Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Case No. D2000–0089

The Complainant is Pacific Place Holdings Ltd., of 900-1095 West Pender Street, Vancouver, British Columbia, Canada V6E 2N7, represented by Stikeman Elliott of 914-50 O’Connor Street, Ottawa, Ontario, Canada KIP 6L2. Respondent is Richard Greenwood of NewTech Advisors, 9755 Mesa Springs Way No.126, San Diego, A 92126, United States of America.

The domain name in issue is "pacificplace.com", the Registrar of which is Network Solutions Inc.

The WIPO Arbitration and Mediation Center (the Center) received on February 22, 2000 a hard copy of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is February 25, 2000.

On February 24, 2000, the Center transmitted via e-mail to Network Solutions a request for registrar verification in connection with this case. On the same day Network Solutions transmitted via e-mail to the Center Network Solutions’ Verification Response, confirming that the registrant is pacificplace.com of PO Box 27872, U.S.A. and both the administrative and billing contacts are "Greenwood, R (RG 17607) 318@SDSMA.COM".

On February 25, 2000, the Center transmitted to the Respondent Notification of Complaint and Commencement of Administrative Proceeding. The Center advised that the Response was due by March 15, 2000. On the same day the Respondent acknowledged receipt.

On March 14, 2000 the Center received the Response by e-mail, and a hard copy of the same on March 20, 2000.

On March 20, 2000, the Center advised the parties via fax that Mr. Christopher Tootal had been appointed as the Panelist in this proceeding and enclosed a copy of the Panelist’s Statement of Acceptance and Declaration of Impartiality and Independence.

(a) The Trade Marks

The Complaint is based on two Trade Marks PACIFIC PLACE, registered as follows:-

(1) PACIFIC PLACE, Canadian Registration No. TMA-359415, in connection with property development and management namely development, sale and leasing of land for office, commercial and residential use, registered in 1989; and

(2) PACIFIC PLACE AND DESIGN, Canadian Registration No. TMA-391263, in connection with property development and management namely development, sale and leasing of land for office, commercial and residential use, registered in 1991.

The above trade marks are said to be currently used by the Complainant in connection with the following goods and services:

Property development and management, namely development, sale and leasing of land for office, commercial and residential use. Offer of Internet services to residents of Pacific Place’s development projects.

(b) The Domain Name

The Complainant, through an Internet service agent, had registered the domain name "pacificplace.com" at some unspecified date prior to 1998. That registration lapsed owing to an oversight on the part of the Internet service agent, again on an unspecified date.

The Respondent registered the domain name subsequent to the lapse of the Complainant’s registration.

(c) On March 31, 1999 Peter Yan, of Multiactive Software Inc. emailed Robert C. Stones of Source Internet Group Inc.:-

"Per our tentative agreement of (sic) transferring the domain name "pacificplace.com to Multiactive for the sum of $1500 U.S. dollars.

Here is the info [Multiactive’s address]. Please fax the particulars to the above fax no. today and I will try to get the $ going."

(d) Likewise on March 31, 1999 Robert C. Stones replied:-

"Per your email details below, please mail/FedEx check in the amount of $1500 to the name and address below

Source Internet Group
17629 Marymont Place
San Diego, CA 92128"

(e) No payment of US$1500 was made.

The grounds set out in the Complaint are succinctly stated, as follows:-

(1) the domain name PACIFICPLACE.COM is identical, save for the space between the words, to the words "PACIFIC PLACE" which are contained in the two registered trade marks of the Complainant. At the very least, the domain name is confusingly similar, both in sound and appearance, to the "PACIFIC PLACE" registered trade marks of the Complainant;

(2) the Respondent domain name holder should be considered as having no rights or legitimate interests in respect of the domain name, as:

(a) it has no registered trade mark relating to "PACIFIC PLACE";

(b) it has made no use of the mark "PACIFIC PLACE" in connection with any bona fide goods, wares or services; and

(c) it has no valid intended use of the mark "PACIFIC PLACE";

(d) the registered domain name holder is simply "pacificplace.com", a non-existent entity with a post office box address;

(e) the Respondent, Source Internet Group, Inc. is a company with the same post office box address as that of "pacificplace.com", and is the entity which was in fact responsible for registration of the domain name. Information regarding the Respondent, Source Internet Group, Inc. is available for review at their web-site: www.sourceinternet.com.

(3) the domain name should be considered as having been registered and is being used by the Respondent domain name holder in bad faith, as:

(a) until recently, it has no active site or page at the domain name. The page which is now active at the site purports to announce a business soon to be opened, but the Complainant has no knowledge of the existence of this business;

(b) the domain name was originally held by the Complainant prior to July 1998, but registration lapsed owing to an oversight on the part of the Complainant’s Internet service agent. The Respondent then registered the domain name in or about July, 1998;

(c) when the Complainant contacted the Respondents in March, 1999 with respect to the domain name, the Respondents indicated that they were willing to transfer the domain name, but demanded money for such transfer in the amount of USD$1,500.00;

(d) the Complainant, while not pleased with this demand for money, in an effort to save potential costs of pursuing proceedings against the Respondents, agreed to make the payment of USD$1,500.00;

(e) the Respondents have since reneged on even this offer, indicating to the Complainant that they would require a more "substantial amount" to transfer the domain name;

(f) the Complainant alleges that the Respondents have registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondents’ documented out of pocket costs.

The Respondent makes the following points in reply to the Complaint:-

(a) He accepts that his domain name is identical to the Trade Marks, save for the space between the words PACIFIC and PLACE.

(b) He points to the services for which the Trade Marks are registered, and that those services are presumably to be performed in Canada. He points out that his project Pacific Place is planned to be a "Cyber Café" in Pacific Beach, California, i.e. a business activity conducted in another country. He argues there is no confusing similarity in this situation.

(c) In reply to Grounds 2(b) and 2(c) of the Complaint, he gives an account of his food service background, and confirms that he and others are planning to open Pacific Place.

(d) The time and effort he has taken to respond to the Complaint indicates that there is a real entity with a bona fide interest in the domain name.

(e) Source Internet Group Inc. no longer owns the domain name. It was turned over to "us" and "we are now holder of the name".

(f) In reply to ground 3(a), he states that the Pacific Place cyber café has been a project idea for some time.

(g) The domain name "pacificplace.com" was in fact registered on March 18, 1999.

(h) In relation to 3(c) and 3(d) he objects to the use of the word "demanded", and points out that it was the Complainant that made the first approach.

(i) In reply to 3(e) he points out that it was the Complainant that waited almost six months before following up on the agreement, by which time Source Internet was in dissolution.

(j) In reply to 3(f), he states that they had "no knowledge of the Complainant’s existence until they contacted us".

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:-

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

While it is not disputed that element (i) has been proved, there is no evidence that the Respondent does not have rights or legitimate interests in the domain name. Still less is there any evidence that the domain name was registered in bad faith. In the view of the Panelist:-

(1) there is no evidence that the Respondent or Source Internet were aware of the existence of the Complainant, its Trade Marks or its lapsed domain name registration for "pacificplace.com". On the basis of the documents before the Panelist, it cannot be said that the Respondent has no rights or legitimate interests in the domain name; and

(2) the fact that, when approached by someone on behalf of the Complainant, Source Internet was agreeable to selling the domain for $1500 is not evidence that Source Internet registered the domain name primarily for the purpose of selling it to the Complainant (see paragraph 4(b)(i) of the Policy). Nor is there any other evidence of bad faith.

In the light of the findings in paragraph 7 above, the Panelist concludes that this dispute is not within Paragraph 4(a) of the Policy, and that the domain name "pacificplace.com" shall remain registered to the Respondent.

Christopher Tootal
Panelist

Dated: April 3, 2000