WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
3636275 Canada, dba eResolution v. eR
Case No. D2000-0110
1. The Parties
The Complainant is 3636275 Canada. It trades as eResolution. It is a corporation organized under the laws of Canada, with its principal place of business at 1278 Laurier Street East, Suite 2, Montreal, Quebec, Canada H2T 1H1.
The Respondent cited by the Complainant is . The Response claims to be filed on behalf of "Respondents and Ravi Lahoti". The latter claims to be the technical, zone and administrative contact for the domain name .
The Response states that Mr. Lahoti can be contacted personally by email , at a postal address, PO Box 1300, Artesia, California, and by telephone at (562) 924 3169, said by the Complainant to be the number for an answering machine of an unidentified person in Irvine, California. He claims to receive email for the domain name through the Internet address . The Response stated that Mr. Lahoti "prefers contact to be maintained" via email and fax through his authorized representative, his attorney in Irvine, California, who filed the Response on his behalf. No street address has been given for either or Mr. Lahoti.
Mr. Lahoti has offered no evidence that he is the registrant of the domain name , nor that he is the technical, zone or administrative contact for that domain name. His name does not appear on the information provided by the Registrar from its WHOIS database.
2. The Domain Name and Registrar
The domain name at issue is . The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").
3. Procedural History
The Complaint submitted by 3636275 Canada was received on March 1, 2000 (electronic version) and March 2, 2000 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On or about March 3, 2000 a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the current status of the domain name.
By email dated March 6, 2000, NSI advised the WIPO Center as follows:
NSI had not received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration .
"Er" (ERESOLUTION2-DOM) is shown as the "current registrant" of the domain name . The registrant is identified only by a postal address: "PO Box 1300, Artesia, CA 90702-1300".
The administrative, technical and zone contacts have no person identified. Only an email address plus the post box in Artesia, CA, were supplied. A telephone number, (702) 699 4764, and a facsimile number, (503) 226 5119, were also supplied.
NSI�s 5.0 Service Agreement is in effect.
The domain name registration is in "Active" status.
The telephone number referred to above ((702) 699 4764) is a pager in Las Vegas, Nevada. The fax ((503) 226 5119) is for a number assigned in Portland, Oregon. When dialed, an answering machine for "Colin Cowherd" replies.
NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI�s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on March 3, 2000 transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI, ICANN and the Complainant.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by March 23, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On March 24, 2000, the Respondent�s attorney filed by facsimile and email a Response on behalf of "Respondents eResolution and Ravi Lahoti". The Response provided no clue as to the identity of "eResolution" as distinct from Mr. Lahoti.
On March 27, 2000, the WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On March 27, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On March 27, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on April 5, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by April 10, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules.
On March 28, 2000, the Panelist advised WIPO Center pursuant to Rule 12 that he required further submissions in reply from the Complainant within 2 working days. These submissions were received by the Panelist from the Complainant on March 31, 2000.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant has provided evidence of the provisional registration of the following marks:
Filing Date
Mark
Jurisdiction
August 23, 1999
eResolution
Canada
January 11, 2000
eResolution
United States
February 29, 2000
eResolution
European Union
The Complainant has filed for registration but awaits issuance of the registered marks. The Complainant commenced business on September 1, 1999. The Respondent is not a licensee of the Complainant, nor is the Respondent authorized otherwise to use the Complainant�s mark.
According to the WHOIS information, the Respondent registered the domain name on March 13, 1999. The Respondent claimed to have done so after searching all relevant and reasonably accessible trademark databases. In an email to an agent of the Complainant on December 9, 1999, Mr. Lahoti alleged that he was the owner of the domain name . In this email, he gave two telephone contact numbers, one the Irvine, California, number and the other with the area code 949. Evidence provided by the Complainant shows that is not authorized to do business in California.
In December 1999, an agent of the Complainant contacted the Respondent, Mr. Lahoti, regarding disposal of the domain name at issue. Far from "immediately transfer[ing] the name" "without cost" (as stated in the Response to be the Respondent�s policy), the Respondent demanded on December 9, 1999 US$7,500 to be wired the following day, or the price would increase to US$10,000. Later, the Respondent put the domain name up for auction for a price of US$10,200. The Complainant�s agent bid US$7,500, the maximum amount which it had authorized for purchase of the name. The Respondent had first offered the name at auction for a minimum bid of US$7,875, then with a reserve price of US$22,000, then with a minimum bid of US$21,000, then with a minimum bid of US$10,200, then with a minimum bid of US$25,000, then with a minimum bid of US$25,000, then with a minimum bid of US$7,700 and, finally, with a minimum bid of US$7,500. In response to this last listing, the Complainant bid US$7,500 and was notified by the auctioneer that it had won the auction for the domain name at issue. The Respondent congratulated the Complainant on January 11, 2000 on its winning bid. But the Respondent then refused to deliver the domain name to the Complainant. The emails concerning this ever-changing scenario are numerous. The above is a summary only of what took place over some 2 months. In an email of December 21, 1999, the Complainant�s agent made it clear that he was acting "on behalf of my company, Aliant Telecommunications. Aliant is the investing partner in eResolution". Accordingly, Mr. Lahoti could have been in no doubt that he was dealing with the present Complainant.
The Respondent�s webpage at merely invites email communication with parties unknown. It reads: "Send E-mail. Click here. To be notified when this site is completed".
Although the domain name is not in contention, a WHOIS search of this domain name updated on March 27, 2000 identified no actual person named in its database. It is reasonable to consider the history of this domain name, given that (a) Ravi Lahoti claims to be a Respondent in the Response, (b) he said he was the owner of in an email of December 9, 1999 and (c) he largely conducted the negotiations over the sale and auction, although an associate called Philip Kumar had some involvement also. A different post box, this time situated in Westminster, California, is given as the address for the registrant , which evidence shows is also an entity not permitted to do business in California. The facsimile number given this time has a Massachusetts prefix: the telephone number is for the answering machine in Irvine, California. The webpage posted at lists a fax number in Ogden, Utah and an email address as .
A WHOIS database search for , updated as at October 12, 1999 (annexed to the Complainant�s reply), shows the registrant as with the Artesia, California, post office box as the address. No person is named as Administrative, Technical or Zone contact. Ravi L Kumar is shown as the Billing Contact, with the answering machine in Irvine, California for the telephone contact and the same Massachusetts fax number as that given for .
5. Parties� Contentions
The Complainant maintains a website at at which aggrieved parties can institute claims for the transfer of domain names held by parties who have registered and who use domain names in bad faith. The Complainant has received and administers numerous claims from persons in a variety of countries. It calls on the services of independent Panelists from countries around the world. As a partner with , it is currently one of three providers certified by ICANN to resolve domain name disputes under the ICANN Policy.
The Complainant alleges that the Respondent uses: a post office box in one jurisdiction (California); a telephone pager in a second jurisdiction (Nevada); and a facsimile number in a third jurisdiction (Oregon).
The Complainant stresses that neither and is registered to do business within the state of California. It points also to further confusion arising out of the use by of apparent addresses of convenience in other places. It claims that these facts suggest that the Respondent has taken active steps to conceal his true identity. The Complainant relies on the decision of the WIPO Panelist in Telstra Corporation Limited v Nuclear Marshmallows (Case D2000-0003) where the Respondent there was described as an unregistered business name of an unidentified business entity.
The Complainant alleges that the Respondent�s numerous offers to sell the domain name to the Complainant and its soliciting of bids through a domain name auction site are indicators of bad faith.
The Complainant further relies upon para 4(b)(i), (ii) and (iii) of the Policy as indicating use by the Respondent in bad faith of the domain name.
The Respondent claims to be a "domain name speculator" as opposed to a "cybersquatter". His contention is summarized in his Response thus:
"Respondent has registered common or generic names that, at the time of registration, are neither proprietary, trademarked, or used to promote any product or service known to Respondent at the time of registration. Respondent registers these names with the intent of developing a concept and potential web presence for their use for potential clients. Respondent follows a protocol for registration including researching trademark databases and similar names for potential conflicts. Respondent eliminates potential conflicts from any potential prospects and registers select remaining names for future use. In the event an entity or company contacts Respondent with a legitimate claim to a domain name, the name is immediately transferred, often without cost."
In reply to the Complainant�s allegations above, the Respondent submits as below. The Response fails to differentiate between and Ravi Lahoti. The Panel is left with the clear impression that the two are one and the same. The Respondent has been in constant touch with the Complainant since December 9, 1999 over the sale of the domain name. The use of a pager in Nevada is not illegal and is a means of economical communication with the Respondent for persons in Las Vegas. The fax number, alleged by the Complainant to give the answering machine greeting of "Colin Cowherd" was a random electronic fax number provided by a free-fax service provider. A post office box is a convenient location at which to receive mail. No bad faith attempt was ever made to avoid communication with the Complainant. The situation in the Telstra case is distinguishable in that the Respondent in that case deliberately changed contact information and avoided contact in the hope of delaying or preventing transfer of the domain name. To the contrary, the Respondent here was in frequent communication with the Complainant.
The Respondent distinguishes the various cases where selling or soliciting the purchase of a domain name was held to be evidence of bad faith because: The Complainant in other cases was a long-term holder of a registered trademark or service mark and not of a mark for which registration had been sought but which was not yet granted. Those cases showed acquisition by Respondents of a domain name primarily for the purpose of sale to a competitor. In the present case, the Respondent could not have had that intent because the Complainant did not exist at the time of registration.
The Respondent claims that the Complainant has failed on all three prongs of paragraph 4(a) of the Policy (to be discussed). In the Respondent�s submissions, there is: No proof of the Complainant�s adequate trademark right as required by paragraph 4(a)(i) of the Policy; No legitimate interest of the Complainant in the domain name; No proof the Respondent�s registration and use of the domain name is in bad faith as required by paragraph 4(a)(iii) of the Policy.
In reply, the Complainant submitted: Trademarks are created by use and not registration. The filing of a trademark application creates rights in the applicant. "Bad faith" is not determined by mere chronological sequence. Rather, "bad faith" registration and the intent at the time of registration can be assessed by subsequent events such as the provision of candid information to the Registrar, establishment of a website using the domain name, including a business plan. "Bad faith" can be demonstrated by the confusing information supplied by the Respondent to the Registrar, plus the array of convenience answering services and pagers, the lack of any physical address and the Respondent�s failure to use the domain name. The Respondent�s attempts to sell the domain name for amounts in excess of setting-up costs, the listing of the name with a domain name auctioneer and the refusal to transfer the domain name to the Complainant after its successful bid at auction, all point inexorably towards "bad faith". The Respondent�s claim to operate a legitimate business as a "domain name speculator" is unjustified because: The Respondent did not "immediately" transfer the domain name to the Complainant "without cost" as alleged in the Response to be the Respondent�s policy. Instead, the Respondent went through the sale/auction process outlined in section 4 above. The tortuous variety of differing and confusing contact details hardly demonstrates a bona fide business person.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service 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 has been registered and is being used by the Respondent in bad faith.
The domain name is obviously identical or confusingly similar to the Complainant�s mark. The Panel so decides.
Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain name at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; oryou are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel finds that there is no evidence that the Respondent, before receiving notice of the dispute, used or demonstrably prepared to use the domain name in connection with a bona fide offering of services. Nor has the Respondent ever been commonly known by the domain name. Nor is the Respondent making any legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert customers or to tarnish the mark at issue. The Respondent�s equivocal conduct about selling and/or auctioning the domain name to the Complainant suggests otherwise.
Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name at issue.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith: circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain name in "bad faith" for the following reasons: is an unidentified business name of an unidentified business entity. Mr. Lahoti, if he is truly the Respondent, has not provided a street address. He has provided means of communication and contact that are, to say the least, unusual and even questionable for someone conducting a legitimate business. The attempts detailed demonstrate attempts by Mr. Lahoti and/or eresolution to hide their real identity. These attempts show similarity to the tactics of the Respondent in Telstra Corporation Ltd v Nuclear Marshmallows (Case No. D2000-0003). The failure by the Respondent to come within paragraph 4(c) of the Policy quoted above. Mr. Lahoti�s offers to sell the domain name by auction and his conduct towards the Complainant in that regard is in itself evidence of bad faith: see, for example, the decisions in the WIPO cases of Harrods Ltd v Boyd (Case No. D2000-0060), China Ocean Shipping (Group) Co. Ltd v Cao Shan Hui (Case No. D2000-0066).
The Respondent�s argument that the Respondent had registered the domain name before the trademark applications were filed by the Complainant is answered by the dicta of the learned Panelist in Bennett Coleman & Co. Ltd v Lalwani and Long Distance Telephone Company (WIPO Cases D2000-0014 and 0015). It was there contended by the Respondents that the Complainants� trademarks were no longer registered. That situation is basically no different to one where there was no mark registered at the time when the domain name was registered. The Panelist said:
"The Respondents have also asserted that the Complainant�s Indian trade marks are no longer registered. Whether or not that is so, it is clear that the Complainants have a very substantial reputation in their newspaper titles arising from their daily use in hard-copy and electronic publication. In India itself wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. As already stated, it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks."
The Complainant is using the mark "eresolution" frequently on a world-wide basis. Its applications to register the marks are to obtain formal recognition of that frequent use. The essence of the Internet is world-wide access, therefore, the propriety of domain name registrations cannot be confined to comparisons with trademark registrations in the country where the site is hosted: (see Bennett Coleman case (supra)). The Complainant is likely to be asked to adjudicate upon domain name disputes by persons outside the countries where trademark registration is sought. Such persons could easily be confused by the Respondent�s use of the domain name in circumstances where the Respondent has shown no intention of operating a dispute resolution service.
The present situation is similar to that in Educational Tertiary Service v TOEFL (WIPO Case D2000-0044) where the learned Panelist said:
"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant�s trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant�s trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainant�s trademark in connection with the [domain name at issue].
In light of the undisputed record in this proceeding, the Panel concludes that the Respondent did in fact register and use the [domain name at issue] in bad faith. It has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. Although a supplemental, as opposed to competitive, user of the domain name might be willing to pay the price sought by Respondent, there is no reason based on the record to award this price to Respondent. The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because Respondent is contributing no value-added to the Internet � it is merely attempting to exploit a general rule of registration � the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it."
Accordingly, for all the various reasons discussed above, the Panel finds that the domain name has been registered and is being used by the Respondent in bad faith.
7. Legal Considerations
Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of Panelists world-wide under the ICANN Policy provides a fruitful source of precedent.
The Panel notices, however, that Courts in the United States have come to similar conclusions about those who act in a manner similar to the Respondent who endeavor to sell domain names to trademark owners for a profit: see Panavision International LP v Toeppen, 141 F.3d 1315 (9th Circ. 1998).
The Response mentioned arbitration proceedings alleged to have been instituted by the Complainant against the Respondent on February 29, 2000, for breach of contract. The Complainant made no mention of these proceedings in its reply and the Respondent did not amplify upon the bare reference. The Panel accordingly disregards the existence of these proceedings as irrelevant to his task. The parties have rights under paragraph 4(k) of the Policy.
8. DECISION
For the foregoing reasons, the Panel decides: that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and the Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Hon Sir Ian Barker QC
Presiding Panelist
Dated: April 10, 2000
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