ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

1. Parties and Contested Domain Name

The Complainant is Oshawa Centre Holdings Inc., owner of a shopping centre called the Oshawa Centre, in the City of Oshawa, Ontario, Canada. The Respondent is M. Bharwani, allegedly a resident of Daresalaam, Tanzania. The contested domain name is oshawacentre.com.

2. Procedural history

The electronic version of the Complaint form was filed on-line through eResolution’s Website on April 25, 2001. The hardcopy of the Complaint Form and annexes were received on April 25, 2001. Payment was received on April 25, 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar’s Whois Database and confirm all the essential contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on April 25, 2001. The requested information was received April 26, 2001.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on April 26, 2001. This date is the official commencement date of the administrative proceeding.

All emails and faxes were sent successfully.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.

On May 16, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on May 15, 2001, 2001.

On May 22, 2001, the Clerk’s Office contacted Ms. Anne Wallace, Ms. Christiane Féral-Schuhl and Mr. John V. Swinson and requested that they act as panelists in this case.

On May 23, 2001, Ms. Anne Wallace accepted to act as lead panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On May 23, 2001, Mr. John V. Swinson accepted to act as a panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On May 25, 2001, Ms. Christiane Féral-Schuhl accepted to act as a panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On May 25, 2001, the Clerk’s Office forwarded a user name and a password to all panelists, allowing them to access the Complaint Form, the Response Form, and the evidence through eResolution’s Automated Docket Management System.

On May 25, 2001, the parties were notified that Ms. Anne Wallace, Ms. Christiane Féral-Schuhl and Mr. John V. Swinson had all been appointed and that a decision was to be, save exceptional circumstances, handed down on June 7, 2001.

On June 5, 2001, the Panel Chair sent the following message to the Clerk:

“The Panel has reviewed the complaint, response, supplementary material and other documents submitted in this case. We have determined that further submissions are required before we can make a determination in this case. We consider this to be an exceptional circumstance within the ICANN Rules and would therefore ask that there be an extension of time for making of our decision.

We would ask that the Clerk advise the Complainant and the Respondent of our decision in this regard and that the Clerk advise the parties that we are directing the following process:

The Respondent is asked to consider providing us with the following:

1. Tangible evidence from the Respondent showing that "oshawa" is a word in Swahili, and proof of its meaning.

2. Tangible evidence as to the existence of "M Bharwani", including this person's full name and address.

3. Evidence showing the expenses incurred by the Respondent in hosting its website, as claimed in paragraph 13 of the response.

4. Evidence showing the time and effort the respondent has expended in locating partners (paragraph 11).

5. The Respondent's comments on the supplementary material filed by the Complainant.

The Respondent should be given ten days in which to provide this information. The Complainant should be given seven days from the date on which the Respondent provides the information in which to provide any final response. The panel will then consider all the evidence further.

If you require any clarification, please advise.

Thank you.”

On June 6, 2001, the Clerk notified both parties that additional information was being requested and advised the parties of the time lines set by the Panel.

The Respondent did not meet the ten-day deadline for provision of further material. However, on June 19, 2001, the Clerk received e-mail communication from the Respondent’s lawyer advising that additional material would be forwarded to the Clerk by June 20, 2001. The stated reason for the delay was difficulty in getting in touch with the client in Tanzania. While the Complainant objected to allowing any further time for the response, the Panel concluded that they would receive and consider the late submissions in the circumstances.

3. Factual Backgrounds

The Complainant, Oshawa Centre Holdings Inc. is a wholly owned subsidiary of Cambridge Shopping Centres Limited (“Cambridge”). Cambridge and its subsidiaries own and operate a number of shopping malls across Canada. The Complainant owns a shopping mall in Oshawa, Ontario, known as the Oshawa Centre (the “Centre”). The Centre was opened in 1956 and has operated continuously since that date. It was expanded and renovated as recently as 1995. The Centre serves a trade population of 369,616 people in 127,638 households. The structure of the Centre encompasses over one million square feet and consists of retail stores, services and entertainment facilities. Approximately 225,000 people visit the Centre each week (about 10 million visits per year).

The Complainant registered the word and image trademark “Oshawa Centre” on October 12, 1984, as Canadian Registration Number TMA296130. The words “Oshawa Centre” are featured prominently in the trademark. The registered trademark includes the mark descriptive reference “Oshawa Centre; Design”. The Complainant has used the trademark in association with the Oshawa Centre shopping mall continuously since as early as 1982, and has used the name “Oshawa Centre” continuously since the inception of the Centre in 1956

As part of Cambridge's marketing strategy for its properties, Cambridge resolved to launch web sites for 15 of its shopping centres, including the Oshawa Centre, by May 31, 2001. In particular, Cambridge intends, as part of such marketing strategy and as an extension of the Oshawa Centre trade-marks, to develop a web site for the Oshawa Centre which not only lists tenants, their location within the mall and contact information, but also to eventually provide e-commerce capabilities for each of the tenants as a part of their leasing agreements. The development of the Oshawa Centre web site is therefore an integral part of the Cambridge Internet strategy to further strengthen the significant goodwill and brand recognition which Cambridge's customers and tenants already associate with the Oshawa Centre mark and mall. As of the date of the complaint, Cambridge had established 9 of the 15 web sites referred to above. Cambridge had advised its tenants, including tenants of the Oshawa Centre, that the remaining 6 web sites, including the site for the Oshawa Centre, would be launched by the May 31, 2001 deadline. The Oshawa Centre web site has been delayed because of these proceedings.

The Respondent registered the disputed domain name on June 24, 1999. The Administrative Contact for the disputed site is Nizam Walji of Markham, Ontario. The Respondent says that the domain name was registered with the intention of establishing a not for profit website devoted to the dissemination of information and education respecting AIDS awareness in Africa. The Respondent initially claimed that the word “oshawa” is a well-recognized colloquial Swahili word for “sperm” and/or “semen” and is understood as such by the vast majority of East Africans.

The Respondent claims to be doing philanthropic work through a corporation known as Oshawa Centre Information and Education Foundation a/o oshawacentre.com.

Following receipt of the Response, the Complainant sought to file additional material. The Panel granted the Complainant’s request. The Complainant filed evidence that:

1. The word “oshawa” is not a colloquial Swahili word and that a Swahili word for sperm or semen is actually spelled “shahawa”. The Complainant’s evidence shows that the word “oshawa” has no meaning in the Swahili language. This evidence includes that of the Visa Officer in the Tanzanian Embassy who is fluent in Swahili and Mr. Sam Asante who is the Executive Director of the Canadian-African Newcomer Aid Centre of Toronto, Canada. This evidence also includes advice from the Kamusi Project, a project to develop a comprehensive dictionary of the Swahili language that “sperm” and “semen” in Swahili is spelled “shahawa” and that the word “oshawa” has no meaning in Swahili.

2. The Respondent did in fact make an offer to sell the disputed domain name for US$35,000. This evidence included a transcript of a telephone message left with the lawyer for the Complainant by Nizam Walji, the Administrative Contact for the Respondent at 11:44 p.m. on March 2, 2001. That message reads:

“David it’s Nizam calling regarding Oshawacentre.com. I just got off the phone with Mr. Bharwani in Daresalaam. His instructions are as follows: uh, he will put together a without prejudice settlement number for you. It is thirty five thousand dollars in U.S. funds. He is willing to accept that and withdraw any barriers to you acquiring this site, and you can take this to your client and get back to me at 416-917-6378. Bye bye.”

3. The Respondent’s agent, Nizam Walji, has acted as agent since the registration of the domain name in June of 1999, and has been the only person who has spoken to the Complainant regarding this matter. Mr. Malji’s address (11 Stonemason Drive, Markham, Ontario, Canada) is 21.5 kilometres (an 18 minute drive) from the Oshawa Centre Shopping Mall.

4. The Oshawa Centre Shopping Mall is so prominent in the Oshawa and Markham areas that an expansion of the mall is described in the official website of the City of Oshawa.

5. According to the Office of the Registrar of Companies and Business Names in Lusaka, Zambia, “Oshawa Centre Information and Education Foundation o/a oshawacentre.com” is not registered. By letter of May 22, 2001, the Assistant Registrar advised:

“I wish to acknowledge receipt of your fax letter dated 16^th May, 2001 regarding the above matter and regret to advise that the above Company is not registered with this Office and the documents relating thereto were not issued by this Office.

This matter is of grave concern to us and we are grateful that you brought it to our attention. We have instituted investigations to determine how and by whom the same were issued and whether there was any one from this office involved in this, as the documents would appear to have been stamped by this office. To facilitate this and bring the culprits to book, we would be obliged if you could assist us with the names and contact addresses of the people who uttered these documents to you. Please be assured that any information that we shall receive from you on this issue shall be treated in the uttermost confidence.

Your assistance in this matter will be highly appreciated.”

As set out above, the Panel reviewed the submissions of the parties and the Respondent was asked to consider providing the Panel with the following:

Tangible evidence from the Respondent showing that "oshawa" is a word in Swahili, and proof of its meaning.

Tangible evidence as to the existence of "M Bharwani", including this person's full name and address.

Evidence showing the expenses incurred by the Respondent in hosting its website, as claimed in paragraph 13 of the response.

Evidence showing the time and effort the respondent has expended in locating partners.

The Respondent's comments on the supplementary material filed by the Complainant.

The Respondent’s submissions with respect to these matters may be summarized as follows:

Tangible evidence from the Respondent showing that "oshawa" is a word in Swahili, and proof of its meaning.

“Oshawa” is not a proper recognized word in Swahili, but the term “shawa” is a recognized term. The “O” in oshawa is like “O” in “O God” or “O My”. The Respondent states that he has always known the term to be spelled “shawa. The Respondent also submitted a letter from a resident of Tanzania who also knows the term spelled as “shawa”, but has also seen the term spelled “shava”.

To the Respondent’s knowledge “shawa” is well recognized in the Swahili vernacular as a colloquial term with the intended meaning of sperm.

The use of different spelling, or colloquial usage, although not relevant to the issues in this matter, are common to most languages, including English. As an example English words “CART” and “KART”(from www.dictionary.com)

cart (kärt)n.

1.a. A small wheeled vehicle typically pushed by hand: a shopping cart; a pastry cart.

   b. A two-wheeled vehicle drawn by an animal and used in farm work and for transporting goods.

   c. The quantity that a cart can hold.

2. a. An open two-wheeled carriage.

    b. A light motorized vehicle: a golf cart.

Kart

kart (kärt)n.

A miniature car used in racing. Also called go-cart.

Tangible evidence as to the existence of "M Bharwani", including this person's full name and address.

The Respondent submitted a signed letter by Mr. Sameer Mohammed Bharwani, in which he stated that he registered his domain, www.oshawacentre.com with the initial of the name he goes by and his last name: M. Bharwani. The letter also includes a mailing address in Daresalaam.

The Respondent says that Mr. Bharwani did register his name correctly, but for some reason the PO Box did not show up in the registry, and he does not know why. Mr. Bharwani tried several times to change the registry to reflect the PO Box, but nowhere on the site does it show where to do this. Mr. Bharwani did not think this to be important as the contact information for his administrative contact was proper.

No evidence, such as a copy of a driver’s license, birth certificate, passport or other identification was filed to provide independent verification of the existence of M. Bharwani or his address.

Evidence showing the expenses incurred by the Respondent in hosting its website.

The Respondent advised that Mr. Walji has contacted Mr. Mike Bazelwick of www.roihost.com for a copy of the invoice showing the hosting of www.oshawacentre.com, but has yet to receive it.

Evidence showing the time and effort the respondent has expended in locating partners (paragraph 11).

The Respondent submitted that Mr. Bharwani has spent a considerable amount of time and effort in researching and soliciting for funding and developing links to his website.The Respondent proviced a list of a number of web sites and organizations that Mr. Bharwani, with the help of Mr. Walji, has allegedly contacted for funding and support. No documents such as copies of letters or e-mail communications that would verify actual contact with the parties listed were provided by the Respondent.

The Respondent also says that Mr. Bharwani was involved in a catch 22 - he required funding for a site, and needed a site for funding.Given the lack of support and response to date, Mr. Bharwani chose to wait for a better climate when these potential sources may be more responsive.In the interim, Mr. Bharwani will personally fund the development of the website, until such time as external funding can be arranged. Hecontinues to try and raise awareness and support.

The Respondent's comments on the supplementary material filed by the Complainant.

The Respondent’s comments are set out below under the Parties’ Contentions.

4. Parties' Contentions

Summary of the Complainant’s Contentions

Given the establishment of the Oshawa Centre shopping mall almost 50 years ago, the continued use by Cambridge of the registered and common-law “Oshawa Centre” trade-marks to describe and refer to the shopping mall, the registration of the "Oshawa Centre" trade-mark and the advertising and promotion undertaken by Cambridge regarding the shopping mall in which the “Oshawa Centre” trade-mark has appeared without fail:

(a)   an overwhelming amount of recognition, reputation and goodwill regarding the mark “Oshawa Centre” has vested in Cambridge; and

(b)   the mark “Oshawa Centre” has acquired significant distinctiveness in direct relation to the wares and services with which it has been associated, namely the property, services and retail stores which comprise the Oshawa Centre shopping mall.

Cambridge has expended considerable time and expense to create said goodwill and distinctiveness.

Save for the generic Top Level Domain name “.com” at the end of the domain name at issue, “Oshawacentre.com” is identical to Cambridge's Oshawa Centre trade-marks.Accordingly, the domain name “Oshawacentre.com” is confusingly similar to the Oshawa Centre trade-marks in that it contains the words “Oshawa” and “Centre” in exact sequence with no other additional words or phrases.

Internet users generally understand www. to be a non-descriptive prefix and .com or any other generic Top Level identifier as a non-descriptive suffix. These prefixes and suffixes relate to the structure of the Internet rather than the activities, nature or name of an entity maintaining a presence on the Internet at a particular domain name. Internet users usually disregard such prefixes and suffixes and focus on the terms in between. Accordingly, Cambridge submits that internet users would view the domain name “Oshawacentre.com” as identical or confusingly similar to the Oshawa Centre Trademark.

Cambridge submits that the arbitration decisions in Daydream Island Resort Investments Pty Ltd. vs. Sorbello, eResolution AF-0586, Packaging World Inc. v. Zynpak Packaging Products Inc., eResolution AF-0233 and Park Place Entertainment Corporation v. Gorman, WIPO D2000-0699 are authorities which conclusively support the contention that “Oshawacentre.com” is identical and confusingly similar to the Cambridge trade-marks and as such should be transferred to Cambridge.

Cambridge has invested considerable time and sums of money to establish an association between the Oshawa Centre trade-marks and its business known as the Oshawa Centre. M. Bharwani and his agent N. Walji (collectively, the “Registrants”), have not invested time, effort or expense regarding “Oshawacentre.com” beyond the registration of the domain name.

Cambridge claims that the Registrants have no rights or legitimate interest in respect of the contested domain name because:

(a)  the Registrants have never carried on any legitimate business under the name Oshawa Centre or "Oshawacentre.com" or by reference to the web site at that address;

(b)  the Registrants are not employed by or affiliated with Cambridge or any of its trade-marks;

(c)  the site at “Oshawacentre.com” is not operational, and to Cambridge’s knowledge has never been operational. The domain name was registered on June 24, 1999 and has been inoperable since that date. There is no evidence that the Registrants or the operator of the site have established any goodwill or reputation in the name “Oshawacentre.com”.

(d)  there is no evidence that the Registrants have ever used the name Oshawa Centre or “Oshawacentre.com” to provide goods or services or for a legitimate commercial or non-commercial use;

(e)  the Registrants are not in the business of building and managing shopping centres; and

(f)   the Registrants do not hold any rights for the same or similar trade-mark through federal registration or common law use. Further, there is no evidence that the Registrants have used the Oshawa Centre as a trade name, corporate name or similar usage name and has never been known by the name Oshawa Centre or the domain name “Oshawacentre.com”.

Cambridge asserts that the domain name “Oshawacentre.com” was registered and is being used in bad faith because:

(a)  Cambridge is one of Canada’s largest and most successful owners, operators and managers of shopping centres in Canada and has established significant goodwill in respect of the Oshawa Centre trade-marks;

(b)  the Registrants are not in the business of owning, operating or managing shopping centres;

(c)  it is impossible to conceive a situation based on the known facts in which the Registrants could legitimately use the domain name at issue;

(d)  it is part of the business strategy of Cambridge to develop .com web sites for each of its shopping centres in order to improve tenant and customer communications and relations and to facilitate the development of ecommerce. The registration by the Registrants of the “Oshawacentre.com” domain name is disrupting the business of Cambridge in that Cambridge cannot launch its planned web site for the Oshawa Centre which is aimed at further increasing tenant and consumer relations. By registering the domain name "Oshawacentre.com", the Respondents have created a likelihood of confusion with respect to the ownership and affiliation of the Oshawa Centre trade-marks;

(e)  the Registrants certified in their application to register “Oshawacentre.com” that such registration did not interfere with or infringe upon the rights of any third party, when the Registrants knew or should have known that the registration would both interfere with and infringe upon Cambridge’s trade-marks and intellectual property rights in and related to “Oshawa Centre”;

(f)   the Registrants failed to properly provide Network Solutions with a registration consisting of complete and/or updated address and contact information. As a result of the Registrants' failure to provide complete, updated contact information including email, telephone numbers and addresses when registering the domain name “Oshawacentre.com”, Cambridge was not able to locate M. Bharwani, the purported Registrant of “Oshawacentre.com”, and incurred unnecessary time and expense in attempting to do so. In fact, in all of Cambridge's dealings regarding “Oshawacentre.com”, it has been unable to speak with or contact “M. Bharwani”, which has led Cambridge to question whether such a person actually exists;

(g)   the passive holding of a domain registration such as that engaged in by the Registrants since June 24, 1999, being the date of the registration of the domain name, amounts to use in bad faith when considered with the Registrants' behaviour (Telstra Corp Limited vs. Nuclear Marshmallows WIPO D2000-0003). The Telstra decision established that in situations where a respondent did not conduct any “legitimate” commercial or “non-commercial” business activity and the respondent had taken “deliberate steps to ensure that his true identity cannot be determined and communication with it cannot be made”, it was not possible to conceive plausible circumstances in which the respondent could legitimately use the domain name. Additionally, in McNeil Consumer Brands v. Mirweb Solutions WIP0 D2000-0612, the panel determined that evidence of registration which is incorrect or incomplete is evidence of bad faith registration and use;

(h)   the agent of M. Bharwani, N. Walji, who is stated to be the administrative contact for "Oshawacentre.com", is the sole director, officer and principal of Viden Inc.. Viden Inc. is the registrant of at least two domain names, "viden.com" and "basketcenter.com". Viden.com and basketcenter.com were created on November 19, 1998 and January 31, 2000, respectively, and have not been operational since those dates. The Registrants have therefore exhibited a pattern of the passive holding of domain name registrations which substantiates the evidence of bad faith against them in the context of the "Oshawacentre.com" name;

(i)   the domain name “Oshawacentre.com” was registered for the purposes of either selling, renting or otherwise transferring it to the owner of the trademark or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name. The Complainants submitted a copy of a letter dated April 16, 2001 to the Registrants from Cambridge's legal counsel. The letter and its attachments reveal:

that Cambridge sought the consensual transfer of the registration of "Oshawacentre.com" in December of 2000.

      the Registrants refused or neglected to consent to such transfer.

      N. Walji, purportedly on behalf of M. Bharwani, instead attempted to exact US$35,000 from Cambridge in exchange for the transfer of the subject domain name. Such attempt to sell the "Oshawacentre.com" site for the said exorbitant sum was not solicited by Cambridge.

      in response to the offer made by the Registrants, Cambridge advised the Registrants that it was prepared to pay a small sum in exchange for the transfer of the domain name, being a sum which represented the legal fees and costs which would have been incurred by Cambridge in the event of a successful legal adjudication of its rights in this case. Such amount would have also compensated the Registrants for their out-of-pocket expenses associated with registering “Oshawacentre.com”. The Registrants refused or neglected to respond to Cambridge's offer.

      the conduct of the Registrants in demanding, and apparently insisting upon, US$35,000 for the transfer of the domain name clearly illustrates the Registrants' attempt to obtain valuable consideration from Cambridge well in excess of the threshold of good faith as established in the ICANN Policy for transfers in good faith (Bata Industries v. Bentley Online Ltd. AF-0247, AF-0247b).

In response to the submissions in the Response, the Complainant made the following arguments:

(a)  That the evidence that «oshawa» is not a Swahili word as alleged undermines the Respondent’s submissions regarding illegitimacy and bad faith, not to mention the credibility of the total submissions of the Respondent.

(b)  That the evidence of the offer to sell the domain name for US$35,000 is further and conclusive evidence of the Respondent’s bad faith and intention to mislead.

(c)  That throughout the proceedings the Respondent had not once stated or given evidence of his full name and had only used the initial «M» of his first name. The Respondent had never spoken directly to the Complainant. The only evidence of the Respondent’s civic address indicates that he resides in Lusaka, Zambia rather than in Daresalaam, which is in Tanzania. The Respondent failed to disclose his telephone number or e-mail address. The failure to provide this information further indicates the Respondent’s bad faith through a veiled attempt to hide the true identity of the Respondent and/or to make it impossible for a third party to contact the Respondent.

(d)  The prominence of the Oshawa Centre Shopping Mall in the Oshawa region, and the location of Mr. Malji’s address, lead to the inference that, through Mr. Walji, the Respondent was well aware of the existence of the Oshawa Centre Shopping Mall, and took its prominence into account before the domain name at issue was registered, thus being a further indicator of bad faith.

(e)  Given the evidence, it is impossible conceive of a situation in whicha domain name which contains the word «oshawa» could be used to effect the Respondent’s alleged purpose when one considers that the word «oshawa» is not known in the Swahili language. Even if «oshawa» were a Sawhili word meaning «sperm» or «semen»it is difficult to conceive of how the Respondent’s goal of disseminting information about sexually transmitted diseases and in particular AIDS would be effected through a website which has as its domain name «sperm» or «semen» or through a domain name which uses what is purportedly a Swahili word with an English word (i.e. «centre») given the limited Internet usage of Swahili-speaking persons and the requirement that the Internet user of the proposed site be bilingual in Swahili and English. This is submitted to be further evidence of illegitimacy and bad faith.

Summary of the Respondent’s Contentions

In the initial Response to the Complaint, the Respondent took the following position:

(a)  The Respondent, a resident of Daresalaam, registered the disputed domain name in June 1999 in Lusaka, Zambia with the intention of establishing a not for profit website devoted to the dissemination of information and education respecting AIDS awareness in Africa. The word "oshawa" is a well recognized colloquial Swahili word for "sperm and/or semen" and is understood as such by the vast majority of East Africans, numbering in the tens of millions. As such, the use of the word Oshawa in the Respondent's domain name is a crucial recognizable, and easily understood, identifying feature of the website. It provides instant recognition of purpose to the proposed users of the site. It has nothing to do with shopping malls in Ontario, Canada.

(b)  The Respondent disputes the allegation that the disputed domain name is identical or confusingly similar to a trademark or service mark registered to the Complainant. The Respondent does not carry on business in the same country as the complainant. Any alleged similarity or alleged confusion is denied and in any event is rendered moot given the distinctly different business pursuits of the parties and the respective non-presence in their countries of registration.

(c)  The evidence does not disclose a trademark or service mark for oshawacentre. In fact, the Complainant has only provided evidence of a trademark for Cambridge Shopping Centres. The trademark specifically excludes, in its disclaimer text, the words "shopping centres". In other words, the complainant does not have exclusive rights to these common use words in it's trademark.

(d)  The Complainant has provided evidence of a "design" trademark for Oshawa Centre. This "design trademark” specifically sets out under “Disclaimer Text” “the right to the exclusive use of the words Oshawa Centre is disclaimed apart from the trademark”. In other words, the Complainant does not, and cannot, enjoy exclusive rights to the very words in question.

(e)  In Ontario, Canada, Oshawa is a small town where the Complainant allegedly manages real estate for commercial gain, including various retail shopping malls. In Lusaka, Zambia, where the Respondent carries on business, Oshawa is a colloquial Swahili word, familiar to millions of East Africans, and translates as “sperm and/or semen”.

(f)   The Respondent, a resident of Daresalaam, Tanzania, registered Oshawa Centre Information and Education Foundation o/a Oshawacentre.com on April 18th, 2000. This not for profit business venture was registered with the Office of the Registrar of Companies (Lusaka).

(g)  The Respondent as well took the step to incorporate his business through a Certificate of Incorporation of a Private Company Limited by Shares, as of April 18th, 2000, in Lusaka, Zambia. The purported Certificate was annexed to the Respondent’s submissions.

(h)  The Respondent does not engage in any business remotely similar to the for profit real estate management allegedly undertaken by the Complainant. The Respondent has no ties whatsoever to Canada or North America (but for the registration of the domain name through Network Solutions in the U.S.A).

(i)   The Respondent disputes the unfounded allegation that he has not “invested time, effort or expense regarding Oshawacentre.com beyond the registration of the domain name. The Complainant clearly argues from a position of ignorance.

(j)   M. Bharwani is a well respected philanthropist in Daresalaam. It has always been his intention to operate an educational website devoted to disseminating important information about the spread of sexually transmitted diseases, and particularly, but not limited to information about auto immune deficiency syndrome (AIDS) which has so plagued Africa in the past decade.

(k) The Respondent has spent considerable time and effort to locate funding partners to assist in the financial burden of running the proposed not for profit site. Regrettably, although registered in June of 1999, development of the site has been delayed due to the political unrest in the region which has had a chilling effect on the Respondent’s efforts. Rather than commence development prematurely, the Respondent made the business decision to complete preparations and firm up financial commitments rather than run the website without sufficient depth. This was, and remains, a decision the Respondent was entitled to make.

(l)   The Respondent is in the process of building their brand web and has developed the name to offer information to the target market.

(m)  At all material times, the Respondent has incurred the expense of hosting the website with roihost.com.

(n)  The Respondent has “parked” the website with Affinity.net , as opposed to leaving the website as a “blank”url.

(o)  The Respondent hopes to have the site operational by the end of this calendar year.

(p)  The Respondent has never used the name oshawa centre in Canada, but has disclosed same in Africa.

(q)  The Complainant relies on alleged trademark protection where there is in fact none afforded, and further that any alleged common law protection, which is denied by the Respondent, does not have jurisprudential authority and is not binding in Africa.

(r)   The Respondent categorically denies bad faith dealings with the Complainant or the disputed domain name. At no time has the respondent approached the complainant to sell, rent or lease the domain name in question. Notably, the Complainant has never attempted to register the domain name despite the alleged importance to the Complainant and the alleged effect on the Complainant’s stated significant resources.

(s)  The Respondent has no presence in Canada. The allegation of a disruption of business is therefore both unlikely and unsubstantiated. It should be noted that the respondent registered the word “centre” as opposed to “center” given the continued British influence in East Africa. The domain name “oshawacenter” has not been registered, and is available to date to the Complainant.

(t)   The Respondent was never aware of the Complainant’s presence in Canada, nor was there evidence of a trademark respecting oshawacentre when the domain name was registered in June 1999. It should further be noted that the domain name was registered and incorporated long before this dispute arose.

(u)   M. Bharwani does in fact exist, and is listed on the certificate of incorporation as M. Bharwani, Box 3161 Lusaka. This information was public as of April 2000, and was available to the Complainant had they chosen to look. This disclosure meets the requirements for registration in Zambia.

(v)   In addition, Network Solutions, at all material times has had complete and accurate information with respect to Mr. Bharwani’s agent in North America, Mr. N. Walji. Mr. Bharwani chose to use an administrative agent in North America as contact with Daresalaam is often difficult. The Complainant has not alleged difficulty contacting Mr. Walji.

(w)  The Respondent denies that registration was either incomplete or incorrect. Further, Telstra does not apply as the Respondent has not passively held the domain name, but has been actively seeking financial assistance while maintaining hosting responsibilities. Nor has the Respondent attempted to conceal his identity. Telstra also involved a proper trademark for a non common use name.

(x)  The allegations against Mr Walji respecting his own business interests in North America are wholly irrelevant to this dispute. Mr. Walji is an administrative assistant, not a registrant of the disputed domain name.

(y)   At no time did the Respondent contact, for the purpose of selling or otherwise, the Complainant, other than in response to the unwelcome overtures of the Complainant. The Complainant first contacted Mr. Walji by correspondence from their legal counsel dated December 21st, 2000 and then January 23rd, 2001. These letters were insulting and threatening in their tone. The Respondent was not interested in responding to these most unwelcome overtures.

(z)   In January and February, on instructions from Mr. Bharwani, and with appreciation for the potential financial threats of the Complainant, informal and without prejudice, discussions took place respecting possible resolution of the dispute. At no time was the Respondent interested in selling the domain name; on the other hand, the Respondent was interested in avoiding potential financial exposure to costs. At the time, the Respondent was without the benefit of legal counsel in Canada. That has now been rectified.

(aa) For the record, the Respondent is not prepared to sell or otherwise transfer the disputed domain name to the Complainant. The Respondent is fully prepared to litigate this matter as required. The Complainant has acted shamefully and without honour throughout, and the Respondent has for the most part avoided unnecessary contact.

(bb) The Complainant followed up with further correspondence, through counsel, on April 16th, 2001. Again, the Respondent was threatened with legal action, etc. The Respondent ignored this correspondence. 

(cc) It is interesting to note that notwithstanding the fact that the Complainant apparently saw fit to tape record the brief messages left by Mr. Walji, they have not provided the transcript of the alleged, and denied, offer to sell the domain name for $35,000.00 (U.S.D). This is consistent with the Complainant’s bad faith.

(dd) The African nations have suffered escalating fatalities, on a virtual exponential basis, due to the uncontrolled spread of AIDS. It is the belief of the Respondent that enhanced education and the dissemination of information in a comprehensive manner through the internet may well provide a partial answer. This has been a long, slow and often frustrating purusuit given the lack of sophistication in the target market. The Respondent has taken positive steps to develop a web site that is at once accessible and understandable to the population of East Africa. As a philanthropic exercise, the project has merit and should not be denied an opportunity to succeed due to issues respecting funding. It is regretable that the site has not been developed to date, but work has proceeded “behind the scenes”.

(ee) The Complainant enjoys commercial success in the Western Hemisphere. The Complainant has a design trademark which clearly supports their business objectives, and is not threatened by anything that the Respondent has done to date, or will do in the future. The Complainant and Respondent are not competitors in any sense of the word.

(ff)  The Complainant has not come to this dispute with clean hands. The Complainant has alleged trademark protection which does not exist, and has relentlessly belittled the Respondent’s legitimate entitlement to the continued use and development of the disputed domain name.

When asked to respond to the Complainant’s additional submissions, the Respondent contended as follows:

(a)  That irrespective of the allegation that the Respondent has misused the term “shahawa”, this does not deprive him of the right to pursue a legitimate use of the domain name. He is entitled to use the domain name as he sees fit. The allegation that “oshawa” is not a “proper” Swahili term for sperm does not bolster the Complainant’s claims to the domain name. Cambridge Shopping Malls has no legitimate claim to the domain name.

(b)  The Complainant's representative, David Hanick, a "student-at-law" alleges a conversation with an official of the very government agency (the Office of the Registrar of Companies and Business Names in Lusaka, Zambia) which registered and incorporated the Respondent's business, and issued the appropriate documentation in support. The Respondent did not deal directly, or at all with Mrs. A.M. Bando-Bobo and in any event, the allegation that " her office has instituted investigations to identify the "culprits" of the misrepresentations" does not cast aspersion on the Respondent, but rather on her own staff, if in fact, proper records were not maintained. The fact that the Office of the Registrar of Zambia cannot find Mr. Bharwani’s registration can not be answered by Mr. Bharwani. Mr. Bharwani is in possession of original documents of registration and can only attribute the Registrar’s Office not finding the registration as either clerical error or possible governmental corruption. The Respondent included copies of some articles that highlight the corruption present in Zambia and says on a single day there are over 3 headlines about government corruption.

There is no question that the documents were in fact issued by the Office of the Registrar of Companies and Business Names in Lusaka, Zambia. The Respondent  has the original signed and sealed documents in his possession, and proper copies were submitted with the Response. The allegation that these documents are “fabrications” is groundless, and frankly ridiculous given the nature of the document, the official seal thereon, and the signature of the appropriate official. It would be just as ludicrous to allege that the Complainant’s documentation respecting their trademarks are fabrications.

(c)  "Oshawa" may not be a "proper" swahili word, but is recognizable as a colloquial derivative. "Oshawa" is a colloquial derivative or slang term - similar to the official word "shahawa". The Respondent is entitled to use whatever form of the word Shahawa he deems appropriate to the purpose and function of the web site. There is no basis to critique the Respondent for an alleged non-use of a "proper" swahili word, when the stated purpose of the web site is legitimate.

(d)  The Respondent states that the Complainant initiated contact and solicited an offer. In a conversation with John Fabello,  Mr. Fabello discussed the issue with Nizam Walji in a cell phone conversation where he indicated that a cease and desist letter was written and sent, but that "didn't mean the end of it and something could be worked out". Mr. Walji later spoke  to David Hanick (student-at-law) who solicited an offer to resolve the issues. In direct response to Mr. Hanick's solicitation of an offer on behalf of his client, a without prejudice offer  was advanced. The offer was in direct response to the solicitation made in the context of the threat of litigation.

The offer was made "without prejudice" and without any admission of wrong doing. This is admitted by the Complainant. The fact that the Complainant has now put forward this without prejudice offer is clearly evidence of their bad faith. The offer was never to "sell" the domain name, but only to bring the outstanding issues to resolution. As indicated in the Response, there is no interest in selling the domain name to the Complainant, or frankly having any business dealings with the Complainant or their appointed legal counsel.

(e)  Mr. Bharwani did register his name correctly, but for some reason the PO Box did not show up in the registry, and he does not know why. Mr. Bharwani tried several times to change the registry to reflect the PO Box, but nowhere on the site does it show where to do this. Mr. Bharwani did not think this to be important as the contact info for his administrative contact was proper.

(f)   The residence of Mr. Walji is not at issue since it is Mr. Bharwani who is the registrant. The allegation that Mr. Walji had knowledge of a local shopping mall is irrelevant.

The Complainant’s comment that the term oshawacentre is synonymous with their shopping mall, and that it is a highly recognized name is false.  A mini informal survey conducted by the Respondent asked people who are within 50km of Oshawa to identify what the oshawa center was. Of the respondents to the questionnaire, 20% thought it was the “TOWN HALL” or a “SPORTS ARENA”, 10% thought it was a mall of some sort but were not sure, and only 10% knew it to be the shopping mall owned by Complainant.

Once again the Respondent stresses that the Complainant does not hold an exclusive trademark to the words Oshawa Centre in Canada or anywhere in the world; and the Respondent has just as much right to use the name oshawa centre for any purpose as long as there is no competing interest, the Respondent did not act in bad faith, and there are no similarities between the Complainant and the Respondent. There clearly are no competing interests, or similarities, and the allegations of bad faith are groundless.

(g)  Whether the Complainant finds the use of the domain name, or the intended purpose of the site, compelling is irrelevant. The Complainant should stick to their chosen purpose of running shopping malls as they are clearly unfamiliar with the needs of the African population, or the goals of the Respondent. The mixed use of common words from different languages is well recognized. Although it may surprise the Complainant, the English word “centre” is known in Africa. The comment concerning “the limited internet usage of Swahili-speaking persons” is without any foundation whatsoever. The Complainant relies on bold statements without factual foundation.

(h)  The Respondent can, and does criticize, the Complainant and more particularly their counsel for the manner in which they have comported themselves in this dispute. They have made unfounded and serious allegations of fraud and bad faith, while offering up nothing to support a legitimate claim to a properly registered domain name. They do not have a trademark to the name Oshawa Centre, and in fact, their marks have specific exclusions. Knowing this, they have chosen to attack the reputation of the Respondent of whom they know nothing. Their approach, throughout, has been demeaning and despicable.

The Complainant’s final contentions in response to the Respondent’s answers are as follows:

(a)  The Respondent has failed to provide evidence, tangible or otherwise, that "Oshawa" is a word in Swahili, nor has the Respondent provided any tangible proof as to its purported meaning. In fact, the Respondent has reversed its position as originally set out at paragraph one of its Initial Response wherein it was alleged that:

The word "Oshawa" is a well-recognized colloquial Swahili word for, 'sperm and/or semen'… As such the use of the word Oshawa in the Respondent's domain name is a crucial recognizable, and easily understood, identifying future of the website."

Faced with sound evidence to the contrary, the Respondent now admits that this assertion is false and that "Oshawa is not a proper recognized word in Swahili…" The Respondent's new assertion that the term "shawa" is "well recognized in the Swahili vernacular" is similarly unsustainable and is refuted by the Complainant's previous submissions wherein it is demonstrated that the correct spelling of the colloquial word for sperm in Swahili is "shahawa" and not "shawa".

For greater certainty, the Complainant submits that the Respondent's purported goal of attracting to its intended web-site internet users seeking information on the spread of AIDS in Africa, could not be accomplished through the use of a demonstrably incorrect spelling of the colloquial Swahili word for sperm, with such incorrectly spelled term being further altered by the addition of an entirely unrelated prefix (the letter "O"), and with such amalgam being even further altered by the inclusion of the English word "centre".

In conclusion on this point, the Complainant submitted that not only has the Respondent failed to provide any evidence, tangible or otherwise, showing that "Oshawa" is either a word in Swahili, or a recognized colloquial derivative, but also that the Respondent's retreat from its initial position, and its new assertion that the colloquial Swahili term for sperm is spelled "shawa" is also and has been proven by the Complainant to be without merit.

(b)  The Respondent has been on notice that the identity of this alleged individual has been in question at least since the date upon which the Initial Complaint in this dispute was filed. Despite this lengthy period of time, the Respondent has been unable or has refused to provide the Panel with any one of a number of documents which might have conclusively proven both the existence and/or residency of "M. Bharwani". Such evidence might have included, inter alia, a copy of his birth certificate, passport, residency papers or the like, an affidavit or similar document attesting to this issue, mail addressed to him at his residence in Daressalaam or utility bills in his name indicating his existence and residency in that city.

(c)  Respondent has failed to provide any evidence of expenses allegedly incurred by the Respondent in hosting this website. In particular, the Respondent has failed or refused to produce cogent evidence such as invoices, bills and bank statements evidencing withdrawals which the Respondent, and/or the non-profit corporation allegedly incorporated thereby, must have had access to if such documents existed.

(d)  The Complainant submits that the Respondent has again failed to provide evidence in response to this concern of the Panel, relying instead on a list of publicly accessible web-sites and other well-known entities which have no apparent connection to this dispute. Not only has the Respondent failed to provide even the most rudimentary evidence of its alleged solicitations to any or all of these entities/organizations, it has also failed to provide any evidence of the responses and/or rejections received therefrom.

(e)  Contrary to the Respondent's assertions, the Affidavit of David Hanick dated May 28, 2001, does not contain "allegations" as suggested by the Respondent, but rather, and as is proper for Affidavit evidence, is an attestation of verifiable fact. Mr. Hanick's Affidavit does not reference a conversation with Ms. A.M. Banda-Bobo, Assistant Registrar of the Office of the Registrar of Companies and Business Names for the Republic of Zambia (the "Corporate Registry"), but rather sets out the contents of facsimile correspondence that the parties exchanged pursuant to which Ms. Banda-Bobo, on behalf of the Corporate Registry, denied the registration of the Corporation.

(f)  The Complainant respectfully submits that it did not act in bad faith in disclosing the fact of the Respondent's offer to sell the Domain Name for US$35,000 (the "Offer"), and further that the Respondent itself waived any privilege which may have attached to the Offer by asserting at paragraph 18 of its initial response dated May 16, 2001 that:

At no time has the Respondent approached the Complainant to sell, rent or lease the domain name in question. 

In the face of this blanket denial, the Complainant was entitled to disclose the evidence of the Offer.

(g)  The Complainant disputes and questions the reliability, veracity and validity of the "mini informal survey" allegedly conducted and relied upon by the Respondent in disputing the prominence of the Oshawa Centre Shopping Mall in its immediate geographic area and the connection of the Oshawa Centre name to the Complainant. Notwithstanding that a sample of 8 individuals is clearly not representative of the relevant population, the Complainant questions the "survey" for the following additional reasons:

      The Respondent has provided no evidence as to the identity, or actual existence of the individuals, if any, represented by the email addresses to which his request was sent;

     The Respondent has failed or refused to provide evidence of the actual responses received, if any, from his eight acquaintances;

      Despite the fact that Ontario is a province covering an area of several million square kilometres, the Respondent has failed to provide details as to where within the "province of Ontario" any or all of these alleged individuals reside, including whether any of them are within close geographic proximity to the Oshawa Centre Shopping Mall; and

      By the Complainant's calculations, the Respondent's assertion that only 10% of the 8 individuals identified Oshawa Centre as a shopping mall equates to 0.8 of one individual - a result that is clearly impossible.

5. Discussions and Findings

As will be seen from the factual background and the parties’ contentions, the panel has received a great deal of evidence with respect to this matter and that there is contradictory evidence before us. We have reviewed and considered all the evidence of both parties to this dispute, and we have likewise considered all the arguments of both parties.

Under Article 10(d) of the Rules for UDRP which concerns the general powers of the panel, “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” We will say at the outset that where the evidence of the parties differs in this case, we are inclined to prefer the evidence of the Complainant to that of the Respondent. This is because the Respondent initially took the position, which is clearly wrong and which the Respondent must have known to be clearly wrong, that the word “oshawa” is a Swahili word for “sperm” or “semen”. This is also because of the Respondent’s denial that an offer of US$35,000 had in fact been made to the Complainant when it is clear that in fact such an offer had indeed been made. 

Turning now to consideration of the issues, to prevail, the Complainant must prove the following three elements:

      (1)  That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

      (2)  The Respondent has no rights or legitimate interests in the domain name; and

      (3)  The Respondent has registered the domain name and is using it in bad faith. (ICANN Policy, para. 4(a)).

Element One

The purpose of this test is that the complainant must prove that ithas trademark rights in words similar to the disputeddomain name and is not making a spurious claim. The Complainant does not have to prove that it would succeed in a trademark infringement caseagainst the Respondent. It is also irrelevantunder this testthat the Respondent may be in another jurisdiction where the Complainant does not havetrademark rights. 

In short, it is not a requirement for the Complainant to prove that the Complainant has the exclusive rights to its trademark in relation to all types of goods and services in all countries in the world. There is no requirement thatthe Respondent is infringing or may infringe those trademark rights. For this test, it is irrelevant whether or not the Respondent knew of the Complainant's trademark.

A review of the evidence shows that the Complainant has a Canadian trademark registration for a logo that includes the words "OSHAWA CENTRE". In the Panel’s view, the contested domain name is confusingly similar to this registered trademark owned by the Complainant. If this was not so, no trademark registration that included a logo could ever be the basis of a successful UDRP case.

The Respondent raises the existence of the disclaimer in relation to the trademark registration. This is not necessarily fatal to the Complainant. See TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000-0216. Simply because the registered trademark is subject to an endorsement does not mean that the Complainant cannot have common law trademark rights in "OSHAWA CENTRE". This is consistent with the decision Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699 (paris-lasvegas.com). 

The evidence also suggests that the Complainant has common law trademark rights in relation to the words "OSHAWA CENTRE". Oshawa is the name of a place in Canada. "Centre" is a generic word. But "Oshawa Centre" is not the name of a place or a generic word. The Complainant's evidence shows that it has been using "OSHAWA  CENTRE" in the trademark sense for many decades. That usage would ground common law trademark rights. We therefore find that the Complainant has sufficient rights in the disputed domain name to permit the Complainant to bring this application. 

There is no question that the disputed domain name, oshawacentre.com is virtually identical to the Complainant’s trademark name, the only difference being that for purposes of the domain name the two words are run together as is common in domain names. The Panel therefore finds in favour of the Complainant with respect to the first element and finds that the Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights. 

Element Two

Using the criteria set out in Para. 4(c) of the ICANN Policy, we must consider whether the Respondent was using or preparing to use the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services, whether the Respondent has been commonly known by the domain name within the meaning of the policy, and whether the Respondent is making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

It is clear on the evidence before us that the Respondent has not at any time been commonly known by the domain name within the meaning of the policy.

The Respondent claims to be preparing to use the domain name in connection with a philanthropic endeavor to raise awareness of AIDS in Eastern Africa. The Respondent claims to be doing this by attracting persons to the web site because of the use of the word “oshawa” in the web address. Initially the Respondent alleged that he chose the disputed name because the word “oshawa” is the colloquial Swahili word for “sperm” or “semen”. The Complainant having refuted this allegation with strong and cogent evidence to the contrary, the Respondent now alleges that the word “shawa” is the colloquial Swahili word for “sperm” and “semen”, and that he is merely adding the letter “O” at the start of the word to reflect a sentiment similar to “O God” or “O My.” This position is neither logical nor compelling. The Respondent’s attempt to explain the use of the word “centre” along with the word “oshawa”(i.e., since centre is a word known in Africa, there is no reason not to combine it with the word “oshawa”) is also not compelling. 

Furthermore, the Respondent did not provide any cogent evidence whatsoever about preparations to use the name in a legitimate enterprise. The site itself has remained inactive since the registration on June 24, 1999, more than two years ago, and the Respondent does not appear to have carried on any business or other enterprise in any other manner using the name.

The Panel notes that no tangible evidence was provided with respect to any costs incurred to date in preparation of the web site or in solicitation of funding from government and other agencies as has been alleged by the Respondent to be the case. Even the veracity of the alleged registration of the name Oshawa Centre Information and Education Foundation o/a oshawacentre.com has been brought into question. Neither has the Respondent provided any cogent evidence as to the identity of the Respondent himself. The Respondent has provided no reasonable explanation for why he chose an Administrative Contact residing only 21.5 kilometres from the Complainant’s place of business.

On the evidence before the Panel, therefore, we are unable to conclude that the Respondent is preparing to use the domain name in connection with the bona fide offering of goods or services nor are we able to conclude that the Respondent is making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

In the end result, the Complainant succeeds in the second element as well, and we find that the Respondent has no rights or legitimate interest in the domain name in question.

Element Three

We now turn to the issue of bad faith.

First, the Complainant operates a shopping centre within 21.5 kilometres of the address of the Respondent’s Administrative Contact, Mr. Walji, who has been the person with whom the Complainants have had contact with respect to this dispute. It remains a significant and unexplained coincidence that someone from East Africa concerned with AIDS awareness would select as the technical contact a person who lived in Canada only21.5 kilometres (13.4 miles and 18 minutes driving time) from a large well-known Canadian shopping centre which had an identical name in a different language.

Initially the Respondent stated that the word «oshawa» was the Swhaili word for «sperm» or «semen». When challenged on this, the Respondent then changed its position in that regard and argued that «shawa» is the colloquial word for «sperm« or «semen».

It makes no sense that the Respondent would choose a Swahili word («shashawa»), change that name to a word that does not exist in the Swhaili language («shawa») and then add the letter «O» to the front of it to come up with a word that just happens to also be the name of a Canadian city 13.4 miles from the residence of the Administrative Contact. It is also incongruous that, having taken all these steps to come up with the word «oshawa» that the Respondent would then just happen to also add the word «centre» and end up with a domain name which is precisely the name of a shopping centre in that same City in Canada.

Secondly, the Complainant alleges that the Respondent attempted to sell the domain name to the Complainant for US$35,000. The Complainant’s solicitors sent letters to the Respondent’s Contact, Mr. Walji, advising the Respondent of the Complainant’s claim to the name and requesting a consensual transfer of the name to the Complainant. These requests were ignored. On March 2, 2001, Mr. Walji, acting on behalf of the Respondent, advised the Complainant’s lawyers by telephone voice message that the Respondent would accept US$35,000 to settle the claim over the name.

The Respondent contends that this Panel should not consider that evidence because the said offer was made during without prejudice settlement negotiations. We are satisfied, on the evidence before us, that the Respondent was the party to make the monetary offer to the Complainant and that it was not as part of any ongoing negotiations. In addition, while the offer may have been without prejudice, the Respondent lost any privilege that might have attached to that communication when in these proceedings the Respondent strongly denied that such an offer had been made.

Ordinarily without prejudice discussions between parties with respect to possible settlement of a dispute will not be considered by a Panel such as this. In the circumstances of this case, however, the Respondent will not be permitted to perpetrate a fraud on the Panel by denying that an offer of settlement was made and then hiding behind a claim of privilege to try to keep the fact the offer was made from the Panel. The Respondent’s conduct with respect to the request for US$35,000, therefore, is admissible before this panel and it is open for the panel to consider this request on the question of bad faith.

The Panel concludes that the Respondent’s request for US$35,000 to transfer the disputed name and the Respondent’s denial that any such offer had ever been made amount to bad faith within the meaning of the Policy.

Thirdly, all the evidence before us, when taken as a whole, leads to the inescapable inference, and we find as a fact, that the Respondent registered the disputed domain name for the purpose of causing confusion for the Complainant and for the purpose of benefiting from that confusion by attemtping to obtain monetary payment for transfer of the domain name.

We have reviewed this case carefully and we conclude that these factors are conclusive evidence of bad faith in the circumstances and that therefore the Complainant succeeds on the third element as well.

Throughout these proceedings, the Respondent has criticized the Complainant, suggesting that the Complainant and its solicitors have taken a demeaning and despicable approach to the case and have made unfounded allegations. The Panel wishes to point out that, on our view of the case, the Complainant and its solicitors have conducted themselves appropriately throughout.  

6. Conclusion

For all the foregoing reasons, we conclude that the domain name registered by the Respondent is identical to or confusingly similar to the Complainant’s name in which the Complainant has registered and common law trademark rights, that the Respondent has no rights or legitimate interest in the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to the ICANN Policy and Rules, we direct that the registration for the domain name “oshawacentre.com” be transferred to the Complainant.

7. Signature