Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments,

Inc.

Case No. D2002-0787

1. The Parties

The Complainant in this administrative proceeding is Bayerische Motoren Werke

AG, more commonly referred to as BMW AG, a corporation organized under the laws

of the Federal Republic of Germany, with a principal place of business in Munich,

Germany.

The Respondent in this administrative proceeding is "(This Domain is For

Sale) Joshuathan Investments, Inc.", of "62 Cleghorn Street, Belize

City, Belize none, US".

2. The Domain Name and Registrar

The disputed domain name is <bmwdealer.com>. The Registrar of the domain

name is BulkRegister.com, 10 East Baltimore St., Suite 1500, Baltimore, MD 21202,

USA.

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance

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

adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution

Policy (the "Rules"), approved by ICANN on October 24, 1999,

and the World Intellectual Property Organization ("WIPO") Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

By registering the disputed domain name with the Registrar, the Respondent

agreed to the resolution of disputes pursuant to the Policy and Rules.

According to the information provided by the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center"), the history of this

proceeding is as follows:

The Complainant filed its Complaint with the Center on August 21, 2002,

by email and on August 26, 2002, by hardcopy.

On August 22, 2002, the Center requested and obtained from BulkRegister.com,

the registrar of the disputed domain name, verification that the domain name

is registered with BulkRegister.com and the Respondent is the registrant for

the domain name.

On August 27, 2002, having verified that the Complaint satisfied the formal

requirements of the Policy and the Rules, the Center formally commenced

this proceeding and delivered to the Respondent notice of the Complaint and

commencement of this proceeding.

The Center attempted to deliver the Complaint to the Respondent by Federal

Express courier, facsimile transmission, and email. The Complaint was delivered

by Federal Express to the Respondent at 62 Cleghorn Street, Belize City,

Belize. However, the email was rejected and the facsimile number provided by

the Respondent in the domain name registration information was not operative.

The Complainant sent an email on September 3, 2002, informing the Center that

the copy of the Complaint sent to the Respondent was returned to the Complainant.

The Respondent failed to file a Reply within the prescribed time limits or

at all, and on September 19, 2002, the Center delivered a Notification

of Respondent Default to the Respondent.

The single Panel member, Bradley J. Freedman, agreed to act as Panelist in

this proceeding and filed the necessary Statement Of Acceptance and Declaration

Of Impartiality And Independence, and on September 24, 2002, was duly

appointed by the Center.

On September 24, 2002, the Center delivered a Notification of Appointment of

Administrative Panel and Projected Decision Date to the parties.

The Panel finds that it was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules.

Based upon the information provided by the Center, the Panel finds that all

technical requirements for the prosecution of this proceeding were met.

4. Factual Background

The following information is derived from the Complaint and supporting evidence

submitted by the Complainant.

The Complainant manufactures and distributes motor vehicles and other products

and services throughout the world.

The Complainant is the registered owner of the trademarks BMW and BMW and design

in over 120 countries, including Germany and the United States of America, in

connection with motor vehicles and numerous other products and services. The

BMW and BMW and design trademarks were registered in Germany in 1917 and 1929 respectively.

The BMW trademark was registered in the United States of America in 1955.

By virtue of the use of the BMW trademarks by the Complainant and on its behalf,

the BMW trademarks have become well-known throughout the world and identified

by the public solely with the Complainant and its products and services.

The disputed domain name was registered on June 9, 1997. The disputed domain

name currently resolves to a website with the url "www.top10sites.com",

that presents a directory of commercial websites called "Top10Sites.com".

The website prominently displays the statement "This Domain Name is for

SALE. Click Here for more Info", and presents a pop-up window that displays

the statement: "The domain name you typed is for Sale. Feel free to Contact

our Representative listed Below. joshuathaninvest@aol.com."

The website also prominently displays a hypertext link labeled "21 And

Over Click Here", which leads to a pornographic website called FreeSexMovies,

which professes to be the "Napster of Pornography".

The Respondent is not authorized by the Complainant to register or use the

disputed domain name, and the Respondent’s use of the domain name or the BMW

trademark is not connected to, sponsored or authorized by, or within the control

of the Complainant.

The Complainant first became aware of the disputed domain name on June 28, 2002.

By letter dated June 28, 2002, the Complainant advised the Respondent

that the disputed domain name violated the Complainant’s trademark rights, and

demanded that the Respondent discontinue use of the domain name and transfer

it to the Complainant. The Respondent did not respond to the Complainant, and

did not stop using the disputed domain name.

The Respondent has not filed any response to the Complaint or answered the

Complainant’s factual assertions or evidence in any other manner.

5. Parties’ Contentions

(a) Complainant

The Complainant contends as follows:

(i) The Complainant is the owner of the BMW registered trademark, and the disputed

domain name is confusingly similar to the Complainant’s mark.

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

disputed domain name because the Complainant has not been authorized by the

Complainant to register or use the disputed domain name, and has not made a

legitimate non-commercial or fair use of the domain name.

(iii) The Respondent registered and is using the disputed domain name in bad

faith because: (1) the Respondent registered the disputed domain name

primarily for the purpose of selling it at a profit; (2) the Respondent is intentionally

using the domain name to attract for commercial gain Internet users to the Respondent’s

website by creating a likelihood of confusion with the Complainant’s trademark;

(3) the Respondent’s use of the disputed domain name for a pornographic website

tarnishes the Complainant's trademark; (4) the Respondent failed to reply to

the Complainant’s correspondence; and (5) the Respondent registered the domain

name using false contact information.

(b) Respondent

As previously indicated, the Respondent has not filed any response to the Complaint

and has not answered the Complainant’s contentions in any other manner.

6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged

bad faith registration and use of domain names – conduct commonly known as "cybersquatting"

or "cyberpiracy". The Policy does not apply to other kinds of disputes

between trademark owners and domain name registrants. The narrow scope of the

Policy reflects its origins as a novel form of Internet dispute resolution designed

to balance a wide range of perspectives regarding the regulation of Internet

conduct[1].

The application of the Policy is limited to situations in which a complainant

asserts and proves the following: (i) the registered domain name is identical

or confusingly similar to a trademark or service mark in which the complainant

has rights; (ii) the registrant has no rights or legitimate interests in respect

of the domain name; and (iii) the domain name has been registered and is being

used in bad faith[2]. A complainant must

prove all three elements in order to be entitled to relief under

the Policy[3].

The burden is on the Complainant to prove each of the three requirements elements

set forth in Policy paragraph 4(a). It is not sufficient for the Complainant

to make assertions without providing proof[4].

(a) The Respondent’s Default

Rules paragraph 10(a) requires that the Panel ensure that each party

is given a fair opportunity to present its case. Rules paragraph 14 reads

as follows:

Default

(a) In the event that a Party, in the absence of exceptional circumstances,

does not comply with any of the time periods established by these Rules or the

Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply

with any provision of, or requirement under, these Rules or any request from

the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

The Respondent was given notice of this proceeding in accordance with the Rules.

As previously indicated, the Respondent failed to file any reply to the Complaint

and has not sought to answer the Complainant’s assertions, evidence or contentions

in any other manner. The Panel finds that the Respondent has been given a fair

opportunity to present its case, and the Panel will proceed to a decision on

the Complaint.

The Respondent’s default does not automatically result in a decision in favour

of the Complainant. The Complainant must still prove each of the three elements

required by Policy paragraph 4(a)[5].

Rules paragraph 15(a) provides that the Panel shall decide the Complaint on

the basis of the statements and documents submitted in accordance with the Policy,

the Rules, and any rules and principles of law that it deems applicable. In

accordance with Rules paragraph 14(b), the Panel may draw such inferences as

are appropriate from the Respondent’s failure to reply to the Complainant’s

assertions and evidence or to otherwise contest the Complaint. In the circumstances,

the Panel’s decision is based upon the Complainant’s assertions and evidence

and inferences drawn from the Respondent’s failure to reply[6].

(i) The Complainant’s Trademark Rights

The Complainant is the owner of the BMW trademark registered in over 120 countries,

including Germany and the United States of America, and uses that mark in association

with its manufacture and distribution of motor vehicles and other products.

The Complainant’s assertions in this regard are supported by documentary evidence.

The Respondent has not filed any reply to the Complaint, and has not contested

the Complainant’s assertions. In the circumstances, the Panel finds that the

Complainant has rights in the BMW trademark.

The Policy requires that the disputed domain name be "identical or confusingly

similar" to the Complainant’s BMW trademark. The Complainant asserts that

the challenged domain name is confusingly similar to its trademark.

Neither the Policy nor the Rules provide any guidance with respect to

the test to be applied regarding the confusing similarity requirement of the

Policy. Panels have applied different tests. Some panels have undertaken a literal

comparison of the domain name and the trademark, and have not considered whether

there is any source confusion[7]. Other panels

have undertaken a source confusion analysis as required by conventional Anglo-American

trademark law, which involves a consideration of all of the circumstances including

the strength of the complainant’s mark, the sophistication of likely consumers,

and the nature of the wares and services with which the domain name and conflicting

mark are used[8].

A number of considerations support the view that the appropriate test for confusing

similarity under the Policy is a literal comparison of the challenged domain

name and conflicting mark:

1. The language of Policy paragraph 4(a) should be interpreted in a purposive

manner consistent with the Policy’s remedial nature and objective – to prevent

the extortionate behaviour known as "cybersquatting".

2. The language of Policy paragraph 4(a) does not invoke a likelihood of confusion

test, as contrasted with Policy paragraph 4(b)(iv) which expressly refers to

a "likelihood of confusion with the complainant’s mark as to the source,

sponsorship, affiliation, or endorsement of [the registrant’s] website or location

or of a product or service on [the registrant’s] website or location" as

an indication of bad faith domain name registration and use.

3. The Policy is international and, in the absence of express language, it

is inappropriate to import into Policy paragraph 4(a) a test that may not exist

under all national trademark laws.

4. The procedure contemplated by the Policy is not well suited to the kinds

of factual issues presented by a conventional source confusion analysis. In

particular, the Policy is intended to be a relatively quick and inexpensive

process, panels must make factual determinations based upon written submissions

and documentary evidence, complainants have no right of reply without the panel’s

permission, and parties are often not represented by counsel.

For these reasons, the Panel considers the appropriate test for confusing similarity

to be a literal comparison of the disputed domain name and the complainant’s

mark.

When comparing a challenged domain name and a trademark, the addition of the

".com" suffix is irrelevant for determining whether the domain name

is identical or confusingly similar to the trademark. Rather, one looks to the

second-level domain for such a determination, since the ".com" suffix

is merely descriptive of the registry services and is not an identifier of a

source of goods or services[9].

The addition of non-distinctive, descriptive words, such as "dealer",

to a well-known trademark in a domain name does not necessarily detract from

the overall impression of the primary, distinctive element of the mark in the

domain name[10].

In this case, the use of the word "dealer" – referring to an activity

that would commonly be associated with the Complainant or an authorized dealer

of BMW motor vehicles – together with the Complainant’s BMW mark is likely to

cause Internet users to believe that the domain name connects to a website that

is owned or sponsored by, or affiliated with, the Complainant[11].

In the circumstances, the Panel finds that the disputed domain name is confusingly

similar to the Complainant’s BMW trademark. Accordingly, the Panel finds that

the Complainant has satisfied the first element required by the Policy.

(ii) The Respondent’s Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no

legitimate right or interest in the domain name – requires the Complainant to

prove a negative proposition, which can be particularly difficult[12].

A number of panels have held that the burden on a complainant regarding the

second element is necessarily light, because the nature of the registrant’s

rights or interests, if any, in the domain name lies most directly within the

registrant’s knowledge[13]. Other panels

have held that once the complainant makes a prima facie showing that the registrant

does not have rights or legitimate interest in the domain name, the evidentiary

burden shifts to the registrant to rebut the showing by providing evidence of

its rights or interests in the domain name[14].

The Complainant contends that the Respondent has no rights or legitimate interests

in respect of the disputed domain name because the Respondent is not and has

not been known commonly by the disputed domain name, and has not been authorized

by the Complainant to register or use the disputed domain name. The Complainant

has not provided any evidence of trademark searches or other investigations

to indicate that the Respondent does not have any interest in any marks that

include the term "BMW" and is not commonly known as "BMW".

In some circumstances, the omission of such evidence would be fatal to a complaint

under the Policy. Nevertheless, in the circumstances of this dispute – the indisputable

fame of the Complainant’s mark, the evidence adduced by the Complainant (the

Respondent’s name, the website for which the disputed domain name is used by

the Respondent, and the Respondent’s lack of rights granted by the Complainant)

– together with an adverse inference from the Respondent’s failure to reply

to the Complaint or provide any justification for its registration and use of

the disputed domain name, are sufficient to satisfy the Complainant’s evidentiary

burden.

Even though the Respondent has not filed any reply to the Complaint and has

not contested the Complainant’s assertions, it is incumbent upon the Panel to

consider whether the Respondent’s use of the disputed domain name demonstrates

rights or legitimate interests in the domain name. According to Policy paragraph

4(c), the following circumstances, if proved, demonstrate a registrant’s rights

or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or

a corresponding name in connection with a bona fide offering of goods or services

prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has

been commonly known by the domain name, even if it has not acquired trademark

rights; or

(iii) the registrant 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 complainant’s mark.

To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use

of the disputed domain name must be in connection with a "bona fide"

offering of goods or services. In some circumstances, a directory of websites

may constitute a bona fide offering of goods or services. In the circumstances

of this case, however, the Respondent’s use of the disputed domain name is not

"bona fide" within the meaning of Policy paragraph 4(c)(i) because:

(a) the disputed domain name is fairly unique and specific to the Complainant;

(b) there is no apparent connection between the disputed domain name and the

Respondent’s website directory or the linked pornographic website; and (c) there

is no other apparent legitimate justification for the Respondent’s registration

and use of the disputed domain name for its website. In addition, the Panel

draws an adverse inference from the Respondent’s failure to provide any explanation

or rationale for its use of the disputed domain name for its website[15].

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend,

and there is no evidence that, the Respondent has been commonly known by the

disputed domain name or that the disputed domain name is derived from one of

Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondent is using the domain

name for an offering of services, namely a commercial directory of websites.

For these reasons, the Panel finds that the Respondent has no rights or legitimate

interests in the disputed domain name.

(iii) Bad Faith Registration and Use

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent

registered and has used the disputed domain name in bad faith. The language

of Policy paragraph 4(b)(iii) is conjunctive, and requires that both bad faith

registration and bad faith use be proved[16].

"Bad faith" within the meaning of the Policy is a term of art, and

is not intended to apply to distasteful conduct that might constitute bad faith

in the ordinary sense of the term[17].

The use of a domain name for a website directory or pornographic website is

not necessarily a bad faith use[18].

Policy paragraph 4(b) provides that the following circumstances are deemed

to be evidence that a registrant has registered and used a domain name in bad

faith:

(i) circumstances indicating that the registrant has registered or has 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 the complainant, for

valuable consideration in excess of its documented out-of-pocket costs directly

related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct;

or

(iii) the registrant has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to

attract, for commercial gain, Internet users to its Website 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 its Website or

location or of a product or service on its Website or location.

The Policy expressly states that these circumstances are non-exclusive[19].

Policy paragraph 4(b)(i)

The Complainant relies upon Policy paragraph 4(b)(i), arguing that the Respondent

registered the disputed domain name primarily for the purpose of the selling

the domain name for valuable consideration in excess of Respondent’s documented

out-of-pocket costs directly related to the domain name.

The Respondent’s name (as indicated in the WHOIS registration information)

is "(This Domain is For Sale) Joshuathan Investments, Inc.". Similarly,

the Administrative Contact for the disputed domain name (as indicated in the

WHOIS registration information) is "This Domain is For Sale (This Domain

is For Sale) Joshuathan Investments, Inc." The disputed domain name resolves

to a website that prominently displays the statement "This domain name

is for sale (Click here)", and presents a pop-up window that displays the

statement: "The domain name you typed is for Sale. Feel free to Contact

our Representative listed Below. joshuathaninvest@aol.com."

These circumstances all demonstrate that the Respondent intended, from the

date of registration, to sell the disputed domain name. This conclusion is supported

by an adverse inference drawn from the Respondent’s failure to rely to the Complaint

or dispute the Complainant’s assertion regarding the primary purpose of the

Respondent’s registration and use of the disputed domain name.

The Respondent’s offer to sell the disputed domain name is made to the public.

There is no direct evidence that the Respondent offered to sell the domain name

specifically to the Complainant or its competitors, or that the sale price would

exceed the registration costs. Nevertheless, those requisite elements may be

inferred from the circumstances, including the nature of the domain name (its

incorporation of the Complainant’s famous and specific trademark) and the manner

in which the domain name has been advertised for sale[20].

In addition, this conclusion is supported by an adverse inference drawn from

the Respondent’s failure to rely to the Complaint or dispute the Complainant’s

assertion regarding the primary purpose of the Respondent’s registration and

use of the disputed domain name.

The Panel finds that the Complainant has established that the Respondent registered

and is using the disputed domain name in bad faith pursuant to Policy paragraph

4(b)(i).

Policy paragraph 4(b)(iv)

The Complainant also relies upon Policy paragraph 4(b)(iv), which requires

the Complainant to establish that the Respondent registered and is using the

disputed domain name in order to confuse and divert Internet traffic to its

website for commercial gain. There is no direct evidence that the Respondent

knew of the Complainant or its BMW trademark, or intended to use the disputed

domain name to confuse and divert Internet users. Nevertheless, the Respondent’s

knowledge and intention may be determined by common sense inferences from circumstantial

evidence[21].

A domain name is more than a mere Internet address. It often identifies the

Internet site to those who reach it, and sends a message that the site is owned

by, sponsored by, affiliated with, or endorsed by the person with the name,

or owning the trademark, reflected in the domain name[22].

The Panel finds that the Respondent knew of the Complainant’s famous BMW trademark

and registered and is using the disputed domain name in order to confuse and

divert Internet traffic to its website, based upon the following circumstances:

(a) the disputed domain name is well-known, unique and specific to the

Complainant; (b) there is no apparent connection between the disputed domain

name and the Respondent’s website or its content; (c) there is no other apparent

legitimate justification for the Respondent’s registration and use of the disputed

domain name for its website; and (d) the Respondent has not denied any knowledge

of the Complainant or its trademark. In addition, the Panel draws an adverse

inference from the Respondent’s failure to provide any explanation or rationale

for its use of the disputed domain name for its website[23].

The Panel also finds that the Respondent’s directory website results in commercial

gain to the Respondent. It is well known that many directory websites generate

revenue by directing traffic to other websites. In the absence of any reply

by the Respondent, the Panel finds that the Respondent’s website generates revenue

for the Respondent in that manner.

Accordingly, the Panel finds that the Complainant has established that the

Respondent registered and is using the disputed domain name in bad faith pursuant

to Policy paragraph 4(b)(iv).

Other

The Complainant also relies upon other grounds, not specifically enumerated

in Policy section 4(b), for contending that the Respondent has registered and

is using the disputed domain name in bad faith: (i) the Respondent’s use of

the domain name tarnishes the Complainant’s BMW trademark; (ii) the Respondent

provided false contact information; and (iii) the Respondent failed to reply

to the Complainant’s demand letter and failed to reply to the Complaint. Given

the Panel’s determination based upon two of the grounds enumerated in Policy

paragraph 4(b), it is not necessary for the Panel to determine whether these

additional grounds are a basis for a finding of bad faith domain name registration

and use.

7. Conclusion

The Complainant has established each of the three requirements set forth in

Policy paragraph 4(a) – the disputed domain name is confusingly similar to the

Complainant’s BMW trademark, the Respondent does not have any rights or legitimate

interests in the disputed domain name, and the Respondent registered and is

using the disputed domain name in bad faith.

The Panel therefore directs that the registration of the disputed domain name

be transferred from the Respondent to the Complainant.

Bradley J. Freedman

Sole Panelist

Dated: October 8, 2002

1. See Quarterview v. Quarterview Co. Ltd.,

Case No. AF-0209(a-b) (July 6, 2000); Libro AG v. NA Global Link Limited, WIPO

Case No. D2000-0186 (May 16, 2000); Toronto Star Newspapers Limited v. Virtual

Dates Inc., WIPO Case No. D2000-1612 (February

6, 2001); Educational Testing Service v. TOEFL, WIPO

Case No. D2000-0044 (March 16, 2000); FLOS Spa. v. Victory Interactive Media

S.A., WIPO Case No. D2000-0771 (December

15, 2000); Re. Infolink v. Nathan Frey, WIPO

Case No. D2000-1687 (March 26, 2001); Tribeca Film Center Inc. v. Lorenzo

Brusasco-Mackenzie, WIPO Case No. D2000-1772

(April 10, 2001); Deutsche Welle v. DiamondWare Limited, WIPO

Case No. D2000-1202 (January 2, 2001); Nintendo of America Inc. v. Alex

Jones, WIPO Case No. D2000-0998 (November

17, 2000); Wal-Mart Stores Inc. v. wallmartcanadasucks.com, WIPO

Case No. D2000-1104 (November 23, 2000); Jules I. Kendall v. Mayer, WIPO

Case No. D2000-0868 (October 26, 2000); and the ICANN Second Staff Report

on Implementation Documents for the Uniform Dispute Resolution Policy, October

24, 1999, www.icann.org/udrp/udrp-second-staff-report-24oct99.htm, at paragraph

4.1(c).

2. Policy paragraph 4(a).

3. See Edward Van Halen v. Morgan, WIPO

Case No. D2000-1313 (December 20, 2000).

4. See Radio Globo SA v. Diogo Pimentel,

WIPO Case No. D2000-1705 (January 31,

2001); Two Systems Enterprises Co. Ltd. v. Sonie's Creations, Case No. AF-0911

(September 7, 2001); Link Clicks Inc. v. John Zuccarini, WIPO

Case No. D2000-1547 (January 12, 2001).

5. See Packaging World Inc. v. Zynpak Packaging

Products Inc., Case No. AF-0233 (July 28, 2000); Cortefiel S.A. v. Quintas,

WIPO Case No. D2000-0140 (April 24, 2000);

Shore Media Ventures Inc. v. Both Worlds Inc., Case No. AF-0228; Softquad Software

Inc. v. Eleven-Eleven Ltd., Case No. AF-0143; The Estate of Tupac Shakur v.

Andronian, Case No. AF0349 (October 3, 2000); Cho Yong Pil v. Dooseok, WIPO

Case No. D2000-0754 (August 28, 2000); Rickey Skaggs v. Vincente, WIPO

Case No. D2000-1134 (December 18, 2000); Ingram Micro Inc. v. Noton Inc.,

WIPO Case No. D2001-0124 (March, 2001);

Link Clicks Inc. v. John Zuccarini, WIPO Case

No. D2000-1547 (January 12, 2001).

6. See Packaging World Inc. v. Zynpak Packaging

Products Inc., Case No. AF-0233 (July 28, 2000); MatchNet plc v. MAC Trading,

WIPO Case No. D2000-0205 (May 11, 2000);

SeekAmerica Networks Inc. v. Masood , WIPO

Case No. D2000-0131 (April 13, 2002); The Pep Boys Manny, Moe and Jack of

California v. E-Commerce Today, Ltd., Case No. AF-0145 (May 3, 2000); Bloomberg

L.P. v. Baltic Consultants Ltd., Case No. FA0010000095834 (November 20, 2000);

Isabelle Adjani v. Second Orbit Communications Inc., WIPO

Case No. D2000-0867 (October 4, 2000); Sony Corporation v. Inja, WIPO

Case No. D2000-1409 (December 9, 2000); Doctor.Ing.h.c. F. Porsche AG v.

Stonybrook Investments Limited, WIPO Case

No. D2001-1095 (October 26, 2001); Credit Suisse Group v. Milanes-Espinach,

Fernando and Milanes-Espinach, SA, WIPO Case

No. D2000-1376 (March 20, 2001); Ingram Micro Inc. v. Noton Inc., WIPO

Case No. D2001-0124 (March 6, 2001); American Online Inc. v. Johuathan Investments

Inc., WIPO Case No. D2001-0918 (September

14, 2001); Ticketmaster Corp. v. Brown, WIPO

Case No. D2001-0716 (July 18, 2001).

7. See Smoky Mountain Knife Works v. Deon

Carpenter, Case No. AF-230 (July 3, 2000); Newport News Inc. v. VCV Internet,

Case No. AF-0238 (July 18, 2000); Wal-Mart Stores Inc. v. Walsucks and Walmarket

Puerto Rico, WIPO Case No. D2000-0477

(July 20, 2000); Wal-Mart Stores Inc. v. Richard MacLeod d/b/a For Sale, WIPO

Case No. D2000-0662 (September 19, 2000); Nicole Kidman v. John Zuccarini,

d/b/a Cupcake Party, WIPO Case No. D2000-1415

(January 23, 2001); Slep-Tone Entertainment Corporation v. Sound Choice Disc

Jockeys Inc., Case No. FA20002000093636 (March 13, 2000); VeriSign Inc. v. Michael

Brook, WIPO Case No. D2000-1139 (March

7, 2001); Tourism and Corporate Automation Ltd. v. TSI Ltd., Case No. AF-0096

(March 16, 2000); The Toronto-Dominion Bank v. Boris Kapachev, WIPO

Case No. D2000-1571 (January 15, 2001); Bayerishe Motoren Werke AG v. JMXTRADE.com

Selling Premium Domain, Case No. D2000-1693

(January 26, 2001); Nikon Inc. v. Technilab Inc., Case No. 2000-1774 (February

26, 2001).

8. See Aurora Foods Inc. v. David Paul Jaros,

WIPO Case No. D2000-0274 (June 7, 2000);

Robert Chestnutt v. Jennifer Tumminelli, WIPO

Case No. D2000-1758 (February 2, 2001); Jordan Grand Prix Limited v. Gerry

Sweeney, WIPO Case No. D2000-0233 (May

11, 2000); Automatic Data Processing Inc. v. Access Electronics, Case No. FA0101000096483

(February 20, 2001); Motorola Inc. v. Newgate Internet Inc., WIPO

Case No. D2000-0079 (April 14, 2000); America Online Inc. v. Frank Albanese,

WIPO Case No. D2000-1604 (January 25,

2001). See also Trademarks Act, R.S.C. 1985, c. T-13, s. 6.

9. See Experience Hendrix L.L.C. v. Denny

Hammerton and The Jimi Hendrix Fan Club, WIPO

Case No. D2000-0364 (August 15, 2000); VAT holding AG v. Vat.com, WIPO

Case No. D2000-0607 (August 22, 2000); Northwest Airlines Inc. v. Kim Jong

Sub, Case No. FA01010000096377 (February 19, 2001); Rollerblade Inc. v. Chris

McGrady, WIPO Case No. D2000-0429 (June

25, 2000); Nintendo of America Inc. v. Alex Jones, WIPO

Case No. D2000-0998 (November 17, 2000); AltaVista Co. v. Stonybrook Investments,

WIPO Case No. D2000-0886 (October 26,

2000); Wal-Mart Stores Inc. v. Walsucks and Walmarket Puerto Rico, WIPO

Case No. D2000-0477 (July 20, 2000).

10. See Komatsu Ltd. v. RKWeb Ltd., D2000-0995

(November 13, 2000); Oki Data Americas Inc. v. ASD Inc., Case

No. D2001-0903 (November 6, 2001); Toyota Motor Sales USA v. Hamid, Case

No. D2001-0032 (March 28, 2001); Bayerische Motoren Werke AG v. bmwcar.com.

D2002-0615 (August 27, 2002); Xerox Corporation

v. Imaging Solution, Case No. D2001-0313

(April 25, 2001).

11. See Toyota France and Toyota Motor

Corporation v. Computer-Brain, WIPO Case No. D2002-0002

(March 22, 2002); Bellsouth Intellectual Property Corporation v. Freeworld and/or

Luis, WIPO Case No. D2000-1807 (March

14, 2001); Dr. Ing. h.c.F. Porche AG v. Brown, WIPO

Case No. D2001-0919 (September 15, 2001); Bayerische Motoren Werke AG v.

Reid, WIPO Case No. D2001-0495 (May 21,

2001); Scania CV AB v. Shera, Case No. D2001-0704

(July 28, 2001); Koninklijke Philips Electronics N.V. v. Anpol, Case

No. D2001-1151 (December 13, 2001).

12. See Radio Globo S.A. v. Diogo Pimentel,

WIPO Case No. D2000-1705 (January 31,

2001).

13. See Packaging World Inc. v. Zynpak

Packaging Products Inc., Case No. AF-0233 (July 28, 2000); Educational Testing

Service v. TOEFL, WIPO Case No. D2000-0044

(March 16, 2000); Grove Broadcasting Co. Ltd. v. Telesystems Communications

Limited, WIPO Case No. D2000-0158 (May

9, 2000); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO

Case No. D2000-1415 (January 23, 2001); Commonwealth Hotels Inc. v. CCD

Internet, Case No. AF-00771 (May 17, 2001).

14. See Nicole Kidman v. John Zuccarini,

d/b/a Cupcake Party, WIPO Case No. D2000-1415

(January 23, 2001); Inter-Continental Hotels Corporation v. Khaled Ali Soussi,

WIPO Case No. D2000-0252 (July 5, 2000);

Electronic Commerce Media Inc. v. Taos Mountain, Case No. FA0008000095344 (October

11, 2000); Universal City Studios Inc. v. G.A.B. Enterprises, WIPO

Case No. D2000-0416 (June 29, 2000); Springsteen v. Burgar, WIPO

Case No. D2000-1532 (January 25, 2001); Credit Suisse Group v. Milanes-Espinach,

Fernando and Milanes-Espinach, SA, WIPO Case

No. D2000-1376 (March 20, 2001); See also Ingram Micro Inc. v. Noton Inc.,

WIPO Case No. D2001-0124 (March 6, 2001);

Do The Hustle, LLC v. Tropical Web, WIPO Case

No. D2000-0624 (August 21, 2000).

15. See also Bayerische Motoren Werke AG

v. bmwcar.com. WIPO D2002-0615 (August 27, 2002).

16. See e-Duction Inc. v. Zuccarini, WIPO

Case No. D2000-1369 (February 5, 2001); World Wrestling Entertainment v.

Michael Bosman, WIPO Case No. D99-0001 (January 14, 2000); Sporoptic Pouilloux

S.A. v. William H. Wilson, WIPO Case No. D2000-0265

(June 16, 2000); Audiopoint Inc. v. eCorp., WIPO

Case No. D2001-0509 (June 14, 2001); A Prompt Corporation v. Aprompt Computers

Inc., Case No. AF-00816 (June 18, 2001); A & F Trademark Inc. v. Justin Jorgensen,

WIPO Case No. D2001-0900 (September 19,

2001).

17. See Wal-Mart Stores Inc. v. wallmartcanadasucks.com,

WIPO Case No. D2000-1104 (November 23,

2000).

18. See Paragon Electric Co. Inc. v. Buy

This Domain d/b/a/ NameRegister.com, WIPO

Case No. D2001-1439 (February 20, 2002).

19. See Telstra Corporation Limited v.

Nuclear Marshmallows, WIPO Case No. D2000-0003

(February 18, 2000); The Chancellor, Masters and Scholars of the University

of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO

Case No. D2001-0746 (August 14, 2001); The Bruce Trail Association v. Andrew

Camp and Bruce Trail Enterprises, WIPO Case

No. D2001-1021 (October 12, 2001); A & F Trademark Inc. v. Justin Jorgensen,

WIPO Case No. D2001-0900 (September 19,

2001); Vivendi Universal v. Jay David Sallen, WIPO

Case No. D2001-1121 (November 7, 2001).

20. See Bayerishe Motoren Werke AG v. JMXTRADE.com

Selling Premium Domain, WIPO Case No. D2000-1693

(January 26, 2001); Komatsu Ltd. v. RKWeb Ltd., D2000-0995

(November 13, 2000); United Artists Theatre Circiut Inc. v. Domains for Sale

Inc., WIPO Case No. D2002-0005 (March 27, 2002);

Pfizer Inc. v. Re This Domain For Sale -Email, Case

No. D2002-0409 (July 3, 2002); Educational Testing Service v. TOEFL, WIPO

Case No. D2000-0044 (March 16, 2000); National Hockey League and Lemieux

Group Lp v. Domain For Sale, Case No. D2001-1185

(December 6, 2001); Parfums Christian Dior v. QTR Corporation, WIPO

Case No. D2000-0023 (March 9, 2000).

21. See Tourism and Corporate Automation

Ltd. v. TSI Ltd., Case No. AF-0096 (March 16, 2000); Educational Testing Service

v. Netkorea Co., WIPO Case No. D2000-0087;

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 (February 18, 2000); Bloomberg L.P. v. David Cohen,

Case No. FA01020000096600 (February 19, 2001).

22. See Parfums Christian Dior v. 1 Netpower,

Inc., WIPO Case No. D2000-0022 (May 29,

2000); Cardservice International Inc. v. Webster R. McGee, 950 F.Supp. 737 (E.D.

Va. 1997); aff'd 129 F.3d 1258 (4th Cir. 1997). See also Green Products Co.

v. Independence Corn By-Products Co., 992 F.Supp. 1070 (N.D. Iowa 1995); Brookfield

Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir.

1999); British Telecommunications plc v. One In A Million Ltd., [1997] E.W.J.

No. 1599 (H.C.), aff'd, [1998] 4 All E.R. 476 (C.A.); TCPIP Holding Company

Inc. v. Haar Communications Inc. 244 F. 3d 88 (2nd Cir. 2001); Ford Motor Company

v. Ford Financial Solutions Inc. 103 F. Supp. 2d 1126 (N.D. Iowa 2000); PACCAR

Inc. v. Telescan Technologies L.L.C., 2000 U.S. Dist. LEXIS 12857 (E.D.Mich.

2000).

23. See also Bayerische Motoren Werke AG

v. bmwcar.com. D2002-0615 (August 27, 2002).

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