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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hebdomag Inc. v. Illuminaty Marketing

Case No. D2001-0206

 

1. The Parties

The Complainant is Hebdomag Inc., 130 de Liиge East, Montrйal H2P 1J1, (Quйbec) Canada.

The Respondent is Illuminaty Marketing, 2016 Colbert, Saint-Bruno J3V 4X9, (Quйbec) Canada.

 

2. The Domain Name and Registrar

The domain name at issue is <autohebdo.net> (hereinafter referred to as the "Domain Name").

The registrar of the domain name is Tucows.com, Inc. (OpenSRS), 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada, (hereinafter referred to as the "Registrar").

 

3. Procedural History

On February 8, 2001, the Complainant filed a complaint with the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center"). The complaint was received by email on February 8, 2001 and in hardcopy on February 12, 2001.

On February 12, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant.

On February 15, 2001, the Center informed the Registrar that a complaint had been submitted to the Center regarding the Domain Name, and requested for Registrar Verification.

On February 15, 2001, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:

- a copy of the complaint was sent to it by the Complainant;

- it is the current registrar of the Domain Name registration;

- the Respondent is the current registrant of the Domain Name registration;

- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "ICANN Policy") applies to the Domain Name.

The Center proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on February 22, 2001.

The Panel has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center’s assessment that the complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

On February 22, 2001 the Center informed the Respondent of the commencement of the proceedings as of February 22, 2001 and of the necessity of responding to the complaint within 20 calendar days, the last day for sending a response to the Center being on March 14, 2001.

In a letter dated March 15, 2001 the Center informed the Respondent that it was in default pursuant to the ICANN Policy and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.

On March 21, 2001 the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.

The Panel believes that it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel has received no further submissions from either party since its formation.

The Panel was obliged to issue a decision on or prior to April 3, 2001, in the English language. Due to exceptional circumstances, an extension to issue a decision was granted. The Panel has to issue its decision on or prior to April 17, 2001.

 

4. Factual Background

The following facts appear from the complaint and documents submitted with the complaint:

According to a WHOIS search performed on October 25, 2000, the registrant for the Domain name at that time was "Zeus" and its administrative contact was "Jonathan Baron".

According to a WHOIS search performed on October 27, 2000, the registrant for the Domain name at that time was "Illuminaty Marketing" and its administrative contact was "William Harrison".

According to a WHOIS search performed on January 16, 2001, the registrant for the Domain Name was still "Illuminaty Marketing" with "William Harrison" listed as the administrative contact.

As of the date on which this decision was rendered, the Panel performed a WHOIS search that confirmed that the registrant for the Domain Name is still "Illuminaty Marketing" with "William Harrison" listed as the administrative contact.

 

5. Parties’ Contentions

A. The Complainant

Contentions of the Complainant with respect to its Trade-marks

The Complainant submits that it is a successful and well-known Canadian company that has been publishing a popular periodical publication in Montreal and its surroundings, in the rest of the province of Quebec, since as early as June 1977. The Complainant submits that the periodical publication is published under the name "Auto Hebdo" and is directed to the used-vehicle market.

The Complainant submits that on March 4, 1986, the Complainant filed an application for registration of the trade-mark "AUTO HEBDO" with the Canadian Intellectual Property Office. Following its prosecution, the application was registered on January 29, 1993 under Canadian registration number TMA 407,308, claiming use since as early as June 1977.

In addition to the registered trade-mark AUTO HEBDO, the Complainant submits that it is the owner of a family of Canadian trade-marks, such as the trade-mark "CAMION HEBDO" (TMA 399,013) in relation to printed publications, namely periodical publications advertising for sale of used trucks, since as early as January 1983. ("CAMION" is the French word for truck.) Other Complainant's trade-marks includes "MOTO BATEAU ET VR HEBDO" used in association with a periodical publication directed specifically to the used-motorcycle, boat and recreational vehicle market and "AUTOS NEUVES HEBDO & Design" used in association with a further sister publication of AUTO HEBDO directed to the automobile dealers.

The Complainant submits that it is also the owner of the trade-mark "HEBDO.NET" (Canadian registration TMA 535,389) as well as "HEBDONET & DESIGN" (TMA 534,852) and "HEBDONET.COM" (registration TMA 535,390) in association with providing on-line, interactive, multimedia information and advertising services relating to the sale or purchase of items such as automobiles, trucks, motorcycles, vans, boats, recreational vehicles, and heavy equipment. The Complainant claims use since as early as September 18, 1996.

The Complainant submits that the above facts clearly demonstrate that the Complainant is the owner of a family of trade-marks comprising the words "AUTO", "HEBDO" and "NET". To support these contentions, Complainant included a copy of the printout from the Canadian Intellectual Property Office trade-mark database for each of the trade-marks mentioned as Annex 4 to its complaint.

Contentions of the Complainant with respect to its Domain Name Registration and Status

The Complainant submits that it is the owner of the domain name <autohebdo.ca>, which it uses in the normal course of its business to direct traffic to its web site.

The Complainant submits that is the unchallenged leader in the market for periodical publications advertising sales of used vehicles in the province of Quebec and in Montreal, that it has developed an outstanding reputation for business integrity, and has acquired a tremendous goodwill with respect to its trade-mark AUTO HEBDO, and its family of trade-marks.

More specifically, the Complainant submits that its trade-marks and in particular its trade-mark AUTO HEBDO are very well known in Montreal, and in the whole of the province of Quebec going as far as stating that just about any person wishing to purchase or sell a used vehicle in the province of Quebec or in Montreal relies on the periodical publication AUTO HEBDO, or any of its sister publications.

Contentions of the Complainant with respect to the Circumstances Surrounding the Registration and Use of the Domain Name by the Respondent

The Complainant submits that on or about October 18, 2000, an entity called Zeus registered the Domain Name <autohebdo.net>. The Complainant submits that it became aware of the registration of the Domain Name on or about October 25, 2000. Complainant submits that "Zeus" is the predecessor in title of the Respondent. To support these contentions, Complainant submitted a copy of a printout from a WHOIS search dated October 25, 2000 as Annex 5 to its complaint.

The Complainant submits that when one of its representative, namely Mr. Rick Walls, accessed the web site to which the Domain Name was leading, he found that the Domain Name was being used in conjunction with a pornographic web site.

The Complainant submits that it immediately contacted its attorneys and instructed them to address to Zeus a demand letter, in which the Complainant gave it a forty-eight (48) hours delay to assign the Domain Name registration to the Complainant. Complainant submits that the said demand letter was served by bailiff on Zeus on October 24, 2000. To support these contentions, Complainant submitted a copy of the demand letter addressed to Zeus and Jonathan Baron by Complainant's attorneys and dated October 23, 2000 as annex 6.

The Complainant submits that within twenty-four (24) hours of Zeus having received the demand letter, the domain name <autohebdo.net> was put up for sale by Zeus. To support this contention, the Complainant submitted a copy of the advertisement regarding the sale of the domain name <autohebdo.net> dated October 25, 2000 as Annex 7 to its complaint.

The Complainant submits that, following this advertisement, it addressed an offer to purchase the Domain Name from Zeus for 1,00 $ on the same day, i.e. on October 25, 2000. To support this contention, the Complainant submitted a copy of the letter as Annex 8 to its complaint.

The Complainant submits that within forty-eight (48) hours from the receipt of the offer to purchase the Domain Name, the Domain Name had been transferred to the Respondent ILLUMINATY MARKETING. To support this contention, the Complainant submitted a copy of a printout from a WHOIS search dated October 27, 2000 as annex 9 to its complaint.

The Complainant submits that ILLUMINATY MARKETING is an unincorporated entity having its address in a nearby suburb of Montreal.

The Complainant submits that it then addressed a further demand letter to the Respondent, ILLUMINATY MARKETING, on October 27, 2000 demanding that the Domain Name registration be immediately transferred to the Complainant. To support this contention, the Complainant submitted a copy of the demand letter addressed to Mr. William Harrison by Complainant's attorneys and dated October 27, 2000 as annex 10 to its complaint.

Notwithstanding the fact that the attorneys for the Complainant have attempted to contact the Respondent, the Complainant submits that despite the attempts made by Complainant's attorneys to contact the Respondent, the Respondent has not communicated with the Complainant, nor has it addressed Complainant's request for the transfer of the Domain name.

The Complainant submits that as of January 16, 2001, the Domain Name <autohebdo.net> is associated with a web site that is not operational and for that its home page states "Le guide des prix d’auto" (which is French for "the price guide for cars") with a mention that the site is under construction. To support this contention, the Complainant submitted a printout of the home page of the web site <autohebdo.net>, dated January 16, 2001 as Annex 11 to its complaint.

The Complainant submits that it verily believes that the owner of the Respondent ILLUMINATY MARKETING, namely Mr. William HARRISON, is a friend of the owner of the predecessor in title ZEUS, namely Mr. Jonathan Baron, and that there was collusion between the two entities in respect of the transfer of the domain name.

Contentions of the Complainant with respect to the Identity or Confusing Similarity between the Domain Name and its Trade-marks

The Complainant submits that the Respondent, and its predecessor in title have caused to be registered a domain name, namely <autohebdo.net>, identical to the Complainant’s registered trade-mark "AUTO HEBDO".

The Complainant submits that in determining whether a domain name is identical or confusingly similar to a Canadian trade-mark, the criteria set forth by the Canadian Trade-mark Act should apply. To that end, the Canadian Trade-Mark Act, R.S.C. 1985, c. T-13, as amended, sets forth a number of elements to be considered when determining whether a trade-mark is confusing with another. The Complainant submits that these criteria should be followed in a dispute such as the one before us, wherein a disputed domain name is asserted by the Complainant to be identical or confusingly similar with its registered trade-mark.

Section 6(5) of the Trade-mark Act sets forth the test for confusion. These include sub-paragraph e) wherein confusion is tested with respect to: the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

The Complainant submits that in the present dispute, the registered trade-mark AUTO HEBDO is identical to the Domain Name save for the fact that the registered trade-mark is in two words, while the domain name is one word, followed by the identifier ‘NET’. The Complainant submits that the degree of resemblance in appearance, in sound or in the ideas suggested between the two is exceptionally high, and that the differences in the spelling of the Domain Name are immaterial.

The Complainant submits that the overall impression between the registered trade-mark AUTO HEBDO and the Domain Name is the same. Therefore, using the well-known test applied by Canadian Courts in cases of confusion, namely the "first impression with an imperfect recollection test", the Domain Name is clearly confusingly similar with the Complainant’s registered trade-mark AUTO HEBDO.

The Complainants submits that, in addition, the Domain Name is also confusingly similar to a number of registered and unregistered trade-marks of the Complainant, namely CAMION HEBDO, MOTO BATEAU ET VR HEBDO, AUTOS NEUVES HEBDO & Design, HEBDO.NET, HEBDONET & Design, and HEBDONET.COM.

For similar reasons as those submitted above with respect to the registered trade-mark AUTO HEBDO, the Complainant submits that the Domain Name is confusingly similar with the Complainant’s family of trade-marks.

The Complainant therefore submits that it has demonstrated, in accordance with paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy that the Domain Name is identical or confusingly similar to the Complainant’s registered trade-mark AUTO HEBDO.

Contentions of the Complainant with respect to the Absence of Rights or Legitimate Interests of the Respondent

The Complainant submits that it has not authorized the Respondent or its predecessor in title, to use an expression which is identical or confusingly similar with its trade-mark AUTO HEBDO, or with any of its other trade-marks as a domain name. The Complainant submits that, therefore, the Respondent has no right to use the Domain Name.

The Complainant also submits that the Respondent has no legitimate interests in the Domain Name.

The Respondent’s predecessor in title first registered the Domain Name and used it in association with a web site selling access to pornographic material. Complainant submits that since there is evidently no obvious connection between a pornographic web site and the domain name <autohebdo.net>, the only logical conclusion is that Respondent's predecessor in title chose said domain name only because of its notoriety, in order to attract a high number of hits to his web site, without having a domain name that would suggest a use in connection with a pornographic web site.

Further, the Complainant invites the Panel to draw an inference that the Respondent and the predecessor are not bona fide businesses engaged in commercial activity from the fact that present they are unincorporated entities. It argues that it is unthinkable that an unregistered legal entity, in other words a physical person, would carry on commercial activity without a vehicle to shield it from liability. From this, one can only conclude that the Registrant is not a true business entity, and therefore has no legitimate business interest in the Domain Name.

The Complainant therefore submits that the Respondent, or its predecessor in title, has no legitimate interests in respect of the domain name <autohebdo.net>.

The Complainant therefore submits that it has demonstrated in accordance with paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy that a respondent has no rights or legitimate interests in respect of the Domain Name.

Contentions of the Complainant with respect to the Registration and Use of the Domain Name in Bad Faith

Lastly, the Complainant submits that the Respondent and/or its predecessor in title, has registered and used the Domain Name in bad faith.

The Complainant submits that its registered trade-mark AUTO HEBDO is extremely well-known in Montreal and in the Province of Quebec, and that a tremendously valuable goodwill attaches to said trade-mark.

The Complainant submits that the Respondent’s and/or its predecessor did not choose this domain name by accident. The Complainant submits that the Respondent was trying to piggyback on the notoriety and fame of the Complainant’s registered trade-mark AUTO HEBDO in order to unlawfully attract traffic to its web site.

The Complainant submits that in the instant proceeding, the bad faith of the Respondent and/or its predecessor in title has clearly been demonstrated through the actions of the Respondent and/or its predecessor in title.

To support this contention, the Complainant points to the fact that immediately upon being notified that its disputed domain name infringed on the Complainant’s trade-mark rights, the predecessor of the Respondent put its web site up for sale at the first challenge thereto.

The Complainant submits that if the Respondent had a legitimate business interest in the Domain Name, and had a bona fide ongoing business, it would certainly not have offered its disputed domain name for sale. Further, Complainant submits that upon it forwarding an offer to purchase the Domain Name, the Respondent’s predecessor in title immediately transferred the Domain Name to the Respondent, in an obviously misguided attempt at avoiding the Complainant’s attempt at forcing the Respondent from using said Domain Name.

The Complainant submits that the Domain Name, as presently owned by the Respondent, is used in conjunction with a web site under construction, which clearly identifies it as being in respect of "Le guide des prix d’autos" which translates to "The Price Guide for Cars". Complainant submits that this is a transparent attempt at creating confusion as to the source of a product or service.

The Complainant submits that the above-described chain of events clearly indicates that the Domain Name was registered or acquired primarily for the purpose of selling, or otherwise transferring the Domain Name either to the Complainant or possibly to a competitor of the Complainant for valuable consideration in excess of the domain name registrant’s out-of-pocket cost directly related to the domain name.

The Complainant submits further that the Respondent has clearly registered the Domain Name for the purpose of disrupting the business of the Complainant. The Complainant submits that if the now inactive web site of the Respondent is ever activated, it will unlawfully compete with the business of the Complainant, by using a domain name which is confusing with the Complainant’s registered trade-mark AUTO HEBDO, in relation with identical products and services.

The Complainant submits that the Respondent will attempt to attract for financial gain Internet users to its web site by creating a likelihood of confusion with the Complainant’s trade-marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.

The Complainant therefore submits that the Respondent, or its predecessor in title, has registered the Domain Name in bad faith.

The Complainant therefore submits that it has demonstrated in accordance with paragraph 4(a)(iii) of the Uniform Domain Name Dispute Resolution Policy that the respondent has registered the Domain Name in bad faith.

B. Respondent

As previously stated, Respondent has not filed a response to the current proceedings, and is in default to do so. Pursuant to paragraphs 5(e) and 14 of ICANN Rules, the Panel shall decide the dispute based solely upon the complaint, as well as the applicable rules and jurisprudence.

 

6. Discussion and Findings

Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if they wish to have the Domain Name transferred. It is incumbent upon the Complainant to show cumulatively:

(a) that the Domain Name is identical or confusingly similar to a trade-mark in which it holds rights;

(b) that the Respondent has no rights or legitimate interests in the Domain Name;

(c) that the Domain Name was registered and used in bad faith.

These three elements are considered below.

A. Identity or Confusing Similarity between the Domain Name and a trade-mark in which the Complainant has rights

The Panel has reviewed and is satisfied with the evidence provided by the Complainant to show its rights in the trade-marks AUTO HEBDO, CAMION HEBDO, MOTO BATEAU ET VR HEBDO, AUTOS NEUVES HEBDO & Design, HEBDO.NET and HEBDONET.COM.

The Panel is of the opinion that the Domain Name is confusingly similar to the trade-mark AUTO HEBDO, especially given that, as the Complainant appropriately submitted, save for the fact that the registered trade-mark is in two words, while the Domain Name is one word, the registered trade-mark AUTO HEBDO is identical to the second-level part of the Domain Name in issue. Furthermore, the Panel agrees with Complainant's contention to the effect that the degree of resemblance in appearance, in sound or in the ideas suggested between the two is exceptionally high, and that the differences in the spelling of the Domain Name are immaterial.

Given this finding, it becomes unnecessary to determine whether the Domain Name is confusingly similar to the other Complainant's trade-marks.

Consequently, the Panel finds that Complainant has successfully established that the Domain Name is confusingly similar to a trade-mark in which it has rights.

B. Right or Legitimate Interest in the Domain Name by Respondent

Legitimate Rights

While the overall obligation to prove the elements of paragraph 4(a) of the Policy rests on the shoulders of the Complainant, it remains that proving the elements provided at paragraph 4(a)(ii) of the Policy involves proving a negative. Such burden is obviously on balance of probabilities. However, through the interaction between paragraphs 4(a)(ii) and 4(c), the Panel is of the view that, with respect to the absence of rights or legitimate interests, such obligation is only to make out a prima facie case and, once it has done so, it is then incumbent upon the Respondent to demonstrate the contrary; failure to do so will, in some circumstances, enable the Panel to draw negative inferences.

In this case, the Complainant submitted that it has not authorised the Respondent to use an expression that would be identical or confusingly similar to one of its trade-marks. Given Complainant's rights in the trade-mark AUTO HEBDO, and taking into account the wares and/or services associated thereto, its territorial scope, and the physical location of the Respondent, the Panel finds that the Complainant's burden to establish prima facie that the Respondent has no rights in the Domain Name has been met and that the Respondent has no rights in the Domain Name.

Legitimate Interests

The Panel has a different view in respect of one of the argument brought by the Complainant purporting to show the absence of legitimate interests of the Respondent in the Domain Name. By stating that "[i]t is unthinkable that an unregistered legal entity, in other words a physical person, would carry on commercial activity without a vehicule to shield it from liability" and that "[f]rom this, one can only conclude that the [Respondent] is not a true business entity, and therefore has no legitimate business interest in the disputed domain name", the Complainant seems to ignore the fact that the Domain Name could have been registered by the Respondent to make a legitimate non-commercial or fair use thereof. Furthermore, the Panel is reluctant to hold that the fact that the Respondent may not be incorporated constitutes, per se, an indication that the Respondent's use of, or preparations to use, the Domain Name is not in connection with a bona fide offering of goods or services, because following this logic has the risk of turning any physical person using a domain name for the offering of goods or services into a registrant without legitimate interests in the domain name.

The only evidence in respect of the use, or demonstrable preparation of use, of the Domain Name by the Respondent itself is Annex 11 of the Complaint. The printout submitted seems to have been taken from a web page hosted on a web server that uses the domain name <vidsfree.com> and not the Domain Name in issue, namely <autohebdo.net>. The Panel has only been able to identify two plausible explanations for this, the first explanation being that at the time the printout was made, on January 16, 2001, the Domain Name was used to redirect web traffic to a different domain name, namely <vidsfree.com> and web page hosted in such a way that it was not possible to make a printout of a home page directly corresponding to the Domain Name, and the second explanation being that the web page submitted is not related to the Domain Name. However, the content of the page submitted, and in particular the main title which reads "Autohebdo.net" makes the second explanation less plausible than the first.

That being said, the Panel believes that the circumstances surrounding the change of registrant for the Domain Name, which most likely occured on October 25, 2000, or at the latest October 27, 2000, were satisfactorily proven by the Complainant by the inclusion of annexes 5, 7, 8 and 9 to the Complaint. (See also "Record last updated on 25-Oct-2000" in Annex 9 to the Complaint.) Those circumstances, combined with the fact that the Respondent has received such evidence referred to in the Complaint made it more compelling for the Respondent to either negate or provide a justification that would substantiate legitimate interests that it might have in the Domain Name.

While no direct conclusion can be drawn from such failure to respond, it has been held in a number of prior decisions that a negative inference can nonetheless be drawn in such circumstances. (See Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Integroweb (Bahamas) Ltd, WIPO Case No. D2000-1325 and Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also paragraph 14(b) of ICANN Rules.) In this case, the Panel finds appropriate to draw such negative inference.

In the case at hand, the Respondent has chosen not to put forward justification for its acquisition of the Domain Name and, in the circumstances, the Panel does draw a negative inference out of such omission.

Consequently, it is the Panel's view that the Complainant has satisfied its burden to show the absence of legitimate interests on the part of the Respondent. The Panel concludes that the Respondent, on balance of probabilities, has no rights or legitimate interests in the Domain Name.

C. Bad faith in Registration and Use of the Domain Name by the Respondent

Preliminary remarks

Even though the issue was not raised by the Complainant, a legal question arises out of the fact that the Respondent has not registered the Domain Name directly with the Registrar, but merely became the new registrant by way of a transfer between the Respondent and its predecessor in title [hereinafter predecessor in title or prior registrant]. It is the Panel's view that this does not mean that the Respondent has not "registered" the Domain Name within the meaning of the ICANN Policy. Indeed, paragraph 14 of the applicable registration agreement, included as Annex 2 to the Complaint, provides:

"The person named as administrative contact at the time the controlling user name and password are secured shall be the owner of the domain name. You agree that prior to transferring ownership of your domain name to another person (the Transferee") you shall require the Transferee to agree, in writing to be bound by all the terms and conditions of this Agreement. Your domain name will not be transferred until we receive such written assurances or other reasonable assurance that the Transferee has been bound by the contractual terms of this Agreement (such reasonable assurance as determined by us in our sole discretion) along with the applicable transfer fee. If the Transferee fails to be bound in a reasonable fashion (as determine by us in our sole discretion) to the terms and conditions in this Agreement, any such transfer will be null and void."

Therefore, the Respondent's awareness to those terms and conditions can be presumed. Among these terms and conditions of the Agreement, paragraph 7 refers to the Registrar's Dispute Policy that is incorporated in the Registration Agreement by reference, paragraph 8 refers to applicable provisions in the case of a domain name dispute and paragraph 9 explicitly refers to the ICANN Policy. In other words, Respondent is bound by the same terms and conditions than its predecessor in title, even if it has not necessarily registered the Domain Name directly or personally with the Registrar.

Even if the language of paragraph 4(a)(iii) of the Policy does not explicitly refer to other person than the current registrant of a Domain Name, the Panel is of the opinion that, in some circumstances, prior registrants' behavior can taint or negatively affect the behavior of the current registrant of a domain name. When circumstances of a case tend to indicate that there is, on balance of probabilities, a likelihood of collusion or duplicity between the current registrant and its predecessor in title, such as in this case, it may become appropriate to take into account the behavior of the predecessor in title in the determination of bad faith by Respondent.

Bad faith in Registration

In its Complaint, the Complainant made several allegations purporting to show that Respondent's predecessor in title registered and used the Domain Name in bad faith. Some of its allegations, such as "[i]f the Respondent had a legitimate business in the disputed domain name, and had a bona fide ongoing business, it would certainly not have offered it disputed domain name for sale" even suggest that the Complainant is treating this prior registrant as the Respondent itself.

In the present case, the Complainant alleged that "it verily believes that the owner of the Respondent ILLUMINATY MARKETING, namely Mr. William HARRISON, is a friend of the owner of the predecessor in title ZEUS, namely Mr. Jonathan Baron, and that there was collusion between the two entities with respect to the transfer of the domain name". The Panel notes that, while the Complainant submitted no evidence to directly support this contention, it might have been appropriate for the Respondent to offer at least a denial, but it chose not to do so.

The Panel notes that, in this case, the Domain Name was transferred to the Respondent on the same day as the letter dated October 25, 2000, a copy of which may be found at Annex 8 to the Complaint, was sent to the prior registrant, and this occurred only one day after the first letter dated October 23, 2000, a copy of which may be found at Annex 6 to the Complaint, was delivered to the then registrant of the Domain Name. This set of circumstances allows the Panel to draw a negative inference from the absence of explanation on the part of the Respondent that amounts to a finding of bad faith on the part of the Respondent at the time when it acquired the Domain Name from the predecessor in title.

That being said, and while no weight can be given to extrinsic evidence, the Panel is comforted in its view of having drawn such inference given that it had the benefit of validating the factual background of this case by performing, during its deliberation, a WHOIS search on the domain name <vidsfree.com>, on which the <autohebdo.net> web page submitted as Annex 11 to the Complaint was hosted, and finding that the registrant of <vidsfree.com> is still Jonathan Baron, doing business as "Zeus", who was also the prior registrant of the Domain Name <autohebdo.net>.

Noteworthy, Complainants' representatives would have made Complainants' case compelling, i.e. without the need of a negative inference, had they provided the Panel with evidence establishing the fact that, at least on January 16, 2001, the domain name under the control of the Respondent was redirecting web traffic to a domain name controlled by the Respondent's predecessor in title and corresponding to a pornographic web site.

Bad faith in Use

Now, with respect to the use of the Domain Name in bad faith, the Panel finds that, given that the Complainant's trade-mark is extensively used and known on the territory where the Respondent is located, the Respondent could not have commenced use of the Domain Name without knowing that, by so doing, it was either infringing on Complainant's trade-mark or that it was not abiding by the terms of its Registration Agreement (see paragraphs 2, 3, 4, 10 and 14 of the Registration Agreement) or the terms of the ICANN Policy (see paragraph 2 of the ICANN Policy).

Finally, had the Respondent truly intended to use the Domain Name in good faith, it would not logically have used it to redirect the web traffic to other web sites or other on-line location, as shown by Annex 11 to the Complaint and would have began to use to the Domain Name for its own bona fide commercial or non-commercial use along with an operational web site.

The Panel concludes that the Domain Name was registered and used in bad faith by the Respondent.

 

7. Decision

For the foregoing reasons, the Panel concludes that:

- the Domain Name registered by the Respondent is confusingly similar to the trade-mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the Domain Name;

- the Domain Name has been registered and is being used by the Respondent in bad faith.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <autohebdo.net> be transferred to the Complainant.

 


 

Jacques A. Lйger, Q.C.
Sole Panelist

Dated: April 17, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0206.html

 

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