26th Oct 2001
ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
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:
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
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.
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.
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.
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 (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.
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.
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.
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.
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.
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.
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.
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.