentís email communication of May 29, 2001, is to be believed, the Respondent is not the owner of the Domain Name. Indeed, the Respondent states that the Domain Name is of no interest to it.
The Policy gives a Respondent an opportunity to demonstrate to the Panel that it has rights or legitimate interests in respect of the Domain Name. A non-exhaustive list of circumstances, which demonstrate the existence of such rights and legitimate interests, is set out in paragraph 4(c) of the Policy.
The Respondent has made no attempt to demonstrate any of those circumstances or indeed any other circumstances showing that it has rights or legitimate interests in respect of the Domain Name.
The Panel can think of no reason why the Respondent could be said to have rights or legitimate interests in respect of the Domain Name and finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel is in no doubt that the Domain Name was registered in bad faith and is being used in bad faith, but does not follow precisely the Complainantís reasoning.
On its own admission, the Respondent is a domain name registration service. It registers domain names for profit. The Panel does not accept that there is a hidden owner, whom the Respondent is unable to trace. Had there been such a person, the Respondent would have identified him. The Respondentís statement in one of its emails that "Iím certain we could have had a quite reasonable discussion, had you chose (sic) this course of action" is not consistent with the Respondent being independent of an untraceable owner and without authority to negotiate.
In the Panelís view the overwhelming probability is that the Respondent registered the Domain Name on its own account and with the hope and expectation of being able to sell it for profit to the Respondent. As indicated above the name in question is distinctive. It is peculiarly referable to the Complainant and the Respondent will have known that at the time of registration. In taking this view the Panel is fortified by the Respondentís track record in this area. In both the previous cases involving the Respondent (cited above) there was clear evidence of an intention to sell the names in question (being names of the complainants in those cases) for sums in excess of the Respondentís out-of-pocket expenses.
If, contrary to the Panelís belief, there is another Ďownerí of the Domain Name for whom the Respondent is merely an agent, the Panel takes the view that the Ďownerí cannot sensibly hide behind the Respondent without accepting the inevitable consequence that, in the absence of any substantive Response, the behaviour and track record of the Respondent will be treated as his.
Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Complaint succeeds.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the Domain Name <canadian-living.com > be transferred to the Complainant.
Dated: September 9, 2001