Leonard Asper v. Communication X Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Leonard Asper v. Communication X Inc.

Case No. D2001-0539

1. The Parties

1.1 The Complainant is Leonard Asper, the President and Chief Executive

Officer of CanWest Global Communications Corp. (CanWest), c/o CanWest

Global Communications Corp., 31st Floor, TD Centre, 201 Portage Avenue, Winnipeg,

Manitoba, R3B 3L7, Canada.

1.2 The Respondent is, according to the BulkRegister.com Whois database,

Peter Zahoruk, President and Director, Communication X Inc., an Ontario corporation

with its head office at 3077 New Street, Burlington, Ontario, L7N 1M6, Canada.

2. The Domain Names and Registrar

2.1 The Domain Names are <leonardasper.com>, <leonardasper.net>,

and <leonardasper.org>.

2.2 The Domain Names were registered with BulkRegister.com, Inc., 7

East Redwood Street, Baltimore, MD 21702, and U.S.A. on August 4, 2000.

3. Procedural History

3.1 Complaint filed by hard copy received on April 12, 2001, and electronically

on April 19, 2001, naming Peter Zahoruk, President and Director, Communication

X Inc. as Respondent.

3.2 In accordance with Paragraph 3(b)(xiii), the Complainant agrees

to submit, only with respect to any challenge that may be made by the Respondent

to a decision by the Administrative Panel to transfer or cancel the domain name

that is the subject of this Complaint, to the jurisdiction of the courts where

the Respondent’s is located, as shown by the address given for the domain name

holder in the concerned registrar’s Whois database at the time of the submission

of the Complaint to the WIPO Center.

3.3 No legal proceedings have been initiated, as yet. (Rules, paragraph

3(b)(xi)).

3.4 As required by the Rules and the WIPO Supplemental Rules, payment

in the amount of USD 1,500 by bank draft has been sent with the initial Complaint

on April 12, 2001.

3.5 The Complainant agreed that its claim and remedies concerning the

registration of the domain name, the dispute, or the dispute’s resolution shall

be solely against the domain name holder and waives all such claims and remedies

against (a) the WIPO Arbitration and Mediation Center and Panelists, except

in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry

administrator, (d) the Internet Corporation for Assigned Names and Numbers,

as well as their directors, officers, employees, and agents.

3.6 A copy of this Complaint, together with the cover sheet as prescribed

by the Supplemental Rules, has been sent or transmitted by the Complainant to

the Respondent on April 10, 2001, by pre-paid courier with return

receipt requested to the address provided by the Respondent as specified above

pursuant to the Rules, paragraph 2(b).

3.7 A copy of this Complaint, has also been sent or transmitted by the

Complainant to the concerned registrar BulkRegister.com, Inc. on April 10, 2001,

by pre-paid courier with return receipt requested to the address provided by

the registrar as set out in Paragraph 9 of the Complaint.

3.8 On April 23, 2001, Respondent received a Notification of Complaint

and Commencement of Administrative Proceeding from the WIPO Arbitration and

Mediation Center (Center) informing the Respondent that an administrative

proceeding had been commenced by Complainant in accordance with the Uniform

Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999, (the Policy),

the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN

on October 24, 1999, (the Rules) and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

The Respondent submitted his Response electronically on May 13, 2001, and was

acknowledged by the Center as having received it on May 15, 2001.

3.9 The Complainant elected to have the dispute decided by a single-member

Administrative Panel.

3.10 The single Panel member, Cecil O.D. Branson, Q.C. submitted a

Statement of Acceptance and Declaration of Impartiality and Independence on

May 10, 2001, and was duly appointed in accordance with paragraph 15 of the

Rules. The Panel was required to forward its decision to the Center by June

11, 2001.

3.11 The Panel finds that it was properly constituted and appointed

in accordance with the Uniform Rules and WIPO’s Supplemental Rules.

4. Factual Background

4.1 The Complainant, Leonard Asper, is a businessman, the son of Izzy

Asper. Complainant’s father has achieved widespread public recognition throughout

Canada and internationally as a prominent businessperson, and is, or has been,

an accomplished lawyer, politician and philanthropist. Leonard Asper, a resident

of Winnipeg, Manitoba, while still under forty years of age, is apparently being

groomed to eventually succeed to the senior position in the family corporations

so successfully nourished and expanded by his father over many years. This Panel

was provided with extracts from 387 separate news articles found in four Canadian

newspapers, the Globe and Mail, the National Post, the Toronto

Star and the Winnipeg Free Press which include the name of the Complainant.

The first article dated December 4, 1984, describes him as the son of I.H. Asper,

a former provincial Liberal Leader and the chairman of that year’s national

Liberal campaign, and that he received $6,500 for work during the summer under

a contract with a Liberal cabinet minister from the Complainant’s area. They

conclude with press announcements by the Complainant, now President of the family

corporation, CanWest Global Communications Corp., concerning its financial affairs.

In between, these articles show the appointment of Leonard Asper as Director

of Corporate Development, CanWest Global Communications Corp. in 1994, at the

age of thirty-one, a position in which he remained for one and one-half years

when he was appointed Vice-President in charge of Corporate Development in mid-1996.

At the end of January 1997, along with his brother David, who was Vice-President

of Programming, he was appointed to the company’s Board of Directors, joining

their sister, Gail, who was already on the Board. The two sons were, in November

of that year, promoted into the executive ranks of the Corporation. They were

both in turn appointed Executive Vice-Presidents of the company. By November

1998, he was made Chief Operating Officer and in September 1999, he took over

as Chief Executive Officer and made Chairman of the Global Television Network

and other CanWest Global subsidiaries. On February 20, 2000, he is mentioned

in the Toronto Star as having taken "his maiden voyage in the national

spotlight" in connection with certain programming announcements made on

behalf of Global TV, which involved the acquisition of a further nine television

stations. On the April 1, 2000, the National Post printed that "Israel

‘Izzy’ Asper, Executive Chairman of CanWest Global Communications yesterday

pulled off one of the largest media deals in Canadian history, acquiring most

of the country’s Canadian daily newspapers from Conrad Black’s Hollinger Inc.

for $3.5-billion. Under the deal, Mr. Asper’s company is buying 149 newspapers,

including dailies in Victoria, Vancouver, Calgary, Edmonton, Regina, Montreal,

Ottawa and Halifax, along with half of the National Post. … ‘ It’s a

very exciting time,’ Leonard Asper said ‘I think it’s fair to say we are formally

in the business of building our print assets. I can’t deny that we won’t start

something up’." On September 29, 2000, under the heading "A Mogul

in the Making Forget that Fighting Style Izzy Asper Used to Build CanWest. As

His Son Takes Over, It’s A New Game, With New Plays". Complainant is described

as the chosen scion of a billionaire mogul - at thirty-six, the tenderest of

Izzy Asper’s three children, but the one who, by dint of desire and hard work,

has earned the reins to his father’s enormous and growing media empire. Yet,

his father remains Executive Chairman of the Board of Global Television, which

now has a significant international presence in New Zealand, Australia, and

Ireland. CanWest is also Canada’s largest daily newspaper publisher with fourteen

major metropolitan newspapers, over 120 community newspapers and a fifty- percent

interest in one of Canada’s national papers, the National Post.

4.2 The Complainant does not hold a registered trademark in his name,

but lays claim to rights in a common law trademark sufficient to ground an action

for passing off.

4.3 On August 4, 2000, the Respondent registered the following Domain

Names, which are the subject of this proceeding:

<leonardasper.com>

<leonardasper.net>

<leonardasper.org>

Collectively the Domain Names.

4.4 On or about August 5, 2000, CanWest received an e-mail from the

attorney on behalf of the Respondent.

"Please contact me so we can discuss my ownership of the domain names

of

<IzzyAsper.com>

<IzzyAsper.org>

<IzzyAsper.net>

<LeonardAsper.com>

<LeonardAsper.org>

<LeonardAsper.net>

Peter Zahoruk

(905) 333-9740"

4.5 The Complaint in this matter was filed in April 2001.

5. Parties’ Contentions

A. Complainant

5.1 Complainant contends that the Domain Names

<leonardasper.com>

<leonardasper.net>

<leonardasper.org>

are virtually identical to a common law mark to which the Complainant has rights

and that the Respondent’s use of the Domain Names in question infringes on Complainant’s

rights by confusing the public as to the origins of the

<leonardasper.com>

<leonardasper.net>

<leonardasper.org>

pursuant to the Policy, paragraph 4(a)(i).

5.2 Complainant contends that Respondent has no rights or legitimate

interests in the Domain Names

<leonardasper.com>

<leonardasper.net>

<leonardasper.org>

pursuant to the Policy, paragraph 4(a)(ii).

5.3 Complainant contends that Respondent registered and used the Domain

Names

<leonardasper.com>

<leonardasper.net>

<leonardasper.org>

in bad faith in violation of the Policy, paragraph 4(a)(iii).

B. Respondent

5.4 Although the Respondent has submitted a Response in accordance with

the Uniform Domain Name Dispute Resolution Policy ("Policy"), this

does not address, specifically, the entitlement of the Complainant to assert

a common law mark to which he has rights under the Policy. Nevertheless, this

still must be proved to the satisfaction of the Panel.

5.5 The Respondent claims to hold a legitimate interest in the acquisition

of the disputed Domain Names.

5.6 The Respondent denies any bad faith in regard to his application

for and his use of the Domain Names

<leonardasper.com>

<leonardasper.net>

<leonardasper.org>

5.7 It is unclear whether the Respondent disputes the jurisdiction of

this Administrative Panel or not as it appears in his Response that jurisdiction

is challenged, while later, he expresses a wish to resolve the matter with a

single Administrative Panelist.

C. No Other Submissions

5.8 The Panel has not received any other requests from Complainant or

Respondent regarding further submissions, beyond the Complaint, waivers or extensions

of deadlines, and the Panel has not found it necessary to request any further

information from the Parties.

6. Discussion and Findings

6.1 The Complaint was submitted on the basis of the provisions of a

Registration Agreement in effect between the Respondent and Network Solutions

which incorporates by reference, the Uniform Domain Name Dispute Resolution

Policy (the "Policy") in effect at the time of the dispute. The Policy

requires that domain name registrants such as Respondent submit to a mandatory

administrative proceeding regarding third-party allegations or abuse of domain

name registration (Policy, paragraph 49(a)).

6.2 Such administrative proceedings are conducted by ICANN-approved

dispute resolution service providers such as WIPO. The Policy provides an administrative

means for resolving disputes concerning allegations of abuse of domain name

registration, subject to referral of the dispute to a court of competent jurisdiction

for independent resolution (Policy, paragraph 4(a)).

6.3 The Policy, and the Rules for Uniform Domain Name Dispute Resolution

Policy (the "Rules"), establish procedures intended to assure that

respondents are given adequate notice of proceedings commenced against them,

and a reasonable opportunity to respond (See e.g. paragraph 2(a), Rules).

Applicable Law

6.4 The Complainant has cited, in support of its case, a Canadian judicial

decision and a number of decisions of Administrative Panels pursuant to the

Policy and the Rules of ICANN. The Respondent has not referred to any specific

legal authority, national or international.

6.5 Paragraph 15(a) of the Rules instructs this Panelist as to the

principles to be used in rendering a decision: "A Panel shall decide a

complaint on the basis of the statements and documents submitted and in accordance

with the Policy, these Rules and any rules and principles of law that it deems

applicable."

6.6 Where the Complainant and Respondent are domiciled in the same

country, previous Panels have held that this country’s laws may be used "to

the extent that it would assist the Panel in determining whether the Complainant

has met its burden as established by paragraph(4)(a) of the Policy." See

The Rockport Company v. Gerard A. Powell WIPO

Case No. D2000-0064; Copart Inc. v. SalvageNow WIPO

Case No. D2000-0417; Cellular One Group v. IP Services WIPO

Case No. D2000-1035; and Sara Lee Southern Europe, S.L. v. S.L. Proteccion

de Dominos WIPO Case No. D2000-1690.

6.7 While the Panel agrees that in this matter Canadian law is applicable

as both the Complainant and the Respondent are situated in Canada, it must also

be borne in mind that there are essential differences between trademarks and

domain names, and between the bases for proving causes of action available in

various courts as contrasted with what is necessary to enable this Panel to

reach its determinations under the Policy and Rules. This is also the case in

regard to the remedies available through domestic courts and those obtainable

under the Policy. With trademarks, there can be more than one registrant of

the same mark and its effect may be limited by the category of goods to which

it relates, and the geographic boundaries of its territorial protection. There

are no such limitations with domain names. Due to the latter’s technological

limitations and borderless use, only one entity can be registered in each gTLD

name throughout the world. Thus, there is justification for different legal

principles to apply to the Uniform Domain Name Despute Resolution Policy, its

Rules, and the interpretation given these by Administrative Panels operating

thereunder. It is these Rules with which all applicants for the registration

of domain names agree to be bound. In any event, no one is precluded from seeking

any remedies available from national courts.

6.8 The Complainant has the burden of proof. The Role of the Panel

is to make findings of fact based on the evidence presented, provided the matters

at issue are within the scope of the Policy. The appropriate standard for fact-finding

is the civil standard of a preponderance of the evidence. Under the preponderance

of the evidence standard a fact is proved for the purpose of reaching a decision

when it appears more likely than not to be true based on the evidence. See Madonna

Ciccone, p/k/a Madonna v. Dan Parisi and ‘Madonna.com’ WIPO

Case No. D2000-0847; Fleetstar Information Systems Ltd. v. Stephen Morris

WIPO Case No. D2001-0518.

6.9 This case arises in the midst of an active dialogue concerning the

issue of the extent to which a person is given a right to use the ICANN Policy

and the WIPO Rules to obtain a transfer of a Domain Name or its cancellation.

In the Interim Report of the Second WIPO Internet Domain Name Process relating

to the Recognition of Rights and the Use of Names in the Internet Domain Name

System issued on April 12, 2001, the subject is dealt with at length.

(Footnote 1) This document bears review by anyone involved

in Domain Name disputes concerning a claim to protection for a personal name,

which has not been registered as a trademark. It addresses the right to protect

one’s own identity, often referred to as a "personality right", which

"focuses on an individual’s right to control the commercial use

of his or her identity." [Emphasis added] (Footnote

2) This right, it is said, "serves to prohibit the unauthorized commercial

use of a person’s name, likeness or other personal characteristics closely

associated with him or her." [Emphasis added] (Footnote

3)

6.10 The Final Report of the WIPO Internet Domain Name Process, April

30, 1999, addressed this issue in the context of The Scope of the Administrative

Procedure, commencing at paragraph 163 (Footnote

4). It put the matter as follows:

164. The views of commentators on the desirable scope of the administrative

procedure were divided. Certain commentators favored the broad approach of opening

the procedure to any intellectual property dispute with respect to a domain

name registration. In general, they favored the development of a body of administrative

law that would, through the procedure, provide an effective international enforcement

mechanism for intellectual property rights as an alternative to expensive and

time-consuming multijurisdictional litigation.

165. The preponderance of views, however, was in favor of restricting the scope

of the procedure, at least initially, in order to deal first with the most offensive

forms of predatory practices and to establish the procedure on a sound footing.

Two limitations on the scope of the procedure were, as indicated above, favored

by these commentators.

166. The first limitation would confine the availability of the procedure to

cases of deliberate, bad faith abusive registrations. . . .

167. The second limitation would define abusive registration by reference only

to trademarks and service marks. Thus, registrations that violate trade names,

geographical indications or personality rights would not be considered to fall

within the definition of abusive registration for the purposes of the administrative

procedure. Those in favor of this form of limitation pointed out that the

violation of trademarks (and service marks) was the most common form of abuse

and that the law with respect to trade names, geographical indications and personality

rights is less evenly harmonized throughout the world, although international

norms do exist requiring the protection of trade names and geographical indications.

168. We are persuaded by the wisdom of proceeding firmly but cautiously and

of tackling, at the first stage, problems which all agree require a solution.

. .

6.11 It was as a result of the above that it was concluded that the

Policy should be worded as they are now found therein as paragraph 4(a).

6.12 The Interim Report of the Second WIPO Internet Domain Name Process

further noted that there were four important aspects, including certain commonalities

and differences with respect to the protection afforded under trademark law

and under the law of personality rights, which may be relevant to the discussion

of protection of personal names in the DNS. These included:

(iii) Infringement of both a trademark or personality right occurs through

unauthorized use by a third party. However, under trademark law the right is

infringed only if a third party’s use of the mark is likely to cause a likelihood

of confusion among consumers as to the source of goods or services. The personality

right, on the other hand, does not require the demonstration of any confusion;

instead, it is infringed when the public can identify the person in question

from the third party’s unauthorized commercial use.

(iv) Both are concerned with a commercial exploitation by a third party that

infringes upon the right. However, under trademark law, the mark itself for

which protection is sought must be used in commerce as a precondition

to relief, whereas the personality right may protect a person who does not commercially

exploit his or her own identity, but nevertheless desires to prevent others

from doing so.

6.13 Since the introduction of the Policy numerous Panels have been

faced with deciding whether the use of an identical or confusingly similar name

to that of a well-known person offends the Policy. These cases fall into a number

of categories.

6.14 The first category involves entertainers, both living and deceased,

in respect of whom there has been near unanimous success. The successful cases

include the following: Julia Fiona Roberts v. Russell Boyd WIPO

Case No. D2000-0210 (A famous actor); Cho Yong Pil v. ImageLand,

Inc. WIPO Case No. D2000-0229 (A famous

Korean pop music artist); Experience Hendrix, LLC v. Denny Hammerton and

The Jimi Hendrix Fan Club WIPO Case No.

D2000-0364 (Estate of deceased singing and performing idol); Nik Carter

v. The Afternoon Fiasco WIPO Case No.

D2000-0658 (Well-known radio broadcaster); Helen Folsade Adu known as

SADE v. Quantum Computer Services Inc. WIPO

Case No. D2000-0794 (Popular singer, songwriter and recording artist); Madonna

Ciccone, p/k/a Madonna v. Dan Parisi and ‘Madonna.com’ WIPO

Case No. D2000-0847 (Popular singer, performer and actor); Isabelle Adjani

v. Second Orbit WIPO Case No. D2000-0867

(Popular actor); Julie Brown v. Julie Brown Club WIPO

Case No. D2000-1628 (Well-known television and film actor, scriptwriter,

and producer of music videos); Celine Dion and Sony Music Entertainment (Canada)

Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club

WIPO Case No. D2000-1838 (Extremely well-known,

top-selling performing artist of pop music); Mick Jagger v. Denny Hammerton,

(NAF FA0007000095261) (Famous pop performer); MPL Communications Ltd. v.

Denny Hammerton (NAF FA0009000095633) (paulmccartney.com and Lindamccartney.com).

There was one complaint from an entertainer, which was not accepted.

(Footnote 5) This was the case of Bruce Springsteen

v. Jeff Burgar and Bruce Springsteen Club WIPO

Case No. D2000-1532, the application for a transfer or cancellation of registration

was denied.

6.15 Authors have also sought to protect their personal names, and were

successful in:

Jeanette Winterson v. Mark Hogarth WIPO

Case No. D2000-0235; Monty and Pat Roberts, Inc. v. Bill Keith WIPO

Case No. D2000-0299; Monty and Pat Roberts, Inc. v. J. Bartell WIPO

Case No. D2000-0300; Margaret Drabble v. Old Barn Studios Limited

WIPO Case No. D2001-0209.

6.16 Professional athletes have sought protection in a number of cases,

such as:

Daniel C. Marino, Jr. v. Video Images Productions, et al WIPO

Case No. D2000-0598 (Athlete, movie actor and sports commentator); Jules

I.Kendall v. Donald Mayer Re skipkendall.com WIPO

Case No. D2000-0868 (Professional golfer); Jaap Stam v. Oliver Cohen

WIPO Case No. D2000-1061 (Famous soccer

player); Pierre van Hooijdonk v. S.B.Tait WIPO

Case No. D2000-1068 (Famous soccer player).

6.17 There have been few cases involving claims by or on behalf of business

people:

Harrods Ltd. v. Robert Boyd WIPO Case

No. D2000-0060 (Re Dodi al-Fayed); Monty and Pat Roberts, Inc. v. Bill

Keith WIPO Case No. D2000-0299; Monty

and Pat Roberts, Inc. v. J. Bartell WIPO

Case No. D2000-0300; Steven Rattner v. BuyThisDomainName (John Pepin)

WIPO Case No. D2000-0402 (Investment banking

and corporate advisory services).

6.18 Yet another category is "royalty", with a case involving

Princess Diana – CMG Worldwide, Inc. v. Naughtya Page (NAF FA0009000095641).

6.19 Finally, there has been one case of a politician, namely Anne

McLellan, the Minister of Justice and Attorney General of Canada, eResolution

case no. AF0303.

In order to obtain the relief requested under the Policy, Complainant must

prove in the administrative proceeding that each of the three elements of paragraph

4(a) are present:

(i) The domain name registered by Respondent is identical or confusingly similar

to a trademark or service mark in which Complainant has rights.

6.20 There are numerous decisions in which Panels have recognized the

right of a Complainant to claim a common law mark where there is no registered

trademark. In some cases, the Complainant will have registered his or her name

as a trademark, in which event that name will be protected within that geographic

area whose law recognizes the trademark in question, and the protection for

that trademark will be limited to the categories of products designated in the

certificate of registration. The case involving Madonna is an example

in the cases referred to above in paragraphs. 6.14 -- 6.17. In the Bruce

Springsteen case, the Complainant had registered the Domain Name <brucespringsteen.net>

which was used as the host site for an official Bruce Springsteen web site.

The Respondent registered the Domain Name <brucespringsteen.com>.

6.21 In the Daniel Marino case, the Panel, citing Jeanette Winterson

v. Mark Hogarth WIPO Case No. D2000-0235,

Cho Yong Pil v. ImageLand Inc. WIPO

Case No. D2000-0229, Hunton & Williams v. American Distribution

Systems, Inc. et al., WIPO Case No. D2000-0501

and Julia Fiona Roberts v. Russell Boyd, WIPO

Case No. D2000-0210 found that the name "Dan Marino" had acquired

sufficient secondary meaning within the American sports, entertainment and public

service communities to constitute a valid common law trademark. The Panel in

the case involving Steven Rattner emphasized the importance of understanding

that the protection at common law must be determined on a case-by-case basis,

depending greatly on the factual basis of each individual case. "At common

law, as the primary task is to determine if there is confusion in the mind of

the consumer, the notoriety of a particular mark is gauged relative to a number

of factors, including the territory within which the mark is used, the products

for which it is being used, etc." The Cho Yong Pil Panel found it

necessary to review the evidence with a mind to determining whether the name

‘Cho Yong Pil’ "functions as the Complainant’s mark". In Monty

and Pat Roberts, Inc. v. J. Bartell, the Panel determined that "[i]f

Complainant can establish that ‘Monty Roberts’ is a famous mark, then it may

be able to protect that mark against dilution, even if an infringer is not involved

in the same or competing channel of trade." (Footnote

6)

6.22 In the cases mentioned in paragraphs. 6.14 – 6.17 above where

the Complainant was successful he or she either used the personal name in question

as a marketable commodity, allowing his or her name or image to be used for

a fee, to promote someone else’s goods or services, or for direct commercial

purposes in the marketing of his or her own goods and services. In some of these,

including Monty and Pat Roberts, there were multi-purposes. The pure

business cases are more problematic. An obvious difference between them and

the above situations is that it is less likely that a business person will use

his or her name to market their own goods or services, and very unlikely that

they will do so to market someone else’s. Take, by way of examples, Henry Luce,

Kenneth Thomson, Conrad Black and Rupert Murdoch. Are their publications marketed

as a product connected to the person in question? Not likely. It is also not

likely that someone would pay a fee to use these names in the promotion of a

good or service with which they have no connection. Yet, each of these gentlemen

is or was a famous businessman with a very high profile in the publishing business

and held in high regard by many. This doesn’t mean that a businessperson’s name

is not entitled to protection as a Domain Name. As demonstrated in the Supreme

Court of Canada decision in Hurlbut Co.Ltd. v. Hulburt Shoe [1925] 2

D.L.R. 121 a person may be able to use his personal name to prevent its improper

use if he or she can show that if "all persons whom in any way it concerns"

has come to know that a particular article associated with his or her name means

that he or she is responsible for its source. Under this circumstance, the personal

name takes on a secondary meaning. Probably, when the T.Eaton Co. was owned

by Timothy Eaton and Macy’s owned by someone of that name, their names could

have been protected on this basis. There is no evidence in the Complaint that

the name of the Complainant has formed a part of the name of any of his companies.

6.23 It is the view of this Panel that it would be helpful in these

personal name cases if the Complaint, when dealing with the criteria in 4(a)(i),

identified what the nature of the commercial connection would be in the Complainant’s

use of the Domain Name in issue. In many cases, this will be so obvious as not

to need any further embellishment. It would only be in such cases, as here,

where this is not apparent that such evidence would be needed. In this case,

there is no evidence that the Complainant has ever used his personal name for

the purpose of merchandising or other commercial promotion of goods or services,

or that he intended to do so.

6.24 The cases involving claims by or on behalf of business people,

shown in paragraph 6.17 above, do not demonstrate a pattern. The Monty and

Pat Roberts cases clearly show a commercial attachment to the use of their

names. Similarly, in the case of Steven Rattner, he provided investment

banking and corporate advisory services under his own name and therefore would

have an obvious interest in protecting that name for commercial uses. There

is no evidence on the record in this case that Leonard Asper has ever used his

name as part of a corporate name. In Harrod’s Limited v. Robert Boyd,

supra, it should be noted that the Complainant was not the person whose

name was in question, but Harrod’s Limited, the well-known British department

store on whose Board Dodi al-Fayed served, thus the Panel in that case concluded

that "The commercial impression is that domain name is associated with

goods and services sponsored by or affiliated with the late Dodi Fayed or his

estate". This distinguishes that case from the one before this Panel. Further,

the case was one of the very early ones decided without benefit of the subsequent

material available to this Panel which reserves the right to disagree with the

reasoning in an appropriate subsequent matter.

6.25 There are two dominant concerns inducing the protection of marks.

The first is the protection of consumers who associate the name with goods and

services of a known source and quality. The second is to preserve the value

of goodwill built up over time by the owner of the mark. In the case of those

(primarily entertainers and professional athletes) who sell their goodwill to

others in the marketing of goods and services not directly associated with the

holder, the first rationale, above, is likely to be dominant. This is much less

likely to be the case with other personal name marks, particularly those, which

have not obtained a secondary meaning. It is the view of this Panel that the

name of the Complainant falls within the latter category.

6.26 As for the cases involving royalty and a politician, their factors

are sufficiently distant from those applicable in this case as not to be considered

here. This is particularly the case given the current active dialogue on the

subject of personal names referred to in paragraph 6.9 above.

6.27 In Ahmanson Land Company v. Save Open Space and Electronic Imaging

Systems, WIPO Case No. D2000-0858

and Ahmanson Land Company v. Vince Curtis, WIPO

Case No. D2000-0859, the Panel found that trade names or marks that have,

through usage, become distinctive of the users’ goods or services in commerce

may be protectable as they have acquired a "secondary meaning". In

the former case, it said: "A mark comprising a personal name has acquired

secondary meaning if a substantial segment of the public understand the designation,

when used in connection with services or a business, not as a personal name,

but as referring to a particular source or organization." This Panel does

not find this to be the case with the personal name of the Complainant. In Canada,

the ownership of interests in newspapers change frequently. The first Ahmanson

Panel further held that personal names used as marks are treated as strong marks

upon a showing of secondary meaning and a mark comprising a personal name will

acquire secondary meaning if a substantial segment of the public understands

the designation, when used in connection with services or a business, not as

a personal name, but as referring to a particular source or organization. No

such secondary meaning has been proved for the name "Leonard Asper".

6.28 This Panel is not able to find that the Complainant, Leonard Asper,

is entitled to a finding that he has rights in a trademark or service mark of

such nature as to successfully challenge a Domain Name which is identical or

confusingly similar. There is an additional basis for this beyond the interpretation

of the Policy and Rules as set out above. It is the view of this Panel that

the appropriate date of making any such finding, were this Panel to feel entitled

to do so, would be the date of the registration of the Domain Names in question.

Were it otherwise, any Complainant who anytime subsequent to the registration

of the Domain Names, having achieved the necessary recognition in question,

could seek a transfer or cancellation of a Domain Name. In any event, it is

difficult for this Panel to find that at this stage of his career, Leonard Asper

has the same level of notoriety as that of his father. In saying this, the Panel

wishes to make it abundantly clear that this is not meant in any way to deprecate

the achievements of the Complainant in this case as an officer or member of

the Board of CanWest Global Communications. These are not the issue here.

(ii) Respondent has no rights or legitimate interests in respect of the domain

name.

6.29 The Policy in paragraph 4(c)(iii) indicates that a Respondent may

demonstrate its rights to and legitimate interest in the Domain Name in responding

to a Complaint if the Panel finds it to be proved, based on its evaluation of

all evidence presented, that the Respondent is "making a legitimate non

commercial or fair use of the Domain Name, without intent for commercial gain

to misleadingly divert consumers or to tarnish the trademark or service mark

at issue."

6.30 The Panel in the Jules I. Kendall case focused closely upon

the necessity of showing a commercial relationship when it held that it was

material that the Respondent did not register the Domain Name to disrupt the

business of a competitor in that there was no indication that the Respondent

had intentionally attempted to attract Internet users to its site for commercial

gain, based on confusion with the name of the Complainant.

6.31 In the Monty Roberts case, the Respondent lost its fair

use argument as its web site was used for commercial activity in that it directed

users to sites where merchandise could be purchased, including some which competed

with that marketed by the Complainant.

6.32 In the Jeanette Winterson case, the Respondent failed to

succeed in demonstrating any legitimate right he may have had to use the name

for a site promoting the Complainant’s works and as a "fan club" by

virtue of the fact that he offered the name in question for sale.

6.33 In the case concerning the Jimi Hendrix name the site was

used to advertise vanity e-mail addresses incorporating the <Jimihendrix.com>

Domain Name.

6.34 The question of "fair use" has come up in a number of

cases. Recently, it has been the subject of an award in Ahmanson Land Company

v. Vince Curtis, supra. In that case the Panel found a fair use where

the purpose of Respondent’s web sites were shown to have served as non-commercial

platforms to criticize the commercial activities of Complainant. The Panel said

"[d]eterminations regarding legitimate non-commercial and fair use under

the Policy require a balancing of trademark holder and other public interests."

This Panel agrees with this statement.

6.35 The Respondent says that his possession of the three Domain Names

involving the Complainant is integral for it to maintain both the artistic merit

and the purely satirical nature of a web site created by him entitled Who

Wants To Be A Canadian Media Baron. The site, he says, "was designed

in response to the both the popularity of the program WHO WANT TO BE A MILLIONAIRE

[sic], and the public outcry over Canadian media mergers and acquisitions,

particularly those of the complainants." The site was operated as a game

with people answering a question "Who Wants to Be A Canadian Media Baron"

with the options including the Complainant in this case. This site is not now

available, says the Respondent, due to the fact that the Domain registrar required

that it be disabled, although a screen shot of one of the frames from the multimedia

project is annexed to the Response. A copy of the communications from the registrar

to this effect is not provided.

6.36 Previous Panel decisions have held that it is not appropriate to

use the name of the entity whom one wishes to criticize on the basis of "fair

use" to divert Internet traffic to the site. See the Monty Roberts

case, above, along with Compagnie de Saint Gobain v. Com-Union Corp,

WIPO Case No. D2000-0020 and Ahmanson

Land Company v. Save Open Space and Electronic Imaging Systems, WIPO

Case No. D2000-0858.

6.37 While the onus is on the Complainant to prove each of the three

elements of the Policy, once he makes a prima facie showing that a Respondent

lacks rights in the Domain Name, the burden of proof shifts to the Respondent

to come forward with demonstrable evidence proving a legitimate interest in

the Domain Name. See Document Technologies, Inc. v. International Electronic

Communications Inc., WIPO Case No. D2000-0270

and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO

Case No. D2000-0416. This is consistent with the Policy in paragraph 4(c)(iii)

which speaks in terms of the Respondent demonstrating his rights or legitimate

interests to the Domain Name for legitimate non-commercial or fair use purposes.

The Policy in the opinion of this Panel, strikes the correct relationship between

the overall onus of proof in regard to an issue in a case as contrasted with

the proof of a fact material to that issue. In regard to the latter, the onus

is always on a person who asserts a proposition of fact, which is not self-evident.

See Robins v. National Trust Co.Ltd. et al [1927] 2 D.L.R. 98, [1927]

A.C. 515 (P.C.). Thus, while the effect of the assertion, as above, made by

the Respondent may have amounted to fair use, its credibility is significantly

negated by reason of the elements of bad faith as addressed below in connection

with paragraph 4(a)(iii) of the Policy.

6.38 This Panel finds that the Respondent has no rights or legitimate

interests in respect of the Domain Name(s).

<leonardasper.com>

<leonardasper.net>

<leonardasper.org>

(iii) The domain name has been registered and is being used in bad faith.

6.39 Complainant must establish not only bad faith registration, but

also bad faith use. See World Wrestling Federation Entertainment Inc. v.

Michael Bosman, WIPO Case No. D99-0001;

Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003.

6.40 The term "use in bad faith" in paragraph 4(a)(iii) does

not refer to "use in commerce" in the trademark sense of the word,

but refers in the broad sense to a pattern of conduct respecting the registered

Domain Name in dispute, while passive holding of the Domain Name, without use

in commerce, may support a holding of use in bad faith. See Arturo Salice

S.p.A. v. Paul Izzo & Company, WIPO

Case No. D2000-0537.

6.41 While this Panel is prepared to accept that the e-mail from the

Respondent to the corporate office of the Complainant one-day after the Respondent

registered its Domain Name is not necessarily evidence of an offer to sell the

domain in question, it is evidence of bad faith. The e-mail stated:

"Please contact me so we can discuss my ownership of the domain names

of

<IzzyAsper.com>

<IzzyAsper.org>

<IzzyAsper.net>

<LeonardAsper.com>

<LeonardAsper.org>

<LeonardAsper.net>

Peter Zahoruk

(905) 333-9740"

This is, in the opinion of this Panel, inconsistent with the alleged plan of

fair use by the Respondent of the Domain Name(s) as recited above in paragraph

6.36. In addition, the e-mail header indicated the e-mail was from "Izzy

Asper" and the e-mail address used to send the e-mail was <izzyasper@hotmail.com>.

This was followed by a notification by the Respondent that he was forwarding

his original e-mail and the response from Complainant’s office to several newsrooms

throughout Canada. On balance, and in the absence of any explanation by the

Respondent to the allegation in the Complaint that there could be no bona fide

reason for this e-mail, the Panel accepts the allegation.

6.42 There is also evidence that the Respondent has engaged in a pattern

of such conduct by registering other Domain Names which are identical or confusingly

similar to the names of famous persons such as the name of a former Canadian

Prime Minister, a celebrated businessman and publisher, an American wrestler,

and of the son of the Complainant who was being groomed to eventually succeed

his father in the family businesses.

6.43 This Panel finds that the Domain Names <leonardasper.com>,

<leonardasper.net>, and <leonardasper.org> have been registered

and are being used in bad faith.

7. Decision

7.1 The only remedy sought by the Complainant, as set out in paragraph

51 of the Complaint is that this Administrative Panel issue a decision that

the contested Domain Names be transferred to the Complainant. As the Rules in

paragraph 3(b)(x) require that the Complaint specify, in accordance with the

Policy, the remedies sought, and as the Complainant has not asked for a cancellation

of the registrations in question, only the former remedy will be addressed.

7.2 The Panel finds and decides:

(i) the Domain Name is not identical or confusingly similar to a trademark

in which Complainant has rights;

(ii) Complainant has established that Respondent has no rights or legitimate

interests in respect of the Domain Names;

(iii) Complainant has established that the Domain Name has been registered

and is being used in bad faith.

7.3 The Complaint is therefore dismissed and the Respondent may retain

the Domain Names <leonardasper.com>, <leonardasper.net>, and <leonardasper.org>.

Cecil O.D. Branson

Sole Panelist

Dated: June 11, 2001

Footnotes:

1. http://wipo2.wipo.int, paragraph 132-186. (back

to text)

2. This Report also, in paragraphs. 187-226, addresses in a similar vein whether

the approach to domains with geographical indications, indications of source

and geographical terms ought to be reviewed. Some might therefore think it ironic

that the Complainant’s corporation is the holder of the registered domain <canada.com>.

(back to text)

3. Ibid, paragraph 135. (back to text)

4. http://wipo2.wipo.int/process/eng/final/FinalReport_3.html.

(back to text)

5. There was another case of a performer not being entitled to the transfer

of his stage name. This was Gordon Sumner p/k/a Sting v. Michael Urvan

WIPO Case No. D2000-0596. This case turned primarily on the fact that the

name "Sting" was not a personal name and was too generic to obtain

its protection. (back to text)

6. However, as the Panel in this case footnotes the Lanham Act as authority

for this proposition, its relevance to our case may be questionable, as Canada

has no comparable legislation recognizing the effect of dilution. (back

to text)