Complainants are Philippe Dagenais designer inc. / Philippe Dagenais of Quebec, Canada (collectively, for economy of expression herein, “Complainant”) represented by De Grandpré Chait LLP, Canada.
Respondents are Groupe Dagenais MDC inc. (formerly Philippe Dagenais Mobilier Décoration Conseils Inc.) / Mobilier Philippe Dagenais of Quebec, Canada (collectively, for economy of expression herein, “Respondent”), represented by ROBIC, LLP, Canada. 2. The Domain Names and Registrars
The disputed domain name is registered with Melbourne IT Ltd.
The disputed domain name is registered with GoD, LLC.
(collectively, for economy of expression herein, the “Disputed Domain Names”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 20, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Disputed Domain Names. On February 20, 2012, GoD, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 29, 2012 providing the registrant and contact information disclosed by that Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 2, 2012.
On February 23, 2012, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name . On February 24, 2012, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent was the current registrant.
The Center verified that the Complaint with the amendment to 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 March 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2012. The Response was filed with the Center on March 26, 2012.
The Center appointed Mark Ming-Jen Yang, Dawn Osborne and Mark Partridge as panelists in this matter on April 25, 2012. The Panel finds that it was properly constituted. Each member of 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 disputed domain name was registered on December 14, 2001.
The disputed domain name was registered on February 13, 2006.
The trade-mark PHILIPPE DAGENAIS DESIGNER and design was registered at the Canadian Intellectual Property Office (“CIPO”) by Complainant on August 21, 2006 as registration No. TMA670638.
The trade-mark MOBILIER PHILIPPE DAGENAIS and design was registered at CIPO by Complainant on June 8, 2004 as registration No. TMA612364.
The trade-mark WWW.PHILIPPEDAGENAIS.COM was registered at CIPO by Complainant on December 9, 2009 as registration No. TMA754889.
An application for the trade-mark PHILIPPE DAGENAIS was filed at CIPO by Complainant on February 14, 2011 as application No. 1515218. The application is still pending.
(collectively, for economy of expression herein, “CIPO Trade-mark Registrations and Application”)
The trade-mark registration for PHILIPPE DAGENAIS DESIGNER and design, TMA670638, is the subject of an expungement proceeding at CIPO initiated by Respondent (through ThelmaPl Investigations). That proceeding is pending. 5. Parties’ Contentions A. Complainant
Complainant contends that it has trade-mark rights in the CIPO Trademark Registrations and Application as well as in the name “Philippe Dagenais” and that the Disputed Domain Names are confusing similar therewith; that Respondent has no rights or legitimate interests in the Disputed Domain Names; and that Respondent registered and uses the Disputed Domain Names in bad faith. B. Respondent
Respondent disputes the rights contended for by Complainant in the PHILIPPE DAGENAIS trade-mark (and in particular, Respondent disputes Complainant’s ownership of the CIPO Trade-marks Registrations and Application). Respondent contends that the “material elements” of the Complaint are “inaccurate, incomplete and misleading and that the Complaint is nothing more than an attempt to force Respondent to renegotiate terms” of an earlier agreement. That earlier agreement is the “Cession de Droits” Agreement signed in 2003, by which the parties (or their predecessors-in-title) purport to retain and assign certain rights, for monetary consideration, in respect of the PHILIPPE DAGENAIS trade-mark (including the derivative Trade-mark MOBILIER PHILIPPE DAGENAIS). Respondent contends that even if its interpretation of the “Cession de Droits” Agreement does not convincingly rebut Complainant’s contentions, the proper interpretation thereof is outside of the scope of competency of the Panel. 6. Discussion and Findings
The parties (or their predecessors-in-title) signed an Agreement in 2003, a “Cession de Droits” Agreement which was intended to divide certain rights between them. According to the parties, there were attempts, going back at least as early as 2007, to resolve their disagreements over the performance (or breach) of the “Cession de Droits” Agreement in respect of the PHILIPPE DAGENAIS trade-mark, including alleged actions and reversals of Respondent. These attempts have failed.
Complainant contends that “Very clear between the parties was the fact that the trade-mark right granted to the Respondent was strictly to the expression MOBILIER PHILIPPE DAGENAIS, given the co-existence of the other activities of Complainant and co-Complainant, and that any use of the expression PHILIPPE DAGENAIS was strictly forbidden, unless preceded by the word MOBILIER.” Complainant reiterates, “[…] Respondent was well aware of the limitations of the rights granted, and that it did not include the rights to the Mark PHILIIPPE DAGENAIS, but was strictly limited to the mark MOBILIER PHILIPPE DAGENAIS”.
Contrary to Complainant’s contentions, the Panel considers that the situation is far from “very clear” on who had what rights to the trade-marks MOBILIER PHILIPPE DAGENAIS and PHILIPPE DAGENAIS. This is because the Complaint and Response are each rife with contentions and counter-contentions, many of which are contradictory and some significant portions of which are beyond the Panel’s competence to evaluate. The Panel considers that the parties’ dispute is properly resolved in a court process where discovery and related processes are available. The voluminous annexes and schedules submitted by each party, are the obvious indicator that Complainant is trying to squeeze into this specialized administrative process, a dispute that belongs in a court. The UDRP jurisprudence, its governing instruments and legislative background, are all clear that the Policy was designed to prevent extortionate or abusive behavior commonly known as “cybersquatting” and cannot be used to litigate all disputes involving domain names (e.g. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). Furthermore, even if the Panel was competent to decide what is primarily a contractual/trade-mark dispute on the basis of the Policy, the pending CIPO expungement proceeding against the PHILIPPE DAGENAIS DESIGNER and design Registration No. TMA670638, is a warning that the Decision sought from the Panel by Complainant, would be premature.
Because the Panel considers the dispute presented to it as primarily a contractual and trade-mark dispute that is outside the Policy, it dismisses the Complaint.
Below, the Panel briefly samples a few contentions and counter-contentions to show how it came to the conclusion that the “Cession de Droits” Agreement is critical to the proper determination of this dispute, and that because the Policy and process do not have procedures such as discoveries, subpoenas, oral evidence, cross-examination and oral argument that would be necessary for the proper interpretation of the “Cession de Droits” Agreement, the Panel cannot decide on the merits according to the Policy. The failure of the attempts by the parties to resolve their disagreements on the “Cession de Droits” Agreement, was presented in sufficient detail that the Panel is certain that such procedures are necessary. A. Trade-mark ownership
Although Complainant is the organization that is listed as the holder of the CIPO trade-marks Registrations and Application, Respondent contends that the CIPO records are not accurate about true ownership. Respondent contends that the “Cession de Droits” Agreement required Complainant to assign to Respondent (or its predecessor-in-title) the MOBILIER PHILIPPE DAGENAIS and design trade-marks (that became CIPO Registration No. TMA612364); that, in the event, an attempt to record such an assignment at CIPO failed (because CIPO refused to register an assignment of a Trade-mark that was part of a group of “associated” trade-marks without the entire group being assigned); and that because of that requirement in the “Cession de Droits” Agreement, Complainant had no right to apply to register the PHILIPPE DAGENAIS DESIGNER and design trade-mark (that became Registration No. TMA670638) and the WWW.PHILIPPEDAGENAIS.COM trade-marks (that became Registration No. TMA754889). The preceding prompts many questions outside of the Policy, including the intentions of the parties who apparently wanted to “split” a Trade-marks based on the (design and furniture store) fields of use but were confronted by resistance from CIPO and perhaps fundamental trade-marks law. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights to the trade-marks PHILIPPE DAGENAIS by itself and that the “Cession de Droits” Agreement granted only the use of MOBILIER PHILIPPE DAGENAIS. Respondent disagrees by contending that the “Cession de Droits” Agreement was not so restrictive. The Panel finds the contractual language in the “Cession de Droits” Agreement, by itself and without oral evidence and cross-examination, to be unclear about what the parties thought they had agree upon. C. Registered and Used in Bad Faith
The proper characterization of Respondent’s activities with the Disputed Domain Names, is inextricably tied to the proper interpretation of the “Cession de Droits” Agreement.
The above, brief samples, are not meant to indicate any opinion of the Panel on the merits of the contentions and counter-contentions but merely to illustrate that the dispute is not apt for resolution by the Panel under the Policy; it is rather primarily a contractual and trade-marks dispute that is properly resolved by CIPO and a court. 7. Decision
For the foregoing reasons, the Complaint is dismissed.
Mark Ming-Jen Yang
Presiding Panelist
Dawn Osborne
Panelist
Mark Partridge
Panelist
Dated: May 10, 2012
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