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1. Parties and Contested Domain Name
The Complainant, CHUM Limited, owns and
operates 28 radio stations, seven local independent television stations
and 16 specialty television channels as well as an environmental television
division. Respondent is a web site developer. The contested domain names
are CHUM.COM and MUCH.COM.
2. Procedural History
The electronic version of the Complaint form
was filed on-line through eResolution’s Website on August 16. The hardcopy
of the Complaint Form and annexes were received on August 16. Payment
was received on August 16.
Upon receiving all the required information,
eResolution’s clerk proceeded to:
- Confirm the identity of the Registrar for the
contested Domain Name;
- Verify the Registrar’s Whois Database and confirm
all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved
to an active Web page;
- Verify if the Complaint was administratively
compliant.
This inquiry led the Clerk of eResolution to
the following conclusions: the Registrar is Network Solutions, the Whois
database contains all the required contact information, the contested Domain
Name resolves to an active Web page and the Complaint is administratively
compliant.
The complaint, official notification and all
the annexes were sent via registered mail with proof of service, to the
respondent. According to the Canada Post tracking system, all were
delivered.
On September 10, the Respondent requested an
extension of 5 days that was granted by the Clerk’s Office.
On September 21, 2001, the Respondent submitted,
via eResolution Internet site, his response. The signed version of
the response was received on September 21, 2001.
On October 01, 2001, the Clerk’s Office contacted
Anne Wallace (President Panel), Lynda Braun and Michael Froomkin, and requested
that they act as panelists in this case.
On October 01, 2001, Anne Wallace, accepted to
act as a lead panelist in this case and filed the necessary Declaration
of Independence and Impartiality.
On October 01, 2001, Michael Froomkin, accepted
to act as a panelist in this case and filed the necessary Declaration of
Independence and Impartiality.
On October 03, 2001, Lynda Braun, accepted to
act as a panelist in this case and filed the necessary Declaration of Independence
and Impartiality.
On October 03, 2001, the Clerk’s Office forwarded
a user name and a password to the panelists, allowing them to access the
Complaint Form, the Response Form, and the evidence through eResolution’s
Automated Docket Management System.
On October 03, 2001, the parties were notified
that Anne Wallace, Lynda Braun and Michael Froomkin had been appointed
and that a decision was to be, save exceptional circumstances, handed down
on October 17, 2001.
Upon review of the submissions of Complainant
and Respondent, the Penal determined that additional information was required
from Complainant and Respondent. This information was requested and the
time for rendering the decision in this matter was extended due to this
circumstance in order to give the parties time to respond to the Panel’s
inquiry. Responses were received by the Panel on October 23, 2001.
3. Factual Background
Complainant, CHUM Limited, is one of Canada's
leading media companies and media content providers based in Toronto, Canada.
CHUM Limited owns and operates 28 radio stations, seven local independent
television stations, 16 specialty television channels as well as an environmental
music distribution division. It has had a particularly high profile in
Toronto for over twenty years because of its very popular radio and television
stations including CHUM FM, City TV and Much Music. Two of these stations,
Much Music and City TV, broadcast from a highly visible studio on Queen
Street West in Toronto, which attracts tourists from across Canada and
around the world.
Complainant uses the names and marks CHUM and
MUCH for its telecommunications and broadcasting services and in relation
to a wide range of products and services, including on-line services. CHUM
Limited has been offering broadcasting services under the mark and name
CHUM for over forty years and has been using the mark and name MUCH MUSIC
since August 31, 1984.
A search in the Canadian Trademark Database shows
twenty (20) registered trade-marks for MUCH and related marks and twenty
five (25) registered trade-marks for CHUM and related marks.
MUCH is also commonly used as an abbreviation
of MUCHMUSIC by the Canadian public and in other countries where MUCHMUSIC
is aired. The “MUCH” portion of the mark is emphasized in advertising and
in the use of “MUCH” with other words.
The use of the trade names and trade-marks CHUM
and MUCH is an integral part of the Complainant's business and fundamental
to its financial success.
The CHUM and MUCH trade-marks are the subject
of numerous Canadian trade-mark registrations as noted above, including,
among others, CHUM No. TMA124,055; CHUM SATELLITE NETWORK No. TMA475,559;
MUCH & Design No. TMA498,992; MUCHMUSIC ONLINE No. TMA479,213; CHUM
Design No. TMA255,192; CHUM No. TMA156,218; MUCHMUSIC No. TMA324,130; and
MUCHMUSIC & Design No. TMA497,952. The trade-mark CHUM was first registered
on October 20, 1961 to the Complainant. The trade-mark MUCHMUSIC was registered
on February 27, 1987 and the trade-mark MUCH & Design was registered
on August 28, 1998, to the Complainant.
Complainant, CHUM Limited, registered the domain
name MUCHMUSIC.COM on July 1, 1994 and CHUMLIMITED.COM on September 3,
1997. The CHUMLIMITED.COM web site receives an estimated 900,000 page views;
178,000 visitor sessions; and 115,000 unique visitors each year. The MUCHMUSIC.COM
web site receives an estimated 90,000,000+ page views; 14,000,000 visitor
sessions; and 7,900,000 unique visitors each year.
The CHUMLIMITED.COM web site provides information
about the business of CHUM Limited and provides an overview of their numerous
radio and television stations and other broadcasting services. The MUCHMUSIC.COM
web site displays information about contemporary music and music videos,
contests, programming information and schedules. It also offers a listening
lounge and sells ancillary merchandise bearing the trade-mark MUCH MUSIC.
The two websites are linked, creating an obvious association between the
two.
The domain name registrants for CHUM.COM and
MUCH.COM are Kaschum café and Much eRendezvous respectively. As
of May 30, 2001 they had the same address of 7-2 Manor Road East, Toronto,
Ontario, Canada. The administrative and billing contact for the web sites
is Kasra Meshkin of TelAngelix Communications Inc., of the same address.
The domain names were registered on May 21, 1996 and renewed on May 12,
2001.
Respondent has since changed the address for
Much eRendezvous to make the sites appear unrelated. The new address is
69 Glen Cameron, Thornhill, Ontario, L3T 1N8. However, this is the same
address that appears when a Canada 411 search is done for TelAngelix Communications
Inc. TelAngelix Communications Inc. is a corporation recently registered
under the laws of Ontario for which Kasra Meshkin is listed as the sole
officer, holding the titles of both president and secretary, at the address
7-2 Manor Road East. The registered office address is 7-2 Manor Road East,
Toronto, Ontario (hereinafter the "Respondent"). The business corporation
was registered on November 21, 2000.
There are no business names existing under the
corporation profile. Further, there is no record of any business name registrations
for either Kaschum Café or Much eRendezvous.
Respondent is a web site developer. In November,
1995,he opened eRendezvous, the first operational cyber cafe in Toronto,
Canada. In connection with the cafe, he registered two domain names, MUCH.COM
and CHUM.COM on May 21, 1996 to use for web sites offering chat services
to users. Chat services have been offered at those domain names ever since.
The eRendezvous cafe closed in late 1996, but Respondent continued to operate
the on-line chat sites. Respondent has never offered either domain name
MUCH.COM or CHUM.COM for sale to Complainant or to any other party.
The MUCH.COM and CHUM.COM chat sites are now
hosted by Respondent’s company, Telangelix.com. If there is a server error,
or if a user mistypes a URL hosted on the Telangelix server, an error page
is displayed with the URL, htt://www.telangelix.com/clear.
4. Parties’ Contentions
Complainant’s Contentions
Copy or Similarity
Complainant, CHUM Limited owns both word trade-marks
and design marks for CHUM and MUCH in Canada, where Respondent resides.
Respondent’s domain names MUCH.COM and CHUM.COM are clearly identical or
confusingly similar to the trade names and trade-marks of the Complainant,
including CHUM, MUCH, MUCHMUSIC, and others.
The confusing similarity is apparent from a simple
comparison of the Complainant’s trade names and trade-marks with the disputed
domain names, which use the word trade-marks CHUM and MUCH and simply add
a .com on the end.
Further, the Respondent’s domain names MUCH.COM
and CHUM.COM are confusingly similar to the domain names registered by
the Complainant, specifically MUCHMUSIC.COM and CHUMLIMITED.COM.
The World Intellectual Property Organization
(WIPO) decision of an administrative panel in World Wrestling Federation
Entertainment Inc. v. Michael Bosman, WIPO Case No. D99-0001, held that
it was "clear beyond question" that worldwrestlingfederation.com is confusingly
similar to the mark WORLD WRESTLING FEDERATION, where the domain name and
mark differ only in spacing and addition of .com.
Similarly, in another WIPO administrative Panel
Decision, the Panel concluded that the domain name ATT2000.com was confusingly
similar to the “ATT” and “AT&T” trademarks. The Panel rejected the
Registrant’s contention that the absence of the ampersand sufficiently
distinguished her domain name from these marks. The Panel’s overall impression,
deciding it as a “jury question”, was that there was a real danger of confusion.
See AT&T Corporation v. Tala Alamuddin, Case No. D2000-0249 (May 18,
2000). By applying the same test, persons who have had dealings with CHUM
Limited or MuchMusic could be confused into thinking that MUCH.COM and
CHUM.COM are sites owned and maintained by CHUM Limited.
Illegitimacy
Respondent is not a licensee of the Complainant
and has no rights or legitimate interest in the domain names MUCH.COM and
CHUM.COM.
Respondent’s business using the name TelAngelix
Communications Inc. is very unclear, based on information disclosed on
the web sites. When the URLs for MUCH.COM and CHUM.COM are typed into a
web browser, they are automatically linked to the web site for TelAngelix
Communications Inc. at TELANGELIX.COM. That web site is blank for the most
part, except for a link to a mission statement for the company, TelAngelix
Communications Inc. Neither website CHUM.COM or MUCH.COM refer to the names
Kaschum Café or Much eRendezvous. Therefore, the MUCH.COM and CHUM.COM
web sites are simply a means by which internet traffic is diverted to the
TelAngelix web page.
The sole purpose of the Respondent’s registration
of the domain names CHUM.COM and MUCH.COM is for the deliberate purpose
of trading on the goodwill associated with the well known marks and names
CHUM and MUCH and for diverting traffic from the legitimate web sites owned
by CHUM Limited.
The lack of legitimate interests of the Respondent
is highlighted by the fact that the Respondent has registered two related
marks of the Complainant’s, which are confusingly similar to the Complainant’s
websites and domain names, which are also linked.
There is an obvious connection between the Respondent’s
domain names CHUM.COM and MUCH.COM and the trade names and trade-marks
of the Complainant CHUM Limited, including CHUM and MUCH as well as the
Complainant’s domain names CHUMLIMITED.COM and MUCHMUSIC.COM.
The domain names MUCH.COM and CHUM.COM do not
correspond to any legitimate business name or business interests of Respondent.
Bad faith
On information and belief, Complainant says Respondent
registered the domain names at issue in an attempt to attract, for commercial
gain, Internet users to Respondent’s web site by creating a likelihood
of confusion with Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s web site, products, and services.
The deliberate registration of two marks associated
with the Complainant as domain names, under two allegedly different registrant
names but with the same administrator, contact name and address reveals
the dishonest and bad faith nature of the Respondent’s activities.
Until May, 2001, when CHUM.COM and MUCH.COM were
typed into a browser, no page came up. Further, as of June 6, 2001 the
MUCH.COM and CHUM.COM web sites were empty except for a single advertising
banner with a link to another web site, which offered photos and screen
savers for download. There was no connection between the web sites and
the domain names MUCH.COM and CHUM.COM.
Solicitors for the Complainant sent a cease and
desist demand letter on June 6, 2001 to Kasra Meshkin, the administrative
and billing contact for the Registrants. The letter informed him of the
Complainant’s right to the trademarks CHUM and MUCH in Canada and requested
that Kaschum Café and Much eRendezvous give up their claim to the
contested domain names.
After receiving the cease and desist letter,
the web sites were altered and, as of on or about July 17, 2001 began to
offer free private chat networks with links to downloads of photos and
screensavers. There is no legitimate connection between the domain names
CHUM.COM and MUCH.COM and the internet chat rooms provided on the site.
Despite alteration of the web sites, the typing in of MUCH.COM and CHUM.COM
still links to TELANGELIX.COM.
TelAngelix Communications Inc. and the Respondent
have no relation whatsoever to the trade names and trade-marks MUCH and
CHUM owned by the Complainant in Canada and used by the Complainant in
association with its business in Canada since 1984 and 1961, respectively.
The obvious connection between the domain names in issue and the Complainant’s
business shifts the onus on the Registrant to show it has a legitimate
interest and the lack of bad faith.
The Respondent deliberately sought to register
the domain names in question specifically for the purpose of trading on
the goodwill attaching to Complainant's trade names and trade-marks MUCH
and CHUM. Given the high number of visitors to the Complainant’s web sites,
chumlimited.com and muchmusic.com, there is strong reason to believe the
Registrant is merely diverting traffic intended for Complainant to the
Registrant’s telangelix.com web site, by using the domain names CHUM.COM
and MUCH.COM as links.
The registered letter containing the cease and
desist letter was returned unclaimed. There was no answer at the fax number
listed on the WHOIS database. Complainant was able to reach the Respondant
by email. A response was received from the Respondent via email on June
6, 2001, in which the Respondent refused to take any action despite being
advised of the Complainant’s trade-mark rights, of which the Respondent
was undoubtedly aware. Respondent categorically denies the rights of Complainant
in the names and marks and states that “This is a solicitation to me and
since you do not have the removal instruction, please stop e-mailing me
with threats on taking legal action. It has been done before and I WON.”.
As was stated in WIPO Decision Stella D'oro Biscuit
Co. Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012, bad faith
can be inferred from circumstantial evidence, including the fact that the
domain name has not been used in commerce by Respondent. As in this case,
it is manifestly fair to infer that the real business of Respondent is
to acquire the domain name and sell it for a profit.
In addition to the failure to use the domain
name for a bona fide offering of goods and services, Respondent is also
not known by the domain name and is not making a legitimate or fair use
of the domain name. These circumstances, taken together, permit the Arbitration
Panel to determine that the domain name has been registered in bad faith
and is being used in bad faith by Respondent, as was found in the decision
in WIPO Case No. D2000-0032 between Nabisco Brands Company v. The Patron
Group Inc.
Respondent’s Contentions
Copy or Similarity
Respondent does not dispute that CHUM.COM is
identical or similar to Complainant's trademark for CHUM. None of Complainant's
marks for MUCH, however, are identical or confusingly similar to MUCH.COM.
Moreover, Complainant does not have enforceable rights under the policy
to the only trademark for MUCH that is arguably similar because Respondent's
registration date for MUCH.COM precedes the date of Complainant's trademark
registration for that mark.
Respondent registered the disputed domain name
MUCH.COM on May 21, 1996. While Complainant has identified numerous
trademarks incorporating the common word MUCH, only one can credibly be
argued to be identical or confusingly similar to MUCH.COM (MUCH & Design
- Reg. No. TMA498,992). All of the other marks are clearly different
as they incorporate words which make them very distinct from the mere common
word “much.”
The other marks identified in the Complaint are:
MUCH MORE MUSIC (DESIGN), MUCHAXS, MUCHCOMEDY, MUCHCOUNTRY, MUCHDANCE,
MUCHDANCE & DESIGN, MUCH DANCE, MUCHEAST, MUCHLAUGHS, MUCHMEGAHITS,
MUCHMOREMUSIC, MUCHMUSIC COUNTDOWN, MUCHMUSIC NETWORK, MUCHMUSICONLINE,
MUCHMUSICINTERACTIVE, MUCHWEST, TOOMUCH4MUCH. Because “much” is a common
word, it is a weak mark. Where “the common element between [the] conflicting
marks is a word that is weak . . . [because it ] is in common use,”
there is unlikely to be confusion. McCarthy on Trademarks, §
23.15[6] (1995).
With respect to the trademark for MUCH &
Design, the mark incorporates the word “MUCH” in stylized text, with a
parallelogram border superimposed over a globe, with the words “THE NATIONS
MUSIC STATION,” appearing at the bottom. This design mark is certainly
not identical to MUCH.COM, nor is it confusingly similar, particularly
because MUCH is a common weak word. McCarthy, supra.
Moreover, the registration date for the MUCH
& Design trademark is August 24, 1998, more than two years AFTER Respondent
registered the domain name MUCH.COM. A Complainant does not have
enforceable rights under the UDRP to a trademark that is issued after the
registration date of a domain name. John Ode d/ba ODE and ODE - Optimum
Digital Enterprises v. Intership Limited, No. D2001-0074 (WIPO May 1, 2001)
(“We are of the unanimous view that the trademark must predate the domain
name.”); Business Architecture Group, Inc. v. Reflex Publishing, Case No.
97051 (NAF June 5, 2001)(“the complaining party must have trademark rights
before the domain name in dispute was registered”).
Accordingly, this Panel should find that Complainant
does not have a trademark, which is identical or confusingly similar to
the disputed domain name MUCH.COM, or one that is enforceable under the
UDRP, and deny the Complaint.
Rights or Legitimate Interest
Complainant must prove that Respondent has no
rights or legitimate interest in the name. Paragraph 4(c) of the Policy
lists three circumstances that can demonstrate a registrant’s rights or
legitimate interest in the disputed domain name:
(i) 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;
(ii) you (as an individual, business or other
organization) have been commonly known by the domain name, even if you
have acquired no trademark or service mark rights;
(iii) You are making a legitimate noncommercial
or fair use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark.
Respondent, a web site developer, has used both
MUCH.COM and CHUM.COM in connection with web sites offering chat services
to users for over 5 years. In November 1995, Respondent opened eRendezvous,
the first Internet café in Toronto, Ontario, Canada. Print-outs
of selected web pages from Respondent’s original eRendezvous web site were
filed in evidence. In connection with the café, Respondent
operated two chat sites, Much eRendezvous chat and the Kaschum Café
Chat Line, for which it registered the domain names MUCH.COM and CHUM.COM
on May 21, 1996. While the eRendezvous Café closed in late 1996,
Respondent continued to operate the chat sites.
It is well established that use of a domain name
for a web site constitutes use in connection with a bona fide offering
of goods or services, pursuant to paragraph 4(c)(i). CHF Industries, Inc.
v. Domain Deluxe, Case No. 97532 (NAF July 26, 2001); IG Index PLC v. Index
Trade, D2000-1124 (WIPO Oct. 16, 2000); Asphalt Research Technology, Inc.
v Anything.com, Case No. D2000-0967 (WIPO Oct. 10, 2000). Respondent plans
further development of these sites in the future. However, the UDRP
does not place objective requirements on the extent of development required
to establish a respondent’s legitimate interest. As the Panel in
Penguin Books Ltd v. The Katz Family and Anthony Katz Case No. D2000-0204
(WIPO May 20, 2000) explained:
Any attempt to apply any objective minimum standards
for development could well impose a significant economic burden on innocent
registrants as a precondition of holding their domain names.
Moreover, both disputed domain names, MUCH AND
CHUM are common generic words, with very substantial third party use.
The principle that the mere ownership of a common
word domain should, in and of itself, establish the owner’s rights and
legitimate interest has been recognized by several ICANN panels.
As one such panel explained:
Where the domain name and trademark in question
are generic-and in particular where they comprise no more than a single,
short, common term-the rights/interests inquiry is more likely to favor
the domain name owner. The ICANN Policy is very narrow in scope; it covers
only clear cases of “cybersquatting” and “cyberpiracy,” not every dispute
that might arise over a domain name. See, e.g., Second Staff Report on
Implementation Documents for the Uniform Dispute Resolution Policy (Oct.
24, 1999).
Shirmax Retail Ltd. v. CES Marketing, Inc., Case
No. AF-0104 (e-Resolution March 20, 2000) (THYME.COM).
While Respondent has never offered to sell either
disputed domain name to any party, underscoring the limited protection
afforded under the UDRP to common word trademarks, a legitimate interest
is even established where a Respondent’s only purpose in registering a
common word domain name is for resale. Newstoday Printers and Publishers
(P) Ltd. v. InetU, Inc., Case No. D2001-085 (WIPO Mary 23, 2001); Audiopont,
Inc. v. eCorp, Case No. D2001-0509 (WIPO June 14, 2001); Kis v. Anything.com
Ltd., Case No. D2000-0770 (WIPO Nov. 20, 2000); Allocation Network GmbH
v. Steve Gregory, Case No. D2000-0016 (WIPO March 24, 2000)).
Complainant implies that the use of the Disputed
Domains is illegitimate because Respondent “is not a licensee of the Complainant.”
However, it is patently absurd for Complainant to allege that anyone who
uses the common words CHUM or MUCH requires a license from Complainant.
Nevertheless, A Complainant’s consent to Respondent’s use of a domain name
is not an element under the UDRP.
Complainant is simply incorrect that MUCH.COM
and CHUM.COM are merely redirected, or in Complainant’s words, “diverted,
to Telangelix.com. To the contrary, the two chat sites have been
in continuous operation for five years. They are simply hosted by
Telangelix.com, which is also owned by Respondent. Even if this Panel were
to find that these common word domain names were redirected to another
site owned by Respondent, it would not delegitamize Respondent’s interest.
Several decisions have held that the use of a domain name “for the purpose
of redirecting visitors to a different site” constitutes a legitimate use
of the name. Shirmax Retail Ltd. v. CES Marketing, Inc., Case No. AF-0104
(e-Resolution March 20, 2000); Etam, plc v. Alberta Hot Rods, Case No.
D2000-1654 (WIPO Jan. 31, 2000); Drew Bernstein and Kill City d/b/a Lip
Service v. Action Advertising, Inc., Case No. D2000-0706 (WIPO Sept.
28, 2000).
Accordingly, because CHUM.COM AND MUCH.COM incorporate
only very common generic words in the English language, and because Respondent
has used the disputed domain names to offer Internet chat services to users,
this Panel should find that Respondent has established its rights and legitimate
interest in the Disputed Domains, and deny the Complaint.
Bad Faith
Complainant must show that Respondent registered
and used the disputed domain names in bad faith. The Policy identifies
four circumstances that may constitute evidence of bad faith registration
and use:
(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.
At the outset, Respondent could not have registered
MUCH.COM with bad faith because this domain name was registered on May
21, 1996, more than two years prior to the registration date of Complainant’s
mark for MUCH & Design (No. TMA498992), which is August 24, 1998.
This trademark is the only trademark owned by Complainant which is even
close to being similar to MUCH.COM. Not only did Complainant not own the
MUCH & Design trademark at the time Respondent registered MUCH.COM,
Complainant did not even apply for the MUCH & Design trademark until
October 29, 1996, five months AFTER Respondent registered MUCH.COM. It
is well established that a Complainant cannot meet its burden of proving
bad faith registration of a domain name which was registered prior to a
trademark application.
There are ample authorities supporting the view
that a trademark that did not exist at the time the disputed domain name
was registered cannot serve as the basis for a claim under the ICANN Policy,
since it is impossible for the domain name to have been registered in bad
faith.
John Ode d/ba ODE and ODE - Optimum Digital Enterprises
v. Intership Limited, Case No. D2001-0074 (WIPO May 1, 2001)(emphasis added).
While Complainant may argue that it had a common
law trademark for MUCH that preceded Respondent’s registration of MUCH.COM,
common law rights in a common generic term cannot provide its holder with
trademark rights under the UDRP, absent proof of distinctiveness.
Business Architecture Group, Inc. v. Reflex Publishing. Complainant
has provided no evidence whatsoever of the distinctiveness of the common
word trademark MUCH prior to the registration of MUCH.COM. Complainant
states that MUCH is used as an “abbreviation” of MUCHMUSIC. This,
in and of itself, proves that Complainant uses MUCH in a wholly descriptive
manner, meaning “a lot” of music. Accordingly, because Complainant
had no trademark rights to MUCH, prior to the registration of MUCH.COM,
there can be no finding of bad faith registration on the part of Respondent.
Notwithstanding that there can be no bad faith
finding with respect to MUCH.COM because its registration date predates
Complainant’s trademark, there simply is no evidence, whatsoever, that
Respondent registered MUCH.COM or CHUM.COM for the purpose of selling,
renting or transferring them to Complainant; to prevent Complainant from
reflecting its trademark in a domain name, together with a pattern of such
conduct; or to disrupt Complainant’s business or attract customer’s seeking
to purchase its products. In fact, the uncontroverted evidence is
that Respondent registered the Disputed Domains to use for web sites offering
chat services, and not for the purpose of selling them to Complainant,
to disrupt its business, to prevent it from incorporating its trademarks
in domain names, or to create consumer confusion or attract users seeking
Complainant’s products or services.
Where the mark is a common generic term, as it
is here, bad faith can only be proven if there is evidence that Respondent
registered the domain name “specifically to sell to the Complainant,” or
that the “value of [the] domain derived exclusively from the fame of [the]
trademark.” Ultrafem, Inc. v. Royal, Case No. 97682 (NAF Aug. 2, 2001).
None of this evidence is present here. There is no evidence, whatsoever,
that Respondent ever offered to sell either domain name to Complainant
or to any party. Nor can it be proven that the value of the Disputed
Domain derives exclusively from the fame of Complainant’s marks.
“MUCH” and “CHUM” are common generic words. There is substantial
third party uses of these generic words on the Internet as evidenced by
searches on the Internet search engine Google.com demonstrating there are
106,000 pages containing the common word “chum,” and 4.38 million pages
containing the common word “much.”
Complainant alleges merely, “on information and
belief,” that Respondent registered the domain names in an attempt to attract,
for commercial gain, Internet users to Respondent’s web site by creating
a likelihood of confusion Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s web site, products and services.
Complainant also alleges that Respondent registered the domain names to
trade off of Complainant’s goodwill. This mere speculation is not
supported by any evidence. There is nothing on Respondent’s web sites
that relates even remotely to Complainant or its products or services,
and no user arriving at either of Respondent’s web sites could conclude
that there is a relationship to Complainant.
Paragraph 4(b)(iv) requires evidence that Respondent
intended to create a likelihood of confusion, something that cannot be
proven by the mere registration of MUCH.COM and CHUM.COM, domain names
incorporating generic terms. In Canned Foods, Inc. v Ult. Search
Inc., No. FA 96320 (NAF Feb. 13, 2001) the Panel explained:
Where the domain name is a generic term, it is
difficult to conclude that there is a deliberate attempt to confuse. It
is precisely because generic words are incapable of distinguishing one
provider from another that trademark protection is denied them. There are
dozens of other enterprises that use the term "Grocery Outlet," therefore
one cannot conclude that Complainant must necessarily be the special target.
See also First American Funds, supra. (“To construe
4(b)(iv) without a requirement of direct action by the Respondent against
the Complainant would . . . [be] inconsistent with existing trademark principles
and with the limited language and scope of the Policy.”); Lumena s-ka zo.o.
v. Express Ventures LTD, Case No. 94375 (NAF May 11, 2000) (no bad faith
where domain name incorporates generic term, absent direct evidence that
Respondent registered the domain name with the intent of capitalizing on
Complainant’s trademark interest); Amana Company, L.P. v. Vanilla Limited,
Case No. D2001-0749 (WIPO Aug. 3, 2001)(“Because it is not a made-up word,
“Deep Freeze” does not impinge as a distinctive mark on the average person
in the same way as a made-up brand name (e.g. Coca-Cola) or a personal
name (e.g. McDonalds.”)).
Complainant argues that Respondent’s web sites
were modified subsequent to its receipt of the cease and desist letter.
To the contrary, Respondent has been offering chat services continuously
at both domain names since 1996. In any event, even if this Panel
were to find that these common word domain names were redirected to another
site owned by Respondent, this cannot serve as a basis for establishing
bad faith registration or use on the part of Respondent. See Shirmax
Retail Ltd. v. CES Marketing, Inc., Etam, plc v. Alberta Hot Rods; Drew
Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc..
Complainant argues that it should be inferred
that Respondent’s sole intent in registering the Disputed Domains was to
sell them. The simple fact, however, is that Respondent registered
two very common words. Much is word that means “a lot,” and Chum is another
word for “friend.” Moreover, the domain names have been used for
chat sites for over five years, and Respondent has never offered to sell
them to Complainant or to any party. If Respondent truly had intended
to sell the Disputed Domains to Complainant, it had ample opportunity over
the past years to make an offer or demand - but this never occurred.
The cases cited by Complainant in support of a bad faith finding are entirely
inapposite to the facts here. Stella D’oro Biscuit, Inc. v. The Patron
Group, D2000-0012, dealt not with a domain name incorporating a common
generic word, as is the case here, but with one wholly incorporating the
unique mark STELLA DORO. Similarly, Nabisco Brands Company v. The
Patron Group, D2000-0032, dealt with several domain names all incorporating
unique marks: wheatthins.com, wheatsworth.com, bettercheddars.com, harvestcrisps.com,
milk-bone.com. It is understandable why a panel would find bad faith
under those circumstances. But where the domain name incorporates
only a common word, bad faith cannot be established absent specific proof
of bad faith intent. See Ultrafem, Inc. v. Royal, supra., Amana Company,
L.P. v. Vanilla Limited, supra.
Complainant also argues that the fact it has
trademarks for both common words MUCH and CHUM indicates Respondent’s registration
of MUCH.COM and CHUM.COM intended to trade on Complainant’s goodwill.
However, Respondent has not registered any other domain name, such as MuchMusic.com
or ChumMusic.com, that would indicate it sought to capitalize on the goodwill
of Complainant, nor has Respondent placed any content on its web site that
relates in any way to Complainant. Moreover, Respondent registered
MUCH.COM before Complainant even filed for a trademark for MUCH and
design, so it is impossible for it to have been registered in bad faith.
Finally, Complainant points out that Respondent
did not comply with its cease and desist letters, implying that this is
evidence of bad faith. There is no requirement for a Respondent to
reply to a cease and desist letter, and Respondent’s inaction in this regard
cannot support a finding of bad faith. Eauto, L.L.C. v. Triple S. Auto
Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO. March
24, 2000). (“A domain name registrant has no obligation to respond to or
even receive demand letters”).
Accordingly, Complainant has not met its burden
of proving bad faith registration and use of the Disputed Domains and,
the Complaint must, therefore, be denied.
Other Grounds
The disputed domain names were both registered
on May 21, 1996. The first time that Complainant raised an issue
with Respondent’s registration of the Disputed Domain was with the filing
of this Complaint - more than five years later. With such an extraordinary
long period of time elapsing, this Panel should hold that Complainants’
claims are barred by the doctrine of laches. See Bank United Corp.
and Bank United v. BuildPro Communications, Case No. 95158 (NAF Hon. James
A. Carmody, dissenting). Judge Carmody noted that
Respondent registered the domain . . . nearly
three and one half years prior to the commencement of this proceeding .
. . . Complainants sat on its rights for too long to be entitled to relief
from this Panel. Such a delay of claim assertion constitutes the equivalent
of laches in the fast moving world of the Internet.
This Panel should, therefore, hold that Complainant
“sat on its rights for too long” to be afforded relief in connection with
the common words MUCH.COM and CHUM.COM, and the Complaint should be summarily
dismissed.
5. Discussion and Findings
Turning now to consideration of the issues, to
prevail, the Complainant must prove the following three elements:
(1) That the Respondent’s domain name 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 the domain name; and
(3) The Respondent has registered the domain
name and is using it in bad faith. (ICANN Policy, para. 4(a)).
The panel has carefully reviewed all the evidence
in this case and has also reviewed and considered the authorities cited
by Complainant and Respondent.
Element One
The purpose of this test is that the complainant
must prove that it has trademark rights in words similar to the disputed
domain name and is not making a spurious claim.
The Complainant's obligation to prove that it
would succeed in a
trademark infringement case against the Respondent
does not arise until
the second element of the test. In short, it
is not a requirement for the Complainant to prove at this point that the
Complainant has the exclusive rights to its trademark in relation to all
types of goods and services in all countries in the world. There is no
requirement that Respondent is infringing or may infringe those trademark
rights. For this test, it is irrelevant whether or not the Respondent knew
of the Complainant's trademark.
Respondent has conceded that the domain name
CHUM.COM is identical or confusingly similar to Complainant’s CHUM trademarks.
For reasons set out above, Respondent takes the position with respect to
the MUCH.COM domain name that it is not identical or confusingly similar
to Complainant’s marks which include the word MUCH and that the one mark
including only the word MUCH was applied for and registered after Respondent
obtained the MUCH.COM domain name. We have considered these submissions
and find that, notwithstanding that MUCH is a generic word, the domain
name is nevertheless confusingly similar to many of Complainant’s trademarks
including the word MUCH which were registered at the time Respondent obtained
the domain name.
Complainant succeeds on this element.
Element Two
Using the criteria set out in Para. 4(c) of the
ICANN Policy, we must consider whether the Respondent was using or preparing
to use the domain name or a name corresponding to the domain name in connection
with the bona fide offering of goods or services, or whether the Respondent
has been commonly known by the domain name within the meaning of the policy,
or whether the Respondent is making legitimate non-commercial or fair use
of the domain name, without intent for commercial gain to misleadingly
divert customers or to tarnish the trademark or service mark at issue.
We have carefully reviewed all the evidence with
respect to this point, and must find for Respondent. The uncontroverted
evidence is that Respondent has been using these two domain names, first
in relation to the eRendezvous Café and in relation to providing
Internet chat services for more than five years. While Complainant attempted
to demonstrate that this was not the case, the weight of the evidence favours
a finding that the Respondent has been legitimately using these domain
names for Internet chat services. Furthermore, the words CHUM and MUCH
are common usage words. Respondent has submitted, without contradiction,
that the word CHUM has been used in relation to the chat site as a term
meaning “friend”, and that the word MUCH has been used to indicate there
is much to talk about. These circumstances show that Respondent was using
these names in connection with the bona fide offering of services.
On the second element, therefore, we find for
Respondent.
Element Three
With respect to bad faith within the meaning
of the Policy (cited above), we find as follows:
a. There is no evidence before us that Respondent
acquired these domain names for the purpose of selling, renting or otherwise
transferring them to Complainant. To the contrary, based on the evidence
before us, Respondent acquired the names for legitimate business purposes
and has used them for more than five years. We also note that he has never
approached Complainant or anyone else with a view to selling the domain
names, nor is there any evidence that when he was approached about the
names, that he offered to sell them at that time.
b. There is no evidence before us to show that
Respondent has registered these domain names as part of a pattern. The
uncontroverted evidence before us is that these two domain names are the
only ones he has ever registered.
c. There is no evidence before us that Respondent
and Complainant are business competitors or that Respondent registered
the names to disrupt the business of Complainant.
d. There is nothing on Respondent’s web site
or in the manner in which he has been using the domain names that would
indicate that he is attempting to attract Internet users who by creating
a likelihood of confusion with Complainant’s marks.
The evidence before us does not otherwise establish
bad faith within the meaning and intent of the Policy. The fact that Respondent
registered two common words which happen to both be connected to Complainant’s
marks is not sufficient, in the absence of other cogent evidence, to establish
bad faith within the meaning of the Policy. Given these circumstances,
Complainant has failed to demonstrate the bad faith element in this case.
6. Conclusions
For all the foregoing reasons, we conclude that
the domain names CHUM.COM and MUCH.COM registered by Respondent are confusingly
similar to Complainant’s registered trademark rights, but that Respondent
has established rights or legitimate interests in the domain names, and
that Respondent’s domain names have not been registered and are not being
used in bad faith within the meaning of the ICANN Policy. Accordingly,
pursuant to the ICANN Policy and Rules, we direct that the Complaint by
CHUM Limited against Kashchum Cafe and Much eRendezvous (Kasra Meshkin)
is hereby dismissed.
7. Signature
Dated at Saskatoon, Saskatchewan,
this 26th day of October, 2001.
Anne M. Wallace,
Q.C., Panel President
Dated at New York, New York, this_________day
of October 2001.
Lynda M. Braun,
Co-Panelist
Dated at Miami, Florida, this__________
day of October 2001.
Michael Froomkin,
Co-Panelist
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