WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Leonard Asper v. Communication X Inc.
Case No. D2001-0539
1. The Parties
1.1 The Complainant is Leonard Asper, the President and Chief Executive Officer of CanWest Global Communications Corp. (CanWest), c/o CanWest Global Communications Corp., 31st Floor, TD Centre, 201 Portage Avenue, Winnipeg, Manitoba, R3B 3L7, Canada.
1.2 The Respondent is, according to the BulkR Whois database, Peter Zahoruk, President and Director, Communication X Inc., an Ontario corporation with its head office at 3077 New Street, Burlington, Ontario, L7N 1M6, Canada.
2. The Domain Names and Registrar
2.1 The Domain Names are , , and .
2.2 The Domain Names were registered with BulkR, Inc., 7 East Redwood Street, Baltimore, MD 21702, and U.S.A. on August 4, 2000.
3. Procedural History
3.1 Complaint filed by hard copy received on April 12, 2001, and electronically on April 19, 2001, naming Peter Zahoruk, President and Director, Communication X Inc. as Respondent.
3.2 In accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts where the Respondent�s is located, as shown by the address given for the domain name holder in the concerned registrar�s Whois database at the time of the submission of the Complaint to the WIPO Center.
3.3 No legal proceedings have been initiated, as yet. (Rules, paragraph 3(b)(xi)).
3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500 by bank draft has been sent with the initial Complaint on April 12, 2001.
3.5 The Complainant agreed that its claim and remedies concerning the registration of the domain name, the dispute, or the dispute�s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.
3.6 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted by the Complainant to the Respondent on April 10, 2001, by pre-paid courier with return receipt requested to the address provided by the Respondent as specified above pursuant to the Rules, paragraph 2(b).
3.7 A copy of this Complaint, has also been sent or transmitted by the Complainant to the concerned registrar BulkR, Inc. on April 10, 2001, by pre-paid courier with return receipt requested to the address provided by the registrar as set out in Paragraph 9 of the Complaint.
3.8 On April 23, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center (Center) informing the Respondent that an administrative proceeding had been commenced by Complainant in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Respondent submitted his Response electronically on May 13, 2001, and was acknowledged by the Center as having received it on May 15, 2001.
3.9 The Complainant elected to have the dispute decided by a single-member Administrative Panel.
3.10 The single Panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence on May 10, 2001, and was duly appointed in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by June 11, 2001.
3.11 The Panel finds that it was properly constituted and appointed in accordance with the Uniform Rules and WIPO�s Supplemental Rules.
4. Factual Background
4.1 The Complainant, Leonard Asper, is a businessman, the son of Izzy Asper. Complainant�s father has achieved widespread public recognition throughout Canada and internationally as a prominent businessperson, and is, or has been, an accomplished lawyer, politician and philanthropist. Leonard Asper, a resident of Winnipeg, Manitoba, while still under forty years of age, is apparently being groomed to eventually succeed to the senior position in the family corporations so successfully nourished and expanded by his father over many years. This Panel was provided with extracts from 387 separate news articles found in four Canadian newspapers, the Globe and Mail, the National Post, the Toronto Star and the Winnipeg Free Press which include the name of the Complainant. The first article dated December 4, 1984, describes him as the son of I.H. Asper, a former provincial Liberal Leader and the chairman of that year�s national Liberal campaign, and that he received $6,500 for work during the summer under a contract with a Liberal cabinet minister from the Complainant�s area. They conclude with press announcements by the Complainant, now President of the family corporation, CanWest Global Communications Corp., concerning its financial affairs. In between, these articles show the appointment of Leonard Asper as Director of Corporate Development, CanWest Global Communications Corp. in 1994, at the age of thirty-one, a position in which he remained for one and one-half years when he was appointed Vice-President in charge of Corporate Development in mid-1996. At the end of January 1997, along with his brother David, who was Vice-President of Programming, he was appointed to the company�s Board of Directors, joining their sister, Gail, who was already on the Board. The two sons were, in November of that year, promoted into the executive ranks of the Corporation. They were both in turn appointed Executive Vice-Presidents of the company. By November 1998, he was made Chief Operating Officer and in September 1999, he took over as Chief Executive Officer and made Chairman of the Global Television Network and other CanWest Global subsidiaries. On February 20, 2000, he is mentioned in the Toronto Star as having taken "his maiden voyage in the national spotlight" in connection with certain programming announcements made on behalf of Global TV, which involved the acquisition of a further nine television stations. On the April 1, 2000, the National Post printed that "Israel �Izzy� Asper, Executive Chairman of CanWest Global Communications yesterday pulled off one of the largest media deals in Canadian history, acquiring most of the country�s Canadian daily newspapers from Conrad Black�s Hollinger Inc. for $3.5-billion. Under the deal, Mr. Asper�s company is buying 149 newspapers, including dailies in Victoria, Vancouver, Calgary, Edmonton, Regina, Montreal, Ottawa and Halifax, along with half of the National Post. � � It�s a very exciting time,� Leonard Asper said �I think it�s fair to say we are formally in the business of building our print assets. I can�t deny that we won�t start something up�." On September 29, 2000, under the heading "A Mogul in the Making Forget that Fighting Style Izzy Asper Used to Build CanWest. As His Son Takes Over, It�s A New Game, With New Plays". Complainant is described as the chosen scion of a billionaire mogul - at thirty-six, the tenderest of Izzy Asper�s three children, but the one who, by dint of desire and hard work, has earned the reins to his father�s enormous and growing media empire. Yet, his father remains Executive Chairman of the Board of Global Television, which now has a significant international presence in New Zealand, Australia, and Ireland. CanWest is also Canada�s largest daily newspaper publisher with fourteen major metropolitan newspapers, over 120 community newspapers and a fifty- percent interest in one of Canada�s national papers, the National Post.
4.2 The Complainant does not hold a registered trademark in his name, but lays claim to rights in a common law trademark sufficient to ground an action for passing off.
4.3 On August 4, 2000, the Respondent registered the following Domain Names, which are the subject of this proceeding:
Collectively the Domain Names.
4.4 On or about August 5, 2000, CanWest received an e-mail from the attorney on behalf of the Respondent.
"Please contact me so we can discuss my ownership of the domain names of
Peter Zahoruk
(905) 333-9740"
4.5 The Complaint in this matter was filed in April 2001.
5. Parties� Contentions
A. Complainant
5.1 Complainant contends that the Domain Names
are virtually identical to a common law mark to which the Complainant has rights and that the Respondent�s use of the Domain Names in question infringes on Complainant�s rights by confusing the public as to the origins of the
pursuant to the Policy, paragraph 4(a)(i).
5.2 Complainant contends that Respondent has no rights or legitimate interests in the Domain Names
pursuant to the Policy, paragraph 4(a)(ii).
5.3 Complainant contends that Respondent registered and used the Domain Names
in bad faith in violation of the Policy, paragraph 4(a)(iii).
B. Respondent
5.4 Although the Respondent has submitted a Response in accordance with the Uniform Domain Name Dispute Resolution Policy ("Policy"), this does not address, specifically, the entitlement of the Complainant to assert a common law mark to which he has rights under the Policy. Nevertheless, this still must be proved to the satisfaction of the Panel.
5.5 The Respondent claims to hold a legitimate interest in the acquisition of the disputed Domain Names.
5.6 The Respondent denies any bad faith in regard to his application for and his use of the Domain Names
5.7 It is unclear whether the Respondent disputes the jurisdiction of this Administrative Panel or not as it appears in his Response that jurisdiction is challenged, while later, he expresses a wish to resolve the matter with a single Administrative Panelist.
C. No Other Submissions
5.8 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, beyond the Complaint, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
6. Discussion and Findings
6.1 The Complaint was submitted on the basis of the provisions of a Registration Agreement in effect between the Respondent and Network Solutions which incorporates by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations or abuse of domain name registration (Policy, paragraph 49(a)).
6.2 Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abuse of domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(a)).
6.3 The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (See e.g. paragraph 2(a), Rules).
Applicable Law
6.4 The Complainant has cited, in support of its case, a Canadian judicial decision and a number of decisions of Administrative Panels pursuant to the Policy and the Rules of ICANN. The Respondent has not referred to any specific legal authority, national or international.
6.5 Paragraph 15(a) of the Rules instructs this Panelist as to the principles to be used in rendering a decision: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
6.6 Where the Complainant and Respondent are domiciled in the same country, previous Panels have held that this country�s laws may be used "to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph(4)(a) of the Policy." See The Rockport Company v. Gerard A. Powell WIPO Case No. D2000-0064; Copart Inc. v. SalvageNow WIPO Case No. D2000-0417; Cellular One Group v. IP Services WIPO Case No. D2000-1035; and Sara Lee Southern Europe, S.L. v. S.L. Proteccion de Dominos WIPO Case No. D2000-1690.
6.7 While the Panel agrees that in this matter Canadian law is applicable as both the Complainant and the Respondent are situated in Canada, it must also be borne in mind that there are essential differences between trademarks and domain names, and between the bases for proving causes of action available in various courts as contrasted with what is necessary to enable this Panel to reach its determinations under the Policy and Rules. This is also the case in regard to the remedies available through domestic courts and those obtainable under the Policy. With trademarks, there can be more than one registrant of the same mark and its effect may be limited by the category of goods to which it relates, and the geographic boundaries of its territorial protection. There are no such limitations with domain names. Due to the latter�s technological limitations and borderless use, only one entity can be registered in each gTLD name throughout the world. Thus, there is justification for different legal principles to apply to the Uniform Domain Name Despute Resolution Policy, its Rules, and the interpretation given these by Administrative Panels operating thereunder. It is these Rules with which all applicants for the registration of domain names agree to be bound. In any event, no one is precluded from seeking any remedies available from national courts.
6.8 The Complainant has the burden of proof. The Role of the Panel is to make findings of fact based on the evidence presented, provided the matters at issue are within the scope of the Policy. The appropriate standard for fact-finding is the civil standard of a preponderance of the evidence. Under the preponderance of the evidence standard a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and �M� WIPO Case No. D2000-0847; Fleetstar Information Systems Ltd. v. Stephen Morris WIPO Case No. D2001-0518.
6.9 This case arises in the midst of an active dialogue concerning the issue of the extent to which a person is given a right to use the ICANN Policy and the WIPO Rules to obtain a transfer of a Domain Name or its cancellation. In the Interim Report of the Second WIPO Internet Domain Name Process relating to the Recognition of Rights and the Use of Names in the Internet Domain Name System issued on April 12, 2001, the subject is dealt with at length. (Footnote 1) This document bears review by anyone involved in Domain Name disputes concerning a claim to protection for a personal name, which has not been registered as a trademark. It addresses the right to protect one�s own identity, often referred to as a "personality right", which "focuses on an individual�s right to control the commercial use of his or her identity." [Emphasis added] (Footnote 2) This right, it is said, "serves to prohibit the unauthorized commercial use of a person�s name, likeness or other personal characteristics closely associated with him or her." [Emphasis added] (Footnote 3)
6.10 The Final Report of the WIPO Internet Domain Name Process, April 30, 1999, addressed this issue in the context of The Scope of the Administrative Procedure, commencing at paragraph 163 (Footnote 4). It put the matter as follows:
164. The views of commentators on the desirable scope of the administrative procedure were divided. Certain commentators favored the broad approach of opening the procedure to any intellectual property dispute with respect to a domain name registration. In general, they favored the development of a body of administrative law that would, through the procedure, provide an effective international enforcement mechanism for intellectual property rights as an alternative to expensive and time-consuming multijurisdictional litigation.
165. The preponderance of views, however, was in favor of restricting the scope of the procedure, at least initially, in order to deal first with the most offensive forms of predatory practices and to establish the procedure on a sound footing. Two limitations on the scope of the procedure were, as indicated above, favored by these commentators.
166. The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations. . . .
167. The second limitation would define abusive registration by reference only to trademarks and service marks. Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favor of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications.
168. We are persuaded by the wisdom of proceeding firmly but cautiously and of tackling, at the first stage, problems which all agree require a solution. . .
6.11 It was as a result of the above that it was concluded that the Policy should be worded as they are now found therein as paragraph 4(a).
6.12 The Interim Report of the Second WIPO Internet Domain Name Process further noted that there were four important aspects, including certain commonalities and differences with respect to the protection afforded under trademark law and under the law of personality rights, which may be relevant to the discussion of protection of personal names in the DNS. These included:
(iii) Infringement of both a trademark or personality right occurs through unauthorized use by a third party. However, under trademark law the right is infringed only if a third party�s use of the mark is likely to cause a likelihood of confusion among consumers as to the source of goods or services. The personality right, on the other hand, does not require the demonstration of any confusion; instead, it is infringed when the public can identify the person in question from the third party�s unauthorized commercial use.
(iv) Both are concerned with a commercial exploitation by a third party that infringes upon the right. However, under trademark law, the mark itself for which protection is sought must be used in commerce as a precondition to relief, whereas the personality right may protect a person who does not commercially exploit his or her own identity, but nevertheless desires to prevent others from doing so.
6.13 Since the introduction of the Policy numerous Panels have been faced with deciding whether the use of an identical or confusingly similar name to that of a well-known person offends the Policy. These cases fall into a number of categories.
6.14 The first category involves entertainers, both living and deceased, in respect of whom there has been near unanimous success. The successful cases include the following: Julia Fiona Roberts v. Russell Boyd WIPO Case No. D2000-0210 (A famous actor); Cho Yong Pil v. ImageLand, Inc. WIPO Case No. D2000-0229 (A famous Korean pop music artist); Experience Hendrix, LLC v. Denny Hammerton and The Jimi Hendrix Fan Club WIPO Case No. D2000-0364 (Estate of deceased singing and performing idol); Nik Carter v. The Afternoon Fiasco WIPO Case No. D2000-0658 (Well-known radio broadcaster); Helen Folsade Adu known as SADE v. Quantum Computer Services Inc. WIPO Case No. D2000-0794 (Popular singer, songwriter and recording artist); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and �M� WIPO Case No. D2000-0847 (Popular singer, performer and actor); Isabelle Adjani v. Second Orbit WIPO Case No. D2000-0867 (Popular actor); Julie Brown v. Julie Brown Club WIPO Case No. D2000-1628 (Well-known television and film actor, scriptwriter, and producer of music videos); Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club WIPO Case No. D2000-1838 (Extremely well-known, top-selling performing artist of pop music); Mick Jagger v. Denny Hammerton, (NAF FA0007000095261) (Famous pop performer); MPL Communications Ltd. v. Denny Hammerton (NAF FA0009000095633) ( and L). There was one complaint from an entertainer, which was not accepted. (Footnote 5) This was the case of Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club WIPO Case No. D2000-1532, the application for a transfer or cancellation of registration was denied.
6.15 Authors have also sought to protect their personal names, and were successful in:
Jeanette Winterson v. Mark Hogarth WIPO Case No. D2000-0235; Monty and Pat Roberts, Inc. v. Bill Keith WIPO Case No. D2000-0299; Monty and Pat Roberts, Inc. v. J. Bartell WIPO Case No. D2000-0300; Margaret Drabble v. Old Barn Studios Limited WIPO Case No. D2001-0209.
6.16 Professional athletes have sought protection in a number of cases, such as:
Daniel C. Marino, Jr. v. Video Images Productions, et al WIPO Case No. D2000-0598 (Athlete, movie actor and sports commentator); Jules I.Kendall v. Donald Mayer Re WIPO Case No. D2000-0868 (Professional golfer); Jaap Stam v. Oliver Cohen WIPO Case No. D2000-1061 (Famous soccer player); Pierre van Hooijdonk v. S.B.Tait WIPO Case No. D2000-1068 (Famous soccer player).
6.17 There have been few cases involving claims by or on behalf of business people:
Harrods Ltd. v. Robert Boyd WIPO Case No. D2000-0060 (Re Dodi al-Fayed); Monty and Pat Roberts, Inc. v. Bill Keith WIPO Case No. D2000-0299; Monty and Pat Roberts, Inc. v. J. Bartell WIPO Case No. D2000-0300; Steven Rattner v. BuyThisDomainName (John Pepin) WIPO Case No. D2000-0402 (Investment banking and corporate advisory services).
6.18 Yet another category is "royalty", with a case involving Princess Diana � CMG Worldwide, Inc. v. Naughtya Page (NAF FA0009000095641).
6.19 Finally, there has been one case of a politician, namely Anne McLellan, the Minister of Justice and Attorney General of Canada, eResolution case no. AF0303.
In order to obtain the relief requested under the Policy, Complainant must prove in the administrative proceeding that each of the three elements of paragraph 4(a) are present:
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
6.20 There are numerous decisions in which Panels have recognized the right of a Complainant to claim a common law mark where there is no registered trademark. In some cases, the Complainant will have registered his or her name as a trademark, in which event that name will be protected within that geographic area whose law recognizes the trademark in question, and the protection for that trademark will be limited to the categories of products designated in the certificate of registration. The case involving Madonna is an example in the cases referred to above in paragraphs. 6.14 -- 6.17. In the Bruce Springsteen case, the Complainant had registered the Domain Name which was used as the host site for an official Bruce Springsteen web site. The Respondent registered the Domain Name .
6.21 In the Daniel Marino case, the Panel, citing Jeanette Winterson v. Mark Hogarth WIPO Case No. D2000-0235, Cho Yong Pil v. ImageLand Inc. WIPO Case No. D2000-0229, Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501 and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 found that the name "Dan Marino" had acquired sufficient secondary meaning within the American sports, entertainment and public service communities to constitute a valid common law trademark. The Panel in the case involving Steven Rattner emphasized the importance of understanding that the protection at common law must be determined on a case-by-case basis, depending greatly on the factual basis of each individual case. "At common law, as the primary task is to determine if there is confusion in the mind of the consumer, the notoriety of a particular mark is gauged relative to a number of factors, including the territory within which the mark is used, the products for which it is being used, etc." The Cho Yong Pil Panel found it necessary to review the evidence with a mind to determining whether the name �Cho Yong Pil� "functions as the Complainant�s mark". In Monty and Pat Roberts, Inc. v. J. Bartell, the Panel determined that "[i]f Complainant can establish that �Monty Roberts� is a famous mark, then it may be able to protect that mark against dilution, even if an infringer is not involved in the same or competing channel of trade." (Footnote 6)
6.22 In the cases mentioned in paragraphs. 6.14 � 6.17 above where the Complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else�s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services. In some of these, including Monty and Pat Roberts, there were multi-purposes. The pure business cases are more problematic. An obvious difference between them and the above situations is that it is less likely that a business person will use his or her name to market their own goods or services, and very unlikely that they will do so to market someone else�s. Take, by way of examples, Henry Luce, Kenneth Thomson, Conrad Black and Rupert Murdoch. Are their publications marketed as a product connected to the person in question? Not likely. It is also not likely that someone would pay a fee to use these names in the promotion of a good or service with which they have no connection. Yet, each of these gentlemen is or was a famous businessman with a very high profile in the publishing business and held in high regard by many. This doesn�t mean that a businessperson�s name is not entitled to protection as a Domain Name. As demonstrated in the Supreme Court of Canada decision in Hurlbut Co.Ltd. v. Hulburt Shoe [1925] 2 D.L.R. 121 a person may be able to use his personal name to prevent its improper use if he or she can show that if "all persons whom in any way it concerns" has come to know that a particular article associated with his or her name means that he or she is responsible for its source. Under this circumstance, the personal name takes on a secondary meaning. Probably, when the T.Eaton Co. was owned by Timothy Eaton and Macy�s owned by someone of that name, their names could have been protected on this basis. There is no evidence in the Complaint that the name of the Complainant has formed a part of the name of any of his companies.
6.23 It is the view of this Panel that it would be helpful in these personal name cases if the Complaint, when dealing with the criteria in 4(a)(i), identified what the nature of the commercial connection would be in the Complainant�s use of the Domain Name in issue. In many cases, this will be so obvious as not to need any further embellishment. It would only be in such cases, as here, where this is not apparent that such evidence would be needed. In this case, there is no evidence that the Complainant has ever used his personal name for the purpose of merchandising or other commercial promotion of goods or services, or that he intended to do so.
6.24 The cases involving claims by or on behalf of business people, shown in paragraph 6.17 above, do not demonstrate a pattern. The Monty and Pat Roberts cases clearly show a commercial attachment to the use of their names. Similarly, in the case of Steven Rattner, he provided investment banking and corporate advisory services under his own name and therefore would have an obvious interest in protecting that name for commercial uses. There is no evidence on the record in this case that Leonard Asper has ever used his name as part of a corporate name. In Harrod�s Limited v. Robert Boyd, supra, it should be noted that the Complainant was not the person whose name was in question, but Harrod�s Limited, the well-known British department store on whose Board Dodi al-Fayed served, thus the Panel in that case concluded that "The commercial impression is that domain name is associated with goods and services sponsored by or affiliated with the late Dodi Fayed or his estate". This distinguishes that case from the one before this Panel. Further, the case was one of the very early ones decided without benefit of the subsequent material available to this Panel which reserves the right to disagree with the reasoning in an appropriate subsequent matter.
6.25 There are two dominant concerns inducing the protection of marks. The first is the protection of consumers who associate the name with goods and services of a known source and quality. The second is to preserve the value of goodwill built up over time by the owner of the mark. In the case of those (primarily entertainers and professional athletes) who sell their goodwill to others in the marketing of goods and services not directly associated with the holder, the first rationale, above, is likely to be dominant. This is much less likely to be the case with other personal name marks, particularly those, which have not obtained a secondary meaning. It is the view of this Panel that the name of the Complainant falls within the latter category.
6.26 As for the cases involving royalty and a politician, their factors are sufficiently distant from those applicable in this case as not to be considered here. This is particularly the case given the current active dialogue on the subject of personal names referred to in paragraph 6.9 above.
6.27 In Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858 and Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, the Panel found that trade names or marks that have, through usage, become distinctive of the users� goods or services in commerce may be protectable as they have acquired a "secondary meaning". In the former case, it said: "A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization." This Panel does not find this to be the case with the personal name of the Complainant. In Canada, the ownership of interests in newspapers change frequently. The first Ahmanson Panel further held that personal names used as marks are treated as strong marks upon a showing of secondary meaning and a mark comprising a personal name will acquire secondary meaning if a substantial segment of the public understands the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization. No such secondary meaning has been proved for the name "Leonard Asper".
6.28 This Panel is not able to find that the Complainant, Leonard Asper, is entitled to a finding that he has rights in a trademark or service mark of such nature as to successfully challenge a Domain Name which is identical or confusingly similar. There is an additional basis for this beyond the interpretation of the Policy and Rules as set out above. It is the view of this Panel that the appropriate date of making any such finding, were this Panel to feel entitled to do so, would be the date of the registration of the Domain Names in question. Were it otherwise, any Complainant who anytime subsequent to the registration of the Domain Names, having achieved the necessary recognition in question, could seek a transfer or cancellation of a Domain Name. In any event, it is difficult for this Panel to find that at this stage of his career, Leonard Asper has the same level of notoriety as that of his father. In saying this, the Panel wishes to make it abundantly clear that this is not meant in any way to deprecate the achievements of the Complainant in this case as an officer or member of the Board of CanWest Global Communications. These are not the issue here.
(ii) Respondent has no rights or legitimate interests in respect of the domain name.
6.29 The Policy in paragraph 4(c)(iii) indicates that a Respondent may demonstrate its rights to and legitimate interest in the Domain Name in responding to a Complaint if the Panel finds it to be proved, based on its evaluation of all evidence presented, that the Respondent is "making a legitimate non commercial 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."
6.30 The Panel in the Jules I. Kendall case focused closely upon the necessity of showing a commercial relationship when it held that it was material that the Respondent did not register the Domain Name to disrupt the business of a competitor in that there was no indication that the Respondent had intentionally attempted to attract Internet users to its site for commercial gain, based on confusion with the name of the Complainant.
6.31 In the Monty Roberts case, the Respondent lost its fair use argument as its web site was used for commercial activity in that it directed users to sites where merchandise could be purchased, including some which competed with that marketed by the Complainant.
6.32 In the Jeanette Winterson case, the Respondent failed to succeed in demonstrating any legitimate right he may have had to use the name for a site promoting the Complainant�s works and as a "fan club" by virtue of the fact that he offered the name in question for sale.
6.33 In the case concerning the Jimi Hendrix name the site was used to advertise vanity e-mail addresses incorporating the Domain Name.
6.34 The question of "fair use" has come up in a number of cases. Recently, it has been the subject of an award in Ahmanson Land Company v. Vince Curtis, supra. In that case the Panel found a fair use where the purpose of Respondent�s web sites were shown to have served as non-commercial platforms to criticize the commercial activities of Complainant. The Panel said "[d]eterminations regarding legitimate non-commercial and fair use under the Policy require a balancing of trademark holder and other public interests." This Panel agrees with this statement.
6.35 The Respondent says that his possession of the three Domain Names involving the Complainant is integral for it to maintain both the artistic merit and the purely satirical nature of a web site created by him entitled Who Wants To Be A Canadian Media Baron. The site, he says, "was designed in response to the both the popularity of the program WHO WANT TO BE A MILLIONAIRE [sic], and the public outcry over Canadian media mergers and acquisitions, particularly those of the complainants." The site was operated as a game with people answering a question "Who Wants to Be A Canadian Media Baron" with the options including the Complainant in this case. This site is not now available, says the Respondent, due to the fact that the Domain registrar required that it be disabled, although a screen shot of one of the frames from the multimedia project is annexed to the Response. A copy of the communications from the registrar to this effect is not provided.
6.36 Previous Panel decisions have held that it is not appropriate to use the name of the entity whom one wishes to criticize on the basis of "fair use" to divert Internet traffic to the site. See the Monty Roberts case, above, along with Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 and Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858.
6.37 While the onus is on the Complainant to prove each of the three elements of the Policy, once he makes a prima facie showing that a Respondent lacks rights in the Domain Name, the burden of proof shifts to the Respondent to come forward with demonstrable evidence proving a legitimate interest in the Domain Name. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416. This is consistent with the Policy in paragraph 4(c)(iii) which speaks in terms of the Respondent demonstrating his rights or legitimate interests to the Domain Name for legitimate non-commercial or fair use purposes. The Policy in the opinion of this Panel, strikes the correct relationship between the overall onus of proof in regard to an issue in a case as contrasted with the proof of a fact material to that issue. In regard to the latter, the onus is always on a person who asserts a proposition of fact, which is not self-evident. See Robins v. National Trust Co.Ltd. et al [1927] 2 D.L.R. 98, [1927] A.C. 515 (P.C.). Thus, while the effect of the assertion, as above, made by the Respondent may have amounted to fair use, its credibility is significantly negated by reason of the elements of bad faith as addressed below in connection with paragraph 4(a)(iii) of the Policy.
6.38 This Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name(s).
(iii) The domain name has been registered and is being used in bad faith.
6.39 Complainant must establish not only bad faith registration, but also bad faith use. See World Wrestling Federation Entertainment Inc. v. Michael Bosman, WIPO Case No. D99-0001; Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.40 The term "use in bad faith" in paragraph 4(a)(iii) does not refer to "use in commerce" in the trademark sense of the word, but refers in the broad sense to a pattern of conduct respecting the registered Domain Name in dispute, while passive holding of the Domain Name, without use in commerce, may support a holding of use in bad faith. See Arturo Salice S.p.A. v. Paul Izzo & Company, WIPO Case No. D2000-0537.
6.41 While this Panel is prepared to accept that the e-mail from the Respondent to the corporate office of the Complainant one-day after the Respondent registered its Domain Name is not necessarily evidence of an offer to sell the domain in question, it is evidence of bad faith. The e-mail stated:
"Please contact me so we can discuss my ownership of the domain names of
Peter Zahoruk
(905) 333-9740"
This is, in the opinion of this Panel, inconsistent with the alleged plan of fair use by the Respondent of the Domain Name(s) as recited above in paragraph 6.36. In addition, the e-mail header indicated the e-mail was from "Izzy Asper" and the e-mail address used to send the e-mail was . This was followed by a notification by the Respondent that he was forwarding his original e-mail and the response from Complainant�s office to several newsrooms throughout Canada. On balance, and in the absence of any explanation by the Respondent to the allegation in the Complaint that there could be no bona fide reason for this e-mail, the Panel accepts the allegation.
6.42 There is also evidence that the Respondent has engaged in a pattern of such conduct by registering other Domain Names which are identical or confusingly similar to the names of famous persons such as the name of a former Canadian Prime Minister, a celebrated businessman and publisher, an American wrestler, and of the son of the Complainant who was being groomed to eventually succeed his father in the family businesses.
6.43 This Panel finds that the Domain Names , , and have been registered and are being used in bad faith.
7. Decision
7.1 The only remedy sought by the Complainant, as set out in paragraph 51 of the Complaint is that this Administrative Panel issue a decision that the contested Domain Names be transferred to the Complainant. As the Rules in paragraph 3(b)(x) require that the Complaint specify, in accordance with the Policy, the remedies sought, and as the Complainant has not asked for a cancellation of the registrations in question, only the former remedy will be addressed.
7.2 The Panel finds and decides:
(i) the Domain Name is not identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Complainant has established that Respondent has no rights or legitimate interests in respect of the Domain Names;
(iii) Complainant has established that the Domain Name has been registered and is being used in bad faith.
7.3 The Complaint is therefore dismissed and the Respondent may retain the Domain Names , , and .
Cecil O.D. Branson
Sole Panelist
Dated: June 11, 2001
Footnotes:
1. , paragraph 132-186. (back to text)
2. This Report also, in paragraphs. 187-226, addresses in a similar vein whether the approach to domains with geographical indications, indications of source and geographical terms ought to be reviewed. Some might therefore think it ironic that the Complainant�s corporation is the holder of the registered domain . (back to text)
3. Ibid, paragraph 135. (back to text)
4. . (back to text)
5. There was another case of a performer not being entitled to the transfer of his stage name. This was Gordon Sumner p/k/a Sting v. Michael Urvan WIPO Case No. D2000-0596. This case turned primarily on the fact that the name "Sting" was not a personal name and was too generic to obtain its protection. (back to text)
6. However, as the Panel in this case footnotes the Lanham Act as authority for this proposition, its relevance to our case may be questionable, as Canada has no comparable legislation recognizing the effect of dilution. (back to text)
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