X-SCREAM VIDEO PRODUCTIONS INC. v. IT Manager
Claim Number: FA1505001619522
Complainant is X-SCREAM VIDEO PRODUCTIONS INC. (“Complainant”), represented by Peter N. Mantas of Fasken Martineau DuMoulin LLP, Canada. Respondent is IT Manager (“Respondent”), represented by J.L. Lee Mullowney of Mullowney's Law Professional Corporation, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <videopages.info>, registered with pair Networks, Inc.d/b/a pairNIC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
HÉCTOR ARIEL MANOFF as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2015; the Forum received payment on May 14, 2015.
On May 15, 2015, pair Networks, Inc.d/b/a pairNIC confirmed by e-mail to the Forum that the <videopages.info> domain name is registered with pair Networks, Inc.d/b/a pairNIC and that Respondent is the current registrant of the name. pair Networks, Inc.d/b/a pairNIC has verified that Respondent is bound by the pair Networks, Inc.d/b/a pairNIC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@videopages.info. Also on May 21, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 5, 2015.
Complainant’s Additional Submission was received and determined to be complete and timely on June 9, 2015.
On June 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1- The Complainant is a corporation incorporated pursuant to the laws of Canada with offices in Ottawa, Ontario.
2- Complainant develops, designs and markets web applications and web services, among other services.
3- In 2007 Complainant began to work on a web directory that would be called “Videopages.”
4- Complainant is the owner of the VIDEOPAGES trademark in Canada since 2007, and it was the first company to register <videopages.info> on October 4, 2009.
5- Respondent was involved in a service agreement with Complainant since February 20, 2008 to prepare the <videopages.com> website, provide “middleware” development for the site and to manage web hosting set-up.
6- Respondent was designated on July 31, 2013 as an “IT Manager”.
7- Respondent renewed the <videopages.info> domain name in his own name.
8- Complainant registered ownership of the <videopages.com>, <videopages.mobi>, <videopages.net>, and <videopages.ca> domain names.
9- Complainant argued that Respondent has acted in bad faith by seeking valuable consideration for transfer of the <videopages.info> domain name in excess of out-of-pocket costs per Policy ¶ 4(b)(i).
10- Complainant argued that Respondent has disrupted Complainant’s business under Policy ¶ 4(b)(iii) by shutting down the website located at the disputed domain name through which Complainant operates its business.
11- Complainant argued that Respondent has registered and used the disputed domain name with actual and/or constructive knowledge of the VIDEOPAGES mark and Complainant’s rights in the mark per Policy ¶ 4(a)(iii).
B. Respondent
1- Respondent argues that this case should not be decided by the Panel, taking into account that a preexisting legal proceeding between the parties was commenced in Ontario’s Superior Court in Canada.
2- Respondent requests that this case should be terminated since the ruling of the Canada Court will take precedence over the present arbitration.
3- Respondent argues that all parties are located in Ontario, that the disputed domain name is an intangible property of the Respondent’s business and that there is a presumption that the dispute has a real connection with Ontario.
4- Respondent argues that Complainant has not given valid reason to render a non-binding advisory opinion so the Panel should exercise its discretion to terminate this proceeding.
3- If not dismissed, Respondent requests the Panel to implement a stay of proceedings to allow Respondent reasonable time to amend pleadings in Ontario’s Superior Court so as to expand their declaratory relief to include the <videopages.info> domain name.
4- Respondent argues that developed the Complainant’s “videopages” website and located it on a high performance web server environment.
5- Respondent states that Complainant was in financial arrears to their web server hosting company, Pair Networks, which was demanding payment and threatening to terminate their web services.
6- Respondent argues that as part of an agreement with Complainant, Respondent would purchase a new web server environment in which the website would be hosted and would register various “videopages” domains which would be later transferred to Complainant once it paid Respondent.
7- Respondent argues that Complainant failed to make the payment so Respondent, as per the terms of the agreement, kept the property of the domain names.
8- Despite the disputed domain is not expressly mentioned in the court action, Respondent argues that as well as other unnamed items in dispute, is constructively included in the claim.
The Panel notes the creation date of the <videopages.info> domain name is July 31, 2013.
C. Additional Submissions
Complainant.
1- Complainant argues that the other court proceeding before the Ontario Superior Court of Justice does not address the issue of the disputed domain name: there is no mention to it and the proceeding does not seek any relief to the disputed domain name.
2- Complainant states that the disputed domain name was in its name between October 4, 2009 and July 31, 2013.
3- Complainant states that Respondent registered the disputed domain name surreptitiously under his personal name without authorization from Complainant.
4- Complainant argues that the disputed domain name is only being withheld in the hope of using it as leverage in a dispute involving alleged unpaid invoices.
5- Complainant states that the registration and withholding is in bad faith.
6- Complainant argues that the discovery of the wrongful registration of the disputed domain name was on April 14, 2015 and that the court action predates it.
7- Complainant argues that the Registrar is located in Pennsylvania.
8- Complainant argues that the case should not been suspended or terminated since the court action includes much larger issues than the specific domain names. The suspension or termination would leave Complainant without an expeditious and cost-effective recourse to regain control of its domain name.
Respondent.
The additional submission filed by Respondent was received after the deadline for submissions; however, the Panel has decided to consider its content.
1- Respondent states that it is not true that the disputed domain name was in the name of Complainant from October 2009 to July 2013.
2- Respondent argues that Respondent purchased the first available domain name with Complainant’s consent and under the terms of the agreement between them.
Preliminary Issues
Business/Contractual dispute outside the scope of the UDRP
Respondent contends that it has a dispute with Complainant before the Superior Court of Justice in Ottawa, Ontario, Canada and that the ownership of the <videopages.info> domain name is merely a part of that court proceeding and also it is part of the disputed terms of a contractual agreement between the parties. While the disputed domain name is not expressly included in the claims, Respondent contends that the set of claims is non-exhaustive and should be constructively considered to include the <videopages.info> domain name as part of Complainant’s claim.
Complainant affirms that “Complainant and Respondent are parties to ongoing litigation in proceedings before the Ontario Superior Court of Justice related to claims for breach of contract, good faith obligations, fiduciary duty, confidence and trust, intimidation, conversion, trespass to goods, misappropriation of property, replevin, detinue, infringement of copyright and unjust enrichment” but that the disputed domain name is not part of the claim.
The Panel has discretion to determine whether or not it has jurisdiction over this dispute, and taking into account that the disputed domain name is not expressly mentioned in the court action submitted before the Ontario Superior Court, this Panel finds that the dispute can be decided under the UDRP which is the appropriate remedy and, as stated by Complainant, an expeditious and cost-effective recourse to regain control of its domain name, as long as the three elements of the policy are complied. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
Factual Findings
X-Scream Video Productions Inc. develops, designs and markets web applications and web services, among other services. Some of its websites are located at <videopages.com>, <videopages.mobi>, <videopages.net>, and <videopages.ca>. X-Scream Video Productions Inc. owns the trademark registration for VIDEOPAGES in Canada.
IT Manager renewed the registration of <videopages.info> domain name in 2013 under its name while being involved in a service agreement with Complainant since 2008 related to the “videopages” websites.
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."
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 has demonstrated rights in the VIDEOPAGES mark as it has worked on a web directory bearing the mark and registered the VIDEOPAGES mark with the Canadian Intellectual Property Office (Reg. No. TMA 696,977, registered September 20, 2007). Panels have agreed where a trademark registration exists with a relevant governmental authority, Policy ¶ 4(a)(i) rights exist. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Accordingly, the Panel finds that Complainant’s registration with the CIPO appropriately confers rights in the VIDEOPAGES mark under Policy ¶ 4(a)(i).
This Panel finds that Respondent’s <videopages.info> domain name is identical to the mark as it merely adds the “.info” generic top-level domain (“gTLD”) suffix. See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“). Therefore, this Panel concludes that Respondent’s <videopages.info> domain name fails to overcome Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests on the <videopages.info> domain name, since it misappropriated the domain name when he knowingly and without authorization renewed it in his own name.
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant). The Panel agree that Respondent has failed Policy ¶ 4(c)(ii). See Compl., at Attached Exs. 2-4 and 6 (WHOIS for domain names owned by Complainant incorporating the VIDEOPAGES mark).
The WHOIS information for the disputed domain name lists “IT Manager” as the registrant of the disputed domain name and this Panel finds that Respondent is not commonly known by the disputed <videopages.info> domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
This Panel concludes that Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) so the burden shifts to Respondent.
Respondent has not provided evidence to prove Respondent has legitimate interest in the disputed domain name.
In addition, Respondent has not actually made an active use of the disputed domain name and this Panel finds that Respondent has not provided any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name which indicates a lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. Previous panels have agreed with this argument. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
This Panel also finds that Respondent’s failure to make an active use of the <videopages.info> domain name demonstrates a lack of a bona fide offering of goods and services, and a lack of a noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent renewed the disputed domain name when he knew it belonged to Complainant since Respondent agreed to have been involved in a service agreement with Complainant since 2008 related to the “videopages” websites.
This Panel finds that the renewal was done in bad faith since Respondent had actual notice of Complainant's rights in the VIDEOPAGES mark prior to registration of the domain name.
In addition, this Panel finds that Respondent has disrupted Complainant’s business under Policy ¶ 4(b)(iii) by shutting down the website located at the disputed domain name through which Complainant operates its business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. This Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). While the disputed domain name was a part of a network of websites from which Complainant operates its business, and because Respondent has appropriated the <videopages.info> domain name in a manner which has adversely affected Complainant’s business, the Panel agrees that Policy ¶ 4(b)(iii) regarding bad faith is evident.
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <videopages.info> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: 06/25/2015
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