WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dylex Limited v Mr Saeid Yomtobian
Case No. D2000-1304
1. The Parties
The Complainant is Dylex Limited, a company incorporated under the laws of Ontario, Canada, whose head office and principal place of business is located in Toronto, Canada.
The Respondent is an individual, Mr Saeid Yomtobian, whose address is PO Box 260920, Encino, California, USA.
2. The Domain Name and Registrar
T he domain name, the subject of this dispute, is .
The Registrar of the domain name is Core Internet Council of Registrars, World Trade Center, 29 route de Pre-Bois, CH-1215 Geneva, Switzerland ("CORE").
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which were approved by ICANN on October 2, 1999, was received by WIPO in electronic format on October 6, 2000 and in hardcopy on October 4, 2000. Payment in the required amount to the Center has been made by the Complainant.
On October 5, 2000, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.
On October 13, 2000 the Notification of Complaint was sent to the Respondent.
On November 1, 2000 WIPO received a formal response from the Respondent.
On November 2, 2000 an acknowledgement of receipt of response was sent by WIPO to the Respondent.
On December 12, 2000 a Notification of Appointment of Administrative Panel and Projected Decision Date ("the appointment notification") was sent to the Complainant and the Respondent.
In accordance with the Complainant�s request, the appointment notification informed the parties that the administrative panel would be comprised of a sole panelist, Mr Clive Elliott, and advised that the decision should be forwarded by the panelist to WIPO by December 31, 2000.
4. Factual Background
Complainant
The Complainant states it is a leading retailer in Canada, with over 540 locations throughout major urban and suburban areas. Its operating divisions include some of Canada�s best known specialty store banners: BiWay, Braemar, Fairweather and Thriftys. The Thriftys division is a leading jeanswear specialty retailer for Canadian teens and young adults.There are presently 112 Thriftys stores in Canada.
The Complainant states it has invested significant resources in developing and promoting world-wide its THRIFTYS mark, in association with fashion-related goods and services.
It says the Complainant�s predecessor-in-title began using the THRIFTYS trademark in Canada in 1970. In 1981, the Complainant�s predecessor-in-title filed its first Canadian trademark application.
The Complainant has registered its trademarks as follows:
Trademarks and Service Marks
Trademark
Country
Registration
No.
Registration
Date
Date of 1st Use in Canada
Canada
287,030
January 20, 1984
January, 1970
Canada
323,493
February 13, 1987
May, 1984
THRIFTYS
Canada
508,946
March 9, 1999
January, 1970
In early 1998, the Complainant embarked upon a new marketing campaign. On April 20, 1998 a subsidiary of the Complainant, 1288386 Ontario Ltd., registered the domain . When the Complainant investigated registering , it discovered that the domain name had been registered by the Respondent.
Respondent
The Respondent has filed a declaration and made various assertions in his complaint. He states that he was not aware that the Complainant operated stores in Canada with a similar name, until mid-1998.
The Respondent owns two adult web sites leased to companies running their own businesses in the United States. He denies that there is any explicit pornographic material available at , nor has there been any such material through hyperlinks or otherwise, for well over a year.
On September 30, 1999 the Respondent filed an application to register the trade mark with the United States Patent and Trademarks Office. Thriftys Inc, a rental car company opposed the Respondent�s application. The matter was resolved and Thriftys Inc withdrew its opposition. The registration of is now unopposed and the Respondent states that he expects it will be completed in due course.
5. Complainant�s Assertions
The following submission is made by the Complainant.
It is asserted that at various times in 1998 and 1999, explicit pornographic material was made available at site, or at other sites operated by the Respondent and made available at site, by means of one or more hypertext links.
In late 1998, the Complainant began receiving complaints from members of the public regarding the pornographic material being made available at the site. References to some of these complaints are contained in the letters attached to the complaint.
As a company that sells clothing to children and teenagers, the Complainant was most concerned about the potential harm caused to their customers and potential customers and their good name in the Canadian community.
It is asserted that the Complainant�s rights in respect of the THRIFTYS marks date back to 1970, when the trademark was first used by the Complainant�s predecessor. It is said that by virtue of the intensive use and advertising of the THRIFTYS mark by the Complainant and its predecessors-in-title, the THRIFTYS mark is well recognised by consumers in Canada and elsewhere. While the Complainant accepts one meaning of the English word "thrifty" suggests frugality, it says there is no English word "thriftys". It is acknowledged that the word "thrifty" might be suggestive of a quality or characteristic of a customer of the Complainant. However, the Complainant�s trademark THRIFTYS is not descriptive, and is therefore a strong trademark worthy of a broad ambit of protection.
Although the domain name is not currently being used to direct Internet users to any pornographic or sexually explicit web sites, it is being used for commercial purposes via, inter alia, the incorporation of banner advertising and hypertext links on the web site and the offering for sale of domain names owned by the Respondent.
The Respondent is offering, or has recently offered, the domain name for sale to the Complainant. The Respondent has no rights or legitimate interests in the domain name.
The Respondent appears to be using, or is permitting others to use, at least some of the domain names which he owns to take advantage of Internet users� typographic errors and misspellings so as to direct such persons involuntarily to web sites having sexually explicit content and, in doing so, to market to those persons additional opportunities to view content of a similar nature.
The Complainant asserts the Respondent probably chose the domain name because it was: (a) identical to its THRIFTYS mark; or (b) confusingly similar to a third party�s mark.
Finally, it is asserted that the Respondent is a domain name pirate who frequently uses domain names, which are colourable variants of famous names and marks of others. Additionally, the Respondent has registered many domain names, which are either profane or sexually explicit or, for other obvious reasons, are disturbing or otherwise of concern. Moreover, the Respondent uses such domain names to attract Internet users to commercial web sites having obscene and sexually explicit content, to derive revenue from banner advertisements and Internet links provided at the web sites found at those domains, or offer for sale domain names owned by the Respondent.
Respondent�s Assertions in Reply
The Respondent denies that the domain name mentioned attracts anyone to adult sites, but states that they are simply directories for travel, food, restaurants, tickets, loans and the like.
The Respondent in turn asserts that the Complainant�s trademark is registered in Canada, but not elsewhere. Moreover, that they are neither unique nor novel. It is submitted that "thrifty" is a generic word, used throughout the world in various industries to indicate to prospective customers, "fair price," or "inexpensive goods or services."
It is noted that "Thriftys" is, or was, the name of a chain of drug stores, numbering in the thousands, doing business in the United States and it also designates a large automobile rental company franchised in the United States and throughout the world.
The Respondent then argues that he is not in any way in competition with the Complainant.
The Respondent denies that there is any explicit pornographic material available at . Moreover, there has not been any such pornographic material for well over a year.
It is submitted by the Respondent that he has legitimate rights and interests in the domain name and that it has been used for two years to promote the Respondent�s legitimate business interests in the United States. That is, to assist its customers in registering domain names, providing advertising, and Web Site development.
Finally, it is asserted that the Complainant offered to buy the domain name, but the Respondent refused the offer.
6. Discussion and Findings
It is necessary to look at the three relevant grounds separately.
Identical or confusingly similar
The Complainant states it has invested significant resources in developing and promoting world-wide the THRIFTYS mark, in association with fashion-related goods and services. It also states it has 12 stores in Canada. While the Complainant may have significant rights in the THRIFTYS mark in Canada, there is no compelling evidence of any significant reputation or goodwill outside of Canada. Indeed, it is acknowledged that its registered trademarks are restricted to Canada.
Accordingly, the submission that by virtue of the intensive use and advertising of the THRIFTYS mark they are well recognised by consumers in Canada and elsewhere, is not supported by the evidence filed.
While the Complainant acknowledges that one meaning of the English word "thrifty" suggests frugality, it submits there is no English word "thriftys" and that the Complainant�s trademark THRIFTYS (a new noun coined by the Complainant) is not descriptive, and is therefore a strong trademark. In the Panelist�s view, while the trademark THRIFTYS may be capable of functioning as a trademark and thus be entitled to some level of protection, it also seems to have some inherent descriptive quality, making it apt for other bona fide traders to use.
The Complainant asserts the Respondent�s domain name is identical to the THRIFTYS marks. It is accepted by the Panelist that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Since the Respondent registered the subject domain name after the Complainant acquired its rights in this mark, the Complainant arguably satisfies the first element of proof. However, that is not necessarily the end of the matter. The question still arises whether those rights extend beyond Canada and cover, for example, activities in the USA, particularly when the rights granted by way of trademark registration are country specific.
No right or legitimate interest
Although it seems the domain name is not currently being used to direct Internet users to any pornographic or sexually explicit web sites, it is being used for commercial purposes.
The Respondent asserts it has spent over $350,000 since the purchase of the domain name for building the web site, design, advertising, web maintenance, servers, office space, etc. However, no real proof is provided to support this claim. The Respondent also asserts that the domain name is being used to promote the Respondent�s business interests in the United States, which is to assist its customers in registering domain names, and provide advertising and web site development.
Notwithstanding the Complainant�s rights in Canada it appears that various entities trade in the USA under the THRIFTYS name. They appear to be in unrelated areas and to co-exist without any significant difficulties being drawn to the Panel�s attention, apart from a dispute now apparently resolved between the Respondent and a company trading in the car rental area.
The Respondent states that he was unaware of the Complainant until contacted by the Complainant. That is, after having registered the contested domain name. Whether this is true or not, cannot readily be determined in a forum of this type. However, looking at the evidence as a whole, there is no compelling basis to suggest that that assertion is either false or plainly untenable.
All the Panelist can say is that the assertion of lack of knowledge cannot be determined conclusively and accordingly the benefit of the doubt has to go to the Respondent.
Registered and used in bad faith.
It is accepted that several administrative panel decisions have ruled that the practice of registering domain names of well-known third parties is evidence of bad faith registration.
The Complainant has referred to the Bank of America Corporation v. Saeid Yomtobian, 27 June 2000, decision where the Hon. John A Bender said
"�The Respondent [Saeid Yomtobian] has registered hundreds of domain names that are variants of famous names and/or other�s marks .. Additionally, the Respondent has registered hundreds of domain names that are either profane, sexually explicit, or disturbing for other reasons. The Respondent has not developed these sites. Instead he is making a profit from banner ads on the cite [sic] and linking it to other sites Registering numerous sites and failing to develop a product or service in connection with the site is evidence of bad faith."
Be that as it may, in the light of my discussion and findings above I find that the cumulative requirement of establishing the three grounds above has not been satisfied. Accordingly, I express no concluded view on this ground other than to quote from Mr Bender�s above decision.
7. Conclusion
In view of the above I am compelled to find that the Complainant has not made out its case and relief is accordingly denied.
Clive Elliott
Sole Panelist
Dated : 22 December 2000
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