Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Workplace Safety and Insurance Board, Toronto, ON, ("Complainant") represented by Alan Donatelli, of Phillips, Lytle, Hitchcock, Blaine & Huber LLP. The Respondent is Jonathan Kleiman, Thornhill, ON, CANADA ("Respondent").

The domain name at issue is "wsib.com" registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 8, 2001; the Forum received a hard copy of the Complaint on February 9, 2001.

On February 12, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "wsib.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wsib.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 12, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant alleges the following:

B. Respondent

The Respondent has not submitted a response in this matter.

Complainant, Workplace Safety and Insurance Board, is a corporation that was created by statute in 1915 by the province of Ontario. Complainant’s principle place of business is Toronto, Ontario. Complainant oversees Ontario’s workplace safety and education system and administers the province’s no-fault workplace insurance for employers and their workers. Complainant’s corporation is funded entirely by employer premiums and receives no public funding.

Respondent, Jonathan Kleiman, has never operated a business using the disputed domain name. Respondent’s web site consists of a web page with virtually no content, only hyper-links to three hard core pornographic web sites, from which Respondent receives a fee for every time a user visits those sites via Respondent’s web site. On February 28, 2000, Respondent sent an email advising Complainant that the domain name at issue was for sale on e-Bay.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

Complainant’s rights are evidenced by its registered mark, WSIB. Respondent’s domain name, wsib.com, is identical to Complainant’s well-established mark. See Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (epix.com "is the same mark" as EPIX); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct 26, 2000) (finding that there "is no doubt that the domain name [bmw.org] is identical to the Complainant’s well-known and registered trademarks [BMW]").

In addition, Respondent’s domain name is so confusingly similar a reasonable Internet user would assume its web site is somehow associated with Complainant’s mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Respondent’s only use of the domain name at issue is to hyperlink Internet users to pornographic sites, which is not a bona fide use. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

Also, Respondent is not commonly known by the domain name at issue, nor is Respondent using the domain name in connection with a bona fide offering of goods, services or for a legitimate noncommercial or fair use. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Moreover, Respondent asserted no rights or legitimate interests in the domain name at issue, which entitles the Panel to conclude that Respondent has no such rights or legitimate interests in the domain name at issue. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proven); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

Respondent’s offer to sell the disputed domain name via a popular online auction site shows bad faith. See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also The Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) (finding that the Respondent’s attempt to sell the domain name in question on <greatdomains.com>, a domain name auction site, for $100,000 constitutes bad faith).

Further, the evidence shows Respondent registered the disputed domain name to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainant’s famous mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain); see also ESPN, Inc. v. Danny Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain).

Finally, Respondent offered hyperlinks to pornographic sites via the domain name at issue, which constitutes bad faith. See CCA Indust., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that "this association with a pornographic web site can itself constitute a bad faith"); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his web site for commercial gain and linked his web site to pornographic web sites).

Therefore, the Panel finds Policy ¶ 4(a)(iii) has been satisfied.

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name, wsib.com, be transferred from Respondent to Complainant.