Complainant is Médicapital inc. of Montréal, Québec, Canada, represented by Lévesque Lavoie, Canada.
Respondent is Domain Admin, Lease Link Canada Corp of Vancouver, British Columbia, Canada, represented by Lonsdale Law, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with NameScout Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2017. On May 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center received an email communication from Respondent on June 13, 2017 requesting a copy of the Complaint.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. On July 1, 2017, the Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Response due date was extended to July 7, 2017. The Response was filed with the Center on July 6, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 21, 2017. 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 key facts in this dispute can be set out by way of chronology:
1. Complainant was incorporated as a numbered company under the name "3350622 Canada Inc." on February 27, 1997, with its principal office in Montreal, Quebec. From June 1999 to May 2005, Complainant adopted the corporate name "Dentoplan Inc."
2. Respondent registered the domain name on October 15, 2003.
3. Respondent registered the business name "Medicredit Capital" on April 13, 2004 in the Province of Alberta, where it carries on business.
4. Complainant first used the name "MediCapital" on June 21, 2004, as a business name, according to its filings with the "Registre des Entreprises" in Quebec.
5. Complainant registered its domain name on November 15, 2004.
6. Complainant changed its corporate name to "MediCapital Inc." on May 20, 2005.
Complainant's rights to its MediCapital trademark are based entirely on common law use of the mark, as it owns no trademark registrations in Canada or elsewhere. Complainant claims that it has "become a household name in the business of financing the purchase of medical or dental equipment in Canada" since 2004. 5. Parties' Contentions A. Complainant
Complainant contends that it owns common law rights in the trademark MEDICAPITAL since June 21, 2004. Complainant submits that it has been in business since 1997, and has since that time operated in the field of financing the purchase of medical and dental equipment for customers across Canada.
Complainant submits that Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, and that Respondent was never commonly known by the disputed domain name. Respondent has used and is commonly known by the name "Lease Link Canada Corp.", and carries on business as a competitor of Complainant in Western Canada and other provinces.
Complainant submits that Respondent has registered the disputed domain name in order to prevent Complainant from owning the domain name and thereby interfered with Complainant's business. Complainant submits that passive ownership of the disputed domain name, which is confusingly similar to its common law trademark, is evidence of bad faith under the Policy. Furthermore, the rejection by Respondent of Complainant's offer to purchase the disputed domain name is additional evidence of bad faith under the Policy. Complainant submits that the relevant date for considering bad faith is the date on which Respondent renewed the registration (January, 2014). At that time, Respondent is alleged to have been fully aware of Complainant's business name, by virtue of direct contacts between Complainant and one of Respondent's principal officers during 2010-2011. B. Respondent
Respondent contends that it registered the disputed domain in 2003, which was before Complainant had ever used the "MediCapital" name. Respondent also relies on the fact that it registered the business name "Medicredit Capital" in April, 2004. Respondent submits that it registered the disputed domain name in good faith because no one had any registered trademark rights or common law rights in the mark MEDICAPITAL at the time of registration in 2003. Respondent owned the disputed domain name for over 10 years before Complainant raised any issues.
Respondent submits that Complainant ought to have known when it changed its name to "MediCapital" that Respondent already owned and had actually registered the disputed domain name. Respondent insists that it never acted in bad faith in registering or using the disputed domain name. It argues that the date for examining bad faith is 2003 when the disputed domain name was first registered, not the renewal date in 2014. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant faces an initial burden to establish that it holds rights in the trademark MediCapital. In the absence of any trademark registrations, Complainant is required to provide tangible evidence of acquired reputation or secondary meaning. Common law trademarks are recognized under the Policy, but complainants face a significant evidentiary burden to establish acquired distinctiveness in those rights. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.3 notes:
"Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."
While it is not necessary for a complainant always to provide evidence under all five factors, cogent and comprehensive evidence addressing the key factors of revenue, advertising, and recognition should normally be brought forward, unless exceptional circumstances dictate otherwise. Although it appears that Complainant has been carrying on business under the "Medi Capital" and "MediCapital" names since 2004, Complainant has not provided sufficient evidence, in the form required by the Policy, to establish common law rights in its trademark. In particular, the Panel notes the absence of any probative material with respect to sales (value or volume) or advertising (budgets or media). The only tangible evidence of market presence is in the form of a list of trade exhibitions in which Complaint has taken part for 2016 and 2017, and recent webpage references by a few customers. It is not sufficient for a complainant simply to declare that it has become "a household name" in Canada. That conclusion needed to be supported by actual evidence.
In these circumstances, the Panel finds that Complainant has failed to establish common law rights in the trademark MediCapital sufficient to support this Complaint. Accordingly, Complainant has not satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In light of the findings on the first and third elements, it is not necessary for the Panel to consider the issue of rights or legitimate interests. C. Registered and Used in Bad Faith
The principal challenge faced by Complainant in this proceeding is the fact that the registration of the disputed domain name predates the first use of the MediCapital trademark by Complainant. A number of decisions under the Policy have held that in typical circumstances, this sequence of events will preclude a complainant from obtaining relief under the Policy. WIPO Overview 3.0, section 3.8.1.:
"Where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent."
At the time Respondent registered the disputed domain name in October 2003, Complainant had not yet begun to use "MediCapital" as a trade name or corporate name. Respondent's evidence shows that it registered both the disputed domain name and a similar business name "Medicredit Capital" prior to the date when Complainant first adopted the "MediCapital" name in June 2004. It is clear that Complainant did not hold any rights in the MEDICAPITAL mark at the time when Respondent registered the disputed domain name. The initial act of registering the disputed domain cannot therefore be characterized as an act of bad faith.
In formulating its argument on bad faith, Complainant has submitted that the relevant date for considering Respondent's conduct is not the date of registration (October, 2003) but the date of the last renewal of the disputed domain name in January 2014. Under this framework, Complainant is able to argue that Respondent had actual knowledge of the use and reputation of is common law mark, because one of Respondent's executives had provided services on behalf of Complainant for a particular account in 2010‑2011.
With respect to the renewal in 2014, this is clearly not equivalent to a case where a transfer has occurred or a new party is involved. However, it is open to Complainant to argue that there are strong countervailing or otherwise extraordinary reasons to consider the renewal as if it is a new act of registration for purposes of determining bad faith.
With this framework in mind, it is necessary to examine the circumstances on which Complainant relies to argue that this renewal took place in an extraordinary or exceptional way sufficient to constitute bad faith.
Complainant identifies the following factors in support of its argument:
(1) The fact that Complainant retained the services of an executive at Respondent's business to serve a specific customer in 2010-2011 on its behalf.
(2) The fact that Respondent was therefore knowledgeable about Complainant's trademark rights.
(3) The fact that negotiations occurred between the parties in 2010-2011 about the possible transfer of the domain name, which were never concluded.
(4) The fact that Respondent "in the following months" chose to renew the domain name for the extraordinary period of 10 years, after all previous renewals had never exceeded a one year term. (Note that there is a gap of 3 years between the negotiations and the renewal.)
Respondent for its part identifies a number of factors which support a finding that there are no extraordinary factors pointing to bad faith, which would require the Panel to consider the renewal as the relevant date for its analysis:
(1) Respondent had good reason to register the disputed domain name because the name "MediCapital" is related to its business activity in the field of financial services for medical practitioners, and in light of the fact no one else had previously registered the name.
(2) Respondent never engaged in predatory conduct through use of the disputed domain name in connection with a website.
(3) Respondent never attempted to sell the disputed domain name to Complainant.
(4) Complainant should not be able to rely on its engagement of Respondent in 2010 (to assist in retaining a customer account) as proof as bad faith, when it was Complainant who initiated the arrangement.
(5) There was nothing extraordinary about the renewal for a 10-year term, as Respondent renewed all of its active domain names in January, 2014 for 10 year terms as a matter of business expediency.
In light of the explanations provided by Respondent, the panel is not persuaded that this is a situation that justifies a departure from the normal rule that bad faith must be established at the time of registration of the disputed domain name. (See Charter Communications, Inc., Charter Communications Holding Company, LLC and Charter Communications Operating LLC v. Perfect Privacy, LLC/Sheri K Corwin,WIPO Case No. D2017‑0040; and Naviswiss AG v. InLink GmbH,WIPO Case No. D2016-2339). The surrounding facts, taken as a whole, tend to support the conclusion that this was not an abusive registration. Accordingly, the Panel finds that Complainant has not satisfied the requirement under paragraph 4(a)(iii) of the Policy 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: July 25, 2017
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