BACKGROUND
The complainant in this proceeding is SHIRMAX RETAIL LTD./DÉTAILLANTS SHIRMAX LTÉE ("Shirmax") of Montreal, Quebec, Canada. The respondent
is CES MARKETING GROUP INC. ("CES"), of Vancouver, British Columbia, Canada. The domain name at i
ssue is thyme.com, registered
by the respondent with Network Solutions, Inc. ("NSI"), of Herndon, Virginia, USA. The complaint was brought pursuant to the Uniform
Domain Name Dispute Resolution Policy ("ICANN Policy"), <http://www.icann.org/udrp/udrp-
policy-24oct99.htm>, which was adopted
by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.
Pursuant to paragraph 4(d) of the ICANN Policy, Shirmax selected the Disputes.org/eResolution Consortium as the ICANN-approved administrative
dispute resolution service provider to administer this proceeding. The complaint submitted by
Shirmax was received electronically
and in hard copy by eResolution on February 3, 2000. eResolution verified the formal sufficiency of the complaint and forwarded
it to CES on February 7, 2000, the commencement date of this proceeding. eResolution subs
equently granted CES's request for a brief
extension of the time permitted for its response, and CES filed its response electronically on March 2, 2000, and in hard copy on
March 9, 2000.
Neither party having requested a three-member panel, eResolution selected David E. Sorkin from the Disputes.org/eResolution Consortium
list of arbitrators to serve as the sole panelist in this proceeding. On March 14, 2000, eResolution n
otified the parties, NSI,
and ICANN of the panel appointment and that barring exceptional circumstances a decision would be handed down by March 28, 2000.
FACTS
Shirmax markets maternity clothing and other merchandise under the names Thyme and Thyme Maternity/Thyme Maternité. In 1994 Shirmax
was granted a Canadian trademark registration for the trademark THYME, used in association with maternity
clothing and other products
and services. Shirmax also has registration applications currently pending before the Canadian Intellectual Property Office for
THYME MATERNITY & Design and THYME MATERNITÉ & Design.
CES registered the domain name thyme.com in 1996. Shirmax does not allege that CES was aware of Shirmax or its activities at that
time. With its complaint Shirmax submitted a list of fifty domain names that have been registered by CES.
Most of the domain names
on this list are relatively generic (e.g., decimals.com, default.com, dill.com, and doughnut.com). CES also submitted a list of
about twenty domain names that it has registered, most of which are similarly generic, although only
a few domain names appear on
both lists.
For some time until September 1999 (the duration of this period is not clear from the record), CES used the domain name thyme.com
on the web to redirect HTTP requests to a different site, at the domain name cesmarketing.com. That web sit
e described CES's business
as "the development and marketing of valuable Internet domain names" and invited persons interested in CES's plans for a particular
domain name to contact the company.
Prior to August 3, 1999, Shirmax submitted a complaint to NSI alleging that the domain name thyme.com was identical to a federally
registered trademark owned by Shirmax. NSI notified CES of the complaint and on September 17, 1999, having
received no response
to its notice, NSI placed the domain name on "hold" status pursuant to its then-current domain name dispute policy. On some date
thereafter—presumably when the ICANN Policy was adopted—NSI apparently notified Shirmax that it intende
d to remove the domain name
from "hold" status and permit CES to resume using it unless Shirmax filed a complaint under the new ICANN Policy.
ANALYSIS
Under the ICANN Policy, a complainant has the obligation to prove that the domain name at issue is identical or confusingly similar
to the complainant's trademark; that the respondent has no rights or legitimate interests in the domain na
me; and that the domain
name has been registered and is being used in bad faith. ICANN Policy, para. 4(a). If the complainant successfully proves all three
elements, then this panel has the authority to require the cancellation of the respondent's domai
n name registration, or to order
that it be transferred to the complainant. Ibid. para. 4(i). The panel also may consider and address whether the complaint was
brought in an attempt at "reverse domain name hijacking" or otherwise in bad faith. ICANN Ru
les for Uniform Domain Name Dispute
Resolution Policy (Oct. 24, 1999) ("ICANN Rules"), <http://www.icann.org/udrp/udrp-rules-24oct99.htm>, para. 15(e).
1. Identity or Confusing Similarity
Paragraph 4(a)(i) of the ICANN Policy requires that the domain name be identical or confusingly similar to the complainant's trademark.
Shirmax contends that the domain name thyme.com is identical to its trademark THYME, and confusingly
similar to its pending trademarks
THYME MATERNITY & Design and THYME MATERNITÉ & Design. CES submits that under Canadian trademark law, mere identicality
is insufficient to support a conclusion that two marks are confusing, and encourages this pa
nel to interpret paragraph 4(a)(i) in
the conjunctive rather than the disjunctive. CES further argues that Shirmax's pending trademark applications are not relevant because
the dates of first use are subsequent to CES's registration of the domain name th
yme.com.
The panel declines CES's invitation to stray from the clear language of the ICANN Policy. Mere identicality of a domain name with
a registered trademark is sufficient to meet the first element of the test, even if there is no likelihood
of confusion whatsoever.
In the strictest sense, the domain name thyme.com is not identical to the trademark THYME. Letter case does not appear to be significant
in either term, but the former includes a top-level domain, ".com", while the word "thyme" stands al
one in the latter. However,
where the addition of a top-level domain is the only difference—and especially where, as here, the top-level domain that appears
in the domain name is the one that most closely describes the nature of the trademark (i.e., ".co
m" representing a commercial enterprise)—such
virtual identicality seems sufficient to satisfy the requirement.
Because the identicality requirement is satisfied with regard to the trademark THYME, the panel need not address the parties' arguments
concerning Shirmax's pending trademarks, THYME MATERNITY & Design and THYME MATERNITÉ & Design
.
2. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the ICANN Policy asks whether the respondent has any rights or legitimate interests in respect of the domain
name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights
or legitimate interests:
(1) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (2) the fact that
the respondent has commonly been known by the domain name; and (3) legitimate noncommercial or fa
ir use of the domain name.
Shirmax argues that CES fails this test because it has never used the domain name thyme.com in bona fide commerce and has never been
commonly known by the domain name. CES claims that it had made preparations to use thyme.com for the bon
a fide offering of goods
or services, supporting this claim by pointing to other web sites that it has developed, and by presenting a list of other, related
domain names that it has registered and intends to develop in conjunction with thyme.com. CES fur
ther argues that a mere idea for
a bona fide business application is sufficient, and that CES should not be punished for lacking the resources to develop a definitive
business plan at the time that it registered the domain name.
Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common
word—the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is v
ery narrow in scope; it covers
only clear cases of "cybersquatting" and "cyberpiracy," not every dispute that might arise over a domain name. See, e.g., Second
Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1
999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>,
para. 4.1(c).
The panel finds that the admittedly perfunctory preparations made by CES for use of the domain name thyme.com in bona fide commerce
are sufficient to demonstrate the rights or legitimate interests required by paragraph 4(a)(ii). In addit
ion, given the generic
nature of the domain name, CES has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors
to a different site constitutes a legitimate fair use, as long as this use is not misleading to co
nsumers and does not tarnish a
trademark.
The panel concludes that Shirmax has failed to meet its burden to show that CES possesses no rights or legitimate interests in the
domain name.
3. Bad Faith Registration and Use
The third element set forth in paragraph 4(a) of the ICANN Policy requires the complainant to prove that the domain name was registered
and is being used in bad faith. (Because the domain name is currently on "hold" status, the panel wil
l assess whether the domain
name was being used in bad faith immediately before it was placed on "hold" in September 1999.)
Paragraph 4(b) of the policy sets forth four examples of circumstances in which the registration and use of a domain name may be found
to be in bad faith: (1) the respondent has registered or acquired the domain name primarily for the pu
rpose of selling it to the
complainant or to a competitor of the complainant at a profit; (2) the respondent registered the domain name to prevent the complainant
from reflecting its trademark in a corresponding domain name and has engaged in a pattern of
similar conduct; (3) the respondent
registered the domain name primarily to disrupt a competitor's business; and (4) the respondent's use of the domain name intentionally
attempts to attract Internet users for commercial gain by creating a likelihood of
confusion with the complainant's trademark.
The requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith
is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad fait
h is insufficient if
the respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer
to registration for various illegitimate purposes as evidence of registration and use in bad faith;
but in each instance bad faith
use may well be implicit in the act of registering a domain name, since all of the improper purposes mentioned can be accomplished
merely by passively holding a domain name.
The fourth example (paragraph 4(b)(iv)), however, refers only to improper use, and does not appear to require that the domain name
also have been registered in bad faith. This example thus appears to conflict with the rule set forth in p
aragraph 4(a)(iii). The
language of paragraph 4(a)(iii) is clear, and the only reasonable interpretations are to regard the fourth example as a narrow exception
to the preceding subparagraph's conjunctive rule, or to apply the conjunctive rule as it is w
ritten and disregard the example entirely.
Shirmax points to the statements that appeared on the cesmarketing.com web site as evidence that CES is engaged in "the business of
registering domain names and selling them to the highest bidder." Shirmax also offers evidence of e-mail
correspondence between
the parties that took place in February of 1999, in which CES declined Shirmax's offer to purchase the domain name for a sum of US$2,500.
(It is not clear from the record which party initiated this ultimately unsuccessful negotiati
on.)
It does appear that CES is involved in the business of registering domain names with the intent to resell them for a profit. If the
domain name at issue were a coined trademark such as Panavision, evidence to this effect might well be su
fficient to demonstrate
bad faith registration and use. Thyme.com, however, involves a generic term, and there is no evidence that CES registered the domain
name with the intent of capitalizing on Shirmax's trademark interests, or even that CES was aware
of Shirmax's existence when it
registered the domain name in 1996. Indeed, the only evidence as to CES's intent in registering thyme.com supports the conclusion
that CES selected the name because "thyme" refers to an herb. (CES also registered the doma
in names dill.com and mineralwater.com
on the same date as thyme.com.) Shirmax has offered no evidence to contradict this claim, and the panel therefore finds that Shirmax
has failed to sustain its burden of proving that CES registered the domain name in
bad faith.
Even if the fourth example (paragraph (4(b)(iv)) is to be viewed as an exception to the bad faith registration requirement, the panel
finds that exception inapplicable here. CES did use the domain name thyme.com to attract Internet users
for commercial gain, but
there is no contention that it did so by creating a likelihood of confusion with Shirmax's trademark.
The panel therefore concludes that Shirmax has failed to prove the third element set forth in paragraph 4(a) of the ICANN Policy.
4. Reverse Domain Name Hijacking
In light of the panel's conclusion that Shirmax is unable to prove two of the three elements set forth in the applicable rule, it
seems appropriate to consider whether Shirmax brought the complaint in bad faith. "If after considering the
submissions the Panel
finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily
to harass the domain-name holder, the Panel shall declare in its decision that the complaint was
brought in bad faith and constitutes
an abuse of the administrative proceeding." ICANN Rules, para. 15(e). "Reverse Domain Name Hijacking" is defined rather circularly
as "using the Policy in bad faith to attempt to deprive a registered domain-name hold
er of a domain name." Ibid. para. 1.
Although the applicable policy and rules are quite vague on what constitutes bad faith in bringing a complaint, it seems logical that
bad faith should be found if the complainant has an obvious interest in obtaining the respondent's domai
n name for its own use,
yet lacks even a plausible argument on each of the elements set forth in paragraph 4(a) of the ICANN Policy. In this proceeding,
Shirmax clearly is interested in obtaining the domain name thyme.com from CES, but has made no credit
able attempt to show that CES
registered thyme.com in bad faith, as required by paragraph 4(a)(iii) of the policy.
Nonetheless, two procedural circumstances dissuade this panel from finding bad faith on Shirmax's part. First, the apparent conflict
discussed previously between the conjunctive language of paragraph 4(a)(iii) and the example of bad fait
h use in paragraph 4(b)(iv)
may have led Shirmax to believe that it was not required to demonstrate bad faith registration of the domain name. Second, at the
time the complaint was submitted, the domain name was still on "hold" status pursuant to NSI's p
rior domain name dispute policy,
and Shirmax was required to file a complaint under the ICANN Policy to preserve the "hold" status. Shirmax apparently had a valid
claim against CES under NSI's prior policy, and does not deserve to be admonished here mere
ly for seeking to retain the advantageous
position it was able to attain under that policy.
CONCLUSION
For the reasons set forth above, the panel concludes that Shirmax has proved only one of the three elements set forth in paragraph
4(a) of the ICANN Policy, and therefore determines that the relief sought by Shirmax should not be granted.
20 March 2000
(s) David E. Sorkin
Lead Panelist
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