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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CTV Television Inc. v. ICANADA CO.

Case No. D2000-1407

 

1. The Parties

The Complainant is CTV TELEVISION INC., a corporation incorporated under the laws of Canada, with its principal place of business located at Toronto, Ontario, Canada.

The Respondent is ICANADA CO., with its apparent principal place of business at Scarborough, Ontario, Canada. The administrative contact is given as ICANADA CO., with the same address as the Registrant. This is confirmed by registrar verification dated October 29, 2000.

 

2. The DomainName and Registrar

The domain name in question is www-ctv.com. The registrar is Network Solutions, Inc. whose 5.0 Service Agreement is in effect, according to the aforesaid registrar verification.

 

3. Procedural History

The Complaint was received by WIPO, the dispute resolution service provider, on October 17, 2000.

WIPO acknowledged receipt thereof on October 23, 2000.

The request for registrar verification by WIPO was sent on October 26, 2000, and answered on October 29, 2000.

The Complainant, through its solicitor, has certified that

A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on October 17, 2000 by courier service addressed to 1203 - 10 Teesdale Place, Scarborough, Ontario M1L 1K9.

This is the address provided in the WHOIS information.

An electronic version of the Complaint without exhibits was sent by WIPO to the Respondent on October 31, 2000, to the e-mail address provided by the Respondent, and according to WIPO records it was delivered and opened. A hard copy of the Complaint with Exhibits was sent by WIPO via FEDEX to the Respondent at the address provided in the WHOIS information on October 31, 2000. According to FEDEX records, the package was not delivered and was returned to the shipper on November 7, 2000. It appears that the provider, WIPO, has complied with the requirements of service under Paragraphs 2(a) and 4 of the ICANN Uniform Domain Name Dispute Resolution Policy ("UDRP") Rules. Given the foregoing, it would appear that the electronic version of the Complaint (without exhibits) was actually received by the Respondent and that a sufficient attempt was made by WIPO, as provider, to "employ reasonably available means calculated to achieve actual notice to the Respondent" pursuant to Paragraph 2(a) of the ICANN UDRP Rules.

On November 21, 2000, WIPO notified the Respondent by e-mail that it was in default, with a copy of the Notice to the Complainant by e-mail.

On November 30, 2000, WIPO appointed Howard P. Knopf of Shapiro, Cohen in Ottawa, Canada as sole Panelist, the Panelist having accepted the Invitation sent to him on November 28, 2000, by e-mail to serve as sole panelist and WIPO having been satisfied of the Panelist’s declared impartiality and independence.

Complainant and Respondent were both notified of the said Appointment on November 30, 2000 by e-mail, together with the anticipated date of decision of December 13, 2000, in accordance with the ICANN Rules, Paragraph 15.

The Panelist has been provided by WIPO with an electronic copy of all pertinent documents except the Annexes to the complaint and a hard copy of the documents including the Annexes. No further material or communication has been received by the Panelist and the Respondent has taken no steps to seek an extension of time pursuant to Paragraph 14 of the ICANN UDRP Rules.

 

4. Factual Background

The Complainant is the owner of several registered trade-marks (Footnote 1), certified copies of which have been submitted in evidence.

The Complainant included in Annex 3 to its Complaint certified copies of the Complainant’s United States Trademark Registration Nos. 1,053,080 and 2,185,337, for CTV and CTV & DESIGN, both registered for use in association with television broadcasting services, and claimed use in respect of the CTV trademark dating back to October 1961.

The Complainant included in Annex 4 to its Complaint certified copies of three Canadian trade-mark registrations owned by the Complainant, Registration Nos. 197,826; 302,697 and 324,326, for the trademarks CTV and CTV & DESIGN, covering, inter alia, the "Transmission of sound and/or image by all electrically energized means whether conducted or broadcast, for visual and/or aural reception, together with television network services, including recording for visual and/or aurally received connected or broadcasted transmission, of messages and programs of every type and description, through all available commercial means including film, video-tape and discs". It is noted that use is claimed in connection with the registration for the CTV trademark in Canada since May 5, 1961.

The Complainant also refers to and claims to own two pending Canadian trade-mark applications, Serial Nos. 1,062,102 and 1,062,103 for the trade-mark CTV & Design, covering wares and services. Some of the use is stated to be actual use, while some is intended use. Certified copies of these applications were attached as Annex 5 to this Complaint. These include references to use involving the Internet since at least as early as 1996. However, these Applications are not in the name of the Complainant. They are filed in the name of CTV INC. No evidence is provided that the trade-marks referred to in these applications are the property of or adequately licensed (Footnote 2) to the actual Complainant, which is CTV TELEVISION INC., not CTV INC. Mere corporate relationship would not suffice to confer any relevant rights to the Complainant in this instance, and there is no evidence of it on record in any event. The Panel cannot simply infer or assume the existence of the necessary documentation. In default proceedings under the UDRP where questions arise pertaining to registrations or the status thereof, the Complainant must be held to an exacting standard. (Footnote 3) The pending Canadian applications will be disregarded by the Panel.

The Complainant states that it owns and operates the CTV television network, Canada’s only private national television network, as well as 25 television stations across Canada, and that its television signals reach 99% of English-speaking Canadians. While no proof of these statements was submitted, the Panelist, in this instance being Canadian, is prepared to accept without actual evidence (albeit reluctantly in view of the normal rules of evidence) that the Complainant is a major national television network in Canada, whose business and general place in the Canadian television industry, by the very nature of this type of activity, would be known to most English-speaking Canadians who watch television. The Panelist is aware that facts about the Complainant are well documented in many court and regulatory decisions. Given the summary nature of these proceedings, the Panelist’s knowledge by virtue of his nationality, and the fact that the Respondent has defaulted, further proof of these facts will not be required in this instance. However, on both this point and a similar point that follows below, it would have been desirable, and in other readily foreseeable circumstances essential, and not unduly onerous for a party that professes to be as substantial as the Complainant, to provide at least some actual evidence of these basic facts. A non-Canadian panelist, even from a neighbouring jurisdiction, might very well be unaware even of the existence of the Complainant. In many instances, the filing of a published annual report, if available, could suffice to satisfy a Panel as to basic facts concerning a complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of several trade-marks as noted above for CTV and design marks that include CTV.

With respect to the actual Canadian trade-mark registrations, the Complainant alleges that these are "extremely well-known, particularly in Canada". The Panel is prepared to accept, without further proof but with the same comments and concerns as previously stated, that the Complainant’s Canadian trade-marks as reflected in the actual Canadian registrations mentioned above are well-known in Canada.

The Panel notes that the Canadian registered trade-marks included with the Complaint do not specifically refer to activities involving the Internet or the World Wide Web.

The Complainant alleges that the Respondent’s domain name www-ctv.com is

...confusingly similar to the Complainant’s well-known trademark CTV in that the prefix "www" is a universally known acronym for the world-wide web, and it will therefore be assumed by consumers that the domain name is in fact functionally identical in sound, appearance, and in the idea suggested thereby, to the Complainant’s trademark CTV.

The Complainant further alleges that

…Respondent has no rights or legitimate interests in respect of the domain name WWW-CTV.COM. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name WWW-CTV.COM in connection with a bona fide offering of goods or services. No use has in fact been made of this domain name by the Respondent.

The Complainant alleges that the domain name www-ctv.com should be considered as being registered and used in bad faith by the Respondent for several reasons.

The Complainant alleges that the Respondent is not a bona fide existing entity and presents evidence consisting of copies of corporate searches that fail to show the existence of an entity in Canada called ICANADA CO. (Complaint, Annex 6).

The Complainant alleges, but without any evidence, that the telephone number of the Respondent provided in the WHOIS search does not reach any individual or entity known as or familiar with the name ICANADA CO. or www-ctv.com. Bare statements or allegations in the complaint itself, unless made by someone with actual personal knowledge and who is not an advocate for a party, should not be taken as evidence. Therefore, this allegation will be disregarded.

The Panel notes that the WHOIS query result obtained by the Complainant through Network Solutions’ WHOIS database dated 7/7/00 as supplied by the Complainant for www-ctv.com indicates that the fax number of the Respondent is 123-123-1234. (Complaint, Annex 1). The Panel takes judicial notice (Footnote 4) that this cannot be a functioning fax or telephone number in Canada. There is simply no "123" area code in Canada.

Apparently the e-mail address provided in the aforesaid WHOIS query is valid and operative because the Complainant presents copies of two e-mails said to be received from the Respondent dated July 14, 2000 and August 2, 2000, in response to e-mails allegedly sent to the given e-mail address. (Complaint, Annex 7). Certain evidentiary issues concerning Annex 7 will be discussed below. Moreover, as noted above, WIPO has a record that e-mail was received and opened at this address.

The Complainant characterized the two e-mail messages from the Respondent as follows:

When the Complainant was finally able to contact the Respondent by e-mail, the Respondent replied on July 14, 2000, by asking for an offer to be made as to the price for which the domain name might be sold. In a further e-mail, on August 2, 2000, the Respondent indicated that: "We are a IT venture developing a internet based web media service".

The fact that CTV Television Inc. is Canada’s largest media company, based in Toronto, the city in which the Respondent is also based, and the proposed business to be carried on by the Respondent is a media business in our submission makes it abundantly clear that the domain name at issue was adopted with full knowledge of the Complainant’s well-known CTV trademark, and in bad faith. The Respondent also made reference, in the same e-mail message which it sent, to the amount of money which the Respondent would have been able to make if it had registered the domain name WWW.CTV.COM. Copies of the e-mail correspondence from the Respondent are attached as Annex 7 to this Complaint.

It should be noted that Annex 7 is an e-mail from one Mr. George Grontius to a person who appears to be the same person as the solicitor for the Complainant who, in turn, signed and certified the Complaint. In the e-mail, Mr. Grontius includes the two e-mails allegedly received by one Mr. Grant from one Mr. Thomas Choi, President of ICANADA Co., which are mentioned above, together with a very brief explanation to the said solicitor. Mr. Grontius states:

The following are our responses to our e-mail from iCanada ... the company who registered www-tv.com.

It appears that they are an information technology company developing a web based media service. We had not informed them of the client’s [sic] and found it quite interesting that they would refer to CTV.com...

B. Respondent

The Respondent did not respond and is in default. There has been no attempt to cure the default.

 

6. Discussion and Findings

Both of the parties are located in Canada. It would therefore be appropriate to use Canadian law insofar as possible to deal with this matter. Several previous Panels have held that, where the parties are both found in one national jurisdiction, the laws of that jurisdiction should apply. (Footnote 5)

This might not follow in all instances. For example, if one or both of the parties carry on activities that cross over into other jurisdictions, the question could be much more complex, but this need not concern the Panel in the present instance.

This is a summary proceeding. The Respondent is in default. Paragraph 14 of the ICANN UDRP Rules provides in such case that:

14. Default

1. In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
2. If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel may also request further statements or documents from either party (Paragraph 12) and "shall determine the admissibility, relevance, materiality and weight of the evidence" (Paragraph 10(d)).

At least two UDRP Panels have already held that, in the event of a default, the Complainant should be held to "an exacting standard". (Footnote 6)

While the appropriate rules of evidence are clearly not etched in stone for these types of proceedings and will be more relaxed than those of most courts given the summary nature of the proceedings and the universal desire to keep costs down, the Parties must still ensure that the evidence presented meets appropriate standards in terms of admissibility, relevance, materiality, weight, and last, but certainly not least, the "best evidence" rule. At least one panel has commented on how affidavit evidence will be preferred to unsworn evidence. (Footnote 7) Other panels have commented on the need to put forward the best evidence at the outset and, in effect, to "get it right the first time". (Footnote 8) Minimum standards of proof are needed, even if hearsay evidence will be admissible, and unnecessary formalities should be avoided in this type of summary administrative proceeding. (Footnote 9) The integrity of the UDRP process, which is intended to be highly transparent, along with its public credibility and acceptance, require attention to these principles.

In light of the foregoing, the Panel considers the case at hand. The Complainant must, of course, establish the basic trilogy of necessary elements on a balance of probabilities in order to prevail.

A. According to the UDRP, Paragraph 4(a)(i), is the domain name identical or confusingly similar to a trademark or service mark in which the complainant has rights?

In this instance, the Respondent has inserted "www-" in front of the letters CTV to form its .com domain name. Numerous Panels have already considered similar efforts in the past. (Footnote 10) Some Panels (Footnote 11) have held that this type of act can be explained as a form of exploitation of the possibility of typographical error by users (so-called "typo-piracy") which might be intended to attract traffic that otherwise would have gone to another source by creating a likelihood of confusion with the Complainant’s mark, in the sense of Paragraph 4(b)(iv) of the ICANN UDRP Policy which states:

(iv) 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.

Certainly, it is clear that "www" (which stands for World Wide Web in the Internet context) is not a distinctive element in the context of top level domain names and is merely a generic element that is part of the full syntax for entering the full URL of any domain name in a browser’s address or location field. In the earlier days of the Internet, the full syntax for a fully spelled out top level .com domain name would have been:

http://www.!*!.com

where "!*!" is the element actually chosen by the Registrant. Indeed, this is still the correct syntax. However, in many instances now, simply entering the letters !*!.com or even !*! in the "location" or "address" field of a browser will take the user to the intended destination.

The significance of "http" is that is stands for "Hypertext Transport Protocol" (Footnote 12), part of the original syntax required to take a user to an HTML (hyper text markup language) "web" page.

The role of "www-" in this context, with the hyphen specifically included, has been held to constitute use of a generic term that does nothing to reduce the potential for confusion with a registered trade-mark or service mark. (Footnote 13)

The first element has been proven.

B. According to the UDRP, Paragraph 4(a)(ii), is it the case that the Respondent has no rights or legitimate interests in respect of the domain name?

The Respondent, being in default, has proffered no evidence on this point. Clearly, the Respondent’s purported trade name ICANADA CO. bears no resemblance to the letters CTV. Indeed, if the Respondent, as alleged, is proposing to operate a "media" business in any way (the evidence concerning which is discussed below), it is very difficult, if not impossible to imagine how it could use the element CTV as a trade-mark without infringing the Complainant’s registered trade-marks under Canadian law (which is discussed below).

In any event, previous Panels have held that a Respondent’s failure to deny that it has no legitimate interest in the domain name in issue suffices to meet the test required for this aspect. (Footnote 14)

The Panel finds that this element has been proven.

C. According to s. 4(a)(iii) of the UDRP, is it the case that the "domain name has been registered and is being used in bad faith"?

This is the most problematic aspect for the Panel in this matter because the evidence submitted on behalf of the Complainant on this point barely qualifies as evidence, even by the relatively tolerant standards of the UDRP process. It consists of an e-mail from an unidentified person named Grontius to the Complainant’s solicitor that purports to incorporate two e-mail messages from the Respondent to an unidentified person named Grant. The circumstances of this e-mail correspondence are not adequately explained. On its face, it is only one half of the exchange, since it does not include the initiating correspondence to the Respondent. It would appear that the Respondent did not clearly know it was dealing with the Complainant.

The evidence in this instance in Annex 7 of the Complaint is hearsay, and is not incorporated into an affidavit. It is far from being the "best evidence". It is not placed in an adequate context, even in the Complaint itself which is certified by the Complainant’s solicitor, and which, in any event, should not be regarded as a substitute for evidence, especially with respect to contentious points. However, since the Rules cited above provide that a Panel shall proceed in a default situation on the basis of the Complaint (Paragraph 14) and it would require extraordinary circumstances, not present here, to require additional material pursuant to Paragraph 12, the Panel reluctantly concludes pursuant to its discretion under Rule 10(d) that the evidence should be admitted. The Panel so exercises its discretion mainly because the gist of the e-mail evidence was contained in the electronic version of the complaint (even without the Annexes), which was received by the Respondent, who has not seen fit to respond to it or object to it. Under the circumstances, the Panel gives this evidence minimal weight. Fortunately for the Complainant, there are a number of other factors, more adequately proven, that help to sustain a finding of bad faith, in view of the Telstra decision discussed below.

The gist of the two e-mail messages from the Respondent is plain enough in a coy but clear way. The first e-mail dated July 14, 2000, states that it is not "presently" the Respondent’ s intention to sell its domain name, but goes on to ask what the price range might be to "overwhelm our intention". This, of course, does not in and of itself constitute bad faith for purposes of the UDRP. In order to determine whether there is bad faith, one must look at the non-exhaustive list in Paragraph 4(b) of the UDRP.

In this respect, the Respondent’s e-mail dated August 2, 2000, suggests that it would have preferred to have registered ctv.com but settled for the domain now under consideration, namely www-ctv.com, which it admits is not as valuable as ctv.com. Accordingly, the Respondent asks for "a certain fraction" of what the ctv.com domain name would have cost. The e-mail evidence does help to support a finding of bad faith, both by virtue of the intention to sell at profit that can at least be inferred (given the default), and the apparent knowledge of the value of the element CTV standing on its own.

The facts set forth thus far do not necessarily fit precisely with any of the four enumerated sets of circumstances set out in Paragraph 4(b) of the UDRP. However, as numerous Panels have held, the examples are not exhaustive and bad faith can be inferred from all of the circumstances.

In this instance, an independent visit (Footnote 15) on December 12, 2000 by the Panel to

http://www.www-ctv.com

reveals a classic "under construction" page in several languages with advertisements for Network Solutions Inc. This is also potentially relevant to the issue of bad faith, since the Respondent has shown no evidence of legitimate actual good faith use of the domain name.

These facts are very close to the very frequently cited Telstra decision (Footnote 16), which found bad faith where a Respondent registers a well-known trade-mark as a domain name and then engages in "passive holding" that, in the circumstances of that case, gave rise to finding of bad faith that did not strictly fit with the enumerated but non-exhaustive list in Paragraph 4(b) of the UDRP Policy. In Telstra, the Panel (Andrew F. Christie) held that bad faith could be found in circumstances according to a five-part test where:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use [in Australia and in other countries],
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’ s rights under trademark law.

This fits the present situation almost verbatim. In the present situation, the trade-mark CTV is well known, at least in Canada. There is no evidence of good faith use. There is evidence mentioned of steps taken to conceal the Respondent’s true identity. There is evidence mentioned of false or inaccurate contact details.

The last element of the above five part test can be tricky to apply in some instances, because it involves guessing what a court may hold in an infringement action based upon largely unknown and unknowable facts. There is an extreme paucity of case law in Canada on the question of use of domain names in the context of trade-marks law. In one of the few reported cases of any relevance, a defendant was enjoined from using the domain name lespagesjaunes.com through which it marketed a business directory of the French-speaking world by the plaintiff who owned registered trade-marks YELLOW PAGES and PAGES JAUNES and who was also clearly in the directory business. (Footnote 17) The addition by the Respondent in the present case of www- in front of CTV is not unlike the addition by the defendant of LES in front of PAGESJAUNES.

Is there any plausible way, based upon the evidence before the Panel, that the Respondent could use the domain name www-ctv.com in Canada, presumably in connection with "a [sic] internet based web media service", without likely running afoul of the Complainant’s trade-marks?

If the evidence on this point, which the Panel has given minimal weight, is not sufficient to sustain a finding that the Respondent would use the domain in connection with "a [sic] internet based web media service", then recourse can be had to the fact that the Respondent’s stated trade name, namely ICANADA CO., bears no resemblance to CTV. Since the Respondent has not seen fit to defend itself by showing that it might have a justifiable use for a trade-mark, trade name, or a domain name incorporating the element CTV, then an adverse inference can be drawn pursuant to ICANN Rule 14(b) that there is no such plausible actual or contemplated legal use possible by this Respondent under the circumstances as now known.

With respect to the issue of confusion and the fifth element of the Telstra test, it should be noted that Canadian law is less deferential to and protective of well known and famous trade-marks than that of some other jurisdictions. The Federal Court of Appeal has recently held that the use of even a well known and "famous" mark, even when "coined", will not be held to be confusing when the wares or services are so far removed from those of the well known mark or famous mark that there is no possibility of confusion in the relevant public because the defendant’s product does not suggest that of the plaintiff. (Footnote 18) For example, a Canadian consumer of canned food is unlikely to believe that the goods emanate from the same source as a luxury Japanese automobile bearing the same trade-mark, namely LEXUS. It should be noted, for those unfamiliar with the Canadian trade-marks system, that it does not provide for formal classes as is the case in many other countries. (Footnote 19) The aforementioned LEXUS decision indicates that confusion can be generated when the products are not in the same "general class", but "where they are as dramatically different as cars and canned food, that must be given considerable weight". Canada has no anti-dilution law in place.

In this instance, even accepting as noted above that the Complainant’s trade-marks are well known or even, arguendo, famous in Canada, the Respondent might escape under trade-mark principles if it could show that its wares and services were sufficiently different from those of the Complainant. However, quite apart from any inferences that may be drawn due to the Respondent’s default, the Respondent is also hoisted on its own petard, because of its admission mentioned above that it is an "IT venture developing a [sic] internet based web media service". (Complaint, Annex 7). There can be little doubt that most Canadians (at least) would perceive the Complainant as being in the "media" business and many Canadians might readily conclude that the Complainant could be associated with a website having a domain name WWW-CTV that provides an "internet based web media service".

The Complainant does allege that

The fact that CTV Television Inc. is Canada’s largest media company, based in Toronto, the city in which the Respondent is also based, and the proposed business to be carried on by the Respondent is a media business in our submission makes it abundantly clear that the domain name at issue was adopted with full knowledge of the Complainant’s well-known CTV trademark, and in bad faith.

While the Panel has doubt about whether sufficient evidence is properly before it to prove each aspect of this allegation, the fact remains that the allegation has not been answered and the Respondent is in default. Therefore, the Panel draws the inference pursuant to ICANN Rule 14(b) that the Respondent must have been aware of the CTV trade-marks and that the potential overlap between the activities of a large media company (the Complainant) and the Respondent’s "media service" would be sufficient to cause confusion, given the similarity of the Complainant’s trade-marks and the Respondent’s domain name. The Panel notes that "media" is a very general concept and it may be theoretically possible that the Respondent’s media activities are or would be sufficiently distinct from those of the Complainant to pass muster for purposes of assessing confusion in the context of assessing the last part of the Telstra test. However, given the lack of answer and the default, the inference drawn by the Panel is that the activities would be sufficiently close, or at least be so perceived, that there would likely be a finding of confusion in this instance under Canadian law.

In addition, in the present situation, there is also the matter of the offer for sale as reflected in the e-mail evidence referred to above, albeit rather vague and preliminary and procured at the behest of the Complainant or its agents. At least one Panel has held that any offer to sell at a cost in excess of documented out-of-pocket costs "conclusively establishes bad faith", unless there is a showing of rights or a legitimate interest in the domain name itself. (Footnote 20) This e-mail evidence, even with the minimal weight allowed to it, can only add to the inference of bad faith which the Panel is prepared to draw and so finds in any event, aided by the adverse inferences on bad faith that can be drawn pursuant to Paragraph 14(b) of the ICANN UDRP Rules.

Despite serious concerns about the admissibility of certain important evidence as noted above, the third element of bad faith has been proven, if only barely and by default. Had there been any credible and, especially, sworn evidence in rebuttal, the outcome might have been different.

 

7. Decision

Having found that the Complainant has proven each of the three required elements under Paragraph 4(a) of the UDRP, the Panel hereby orders that the domain name www-ctv.com be transferred to the Complainant.

 

 

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Howard P. Knopf
Sole Panelist

Dated: December 13, 2000

 

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Footnotes:

1. The Panelist employs, in this instance, the Canadian spelling of the term "trade-mark", which includes a hyphen, since both Parties are Canadian.

2. Trade-marks Act, R.S.C. 1985, c. T-13, as amended, s. 50. (Hereinafter the "Trade-marks Act").

3. See WIPO Case No. D2000-0115 re tarzanonline.com, per Andrew P. Bridges.

4. Panelists may take "judicial notice" in appropriate circumstances in UDRP proceedings. See, for example, WIPO Case No. D2000-0335 re aifd.com, per M. Scott Donahey and D2000-0119 re ccom.com, per M. Scott Donahey.

5. See WIPO Case No. D2000-0004 re americanvintage.com, per Mark Partridge, WIPO Case No. D2000-0231 re lloydstsb-visa.com, per James Bridgeman, and WIPO Case No. D2000-0119 re ccom.com, per M. Scott Donahey.

6. See WIPO Case No. DS2000-0336 re acrylite.com, per Dana Haviland and WIPO Case No. D2000-0115 re tarzanonline.com , per Andrew P. Bridges

7. See WIPO Case No. D2000-0566 re tabcorp.com, per Hon. Sir Ian Barker, Q.C..

8. See WIPO Case No. D2000-0703 re iriefm.com, per Hon. Sir Ian Barker QC; WIPO Case No. D2000-0026 re 4tel.com, per Jordan Weinstein and WIPO Case No. D2000-0423 re telstrashop.com, per John Terry.

9. See WIPO Case No. D2000-0336 re acrylite.com, per Dana Haviland.

10. See WIPO Case No. D2000-0377 re wwwge.com, per M. Scott Donahey; WIPO Case No. D2000-1274 re wwwmicrosoft.com, per Thomas H. Webster; WIPO Case No. D2000-1271 re wwwnokia.com, per Henry Olsson; WIPO Case No. D2000-1240 re wwwgoogle.com, per Jeffrey M. Samuels; and WIPO Case No. D2000-0594 re www-ge.com, per Hugues G. Richard.

11. See WIPO Case No. D2000-0069 re wwwinfospaces.com, per Mark B. Partridge; WIPO Case No. D2000-0441 re wwwreuters.com, per Andrew Christie; WIPO Case No. D2000-0256 re wwwwwf.com, per David M. Kelly.

12. M.A. Pike et al, Using the Internet, 2nd edition, Que Corporation, Indianapolis, IN, 1995, p. 686

13. See WIPO Case No. D2000-0594 re www-ge.com, per Hugues G. Richard.

14. See WIPO Case No. D2000-0377 re wwwge.com, per M. Scott Donahey; WIPO Case No. D2000-0007 re alcoholicsanonymous.net, per Sally M. Abel; and WIPO Case No. D 2000-0011 re www.ronson.com, per Prof. Charles Gielen.

15. Confirming by way of update a document submitted by the WIPO officials to the Panel pursuant to their efforts to find the Respondent pursuant to Paragraph 2 of the UDRP Rules.

16. WIPO Case No. D2000-0003 re telstra.org, per Andrew F. Christie.

17. Bell Actimedia Inc. v. Puzo, (1999) 2 C.P.R. (4th) 289 (Federal Court Trial Division).

18. United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (Federal Court of Appeal per Linden, J.A.) reversing 67 C.P.R. (3d) 216 (concerning motion pictures etc. v. beauty salons); Toyota Jidosha Kabushiki Kaisha (a.t.a. Toyota Motor Corp.) v. Lexus Foods Inc., (2000) F.C.J. No. 1890, Docket A-622-99, Unreported, November 20, 2000) Federal Court of Appeal per Linden, J.A.) (concerning luxury automobiles v. canned food).

19. The concept of "same general class" is, however, mentioned in s. 6 of the Trade-Marks Act, which provides a statutory definition of confusion.

20. See WIPO Case No. D2000-0243 re cbs.org, per M. Scott Donahey. For a dicta comment suggesting that an offer to sell procured by a Complainant can be equivocal and not necessarily in bad faith, See WIPO Case No. D2000-0407 re cityutilites.com, per Jeffrey Samuels.