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Generic Top Level Domain Name (gTLD) Decisions |
Savin Corporation v Ronald Mowbray
Claim Number: FA0201000103869
PARTIES
Complainant is Savin Corporation, Stamford , CT
(“Complainant”) represented by David A.
Einhorn, of Anderson, Kill &
Olick, P.C. Respondent is Ronald Mowbray, Clearwater, FL
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <savincity.com>,
registered with Dotster.
PANEL
The undersigned
certifies that he or she has acted independently and impartially and to the
best of his or her knowledge, has no known
conflict in serving as Panelist in
this proceeding.
Anne M. Wallace,
Q.C., Honorable Paul A. Dorf and Honorable Carolyn M. Johnson as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on January 14, 2002; the Forum received
a hard copy of the
Complaint on January 18, 2002.
On January 15,
2002, Dotster confirmed by e-mail to the Forum that the domain name <savincity.com> is registered
with Dotster and that the Respondent is the current registrant of the
name. Dotster has verified that
Respondent is bound by the Dotster 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 January 18,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of February 7, 2002 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@savincity.com by e-mail.
A timely Response
was received and determined to be complete on February 5, 2002.
On February 19, 2002, pursuant to Complainant’s request to have the
dispute decided by a three-member
Panel, the Forum appointed Anne M.
Wallace, Q.C., Honorable Paul A. Dorf and Honorable Carolyn M. Johnson as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant
holds United States Trademarks as follows:
§
SAVIN: Registration No. 2,230,303 for facsimile
machines
§
SAVIN: Registration No. 1,500,782 for maintenance
and repair services for photocopiers and word processors
§
SAVIN: Registration No. 1,174,900 for photocopying
machines and parts thereof
§
SAVIN: Registration No. 836,540 for developing liquid
for office copiers; photocopy machines and copy paper for photocopy machines
Certified copies of the Certificates of Registration for the
above-listed marks were filed in evidence.
Complainant also holds a number
of foreign registrations of SAVIN, a list of which was included in evidence.
Respondent’s domain name <savincity.com> is
confusingly similar to Complainant’s registered trademark. Savin holds four valid and subsisting
federal trademark registrations for the mark SAVIN (Reg. Nos. 2,230,303; 1,174,900;
1,500,782
and 836,540) (the "Savin Marks") in the United States
alone. Savin first registered its SAVIN
mark in 1968. All of these trademarks
were registered prior to registration of Respondent’s domain name and are used
in connection with, among other
things, business machinery and parts and
services used in connection therewith, including photocopier, printer and
facsimile machines
and parts therefor.
Savin also has registered its mark SAVIN as a domain name
(<savin.com>) with Network Solutions, Inc. and is using that domain
in
connection with a web site.
Savin has spent considerable time and money in advertising
and marketing its products bearing its well-known marks. Savin markets the products its sells under
its SAVIN marks through authorized Savin dealers in various locations across
the United
States and internationally.
These dealers distribute Savin products to retailers and end users.
In an attempt to settle this dispute and
to alleviate the confusion caused by Respondent’s registration of the domain
name <savincity.com>, Complainant wrote two letters to Respondent
and Respondent’s attorney, on July 6, 2001 and July 26, 2001 respectively.
Despite Complainant’s
belief that it has suffered actual damages in the form of
lost sales because of Respondent’s use of the domain name in connection
with a
Web site that advertised, marketed and sold goods competing with the goods on
which Complainant uses its registered trademarks
for SAVIN, Complainant was
willing to settle this dispute if Respondent simply transferred the domain name
<savincity.com> to Complainant.
Instead of
agreeing to transfer the domain name, Respondent has demanded that Complainant
pay for transfer of the domain name.
Respondent offers no legitimate reason for his demand. Rather, he simply states that he does not
believe that he should have to transfer the domain name to Complainant without
compensation. However, Respondent is
not demanding simple reimbursement, which would be the cost of
registration. Respondent is suggesting
that Complainant pay to Respondent a “fair value.”
Two marks need
not be identical to be likely to be confusing.
See General Electric
Co. v. Pars Int'l Computer, Inc., D2000-0368 (WIPO July 25, 2000)
(finding <1-800-ge.com> to be confusingly similar to GE). There is a likelihood of confusion where a
Complainant’s mark is contained in a Respondent’s domain name because only
"essential"
or "virtual" identity is needed to establish
confusing similarity under the Policy. See Cellular One Group v. the Design
Factory, D2000-1670 (WIPO Jan. 29, 2001) (holding
<cellularoneltd.com> confusingly similar to CELLULARONE and CELLONE); see also Heineken Brouwerijen B.V. v.
Lott, D2000-1487 (WIPO Jan. 30, 2001) (holding
<planetheineken.com> confusingly similar to HEINEKEN).
Use of a
complainant’s trademark in connection with a generic term does not avoid the
confusing similarity created by the use of complainant’s
trademark. See
Trump, et al. v. Rafeli, FA 100238 (Nat. Arb Forum Nov.
6, 2001) (finding a likelihood of confusion between TRUMP and
<trumpinternational.net>, <trumphouse.net>,
<trumpland.net>,
<trumpskys.com>, <trumppalace.com>, <trumpair.com> and
<trumptown.com>); Trump
v. Graham, FA 100177 (Nat. Arb. Forum Nov. 2, 2001) (finding
a likelihood of confusion between TRUMP and <trumptrade.com> and
<trumpbarter.com>);
Marriott
Int’l, Inc. v. Nicewarner, FA 99692 (Nat. Arb. Forum Nov.
1, 2001) (finding likelihood of confusion between MARRIOTT and
<marriottcorp.com> and <marriottcorps.com>);
State Farm Mut. Auto. Ins. Co. v. All
Phase Builders, FA 99608 (Nat. Arb. Forum Oct. 11, 2001) (finding likelihood of
confusion between STATE FARM and <statefarm-claims.com>);
Park ‘N Fly Services Corp. v. Level
Propane, FA 99656 (Nat. Arb. Forum Oct. 29, 2001) (finding
likelihood of confusion between PARK ‘N FLY and <parknflyfree.com> and
<parkandflyfree.com>).
Respondent’s
domain name contains Complainant’s exact mark.
Respondent uses Complainant’s SAVIN mark with the generic term “city”
that has no significance in designating the use to which Respondent’s
domain
name has been, is or will be put. The
registration and use of this domain name is likely to cause confusion among
consumers familiar with the Savin Marks.
Further, Respondent used its domain name in connection with a Web site
that advertised, marketed and sold photocopier machines, toner
and facsimile
machines manufactured and sold by Savin's competitors, namely Xerox, Canon and
Panasonic. However, that Web site did not
offer Savin products for sale.
Registering a domain name with knowledge
that it contains or is confusingly similar to another’s trademark is a factor
evidencing
lack of a bona fide use. See McNeil Consumer Brands, Inc. v. Meriweb
Solutions,
D2000-0612 (WIPO Aug. 3, 2000) (listing factors to be evaluated in determining
bad faith and stating that registrant’s knowing use
of a domain name similar to
complainant’s trademark evidences bad faith rather than bona fide use).
Merely
using a domain name containing complainant’s mark in competition with
Complainant does not establish a bona fide commercial
use. See Backstage Fashion, Inc. v. Back Stage, Inc., FA 100135 (Nat. Arb.
Forum Nov. 5, 2001) (“[u]sing a domain name identical to Complainant’s service
mark with the result of diverting
potential customers from Complainant to
Respondent is not a bona fide offering of goods”); Park ‘N Fly Services Corp. v. Level Propane, Claim No. FA 99656
(Nat. Arb. Forum Oct. 29, 2001) (holding that use of domain names confusingly
similar to complainant’s mark to
attract users to respondent’s Web site is not
a bona fide use).
Outside
of Respondent’s registration and use of the domain name <savincity.com>,
Respondent has never used the term or mark SAVIN or the term “savincity”. Respondent holds no trademark registration
and has claimed no common law trademark rights to the term SAVINCITY or the
terms SAVIN
CITY. Other than its registration of the domain name <savincity.com>,
Respondent has never used nor made any claim to the term SAVINCITY or the terms
SAVIN CITY as a mark or indicator of Respondent’s
business. ICANN Rule 3(b)(ix)(2);
ICANN Policy ¶ 4(a)(ii).
Moreover,
Respondent has never claimed that he was unaware that he had registered a
domain name containing Complainant’s SAVIN trademark.
Respondent’s only Web based use of the domain name
<savincity.com> had been on a site that advertised, marketed and
sold photocopier machines, toner and facsimile machines sold by Complainant’s
competitors,
namely Xerox, Canon and Panasonic. However, Respondent’s Web site never offered any of Complainant’s
products for sale. This use, the only
use of <savincity.com> that Respondent possibly could claim as
“bona fide,” actually heightened the level of confusion caused and further
damaged Complainant. Respondent used
the domain name containing Complainant’s exact trademark, SAVIN, to advertise,
market and sell the exact goods for
which Complainant’s marks are used, except
only for those goods sold by Complainant’s direct competitors.
Respondent
no longer uses the domain name <savincity.com> in connection with
an active Web site, but is holding the domain name pending Complainant’s
submission to Respondent’s demand that
Complainant purchase the domain name
from Respondent. Despite that the
domain name <savincity.com> incorporates Complainant’s registered
marks, Respondent demands that Complainant pay R. Mowbray a price equivalent to
the “fair value”
of the domain name.
Respondent does not presently operate nor does it intend to
operate in the future any business known as SavinCity.
Using a domain name containing Complainant’s mark to divert
customers away from Complainant does not establish a bona fide fair use. See Backstage
Fashion, Inc. v. Back Stage, Inc., FA 100135 (Nat. Arb. Forum Nov. 5, 2001) (finding no fair
use where respondent’s site used complainant’s mark to attract customers
and,
thus, divert them away from complainant).
Respondent only registered the domain name on April 30, 2001
and Complainant contacted Respondent regarding the domain name by letter
dated
July 6, 2001. Respondent had used the
domain name in connection with a business to advertise, market and sell
products manufactured by Complainant’s
competitors. Respondent refused to transfer the domain name to Complainant,
despite the fact that the domain name contains Complainant’s registered
trademark. Such use does not evidence a
fair use of the domain name.
Respondent ceased use of the domain name in connection with
a website after only a few months.
Respondent is holding the domain name passively at the present
time. As explained below, passive
holding of a domain name evidences bad faith, not a bona fide use.
Respondent has demanded compensation from the Complainant
for the domain name. It is not clear
for what value Respondent alleges it should be compensated. As discussed below, this offer to sell the
domain name to Complainant for “fair value” is not fair use, but is further
evidence of
Respondent’s bad faith use of the domain name <savincity.com>.
Failure to make any bona fide use of a registered domain
name, that contains another’s trademark, is evidence of bad faith registration
and use of that domain name. See McNeil Consumer Brands, D2000-0612 (WIPO Aug.
3, 2000) (listing failure to use domain name as factor evidencing bad
faith).
Passive
holding of a domain name has been held to be evidence of bad faith registration
and bad faith use of that domain name. See
Telstra Corporation Ltd. v. Nuclear
Marshmallows, D2000-0265 (WIPO Feb. 18, 2000) (stating the concept of a
domain name “being used in bad faith” is not limited to positive action;
inaction is within the concept and holding bad faith was shown by passive
holding of a domain name); see also Trump
v. Rafaeli, FA 100238 (Nat. Arb. Forum Nov. 6, 2001) (stating that
registration and passive holding support finding of bad faith); Mariott Int’l, Inc. v. Nicewarner, FA
99692 (Nat. Arb. Forum Nov. 1, 2001) (holding that failure to use a domain name
with “a Website or in any other way” is bad faith
use); Cabela's Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29,
2000) (finding passive holding of <cabelassucks.com> to constitute bad
faith); Solomon R. Guggenheim Found. v.
Zuzazu, FA 95319 (Nat. Arb. Forum Oct. 5, 2000); Marubeni Corp. v. Eagle Data Ltd., FA 95418 (Nat. Arb. Forum Oct.
2, 2000).
Respondent
currently is making no web based or other use of the domain name <savincity.com>
and appears to be stockpiling or warehousing that name until it is able to sell
it to Respondent. Such passive use of
the domain name is evidence of Respondent’s bad faith
Offering
a domain name for sale, especially without making some bona fide use of the
domain name, is evidence of bad faith registration
and use of the domain
name. See Trump v. Graham, FA 100177 (Nat. Arb. Forum No. 2, 2001) (finding
respondent’s offer to sell the domain name for $7,500 and $3,500 to evidence
bad
faith registration and use); Junior
Players Golf Ass’n, Inc. v. James D. Hansen, FA 99380 (Nat. Arb. Forum Oct.
19, 2001) (stating that holding domain names for a ransom of $60,000 is bad
faith use of the domain
names).
Respondent
no longer uses the domain name <savincity.com> in connection with
an active Web site, but is holding the domain name pending its demand that
Complainant purchase the domain name
from Respondent. Despite that the domain name <savincity.com>
incorporates Complainant’s registered marks Respondent demands that Complainant
pay R. Mowbray a price equivalent to the “fair value”
of the domain name.
Complainant
has explained that it is not willing to pay Respondent for the domain name and
believes that Respondent’s offer is in
bad faith.
Respondent has
not used the domain name <savincity.com> for any legitimate
business purpose and has never made a legitimate non-commercial use of that
domain name. It appears, based on
Respondent’s actions, that Respondent is now merely warehousing the domain name
<savincity.com> in order to negotiate until Complainant is willing
to pay Respondent an amount of money acceptable to Respondent for the transfer
of the domain name. Thus, it appears
that Respondent’s sole purpose is to offer for sale the domain name,
constituting bad faith use of that domain name
under the UDRP § 4(b)(i).
Respondent’s
only current use of the domain name is to offer it for sale to Complainant, even
though it contains Complainant’s registered
trademark. Respondent’s use of the domain name
containing Complainant’s registered trademark to compete against Complainant
and Complainant’s
authorized dealers undoubtedly interrupted Complainant’s
business by diverting sales away from Complainant and its authorized dealers
and thereby causing monetary damages to Complainant. Respondent’s use of the domain name to extort money from
Complainant is similarly disrupting to Complainant in that it is necessary
that
Complainant protect its trademark from use by third-parties. See
Electro-Coatings, Inc. v. Precision Nat’l Corp., 204 U.S.P.Q.
410, 421 (TTAB 1979) (stating that if a trademark holder permits third parties
in the same or related business to use
its mark, the legal effect is to abandon
the right to exclude others from using the mark). Thus, Complainant has to bring this proceeding against
Respondent, pay the amount demanded by Respondent or forfeit its rights in
its
own trademark.
Respondent’s only prior uses of the domain
name <savincity.com> have been to disrupt the business of
Complainant and Complainant’s authorized dealers. First, Registrant linked the domain name to a website that
advertised, marketed and sold goods directly competitive with the goods
advertised, marketed and sold by Complainant and its authorized dealers. This use cost Complainant sales and the real
dollar value of those sales and created a likelihood of confusion with
Complainant’s
Savin Marks.
Respondent is stockpiling the domain name
to extract from Complainant payment for the transfer of the domain name by
refusing to transfer
the domain name, while offering to sell it to
Complainant. Respondent disrupts
Complainant’s business by forcing Complainant to bring this proceeding in order
to enforce its trademark right
in the Savin Marks and protect itself from
infringement and consumers from confusion.
The
only other use Respondent made of the domain name <savincity.com>
was to offer for sale goods competitive with Complainant’s goods. Such use of the domain name containing
Complainant’s trademark also is evidence of bad faith. See Arizona Mail Order, Inc. v. INSS, FA 99757 (Nat. Arb. Forum Oct.
22, 2001) (finding that respondent’s use of a confusingly similar domain name
for commercial gain
is evidence of bad faith).
Registering and using a domain name that is known to contain
another’s trademark evidences bad faith registration of that mark. See Umbers
& Toltec Scenic R.R. Comm’n v. Ravin, FA0 99599 (Nat. Arb. Forum Oct. 30, 2001) (holding
respondents’ knowledge of complainant’s mark and use of the mark in the
railroad
business to evidence registrants’ bad faith use of the mark for a
domain name offering railroad services); see also Trump v.
Graham, FA
100177 (Nat. Arb. Forum No. 2,
2001) (holding respondent’s likely knowledge of the TRUMP mark to evidence bad
faith).
Respondent has intentionally caused
confusion with the Savin Marks and continues to intentionally use the domain
name in bad faith.
Respondent, with the intent to operate a business selling
goods directly competitive with the goods sold by Complainant and Complainant’s
authorized dealers, registered a domain name that incorporates the Savin Marks
next to a generic term, “city.”
Respondent then used that domain name in connection with a business Web
site selling goods directly competitive with the goods sold
by Complainant and
Complainant’s authorized dealers.
Respondent, as a vendor of the exact types
of goods sold by Complainant, undoubtedly was aware of Complainant’s
significant market
presence in the business machine industry in which
Respondent was competing. Respondent
nonetheless registered the domain name <savincity.com>,
incorporating Complainant’s registered and well-known trademark to label
Respondent’s website where it sold goods directly competitive
with
Complainant’s goods.
Upon receipt of Complainant’s first cease
and desist letter dated July 6, 2001, Respondent deactivated his website at the
domain name
<savincity.com>.
Respondent then offered to sell the domain name to Complainant. Complainant has admitted that he has no
legitimate or bona fide commercial use or non-commercial use for the name.
Given these circumstances, Respondent has had and has the
intent to profit from his registration and use of the domain name <savincity.com>
by selling that domain name to Complainant.
Respondent
is a “small time internet person.” This
was his very first try at opening an on-line business. He signed up with a
company call TTA Superstores as an affiliate. He paid
them $100.00 to get
setup. All of the products come from them and Respondent was using their site.
Orders are sent directly to them
from the buyer. Respondent had no control over
the products or the screens on the website. Respondent can select which product
categories
he wanted to use and the percentage of profit. So when Respondent
started he selected all categories.
When
Respondent registered the website domain name he started looking for <savingcity.com>
but it was taken. He tried different variations of the name with no success.
The selection of the domain name was not intentional
to harm Savin Corporation.
Respondent didn’t even know who Savin Corporation was at the time. He did not
select this name to do any
harm to Savin Corporation.
When
Respondent received the e-mail and letter from Savin Corporation Attoney’s,
Respondent immediately went to a cyber law attorney,
David Ellis. Respondent
gave him a retainer of $400.00, which was all Respondent had at the time for a
few hours of his work. The
attorney advised Respondent that it may be best to
change the domain name and not to sell competitive products of Savin
Corporation.
The first thing Respondent did was remove the product categories
that were products that Savin Corporation sold. Respondent selected
a new
domain name of <ifproducts.com>. When Respondent got the new domain name
he immediately changed the banner on the website
and went into the affiliate
tools at <ttasuperstores.com> and tried to change the domain name, but it
didn’t work. Respondent
wrote five or six emails to try to get the situation
resolved. Then Respondent started calling them and it still took three weeks
after that. The domain name change took Respondent six weeks before it was
complete.
Since
Respondent has had the site he has sold only three products, all three
purchased by Respondent himself. The traffic on the site
was very low, which
Respondent argues shows there was no impact on Savin Corporation.
Respondent
does not mind turning over the name to Savin. All Respondent wanted from Savin
was a mere $350.00 which was his register
fee, business cards, advertising and
the transfer fees to Savin. Respondent’s attorney advised him that the letter
should be open
ended as to what Savin might pay. Respondent just wanted to get
some of his money back. Respondent does not feel this dollar figure
is out of
line and it is not taking advantage of Savin.
None
The
Panel finds that:
1.
The domain
name <savincity.com> is confusingly similar to the Complaint’s
SAVIN trademarks;
2.
The
Respondent has not established any right or legitimate interest in the domain
name; and
3.
The
Respondent acquired and has used the domain name in bad faith.
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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.
Identical
and/or Confusingly Similar
Complainant
has established rights in the SAVIN trademark. The domain name in question,
<savincity.com>, merely adds the generic word, “city” to
Complainant’s SAVIN mark. The addition of the generic term is not enough to
create a distinct
mark capable of overcoming Complainant’s claim of confusing
similarity. Cases cited by Complainant on this point support this conclusion.
See
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant
Furthermore,
Complainant’s mark SAVIN is the dominant element of <savincity.com>.
This also supports the claim of confusing similarity. See Westfield
Corp. Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding
<westfieldshopping.com> confusingly similar because the WESTFIELD mark
was the dominant
element. Complainant succeeds on the first element.
Rights
or Legitimate Interests
Para. 4(c) of the UDRP sets out three
circumstances by which a Respondent can conclusively demonstrate rights to and
legitimate interests
in the domain name. The second and third circumstances are
not applicable here because Respondent has never been commonly known by
the
domain name, nor has respondent made a legitimate non-commercial or fair use of
the domain name. This, then leaves the first
of the three circumstances:
“Before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding
to the domain name in connection
with a bona fide offering of goods or services.”
Even
if Respondent began using the domain name in connection with offering goods for
sale before he became aware of Complainant’s
rights, there is still a question
of whether the offering of goods for sale was a bona fide offering of goods
within the meaning
of the policy. Merely using a domain name containing
Complainant’s mark in competition with Complainant does not establish a bona
fide commercial use. See Backstage Fashion, Inc. v. Backstage, Inc., FA
100135 (Nat. Arb. Forum Nov. 5, 2001). The fact Respondent used the domain name
to sell products manufactured by Complainant’s
competitors leads to the
inference that this was not a bona fide commercial use. The Panel therefore
finds that Respondent’s use
of the domain name was not for the bona fide
offering of goods or services within the meaning of the Policy.
Finally,
under this element, the evidence before the Panel does not establish any other
rights or legitimate interests of the Respondent
in the domain name.
That
being the case, Complainant succeeds on the second element.
Registration
and Use in Bad Faith
With respect to this element, the
paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the
following circumstances, in particular but without limitation, if found by the
Panel
to be present, shall be evidence of the registration and use of a domain
name in bad faith:
(i) circumstances indicating that you have
registered or you have acquired the domain name primarily for the purpose of
selling, renting,
or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to
a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name in order
to prevent the owner of the trademark or service mark from reflecting the mark
in
a corresponding domain name, provided that you have engaged in a pattern of
such conduct; or
(iii) you have registered the domain name primarily
for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
web site or
other on-line location, by creating a likelihood of confusion with
the complainant's mark as to the source, sponsorship, affiliation,
or
endorsement of your web site or location or of a product or service on your web
site or location
On
a review of the evidence, none of the first three enumerated circumstances
exist in this case, for the following reasons:
1. There is no evidence that the name was
acquired primarily for the purpose of sale to Complainant.
2. On the
evidence, it does not appear that Respondent registered the domain name with
the intent to prevent the owner from reflecting
the mark, and in any event
there is no pattern.
3. While
we may conclude that Respondent is a competitor of Complainant, on the evidence
before us, Respondent’s purpose in registration
does not appear to have been to
disrupt the business of the Complainant.
With
respect to the fourth circumstance enumerated above, this Panel finds it
difficult to accept that Respondent could register and
make any commercial use
of the disputed domain name in the manner in which he attempted to use the name
without creating a false
impression of some association with Complainant. Use
of the name was intended to attract customers to Respondent’s site for
commercial
gain, and use of the domain name <savincity.com>
definitely creates a likelihood of confusion with Complainant’s mark. On this
ground, therefore, the Panel concludes the Respondent
acted in bad faith.
The
Panel is also entitled to conclude that there is bad faith for some other
reason. On our reading of the Policy, each Panel is
responsible to determine
whether there has been bad faith. The four cited examples are situations where,
if the evidence exists,
the Panel must find bad faith. This does not, however,
preclude the Panel finding that other circumstances amount to bad faith in
a
particular case. The paragraph says, "in particular but without
limitation".
In this
case, additional evidence of bad faith can be found in Respondent’s attempt to
sell the disputed domain name to Complainant
for more than the out-of-pocket
expenses. This is especially so after Respondent ceased using the domain name
and began to passively
hold same.
For
these reasons, Complainant succeeds on this element as well.
The
Panel finds in favour of the Complainant in this case, and in accordance with
Paragraph 4(i) of the Policy, the Panel requires
that the registration of the
domain name <savincity.com> be transferred to the
Complainant.
Anne M. Wallace,
Q.C.
Honorable Paul
Dorf
Honorable Carolyn
Marks Johnson
Panelists
Dated: March 1, 2002
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