Faronics Corporation v. Minakumari Periasamy c/o Domain Finance Inc.
Claim Number: FA0704000956758
Complainant is Faronics Corporation (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <deepfreeze.com>, registered with Enom, Inc.
The undersigned certifies that they have acted independently and impartially and to the best their knowledge have no known conflict in serving as Panelists in this proceeding.
Rodney C. Kyle, Anne M. Wallace and Daniel B. Banks, Jr., as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2007.
On April 11, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <deepfreeze.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 April 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 2007 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@deepfreeze.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2007, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Rodney C. Kyle, Anne M. Wallace and Daniel B. Banks, Jr., as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <deepfreeze.com> domain name is identical to Complainant’s DEEP FREEZE mark. Since 1999, Complainant has used the DEEP FREEZE trademark in developing and marketing a reboot-to-restore software product called “Deep Freeze.” In September, 2000, Complainant obtained a U.S. Registration No. 2,383,395 for DEEP FREEZE. This product “freezes” a computer’s hard drive in a pre-configured state and every restart eradicates all changes from the previous session. This system never changes and eliminates technical support as any support issue can be resolved by rebooting a frozen system. Such a system can operate for years without any maintenance. Over five million licenses of Deep Freeze have been sold in over fifty countries worldwide, making DEEP FREEZE an industry-recognized name, especially in the IT environments of educational institutions and libraries, where DEEP FREEZE software is extremely popular.
2. Respondent does not have any rights or legitimate interests in the <deepfreeze.com> domain name. Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the DEEP FREEZE trademark in a domain name or in any other manner.
3. Respondent registered and used the <deepfreeze.com> domain name in bad faith. Complainant has tried to establish a dialog with Respondent in order to acquire the rights for the disputed domain name, however, none of the attempts have been answered. Previously, Respondent was engaged in Case No. D2001-0749 regarding the disputed domain name and stated that the domain name was registered in connection with the development of a website called “Deep Freeze News” relating to the frozen food industry. This was not done. The website at <deepfreeze.com> does not feature the food industry but instead the IT sector. Respondent specifies the following keywords in the meta tags: “deep freeze, It services, Antivirus, Security Software” in order for this site to be picked up by search engines and drive traffic that is related to Complainant’s business. Clearly Respondent is capitalizing on the good name of Complainant’s software product.
B. Respondent failed to submit a Response in this proceeding.
2 – The Respondent has no rights or legitimate interests in respect of the domain name.
3 – The domain name was registered and is being used in bad faith.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 is the registered owner of a U.S. Registered Trademark for DEEP FREEZE. Since 1999, Complainant has used that mark to market a computer software product called DEEP FREEZE. That product has been marketed worldwide in over fifty countries making it an industry-recognized name, especially in the IT environments of educational institutions and libraries. The domain name at issue is identical to that trademark. Respondent has not disputed this claim. The panel finds that Complainant has established rights sufficient to satisfy Policy ¶ 4(a)(i). See McCarthy on Trademarks & Unfair Competition, § 25:74.2 (4th ed. 2002) (stating that the ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The Panel also finds that the minor addition of the generic top-level domain “.com” is such a minor addition to Complainant’s mark as is necessary for domain name registration and, therefore, insufficient to negate the identical aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Rights or
Legitimate Interests
It is well established that once Complainant makes a prima facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Here, Respondent has offered no
evidence to establish its rights or legitimate interests in the disputed domain
name. And, there is no evidence in the
record suggesting that Respondent is commonly known by the <deepfreeze.com> domain name or
that Respondent has been licensed or authorized to use the disputed domain name. The
Panel finds that Respondent has not established rights or legitimate interests
in the <deepfreeze.com> domain
name pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interests where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent was not commonly known by the disputed domain name nor
was the respondent using the domain name in connection with a legitimate or
fair use).
Furthermore, Complainant asserts that Respondent is using the <deepfreeze.com> domain name to redirect Internet users interested in Complainant’s DEEP FREEZE goods and services to Respondent’s website that features similar goods and services that compete with Complainant. The Panel finds that Respondent’s use of a domain name that is identical to Complainant’s DEEP FREEZE mark to redirect Internet users interested in Complainant’s goods and services to Respondent’s website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are
advertised.”).
Complainant certifies that the page setup by Respondent at the disputed domain <deepfreeze.com> is devoted in the main part to the IT marketplace, capitalizing on the high level of brand awareness achieved by Complainant’s DEEP FREEZE software product; that Respondent specifies the keywords in the meta tags: “deep freeze, IT services, Antivirus, Security Software” in order for this site to be picked up by search engines and drive traffic that is related to Complainant’s software; and, that such use capitalizes on the good name of the DEEP FREEZE software product. The panel finds it inconceivable that Respondent would select the disputed domain name to use as an IT marketplace absent knowledge of Complainant’s mark and intent to use that name to attract Internet users to the website for commercial gain. Again, Respondent has not replied to these claims and is in default. Therefore, the Panel finds that Respondent is using the <deepfreeze.com> domain name for Respondent’s commercial gain by diverting Internet users interested in Complainant’s DEEP FREEZE goods and services to Respondent’s website featuring goods and services that compete with Complainant. The Panel also finds that Respondent’s use of a domain name that is identical to Complainant’s mark to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also 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 eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site).
Furthermore, in the absence of a response, the Panel may infer, as between these two parties, that Respondent registered the identical domain name in order to promote goods and services that compete with Complainant and primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Gorstew Ltd. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from the respondent travel agency to the complainants, who operated Sandals hotels and resorts).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deepfreeze.com> domain name be TRANSFERRED from Respondent to Complainant.
Panelists Anne M. Wallace and Daniel B. Banks, Jr., concur in this decision.
Panelist Rodney C. Kyle dissents and files a dissenting opinion.
Daniel B. Banks, Jr., Panel Chair
Anne M. Wallace, Panelist
Dated: June 11, 2007
Dissenting Opinion
of Panelist Rodney C. Kyle in Faronics
Corporation v. Minakumari Periasamy c/o Domain Finance Inc., FA 956758
Introduction
I respectfully dissent from the Panel’s disposition of the proceeding and from the Panel’s reasons for that disposition: I would deny the requested relief and dismiss the Complaint.
In summary, I am of the view that as to various procedural and substantive matters, the Panel’s reasons for decision indicate that the Panel commits at least five errors of fact or of law, which, in the remainder of this dissent, I shall address in the sequence stated in this paragraph. The Panel
(1) misstates Rules ¶ 15(a) and thereby apparently sets an incorrect standard for itself;
(2) contravenes at least Rules ¶ 15(a), by erroneously construing the dispute resolution agreement between the Parties as permitting or requiring the Panel to ascertain basically that the certification contained in the body of the Complaint makes the body of the Complaint into evidence;
(3) contravenes at least Rules ¶ 15(a), by erring as to the date on which the registrar of the domain name at issue sent the National Arbitration Forum a confirmatory email, which is a Panel error that is indicative of a systemic error of procedural law by the Panel, i.e. not applying applicable rules and principles of law regarding the modes by which the Panel is to ascertain facts;
(4) contravenes at least Rules ¶¶ 15(a) and 14(b), by construing them in relation to Policy ¶ 4(a) as permitting the Panel to treat Respondent’s failure to submit a response to the Complaint as either or both of
(a) a judicial admission of the Complaint’s contentions— and the Panel errs in doing so, since judicial admission is a mode of ascertaining facts that is apparently precluded in the proceeding; and
(b) a fact that is the basis for a judicial inference that the Complaint’s contentions (especially but not limited to the Complaint’s contentions of Respondent’s use of the domain name at issue) are true— and the Panel errs in doing so, since the Panel impermissibly effects what amounts to judicial admission under the guise of judicial inference, as there are no facts already permissibly ascertained by the Panel and from which judicial inference may permissibly be drawn by the Panel; and
(5) errs, by disregarding a Complaint contention which would cause the Panel to ascertain that the domain name at issue was registered prior to actual or anticipated trademark rights of Complainant and that would therefore preclude the Panel from at least directly ascertaining bad-faith registration by Respondent.
As a result, and as elaborated on below, I agree with the Panel’s dispositions regarding Policy ¶¶ 4(a)(i) and 4(a)(ii), but, especially in view of Panel Errors #1, #2, #3, and #4, I disagree with the Panel’s reasons for those dispositions; and in any event, especially in view of Panel Errors #4 and #5, I disagree not only with the Panel’s disposition regarding Policy ¶ 4(a)(iii) but also with the Panel’s reasons for its disposition regarding Policy ¶ 4(a)(iii).
Panel Error #1: Misstating Rules ¶ 15(a) and Apparently Setting an Incorrect Standard
The Panel errs by misstating Rules ¶ 15(a) and thereby apparently setting an incorrect standard for itself. Panel Error #1, whether on its own or in combination with Panel Error #2, apparently leads the Panel to both the particular and general aspects of Panel Error #3. (However, each of those three Panel Errors may well be independent of one another). More specifically, the first paragraph of the “Discussion” portion of the Panel’s reasons for decision is that “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 making that statement, the Panel does not include the word “and” between “submitted” and “in.” Moreover, the Panel does not explain why it states Rules ¶ 15(a) in that way.
In any event, by the Panel’s stating Rules ¶ 15(a) in that way, the Panel apparently sets an incorrect standard for itself. Clearly, Rules ¶ 15(a) provides that in a proceeding under the Policy, a panel is to decide a complaint not only on the basis of the statements and documents submitted but also in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. However, as is more fully explained below especially in discussing Panel Error #2 and Panel Error #3, the standard the Panel apparently sets for itself is the standard of deciding the Complaint only on the basis of the Complaint, or at least on the basis of the Complaint to the exclusion of rules and principles of law that the Panel is required to deem to be applicable. In turn, as is explained below especially in discussing Panel Error #2 and Panel Error #3, the Panel apparently applies that incorrect standard by relying on the Complaint to the exclusion of rules and principles of law that the Panel is required to deem to be applicable.
Panel Error #2: Finding a Complaint’s Certification Makes
Evidence of That Complaint
The Panel errs by ascertaining basically that the certification contained in the body of the Complaint makes the body of the Complaint into evidence. (It seems that the Panel implicitly indicates it has ascertained such a conversion, at the beginning of the Panel’s second-last paragraph regarding Policy ¶ 4(a)(iii); that is apparently the full extent of the Panel’s reasons regarding that conversion). In making that error, the Panel decides the Complaint in contravention of Rules ¶ 15(a): the Panel decides the Complaint in conflict with, rather than in accordance with, the Policy, the Rules, and any rules and principles of law that the Panel is required to deem to be applicable. More specifically, the Panel’s Error #2 conflicts with at least six sets of facts.
First, aside from headings, the expression “evidence” occurs four times in the Policy (i.e. in ¶¶ 4(b)(preamble), 4(c)(preamble), and 4(k) (twice)), four times in the Rules (i.e. in ¶¶ 3(b)(xv) (twice), 5(b)(ix), and 10(d)), and apparently not at all in the National Arbitration Forum’s Supplemental Rules.
Second, the expression “certifies” (or “certification”, “certified”, or “certify”) occurs twice in the Rules (i.e. in ¶¶ 3(b)(xiv) and 5(b)(viii)), three times in the National Arbitration Forum’s Supplemental Rules (i.e. ¶¶ 4(e) (twice) and 17(d)(ii)), and apparently not at all in the Policy.
Third, each and every one of those eight occurrences of the
expression “evidence” and of those five occurrences of the expression
“certifies” (or of similar expressions), as well as the rest of the Policy and
the Rules along with the National Arbitration Forum’s Supplemental Rules, is
not law. (See e.g. Rodney C. Kyle, “Are Canadian and Other Domain Name Dispute
Resolution Processes Arbitrations?” In The
Proceedings of the Thirteenth Annual Conflict Resolution Symposium: 2004, (
Fourth, applicable contract law about interpreting, construing, and applying contracts generally includes that “the process of determining the meaning to be given to words in a document is governed by the same principles regardless of whether the process is engaged in the context of a contract claim or a tort claim and is captured in the following question: Bearing in mind the relevant background, the purpose of the document, and considering the entirety of the document, what would the parties to the document reasonably have understood the contested words to mean?” (Eli Lily and Co. v. Novopharm Ltd. [1998] 2 S.C.R. 129 (S.C.C.) at 166-67, 161 D.L.R. (4th) 1 as applied in Toronto-Dominion Bank v. Leigh Instruments Ltd. (Trustee of) 45 O.R. (3d) 417 (Ont. C.A.) at 419h-420a). More specifically, it also includes that that the dispute resolution agreement is to be interpreted, construed, and applied
(i) “according to its language and in light of the circumstances in which it was made” (Robert M. Nelson, Nelson on ADR, (Toronto, Ontario: Thomson Canada Limited, 2003), at 151 citing Heyman v. Darwins [1942] A.C. 356 (H.L.) at 370 to 371);
(ii) through “a search for the ‘intentions of the parties whose document it is’” (Nelson, cited above, at 155 quoting C.L. Elderkin and J.S. Shin Doi (i.e. Behind the Boilerplate: Drafting Commercial Agreements, Toronto: Carswell, 1998, at 120 to 121) which cites and quotes Onex Corp. v. Ball Corp. (1994), 12B.L.R. (2d) 151, [1994] O.J. No. 98 (Gen. Div.));
(iii) through applying the applicable law rather than on the basis of the Panel’s own notion of fairness (Nelson, cited above, at 162 citing Faubert v. Temagami Mining Co. (1959), 17 D.L.R. (2d) 246 (Ont. C.A.) at 257, affirmed [1960] S.C.R. 235);
(iv) by giving it “a large, liberal and remedial interpretation to effectuate the dispute resolution goals of the parties” (Nelson, cited above, at 155 citing Cityscape Richmond Corp. v. Vanbots Construction Corp. [2001] O.J. No. 638, 2001 CarswellOnt 517 (S.C.J.) at para. 19)— liberal construction expands the meaning of an instrument to include cases clearly within the spirit of the instrument, or within the evil it was designed to remedy, provided the interpretation is not inconsistent with the language used (Black’s Law Dictionary, 5th ed. (St. Paul, Minnesota: West Publishing Co., 1979), at 283); and
(v) in such a way that “does not overly distort the ordinary meaning of the words used and simultaneously avoids practical, legal and jurisdictional problems” (Nelson, cited above, at 155 citing Islamic Foundation of Toronto Trust (Trustees of) v. Islamic Foundation of Toronto, [1997] O.J. No. 2787, 1997 CarswellOnt 3060 (Gen. Div.)).
Fifth, applying the fourth one of these six sets of facts to the first through third of these six sets of facts, clearly shows the following: the spirit of the contract, the Parties intentions generally and their dispute resolution goals particularly, as well as the circumstances in which the contract was made, do not indicate that there is any practical, legal, or jurisdictional problem, or any evil to especially be remedied, that would require a large, liberal, and remedial interpretation that would depart from the ordinary meaning of the expression “evidence” in Rules ¶¶ 3(b)(xv) and 5(b)(ix) or from the ordinary meaning of the expression “certifies” in Rules ¶¶ 3(b)(xiv) and 5(b)(viii). For example, Complainant submitted not only its Complaint Appendix C (which apparently is a copy of the Policy) but also its Complaint Appendix A (which apparently is copies of U.S. Trademarks Office records regarding Complainant’s registered trademark ownership) and its Complaint Appendix B (which apparently is a copy of a Google Analytics website statistics printout regarding Complainant use of the trademark, and of variations of the trademark, in keywords in a website of Complainant). (The fact that those three Appendices were the totality of the evidence submitted by Complainant is another matter and I deal with it farther along in this dissent). In short, the Parties would reasonably have understood the Rules ¶¶ 3(b)(xv) and 5(b)(ix) occurrences of the expression “evidence” and the Rules ¶¶ 3(b)(xiv) and 5(b)(viii) occurrences of the expression “certifies” to have their own respective ordinary meanings such that those two expressions are to be construed as distinctly different from one another. (For such ordinary meanings, see Black’s Law Dictionary, cited above, at 498 to 499 as to “evidence” and at 206 and 207 as to “certification” and “certify”; cf. “assurance” at 113, “attest” at 117, “attestation” at 117, “authentic” at 121, “authentic act” at 121, “authentication” at 121, “declaration” at 367, “declare” at 368, “verification” at 1400, “verify” at 1400, and “vouch” at 1414; and cf. Webster’s New Collegiate Dictionary, (Toronto, Ontario: Thomas Allen & Son Limited, 1980), “evidence” at 393 and “certification” and “certify” at 181).
Moreover, when construed in accordance with applicable contract law about construing contracts, each and every one of the eight occurrences of the expression “evidence” and of the five occurrences of “certifies” (or of “certification”, “certified”, or “certify”), and each of the rest of the provisions of the contract, is consistent with or emphasizes something. What each of them is consistent with or emphasizes is, that except when properly applying Policy ¶ 4(b) to deem that circumstances are evidence, there is an applicable difference between, on the one hand, evidence (as what is part of a complaint or response by being annexed to the body of that complaint or response) and, on the other hand, either or both of pleadings or arguments (as what constitutes the body of a complaint or response).
In view of the two immediately preceding paragraphs of this dissent, the two ordinary meanings to which I referred, apparently apply as a matter of law, and, apparently also as a matter of law, the certification contained in the body of the Complaint does not make the body of the Complaint into evidence.
Sixth, the question might well arise of whether there are prior panel decisions under the Policy that are to the effect that a certification contained in the body of a complaint or response does not make the body of the complaint or response into evidence. That question might well arise from a very real and understandable desire for certainty, predictability, and stability that can be provided by uniformity of panel decisions under the Policy. However, that question is never especially strong when it comes to matters of law because neither the Policy, nor rules or rulings under the Policy, are law. (See e.g. the article by me, cited above, regarding the third one of these six sets of facts— especially at 129 to 131, the text in and associated with notes 50 to 59 thereof.) That said, and especially as compared to the two decisions cited by the Panel in the second paragraph of the Panel’s “Discussion” portion of its reasons for decision, there are panel decisions under the Policy which are far more recent, as well as far more thoroughly reasoned and persuasive, than those two decisions cited by the Panel. Those more recent, more thoroughly reasoned, and more persuasive decisions indicate the following: a certification contained in the body of a complaint or response does not make the body of the complaint or response into evidence and instead Rules ¶¶ 3(b)(xiv) and 5(b)(viii) prescribe a duty of candor. (See, respectively, e.g. Texans For Lawsuit Reform, Inc. v. Kelly Fero, D2004-0778 (WIPO Oct. 31, 2004) and General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA 651676 (Nat. Arb. Forum May 26, 2006).)
Therefore, by basically construing the dispute resolution agreement between Complainant and Respondent as including that the certification contained in the body of the Complaint makes the body of the Complaint into evidence, the Panel errs: in view of the first five of these six sets of facts, it is an error of applicable contract law, and, in view of the sixth set, it is inconsistent with well reasoned and persuasive prior panel decisions under the Policy.
Panel Error #3: an Error of Fact Indicative of a Systemic
Error of Procedural Law
The Panel errs regarding the date on which the registrar of the domain name at issue (hereinafter “the Registrar”) confirmed by e-mail to the National Arbitration Forum that the domain name at issue is registered with the Registrar and that Respondent is the current registrant of the domain name at issue. More specifically, in the second paragraph of the “Procedural History” portion of the Panel’s reasons for decision the Panel states that the confirmation date is 11 April 2007 whereas, as I explain below in the last paragraph under this heading, the date is apparently 10 April 2007.
In and of itself, that date difference is apparently not material to the disposition of the proceeding. However, how the Panel arrives at that confirmation date as being 11 April 2007 rather than 10 April 2007 is up to the Panel to explain, but it does not do so. The fact that the Panel does not do so, and errs as to the confirmation date that it states, is indicative of a systemic error of procedural law (which, on its own or together with either or both of Panel Error #1 and Panel Error #2) is in contravention of Rules ¶ 15(a) and directly or indirectly relates to most, if not all, of the Panel’s procedural and substantive errors of fact and of law referred to in this dissent. The Panel’s systemic error of procedural law is that the Panel does not apply applicable rules and principles of law regarding the modes by which the Panel is to ascertain facts. (Such applicable rules and principles of law also apparently apply to how any panel in a proceeding under the Policy, at least between parties from common-law jurisdictions, is to ascertain facts).
More specifically, in view especially of Rules ¶15(a), the Panel should note four rules and principles of law that it is required to deem to generally be applicable to ascertaining whether each of Policy ¶¶ 4(a)(i), 4(a)(ii), and 4(a)(iii) has been proven. First, that:
Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. “real evidence”); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).
(W.N. Hohfeld, “Some
Fundamental Legal Conceptions as Applied in Judicial Reasoning,” 23 Yale L. J., 16, at 27, footnote
23; emphasis in original.)
Second, especially as to mode
“3”, that Rules ¶ 10(d) provides that “The Panel shall determine the
admissibility, relevance, materiality and weight of the evidence.”
Third, as to construing and
applying Rules ¶10(d), especially as to whether mode “1” rather than mode “3”
applies: a complainant’s pleading of fact that is not disputed (or, phrased
differently, not “put in issue”) by a respondent against whom it is contended,
is an admission by that respondent. (As to respondents, see e.g. Rules ¶¶ 5(b)(i) and 5(b)(ix); likewise,
as to complainants, see e.g. Rules ¶ 3(b)(xv). As to both complainants and respondents, see Rules ¶ 14(b), which includes that “If a Party, in the
absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules … the Panel
shall draw such inferences therefrom as it considers appropriate.” Each of Rules ¶¶ 3(b)(xv),
5(b)(i), and 5(b)(ix) is clearly a “provision of, or requirement under, these
Rules” within the meaning of that expression as it appears in Rules ¶ 14(b)). In turn, evidence tendered as being rationally
probative of (i.e. as being “relevant to”) establishing that fact becomes
immaterial, and hence inadmissible, as to establishing that fact. (Compare Hohfeld¸ cited above, mode
“1” with Ronald Joseph Delisle,
Evidence Principles and Problems, (1st ed. 1984) at 5, which is to the effect that evidence which
is immaterial, or is material but irrelevant, is inadmissible, and even evidence
which is material and relevant may still be inadmissible in view of further
inadmissibility rules of evidence law).
Fourth, as to whether mode
“2” rather than either of mode “1” or mode “3” applies, a canvassing of law and
commentary shows two principles. Firstly,
that “It was not desirable, nor indeed possible, to foreclose the trier’s use
of background information but should the matter noticed be in the forefront of
the controversy, should the fact be determinative, the law protected the
adversary by insisting that the matter be so commonly known, and hence
indisputable, that its notice could not prejudice the opponent.” (Delisle, cited above, at 94. See also, e.g. R. v. Find [2001] 1 S.C.R. 863 at para.
48 that a court “may properly take judicial notice of facts that are either:
(1) so notorious or generally accepted as not to be the subject of debate among
reasonable persons; or (2) capable of immediate and accurate demonstration by
resort to readily accessible sources of indisputable accuracy.” See also
e.g. R. v. Malmo-Levine; R. v. Caine
[2003] 3 S.C.R. 571 at para. 28 and Public
School Boards’ Assn. of
However, the Panel is required to note not only that Respondent has failed to submit a response but also that such failure makes for some exceptions to those otherwise generally applicable four rules and principles of law set out in the immediately preceding four paragraphs. Those exceptions are as to materiality and as to judicial admission.
Specifically, Rules ¶¶
5(e) and 14(a) respectively include that “If
a Respondent does not submit a response, in the absence of exceptional
circumstances, the Panel shall decide the dispute based upon the complaint”
and that “In the event that a Party, in the
absence of exceptional circumstances, does not comply with any of the time
periods established by these Rules …, the Panel shall proceed to a decision on
the complaint.”
More specifically, in this proceeding, there do not
appear to be “exceptional circumstances” within the meaning of that expression
as it occurs in each of Rules ¶¶ 5(e) and 14(a). Therefore, in accordance with Rules ¶¶ 14(a) and 5(e) respectively, the
Panel is required to “proceed to a decision
on the complaint” and “decide the dispute based upon the complaint.” In doing so, as also accords with Rules ¶¶ 5(e) and 14(a), the Panel is
also required to not treat the failure to submit a response as an admission of
Complainant’s allegations and shall make a decision on the evidence before the
Panel. (See e.g. Arbitration Act, 1991, S.O. 1991, c. 17,
ss. 27(2) and 27(3), and Model Law on
International Commercial Arbitration, art. 25(b)).
Still more specifically, this proceeding is a documents-only proceeding in which Respondent has failed to submit a response. The approach the Panel is required to apply to this proceeding therefore includes the following, which was stated by Sir Michael J. Mustill and Stewart C. Boyd, in Commercial Arbitration, 2nd ed. (Toronto, Ontario: Butterworths, 1989) at 538 (footnote omitted):
If …
it is the respondent who is absent, the [tribunal] … cannot properly make an
award unless the claimant has proved [its] case … [and in a documents-only
arbitration] the tribunal … can simply proceed to an award on the basis of what
is found in the available documents … [and] must properly address [itself] to
the question of whether the claimant’s evidence proves [its] case. This
requires [the tribunal] not only to make sure that the evidence bears out the
claimant’s assertion, but also that it has the appearance of being true, and is
internally consistent.
That is especially so, in view of the fact that Complainant and Respondent are respectively in Canada and Malaysia, which are both countries having an English common-law heritage which in the present day includes the principle embodied by that quoted passage.
Moreover, the Complaint pleads use of the domain name at issue, but includes no evidence of use of the domain name at issue. Since evidence of such use is clearly something which ordinarily is available to such a prospective complainant as part of preparing its complaint, it seems that rather than drawing an adverse inference against Respondent from non-compliance with Rules ¶ 5(a), an inference which might as reasonably and readily be drawn, is an adverse inference against Complainant from non-compliance with Rules ¶ 3(b)(xv).
Instead of applying those four rules and principles of law regarding the modes by which the Panel is to ascertain facts, and those applicable exceptions regarding materiality and judicial admission, the Panel apparently relies on the incorrect standard it has set for itself. (That incorrect standard is described in the above discussion of Panel Error #1). It apparently does so, by referring to Rules ¶¶ 5(e), 14(a), and apparently its misstatement of 15(a), as combining with Rules ¶ 14(b) to cause the Panel to “draw such inferences it considers appropriate.” In any event, when apparently (though not necessarily) applying the Panel Error #1 standard, the Panel errs in two respects which I shall get to in a moment. For now, the point is that when the Panel errs in those two respects, it refers to and apparently relies on two panel decisions under the Policy, which the Panel cites and apparently paraphrases or quotes in the second paragraph of the Panel’s “Discussion” portion of its reasons for decision. In addition to the inappropriateness and indeed, the impossibility, of at least the Panel’s Policy ¶ 4(a)(iii) inference-drawing, and therefore in addition to the inapplicability of those two decisions to at least the Panel’s disposition on Policy ¶ 4(a)(iii)— all as indicated by what I have set out above and as I will elaborate on further below— those two decisions also have two main attributes which make them completely unpersuasive. Those attributes are that those two decisions (i) have a major paucity of reasons generally, and of analysis in particular, on the point for which they are cited by the Panel; and (ii) they were arrived at early in the life of the Policy and have been superseded by decisions which are far more extensively and analytically well reasoned. (See e.g. Western Research 3000, Inc. v. NEP Prods., Inc., D2004-0755 (WIPO 5 Nov. 2004), Texans For Lawsuit Reform, Inc. v. Kelly Fero, D2004-0778 (WIPO Oct. 31, 2004), General Media Commc’n, Inc. v. Crazy Troll c/o CrazyTroll.com, FA 651676 (Nat. Arb. Forum May 26, 2006), and Brooke Bollea, a.k.a Brooke Hogan, D2004-0383 (WIPO June 29, 2004). The second and third of those four decisions were also each cited above in analysing Panel Error #2).
I turn, then, more specifically to the two respects in which the Panel errs. The first respect in which the Panel errs is by arriving at 11 April 2007 as the confirmation date; the Panel does not state any basis for arriving at 11 April 2007 as the confirmation date and instead that specific date merely appears in the Panel’s decision holus bolus. (I, on the other hand, take judicial notice, arguendo, of a copy of a 10 April 2007 email from the Registrar to the National Arbitration Forum, and which the National Arbitration Forum provided to all of the members of the Panel along with the Complaint and with other related documents. I do so, not only because of those attributes of that document but also especially because in the Complaint there is absolutely no evidence about two ordinarily evidenced and commonly very readily evidenced matters: whether the domain name at issue is registered with the Registrar and whether Respondent is the current registrant of the domain name at issue. That email copy is dated 10 April 2007 and is to the effect that the domain name at issue is both registered with the Registrar and registered to Respondent). The second respect in which the Panel errs (again and again, as explained below regarding Panel Error #4), is by construing Rules ¶¶ 15(a) and 14(b) in relation to Policy ¶ 4(a) as permitting the Panel to treat Respondent’s failure to submit a response to the Complaint as either or both of (i) a judicial admission of the Complaint’s contentions; or (ii) a fact that is the basis for a judicial inference that the Complaint’s contentions are true.
Panel Error #4: Erring by Purporting to Apply Judicial Admission and Judicial Inference
Overview Regarding
Panel Error #4
The Panel contravenes at least Rules ¶¶ 15(a) and 14(b), by construing them in relation to Policy ¶ 4(a) as permitting the Panel to treat Respondent’s failure to submit a response to the Complaint as either or both of (i) a judicial admission of the Complaint’s contentions; and (ii) a fact that is the basis for a judicial inference that the Complaint’s contentions are true.
To the extent that the error is by purporting to apply judicial admission, it appears that the Panel is simply wrong as a matter of law, since judicial admission is a mode of ascertaining facts that is apparently precluded in the proceeding. It seems that I can say nothing more in that regard than what I have stated above regarding Panel Error #3. (See e.g. the third through tenth paragraphs, above, under the heading of Panel Error #3).
To the extent that the error is by purporting to apply judicial inference, it also appears that the Panel is wrong as a matter of law, since the Panel impermissibly effects what amounts to judicial admission under the guise of judicial inference, as there are no facts already permissibly ascertained by the Panel and from which judicial inference may permissibly be drawn by the Panel.
Whether by purporting to ascertain facts by judicial admission or by purporting to ascertain facts by judicial inference, the Panel errs, regarding each of Policy ¶¶ 4(a)(i), 4(a)(ii), and 4(a)(iii). In my view, the Panel does so, first (in some instances) by misstating the Complaint’s contentions, and then (in any event) by impermissibly purporting to ascertain various facts from the Complaint’s contentions.
All of that happens by or through the Panel’s reasons for decision, and despite the fact that by Policy ¶ 4(a), Complainant has the burden of proof.
Panel Error #4 as to
Policy ¶ 4(a)(i)
CONTENTIONS
As for Policy ¶ 4(a)(i), suffice it to initially say that I am of the view that the Complaint’s contentions are not as stated by the Panel and that instead the Complaint’s contentions are as follows: Complainant basically contends by way of what amounts to four points that
(i) Respondent is the registrant of the domain name at issue;
(ii) since 1999, Complainant has owned and used a trademark DEEP FREEZE in association with a reboot-to-restore software product;
(iii) registration of the contended trademark is evidenced by Complaint Appendix A; and
(iv) the domain name at issue is identical to the contended trademark.
FINDINGS
In turn, suffice it to say that I am of the view that Policy ¶ 4(a)(i) is satisfied and, more specifically, that
(i) Complaint Appendix A not only has the appearance of being true but also bears out much of the second and third points of what I have set out as the Complaint’s Policy ¶ 4(a)(i) contentions— it does so, by apparently being copies of federal U.S. trademark registration records and to the extent of proving that there is a Complainant-owned federal U.S. registered trademark 2,383,295, for DEEP FREEZE in association with software;
(ii) at least arguendo, judicial notice could be taken of a copy of a 10 April 2007 email from the Registrar to the National Arbitration Forum, to the effect that the domain name at issue is registered to Respondent; and
(iii) the domain name at issue is identical to that trademark— as in Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), it is irrelevant that the domain name at issue does not include the trademark’s space and includes the top-level domain “.com.”
Panel Error #4 as to
Policy ¶ 4(a)(ii)
CONTENTIONS
As for Policy ¶ 4(a)(ii), suffice it to initially say that I am of the view that that the Complaint’s contentions are not as stated by the Panel and that instead the Complaint’s contentions are as follows: Complainant basically contends generally that Respondent does not have any rights or legitimate interests in respect of the domain name at issue, and more particularly, by way of what amounts to four points or sets of points, Complainant basically contends that
(i) Complainant’s contended use of the contended trademark is by way of keyword use in a website of Complainant (and such that the keyword use is contended to be evidenced by what is contended to be a website statistics printout set out in Complaint Appendix B), as well as by way of over five million licenses in over fifty countries, and
(a) results in a “high level of brand awareness” of the contended software product contended to be associated with the contended trademark and
(b) makes the contended trademark “an industry-recognized name, especially in the IT environments of education institutions and libraries, where … [the contended software product] is extremely popular”;
(ii) “Respondent has no connection or affiliation with” Complainant, and more particularly has not received any license or consent to use the contended trademark “in a domain name or in any other manner”;
(iii) Respondent is using the domain name at issue to resolve a webpage that is “devoted in the main part to the IT marketplace”; and
(iv) Respondent’s contended use of the domain name at issue is therefore “capitalizing on” the contended high level of brand awareness achieved by the contended software product that is contended to be associated with the contended trademark.
FINDINGS
In turn, I am of the view that Policy ¶ 4(a)(ii) is satisfied and, more specifically, that there is no evidence directly relevant to Policy ¶ 4(a)(ii), but, that in view of my findings set out above regarding Policy ¶ 4(a)(i), and by what I have stated as Complainant’s second main set of contentions, Complainant nonetheless made a prima facie showing regarding Policy ¶ 4(a)(ii).
More specifically, Complaint Appendix B not only has the appearance of being true but also bears out much of the preamble of the first point of what I have stated as the Complaint’s second main set of contentions. Complaint Appendix B does so,
(i) by apparently being a website statistics printout from Google Analytics; and
(ii) to the extent of proving that Complainant uses the trademark and variations of the trademark (alone or in combination with expressions such as “software” and “download”), in keywords in a website of Complainant.
When, as in this case, “the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue”. (Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000); to similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002)).
In turn, in the absence of a response from Respondent, Policy ¶ 4(a)(ii) is satisfied.
CRITIQUE OF THE PANEL’S REASONS FOR DECISION
The Panel errs, apparently not by the first two of the Panel’s three paragraphs regarding Policy ¶ 4(a)(ii), but rather by its third paragraph regarding Policy ¶ 4(a)(ii).
More specifically, it is one thing for a panel to ascertain that a complainant makes a Policy ¶ 4(a)(ii) prima facie case against a respondent that has not submitted a response to a complaint and, as a result, for that panel to ascertain that Policy ¶ 4(a)(ii) is satisfied. (That is what the Panel does in its first two paragraphs regarding Policy ¶ 4(a)(ii), and the Panel apparently would not have erred if the Panel had stopped its Policy ¶ 4(a)(ii) analysis at that point.) It is quite another thing for that same panel to ascertain, on the basis of the contentions in the body of the complaint (i.e. contentions that the respondent uses the disputed domain name) and on the basis of the absence of a response by the respondent, that the respondent uses the disputed domain name. Such a further ascertainment by that panel does not result from the burden-of-production shifting doctrine to which the Panel refers and with which I agree. However, in the Panel’s third paragraph regarding Policy ¶ 4(a)(ii), such a further ascertainment is effected by the Panel: the Panel impermissibly effects what amounts to judicial admission under the guise of judicial inference, as there are no facts already permissibly ascertained by the Panel and from which judicial inference may permissibly be drawn by the Panel, so, to that extent, the Panel’s third paragraph regarding Policy ¶ 4(a)(ii) is in error.
Still more specifically, and especially as to the Panel’s third paragraph regarding¶ 4(a)(ii), in this proceeding, and despite the Complaint’s contentions of Respondent use of the domain name at issue, there is absolutely no evidence of any Respondent use of the domain name at issue, yet such evidence is the sort of evidence which is not only ordinarily available to complainants but also commonly provided to panels by complainants.
Moreover, the procedural aspects of the record do not
directly or inferentially prove Respondent use of the domain name at issue.
Specifically, in the third paragraph of the “Procedural History” portion of the
Panel’s reasons for decision, the Panel makes statements regarding a 20 April
2007 confirmation notice from the National Arbitration Forum to Respondent.
Those statements by the Panel include that the notice 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@deepfreeze.com by
e-mail”. However, that quoted statement is inconclusive as to whether there was
Respondent use of the contested domain name. (See Rules ¶ 2(a)(ii)(C).)
Also, judicial admission is apparently precluded in the proceeding, and there is no indication that the Panel takes any judicial notice, so what is the permissibly ascertained fact from which the Panel purportedly draws its judicial inferences in the Panel’s third paragraph regarding Policy ¶ 4(a)(ii) and how is that underlying fact permissibly ascertained? It cannot be the contentions in the body of the complaint (i.e. contentions that the respondent uses the disputed domain name) and the absence of a response by the respondent, because that would amount to impermissibly effecting what amounts to judicial admission under the guise of judicial inference, as there are no facts already permissibly ascertained by the Panel and from which judicial inference may permissibly be drawn by the Panel so, to that extent, the Panel’s third paragraph regarding Policy ¶ 4(a)(ii) is in error.
Panel Error #4 as to Policy ¶ 4(a)(iii)
CONTENTIONS
As for Policy ¶ 4(a)(iii), suffice it to initially say that I am of the view that that the Complaint’s contentions are not as stated by the Panel and that instead the Complaint’s contentions are as follows: Complainant basically contends generally that Respondent registered the domain name at issue in bad faith and is using the domain name at issue in bad faith and, more particularly, by way of what amounts to three points or sets of points, Complainant basically contends that
(i) a decision in domain name case D2001-0749, dated 3 August 2001, was regarding the domain name at issue and Respondent
(a) “was engaged in” that case and
(b) stated in that case that the domain name at issue “was registered in connection with the development of a website called ‘Deep Freeze News’ relating to the frozen food industry” but “[n]othing of this kind was done”;
(ii) the above-mentioned Respondent webpage to which I referred
(a) features the IT sector rather than the food industry, which amounts to Respondent engaging in the above-mentioned capitalization to which I referred,
(b) has meta tags including “‘deep freeze, It services, Antivirus, Security Software’ in order for [that webpage] to be picked up by search engines and drive traffic that is related to” Complainant’s wares, and
(c) “serves sponsored content through several search engines, without hosting any actual … information” relevant to Complainant’s contended software product; and
(iii) Complainant has attempted to “establish a dialog” with Respondent about Complainant acquiring the domain name at issue, but “none of the attempts have been answered.”
FINDINGS AND CRITIQUE OF THE PANEL’S DISPOSITION AND ITS REASONS
In my view, Policy ¶ 4(a)(iii) is not satisfied.
As for evidence, no evidence in this proceeding bears out Complainant’s contentions regarding Policy ¶ 4(a)(iii). Specifically, Complaint Appendix C is a copy of the Policy, there is no other evidence in this proceeding besides Complaint Exhibits A and B, and neither individually nor in any combination is any Complaint appendix directly or inferentially relevant to any of Complainant’s contentions regarding Policy ¶ 4(a)(iii). Indeed, apparently no evidence is even contended by Complainant to be relevant to any of Complainant’s contentions regarding Policy ¶ 4(a)(iii). Instead, in this proceeding, there is simply no evidence even in support of, let alone actually proving (or that is even part of proving), Complainant’s contentions regarding Policy ¶ 4(a)(iii).
For example, and perhaps most importantly regarding the evidence, Complaint Appendices A and B are basically solely about Complainant (i.e. Complainant’s registered trademark ownership and Complainant’s website), whereas, if either or both of them was to be directly or inferentially relevant to Complainant’s contentions regarding Policy ¶ 4(a)(iii), either or both of them would also have been directly or inferentially relevant to Respondent’s behavior. That is so, because bad faith behavior in both registering and using a contested domain name is what a complainant has the burden of proving under Policy ¶ 4(a)(iii).
Moreover, judicial admission does not apply to this proceeding at all, so the Panel’s only modes for ascertaining whether Policy ¶ 4(a)(iii) is satisfied are judicial notice and judicial inference, but neither individually nor in any combination do judicial notice or judicial inference require the Panel to ascertain that Policy ¶ 4(a)(iii) is satisfied in this proceeding. Instead, the Panel should ascertain that Policy ¶ 4(a)(iii) is not satisfied , i.e. not satisfied either through any one of the examples set out in Policy ¶¶ 4(b)(i) to 4(b)(iv) or through the preamble of Policy ¶ 4(b). (That is especially so regarding Policy ¶¶ 4(b)(i) to 4(b)(iii), in view of Panel Error #5, on which I elaborate under the next heading, below).
As for each of the examples in the main body of Policy ¶ 4(b), that paragraph is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that
For the purposes of [Policy ¶] 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 the one hand, Policy ¶¶ 4(b)(i), 4(b)(ii), and 4(b)(iii) basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then bad-faith use is in turn evidenced through applying the respective one of those three provisions. On the other hand, Policy ¶ 4(b)(iv) basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel then bad-faith registration is in turn evidenced through applying that provision.
As for Complainant’s third main set of contentions, they do not, on their own or in combination with any facts permissibly ascertained in this proceeding, amount to circumstances within the scope of one or more of Policy ¶¶ 4(b)(i), 4(b)(ii), 4(b)(iii), or 4(b)(iv). More specifically, whatever else is missing from this proceeding: no Policy ¶ 4(b)(i) purpose of selling, renting, or otherwise transferring for the required purpose is proven; no Policy ¶ 4(b)(ii) purpose in relation to Complainant is proven; no Policy ¶ 4(b)(iii) purpose of disruption of a competitor is proven; and no Policy ¶ 4(b)(iv) use— and indeed, no use of the domain name at issue whatsoever— is proven. Especially as to Policy ¶ 4(a)(iii), I find that the facts of this proceeding are similar in many respects to the facts found in Early Learning Centre Limited v. Kiansu Thoi, D2005-0692 (WIPO Aug 12, 2005) and that the reasoning of the learned panelist therein is largely apposite.
Furthermore, as for the preamble of Policy ¶ 4(b), it does not avail Complainant. Even if a complainant has attempted to establish a dialog with a respondent about that complainant acquiring a contested domain name and even if those attempts have been unanswered, without more, that does not amount to either or both of bad faith registration by that respondent or bad faith use by that respondent. (Even if Complainant’s unsupported contentions about unanswered acquisition attempts were proven, unanswered mail— whether email or paper mail— which is sent to a respondent and which is returned as undeliverable, might well provide an inference that the registration’s record contains false contact information; however, Complainant does not contend such return). Moreover, in this proceeding there basically is nothing more and there apparently is no permissible way for the Panel to ascertain more. In any event, the Complaint does not expressly or implicitly contend the sort of passive holding that was found in Telstra Corporation Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) and does not evidence such an attempted dialog or such a passive holding, and, even if the Complaint does contend such a passive holding, such a passive holding is not proven in this proceeding.
Panel Error #5: Disregarding a Contention Which Would Preclude Bad-Faith Registration
The Panel errs, by disregarding a Complaint contention which would cause the Panel to ascertain that the domain name at issue was registered prior to actual or anticipated trademark rights of Complainant and that would therefore preclude the Panel from at least directly ascertaining bad-faith registration by Respondent. In short, the Panel ignores a contention that would preclude satisfying Policy ¶ 4(a)(iii) at least to the extent that it would preclude satisfying one or more of Policy ¶¶ 4(b)(i), 4(b)(ii), or 4(b)(iii).
By Complainant’s citing the decision which it does in its contentions regarding Policy ¶ 4(a)(iii), Complainant apparently, as the saying goes, “hoists itself on its own petard.” That basically results from three factors.
Firstly, the decision cited by Complainant includes that the domain name registrar in that proceeding advised that the domain name registrar “record of registration commenced on July 15, 1997.” I take judicial notice of that.
Secondly, I take judicial notice that in 2006 the Registrar purchased the domain name registrar named in that proceeding.
Thirdly, Complainant apparently would have the Panel ascertain that the preamble and first sub-point of what I have set out as the first set of points of Complainant’s contentions regarding Policy 4(a)(iii), are true. That would apparently mean not only that Respondent and the respondent referred to in that cited decision are one in the same, but also that the domain name at issue and the domain name registration referred to in that cited decision are one in the same. Based on that, the domain name at issue would have been registered by Respondent slightly more than two years before what Complaint Appendix A shows as Complainant’s trademark first-use date of 2 September 1999. Moreover, in this proceeding there is no indication that at the time of that domain name registration, Respondent was aware of impending initial use of that trademark by Complainant or by Complainant’s predecessors in title. Therefore, the registering of the domain name at issue would not have been done for a bad-faith purpose in relation to Complainant, and so would preclude the Panel from at least directly ascertaining bad-faith registration by Respondent.
Rodney C. Kyle,
B.Sc., LL.B., C.Arb.; Panelist
Dated: 11 June 2007
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