1. Parties and Contested Domain Name

The complainant is the Federal Court of Canada. The respondent is federalcourtofcanada.com.

The domain name at issue is: federalcourtofcanada.com

2. Procedural History:

The electronic version of the Complaint form was filed on-line through eResolution's Website on October 26, 2000. The hardcopy of the Complaint Form and annexes were received on November 29, 2000. Payment was received on November 2, 2000. The delays were extended by the Clerk's Office.

Upon receiving all the required information, eResolution's case administrator proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry led the Case Administrator of eResolution to the following conclusions: the Registrar is Open SRS-Tucows, the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Com plaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on October 31, 2000. The requested information was received on November 5, 2000.

The Case Administrator then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its respon sibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on December 1, 2000. This date is the official commencement date of the administrative proceeding.

Only the emails to postmaster@federalcourtofcanada.com and to johnlichtenwald@yahoo.com were returned 'undeliverable'.

The Complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.

The Respondent did not submit a Response neither via eResolution website nor a signed version.

The delay to appoint the Panel was extended by the Clerk's Office.

In the absence of a Response, the Clerk's Office proceeded to appoint the Panel in accordance with eResolution Supplemental Rules section 8 (f).

On January 3, 2001, the Clerk's Office contacted Mr. Kevin C. Trock, and requested that he acts as lead panelist in this case.

On January 3, 2001, the Clerk's Office contacted Mr. Ross Carson, and requested that he acts as panelist in this case.

On January 3, 2001, the Clerk's Office contacted Ms. Anne M. Wallace, and requested that she acts as panelist in this case.

On January 3, 2001, Ms. Anne M. Wallace, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On January 4, 2001, Mr. Ross Carson, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On January 4, 2001, Mr. Kevin C. Trock, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On January 8, 2001, the Clerk's Office forwarded a user name and a password to all Panelists, allowing them to access the Complaint Form and the evidence through eResolution Automated Docket Management System.

On January 8, 2001, the parties were notified that the Panel had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 22, 2001.

On January 26, 2001, the Panel requested the Clerk's Office to notify the Respondent of the commencement of an administrative proceeding for a second time.

On January 26, 2001, the Clerk's Office proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry led the Clerk of eResolution to the following conclusions: the Registrar is Open SRS-Tucows, the contact info in the Whois database was changed during the pending administrative proceeding notwithstanding section 8 (a) and section (3) of ICAN N Policy, the contested Domain Name resolves now to an active Web page and the Complaint is administratively compliant.

On January 29, 2001, the Clerk's Office was informed via email, by Open SRS-Tucows, that the changes made by the Respondent in the Whois database were made in violation of the Policy. On the same day, the Clerk's Office was informed that the situation had been rectified by Open SRS-Tucows, and that the information in the Whois database had been reverted back to its original state.

The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibi lities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant's Representative, on January 31, 2001. This date is the official commencement date of the second administrative proceeding.

Only the emails to postmaster@federalcourtofcanada.com and to johnlichtenwald@yahoo.com were returned 'undeliverable'.

The Complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.

On February 18, 2001, the Respondent's Representative, Steven Lichtenwald, requested a username and a password in order to access the case on the website.

On February 19, 2001, the Clerk's Office provided him with the requested username and password.

On February 19, 2001, the Respondent's Representative submitted a Response using the form for the Complaint.

On February 20, 2001, the Clerk's Office acknowledged receipt of the Response, and gave specific information to the Respondent's representative on how to file the Response form.

On February 21, 2001, the Clerk's Office, according to eResolution Supplemental Rules section 7 (c) (ii), notify the Respondent's Representative of the nature of the deficiencies identified on the Response and granted a five-calendar day delay to the Resp ondent's Representative in order to correct such deficiencies.

On February 23, 2001, the Clerk's Office provided the Respondent's Representative with further information on how to file the Response form.

On February 23, 2001, the Respondent's Representative submitted the Response form electronically via eResolution website. However, neither the requested signed Response form or the Cover Sheet were received by the Clerk's Office.

On February 27, 2001, the Respondent's Representative was informed that accordingly to section 7 (c) (ii) (3) of eResolution Supplemental Rules, he was in default and that, unless otherwise decided by the Panel, the decision would be based on the Complain t only.

On February 28, 2001, the Parties were notified that the Panel would remain as established on January 8, 2001 and that they would be informed of the date on which the decision will be issued.

3. Factual Background

Complainant is the Federal Court of Canada, created by the Federal parliament under the Federal Court Act. The Federal Court of Canada exercises jurisdiction in suits against the Crown, Admiralty, and Intellectual Property and provides judicial review o f Federal Tribunals. Further, it has concurrent jurisdiction with the Superior Courts in the Canadian Provinces and Territories in various matters.

Respondent is an entity carrying on a business in Canada. Respondent registered the domain name "federalcourtofcanada.com" on April 4, 2000. The domain name resolves to an active web site that solicits comments regarding the Federal Court of Canada and offers services relating to web site design and development and coordinating associated businesses in an Internet database.

4. Parties' Contentions

Complainant contends that it uses the name Federal Court of Canada in connection with the judicial review of various matters falling within its jurisdiction. Complainant contends that the domain name at issue is identical to complainant's name and that t he respondent has no rights or legitimate interest in respect to the domain name at issue Finally, complainant contents that the respondent registered and is using the domain name in bad faith.

Respondent contends that it registered the domain name "federalcourtofcanada.com" to use as a customer service site, where Canadian citizens can voice their comments and concerns regarding the Canadian Judicial system. Respondent contends that it has a l egitimate right to use the domain name at issue to facilitate public comment and to earn a living.

5. Discussion and Findings

Although the Clerk has determined that the respondent is in default for failure to timely provide a signed Response or Cover Sheet to the Clerk's Office, the Panel will consider the response as if it were timely filed so as not to prejudice the respondent .

In order to prevail, the complainant must prove the following three elements: (i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) respondent has no rights or legitimate interests in the domain name; and (iii) respondent has registered the domain name and is using it in bad faith. (ICANN policy, para. 4 (a)).

Neither the complainant nor the respondent have any registered trademarks for the term "Federal Court of Canada". However, complainant has common law rights to the name based on its extensive and continuous use of the name Federal Court of Canada. The r espondent's domain name is identical to the name that identifies the complainant and by which the complainant is typically referred to. The name "Federal Court of Canada" was conferred to complainant by statute. See Federal Court Act, RSC 1970 ch. 10 ( 2nd Supp., currently RCC 1985, Ch. F-7). Further, of the many judicial courts in Canada, complainant is the only court in Canada that is known by the name "Federal Court of Canada". Respondent has not presented any evidence that he is referred to or kno wn by the name Federal Court of Canada. His sole connection with the name Federal Court of Canada is through the domain name at issue. Because the respondent's domain name is identical to complainant's name, for which the complainant has common law righ ts, the first of the three elements falls in favor of the complainant.

There is some evidence that the respondent has a legitimate interest in the domain name. Respondent states that he registered the domain name in order to present a forum for Canadian citizens to express their opinions and comment on the Canadian Judicia l system. Allowing the public to freely communicate their opinions regarding governmental issues is a legitimate purpose for which to register a domain name. However, while respondent appears to offer a forum for the free exchange of ideas, he crosses t he line by also offering commercial services on his web site. For example, respondent offering web site design services, as well as offering to coordinate associated business in an Internet database. Respondent may not hide behind a free speech argument to demonstrate his legitimate interest in the domain name while at the same time offering web site design and development services for commercial gain. ICANN Policy, para. 4(c)(iii). Accordingly, the second element lies in favor of the complainant.

Turning to the issue of bad faith, the Panel concludes that the respondent has registered and is using the domain name "federalcourtofcanada.com" in bad faith. Evidence of bad faith can include using a domain name to intentionally attract, for commercial gain, Internet users to the respondent's web site (ICANN Policy, para. 4(b)(iv).

Based on the evidence, respondent has registered the domain name federalcourtofcanada.com with the intent to direct Internet traffic to its web site for commercial gain. Respondent's web site offers web design services. An offer is made to design and cu stomize web sites for members of respondent's organization "or for anyone else needing one."

Typically, when Internet users wish to find the web site of a company or a particular brand when they do not know the URL, they will type in the name of the company or the brand with the extension ".com." Here, an Internet user searching for information about the Federal Court of Canada would type in the term "federalcourtofcanada.com" and be directed to respondent's web site, believing that they had found a legitimate web site providing information concerning complainant. Respondents' web site is arrang ed to deceive users to believe that it is supported by the Federal Court of Canada. Respondent includes a prominent picture of the building housing the Federal Court of Canada, lists all the Canadian territories and provinces with corresponding coat of ar ms, and displays the Canadian flag. In this way, respondent is intentionally attempting to attract Internet users to his web site by using complainant's name for commercial gain.

6. Conclusions

For all the foregoing reasons, the Panel concludes that the domain name registered by the respondent is identical or confusingly similar to the complainant's name in which the complainant has common law trademark rights, and that the respondent has no rig hts or legitimate interests in the domain name, and that the 's domain name has been registered and is being used in bad faith to attract Internet users to respondent's web site for commercial gain. Accordingly, pursuant to the respondentICANN Policy and Rules, the Panel directs that the registration for the domain name "federalcourtofcanada.com" be transferred to the complainant.

This decision of the Administrative Panel in Case No. AF-0563 was rendered on March 9, 2001.

(s) Kevin C. Trock, Esq., Presiding Panelist

(s) Anne M. Wallacek, Panelist

(s) Ross Carson, Panelist