WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation Case No. D2009-0567 1. The Parties
The Complainant is 537397 Ontario Inc. operating as Tech Sales Co. of Ontario, Canada, represented by Ridout & Maybee, LLP, Canada.
The Respondent is EXAIR Corporation of Cincinnati, Ohio, United States of America, represented by Thompson Hine LLP, United States. 2. The Domain Names and Registrar
The disputed domain names, , and (the “Domain Names”), are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2009. On May 1, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2009. The Response was filed with the Center on May 27, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 5, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant was incorporated in Canada in 1983. It is engaged in inter alia the production of compressed air operated products for use in manufacturing plants.
The Complainant is the registered proprietor of various trade mark registrations for the marks NEX FLOW, RING BLADE and RING VAC, the earliest of which are the following Canadian registrations, all of which were applied for on May 1, 2003 and came through to registration during 2004 and 2005:
No. 630648 NEX FLOW (words) for compressed air products;
No. 628054 RING BLADE (words) for air-knives;
No. 627794 RING VAC (words) for in-line air vacuum conveyors.
The Respondent is a competitor of the Complainant. Indeed, the unchallenged evidence of the Complainant is that for the 15 years prior to 2002 the Complainant was the Respondent's exclusive distributor in Canada.
Two of the Domain Names, and , were registered on April 4, 2003; whereas was registered on September 28, 2005.
On September 4, 2008 and October 29, 2008 the Complainant's representatives wrote to the Respondent drawing the Respondent's attention to the Complainant's trade mark rights and seeking transfer of the Domain Names (among other registered in the Canadian “.ca” domain). The Respondent did not reply to those letters.
No active use is being made of the Domain Names. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant's trade marks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. B. Respondent
The Respondent does not admit the factual allegations of the Complainant, but expresses itself willing to transfer the Domain Name, , to the Complainant at no cost to the Complainant.
As to the other two of the Domain Names the Respondent contests the Complaint on the basis that:
(i) they were registered prior to the date of the Complainant's trade mark applications; and
(ii) the Complainant's trade marks are descriptive and the registrations are ineffective and/or unenforceable. The Respondent observes that the Canadian registrations are subject to disclaimers of the individual words, “ring” and “vac”, and the words, “ring” and “blade”, and the United States registrations are in the Supplemental Register, not the Principal Register.
The Respondent denies that it has no rights or legitimate interests in respect of these two of the Domain Names. The Respondent asserts that the terms are descriptive and that as at April, 2003 the Complainant had no better right than the Respondent to adopt those terms for use in relation to its products.
The Respondent asserts that the Complainant's claim to acquired distinctiveness or reputation in respect of the terms “ring blade” and “ring vac” are unsupported by any evidence.
The Respondent contends that the Domain Names, which are not in use, were not registered in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. It contends that all four of the examples of bad faith registration and use set out in paragraph 4(b)(iv) of the Policy call for the Complainant to have had valid trade mark rights as at the date of registration of the Domain Names. The Respondent claims that the Complainant had no such rights at that time. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
The Respondent has expressed itself willing to transfer the Domain Name, , to the Complainant. While the Respondent does not admit the Complainant's factual allegations and gives no reason why it is prepared to take this position in relation to this Domain Name and not the others, the reason appears to the Panel to be that this Domain Name, unlike the others, was registered after the date of the Complainant's NEX FLOW trade mark registration. It will be noted from Section 5 above that a major plank of the Respondent's defence in relation to the other two of the Domain Names is the fact that the registration of those Domain Names pre-dated the Complainant's trade mark registrations.
It is for this reason that much of what follows concentrates upon the Domain Names, and . B. Identical or Confusingly Similar
The Domain Names in each case feature a name or term in which the Complainant claims trade mark rights and in respect of which the Complainant has trade mark registrations in both Canada and the United States.
For the purposes of this decision the Panel will ignore the United States registrations, which are in the Supplemental Register. The Panel is aware that some panelists have held that such registrations may of themselves be insufficient to evidence trade mark rights for the purposes of paragraph 4(a)(i) of the Policy and the Complainant's Canadian registrations are sufficient for the Complainant's purpose. Details of the Canadian registrations are set out in Section 4 above.
The Respondent contends that those registrations are of no assistance to the Complainant in relation to the Domain Names, and , as they post-date the date of registration of those two of the Domain Names. Those Domain Names were registered on April 4, 2003, whereas the Complainant's trade mark applications were not filed until May 1, 2003.
However, it is now well-established that for the purpose of establishing trade mark rights under paragraph 4(a)(i) of the Policy, it is not necessary that the trade mark rights should pre-date the domain name. The Panel refers to the response to question 1.4 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?
Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.
Relevant decisions: Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 (Denied); AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527 (Transfer); Iogen Corporation v. Iogen,WIPO Case No. D2003-0544, (Denied); Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598 (Transfer) among others.”
The Respondent's fallback position in relation to the Complainant's Canadian trade mark registrations of RING BLADE and RING VAC is that those registrations feature disclaimers of the individual words. However, the disclaimers are of no assistance to the Respondent as the Respondent has not taken the individual words separately, it has adopted the complete marks, albeit with hyphens in place of the spaces.
The Panel finds that each of the Domain Names is identical to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The unchallenged evidence of the Complainant is that from about 1987 to 2002 the Complainant was the Respondent's exclusive distributor in Canada. In 2002 the Respondent terminated that arrangement. Accordingly, the Complainant set out to compete with the Respondent and decided to adopt the names NEXFLOW, RING BLADE and RING VAC for its products and services. It claims first use of those marks from February 2003 (NEX FLOW and RING BLADE) and March 2003 (RING VAC).
The Respondent does not admit that account, nor does it deny it. The Respondent simply claims that the latter two of those marks, RING BLADE and RING VAC, are descriptive and available for use by all engaged in the production and sale of “ring-shaped air blades” and “vacuum conveyors”. The Respondent contends that the Complainant's rights to those terms are no better than the Respondent's rights to them.
There are two problems with the Respondent's position.
First, while in the parties' industry the term “ring blade” may be suggestive of a particular type of air blade and while the term “ring vac” may be suggestive of a particular type of vacuum conveyor, the Respondent has put nothing of substance before the Panel to support its contention. The fact that the Complainant's United States registrations are in the Supplemental Register, not the Principal Register, is far from conclusive on the point. All marks accepted for the Supplemental Register must be “capable of distinguishing applicant's goods and services”.
Secondly, if the Respondent's reason for registering the Domain Names was their descriptiveness, apt for use in the industry in question, it is somewhat strange that the Respondent has produced no evidence to show any use of them.
In the absence of any denial of the Complainant's account and the absence of any credible alternative explanation from the Respondent, the Panel finds that the Respondent registered the Domain Names knowing them to be names which the Complainant or one of its associated companies had just started using or proposed to use as trade marks for the latter's goods and services and for no other reason.
The fact that subsequently the Respondent registered the Domain Name, , which it knew to be the Complainant's trading name (or at any rate a trading name of one or more of the Complainant's associated companies) satisfies the Panel that the Respondent's domain name strategy was in this respect targeted at the Complainant
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
The Respondent's defence to the bad faith claim is that because the Domain Names, and , were registered prior to the Complainant's trade mark applications, none of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy is applicable. The Respondent asserts that all those examples pre-suppose the existence of a trade mark.
The Panel disagrees. First, the list of examples in paragraph 4(b) of the Policy is expressed to be non-exhaustive, so there is room for a Panel to find abuse in another form. Secondly, as can be seen from the response to question 3.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the latter part of which appears to the Panel to be precisely on point, there are circumstances where the rights may post-date the registration of the domain name:
“3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.
Relevant decisions: John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074 (Denied); Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827 (Denied); PrintForBusiness B.V v. LBS Horticulture,WIPO Case No. D2001-1182 (Denied).
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.
Relevant decisions: ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669 (Denied); Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),WIPO Case No. D2003-0320 (Transfer); Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598 (Transfer) among others; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online,WIPO Case No. D2003-0845 (Transfer).”
The Panel agrees that there is very little supporting evidence before the Panel as to the Complainant's use of its trade marks prior to registration of the Domain Names, and . However, for the reasons given above, the Panel is satisfied that the Respondent would never have registered those Domain Names were it not for the fact that the Respondent knew that they were in use or about to be used as trade marks by the Complainant.
Since the Respondent has made no active use of the Domain Names, it is impossible to assess with any certainty what the Respondent's precise motives were at time of their registration. The Complainant contends that the Respondent's purpose was to block the Complainant from registering them itself (paragraph 4(b)(ii) of the Policy), but the Panel believes it at least as likely that the Respondent's intention was to use them to disrupt the business of the Complainant (paragraph 4(b)(iii) of the Policy) or to use them for commercial gain (paragraph 4(b)(iv) of the Policy).
Parties do not register the trade marks of their competitors for no reason at all and in the particular circumstances of this case, the Panel feels entitled to infer that the Respondent's intentions were abusive. The fact that no use has in fact been made of the Domain Names may simply have been the realization that any commercial use of the names would be likely to infringe the Complainant's trade mark rights.
The Panel is satisfied that in the hands of the Respondent, a competitor, the Domain Names constitute an abusive threat hanging over the Complainant's head, which equates to a bad faith use under the Policy. After all, as is apparent from paragraph 4(b)(ii) of the Policy,in the view of this Panel,, active use is not always a dispositive pre-requisite for the purposes of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Names were registered and are being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the panel orders that the domain names, , and , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: June 19, 2009
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