The Complainant is I4C Innovation Inc. of Trail, British Columbia, Canada, represented by Lawson Lundell LLP, Canada.
The Respondent is Tim Dufour of West Kelowna, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2018. On August 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 11, 2018. 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 operates a business under the name and mark I4C in association with a laboratory, production and testing facility located in Trail, British Columbia, Canada. The Complainant provides a range of services related to the Internet of Things (IoT), big data storage and industrial analytics. The Complainant began organizing its business as early as February, 2017, and created the I4C mark at that time. The business was formally incorporated on April 12, 2017, and opened its facility in May, 2017. Over that time the Complainant has continuously used the I4C trade name and mark in association with its business and services.
The Complainant has operated a website at “www.” in association with its business since October, 2017.
The Complainant (through its trademark I4C) has developed a reputation in the tech industry and has been featured in several industry news articles, such as “Trail, B.C. leads industry change” in Kootenay Business; “i4C Innovation Centre & Metal Tech Alley” on the Lower Columbia Initiatives Website; “Metal Tech Alley Celebrates Grand Opening in Trail” in Kootenay Business.
The Respondent was a founding member of the Complainant and was appointed as a founding director of the Complainant as soon as the Complainant was incorporated. The Respondent’s duties involved responsibility for intellectual property including domain name issues. The Respondent was asked to register the disputed domain name on behalf of the Complainant, and did so on February 8, 2017. The disputed domain name resolves to the Complainant’s official website. 5. Parties’ Contentions A. Complainant
The Complainant asserts common law rights in the trade name and trademark I4C dating back to the development of the mark in early February, 2017. It has continuously used its trade name and trademark since its incorporation, in association with its business.
The Respondent was a founding member of the Complainant’s company, and became a director upon incorporation of the business on April 12, 2017. As part of the start-up preparations for the business, the Respondent registered the disputed domain name on the Complainant’s behalf on February 8, 2017. At all material times the disputed domain name has been used by the Complainant and for the Complainant’s business.
The Respondent is not commonly known by the disputed domain name, and has never engaged in a legitimate business of his own using the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent registered the disputed domain name as part of his duties as a founding member of the Complainant’s business. In February, 2018, the Respondent took care of the renewal of the disputed domain name on behalf of the Complainant. For both the initial registration and subsequent renewal, the Respondent was reimbursed for the expense by the Complainant. In April, 2018, the business relationship between the Respondent and the Complainant became strained and eventually the Respondent resigned his directorship on June 18, 2018. The disputed domain name has always been used by the Complainant for the Complainant’s business.
The Complainant requested several times that the Respondent transfer the disputed domain name to the Complainant, and the Respondent has refused.
The Complainant contends that the Respondent is holding the disputed domain name to interfere with the Complainant’s business, which is evidence of bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the 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 the Complainant has rights;
(ii) The 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
The Panel finds that the Complainant does have common law trademark rights in the trademark I4C by virtue of its development and use of the mark in association with the Complainant’s business since February 2017, when the Complainant first created the mark and initiated the steps to register the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s common law trademark I4C.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests.
Once the Complainant has done so, the burden then shifts to the Respondent to bring forward relevant evidence of rights and legitimate interests. No such evidence has been mustered.
All the circumstances suggest that the Respondent never had ownership rights to the disputed domain name, because the act of its registration (and subsequent renewal) were undertaken on behalf of the Complainant, upon instructions from the principal owner of the business. The evidence shows that the Complainant actually reimbursed the Respondent for the expenses associated with the disputed domain name, pursuant to the Respondent’s requests. The Respondent’s own conduct confirms that he himself never held a legitimate interest or rights in the disputed domain name, but rather that the Complainant was at all times the beneficial owner of the I4C trademark and associated domain name, and that the Respondent was no more than an agent and ultimately a trustee for the disputed domain name on behalf of the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As set out above, the evidence is clear that the Respondent never had the right to register the disputed domain name in his own name, for his own purposes. The original registration was intended to secure ownership of the disputed domain name for the Complainant’s business, and the Respondent was made aware of this expectation through instructions received from the principal owner of the business. The Respondent became one of the founding directors of the incorporated business in due course. Under Canadian law, directors owe fiduciary duties to their corporation, which create strict obligations to act in good faith for the benefit of the company in all material respects. The Respondent’s duties included acting as corporate custodian for the intellectual property of the business, which obviously encompassed the Complainant’s domain name for its operating website. By refusing to transfer the disputed domain name to the Complainant, the Respondent breached his duties as a director, agent and trustee, which leads the Panel to characterize the entire pattern of conduct, including the registration and retention of the disputed domain name, as an act of bad faith. UDRP panels have also generally found that when a complainant directs an employee to register a domain name on behalf of the complainant, with the intention or instruction that the domain name is to be owned or controlled by the complainant, such registration in the employee’s name or control constitutes registration in bad faith (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094).
The final factor in the bad faith analysis is the Respondent’s conduct in June 2018, when his relationship with the Complainant deteriorated to the point where he resigned as director. At that time, the Respondent attempted to use the disputed domain name as leverage against his employer to gain access to the business after his termination. This sort of “strong-arming” is another indicator of bad faith, particularly when analyzed in light of the Respondent’s fiduciary duties to the corporate Complainant, and the fact that the Respondent was fully aware that he had registered the disputed domain name for and on behalf of the Complainant “in full contemplation of Complainant’s assertion of rights” in I4C, in the first place (see AvCraft Aviation, L.L.C. v. Gary Kohlschmidt,WIPO Case No. D2004-0213).
The Panel is therefore prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: September 17, 2018
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