The Complainant is Rockcliffe Landscaping Inc., Canada, represented by Marks & Clerk Intellectual Property, Canada.
The Respondent is Whois Agent (713109851), Whois Privacy Protection Service, Inc., United States of Anerica / Marc Arnold, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, 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 July 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2021. On August 3, 2021, the Center sent a Response Extension to the Parties indicating that according to the actual situation of both parties to the case, the deadline was extended to August 8, 2021. The Parties submitted spontaneous submissions in the course of the proceedings to which the Panel will refer to the extent that this shall be relevant. The Response was filed with the Center on August 8, 2021. The Center appointed Jacques de Werra as the sole panelist in this matter on August 20, 2021. 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 is a company operating in Ottawa, Ontario, Canada which offers landscaping services including designing, installing, and maintaining exceptional landscapes that operates since 1983. The Complainant operates under its corporate name “Rockcliffe Landscaping” (“the Name”). The Complainant was controlled by David Arnold and by the Respondent each of whom held indirectly (via holding companies) 50 per cent of the shares in a company called Arnold Brothers Holdings Ltd. (“ABC”) that controlled the Complainant.1 After a dispute arose between David Arnold and the Respondent and after the initiation of court proceedings before the Ontario Superior Court of Justice (“the Court”), a settlement agreement was entered into between David Arnold and the Respondent (and their respective holding companies) on April 3, 2019 (“the Settlement Agreement”) that was approved by order of the Court of April 17, 2019. The Settlement Agreement consists in a so-called “Shotgun Agreement” relating to the purchase and sale of shares of ABC by which (among other points covered in the Settlement Agreement) either David Arnold or the Respondent could acquire (or have third parties acquire) the shares of the other party in ABC pursuant to a detailed contractually defined mechanism. On the basis of the Settlement Agreement, David Arnold bought the shares (indirectly) held by the Respondent in ABC in April 2019 (the Panel indicates in this respect that the content and the date of the share purchase agreement – which was not filed by the Parties in these proceedings / are unknown – it being noted that this document is not necessary for the decision to be made by the Panel here). The Settlement Agreement (clause 23) provides that “[t]he Parties shall execute a Mutual Full and Final Release in a form acceptable to counsel following payment of the purchase price. […]”. On this basis, a Mutual Full and Final Release (“the Mutual Release”) was entered into with an effective date on May 3, 2019. The Mutual Release provides in particular that “IN CONSIDERATION OF the mutual obligations set out in the Settlement Agreement, the Corporation [i.e. ABC] and Rockcliffe [i.e., the Complainant] on the one hand, and Marc [i.e., the Respondent and another company called ‘2304715 ONTARIO’ which is the holding company of the Respondent], on the other hand, DO HEREBY AGREE TO MUTUALLY REMISE, RELEASE AND FOREVER DISCHARGE, and by these presents DO […] MUTUALLY REMISE, RELEASE AND FOREVER DISCHARGE EACH OTHER […] of and from any all manner of actions, causes of actions, damages, costs, expenses, suits [sic] debts, contracts, duties, claims and demands of any nature or kind whatsoever whether at law or equity or otherwise which as against each other, they now have or which they ever had or which each of them, […] hereafter can, shall or may have, existing up to and inclusive of the Effective Date, arising out of, or associated with or in any way related to, a matter that was raised, or could have been raised, in the Court Proceedings.” The Mutual Release further provides that “THE PARTIES MUTUALLY AGREE AND PROMISE not to commence or continue any action, suit or claim against any person or party which involves or relates in any way to the aforementioned claims, matters of Court Proceedings, and which may result in such person or party claiming contribution or indemnification from the other party, […]”. The Mutual Full and Final Release is declared to be “governed by the laws of Ontario and the Parties irrevocably attorn to the jurisdiction of the Ontario courts”. The Complainant has claimed that the Respondent has continued to use the Name after the sale of its shares in ABC without consent, permission or license of any kind from the Complainant in association with the provision and advertisement of landscaping services and other ancillary services. The Complainant specifically claimed that workers for the Respondent wore uniforms bearing the Name and that the Respondent incorporated the Name into his email address and also used the Name on promotional materials. A cease and desist letter was sent to the Respondent on June 21, 2019. The Respondent reacted to the cease and desist and denied any wrongdoing by claiming in essence that he had the right to use the Name. The Complainant has used the Name in association with landscaping services and related services since 1983 but did not register any trademark corresponding to the Name. A separate company D.P. Arnold Landscaping Inc. (controlled by David Arnold) filed the two following Canadian trademarks applications for trademarks including the Name on February 7, 2019 (“the Trademark Applications”): a word trademark – Canadian trademark application No 1944992) and a word and design trademark – Canadian trademark No 1944996). The Trademark Applications have not been granted yet (based on the documents and information submitted by the Parties). The Trademark Applications were transferred from D.P. Arnold Landscaping Inc. to the Complainant on the basis of an assignment agreement dated July 28, 2021 signed by David Arnold for both D.P. Arnold Landscaping Inc. and for the Complainant. The Disputed Domain Name was registered on March 1, 2005. The Disputed Domain Name and the issue of its ownership are not specifically addressed neither in the Settlement Agreement nor in the Mutual Release. Documents have been filed establishing that some expenses paid by the Respondent relating to the Disputed Domain Name have been reimbursed by the Complainant. The Disputed Domain Name was actively used since 2006 and resolved to a website presenting the activities of the Complainant until recently (the Complainant indicates that the relevant date is May 22, 2021) at which time the website and emails associated with the Disputed Domain Name were taken down. 5. Parties’ Contentions A. Complainant The Complainant claims that one of the Respondent’s duties with the Complainant was to register the Disputed Domain Name for the Complainant, which was first registered in 2005. The Complainant claims that based on the sale of the shares of ABC by the Respondent to David Arnold further to the Settlement Agreement, the Respondent was to turn over control over the Disputed Domain Name and associated website to the Complainant at that time. However, the Respondent did not do so and did not provide the Complainant with the login and account information for the Disputed Domain Name. The Complainant claims that the Disputed Domain Name is confusingly similar to the Trademark because it incorporates the entirety of the Trademark. The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because from 2005 to the Settlement Agreement being reached in 2019, the Disputed Domain Name was registered on behalf and at the behest of the Complainant, by the Respondent as part of his duties for the Complainant. The Complainant submits in this respect that the Respondent was simply the person who set up and maintained the Disputed Domain Name on behalf of the Complainant and that, as part of the Settlement Agreement all access information and rights to the Disputed Domain Name were to belong to the Complainant and to David Arnold. As of the date of the Settlement Agreement, control over the Disputed Domain Name was to have been returned to the Complainant. The Respondent did not do so, and instead on February 1, 2020, by virtue of either renewing the Disputed Domain Name, presumably in his personal name, or otherwise, transferring control over the Disputed Domain Name to a third party, the Respondent registered the Disputed Domain Name (or permitted the Disputed Domain Name to be registered) without legitimate interest or right. The Complainant has not authorized, licensed, or permitted the Respondent to register, hold, or use the Disputed Domain Name or to use the Trademark. The Complainant also submits that the Respondent is not known under the Name and has not made any preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Indeed, the Respondent has only used the Disputed Domain Name to disable the Complainant’s website and email service and to disrupt and harm the Complainant’s business. The Complainant further alleges that the Respondent registered the Disputed Domain Name at the behest and on behalf of the Complainant and that the Respondent was not expected to register the Disputed Domain Name under his own name. At all times, the Disputed Domain Name has been the property of the Complainant. This fact is clear from the Settlement Agreement, which sets out that all the Complainant’s assets remained with the Complainant. The Respondent is not associated with the Complainant and has not been since the Respondent was bought out of all of his shares in 2019. Despite the Settlement Agreement, the Respondent has refused to provide access to the Disputed Domain Name to the Complainant and has continued to renew the Disputed Domain Name registration, paying the fees personally, despite the fact that the Disputed Domain Name is the sole property of the Complainant. The Complainant submits in sum that the Respondent registered, renewed, and used the Disputed Domain Name in bad faith and that his actions intentionally targeted the Trademark and business of the Complainant for the purposes of disrupting and harming the Complainant. B. Respondent The Respondent submits that the Complainant does not meet any of the three required criteria as required under the UDRP and that its claim should consequently be dismissed. The Respondent claims that the Complainant does not have any trademark rights on the Name for different reasons including because the Trademark Applications have not been filed by the Complainant and because the Trademark Applications have not been granted yet and because the word elements included in the trademarks covered by the Trademark Applications cannot constitute a valid trademark under Canadian trademark law. The Respondent consequently claims that the Complainant fails to satisfy the first element of the UDRP and that the claim should be dismissed. The Respondent further submits that he has been in the landscaping business in Rockcliffe which is a neighborhood in Ottawa since 1978, except for a few years where he moved away from Rockcliffe, which predates the incorporation of the Complainant. As such the Respondent claims that his use of the Name are part of his heritage, including any use of theDisputed Domain Namein order to advertise such services in Rockcliffe. The Respondent further claims that the Settlement Agreement which was entered into between David Arnold and himself and their respective holding companies holding each 50 per cent interest in ABC (which in turn controls the Complainant) and related to the sale of the shares in ABC so that the Settlement Agreement does not impose any contractual obligations between the Respondent and the Complainant. While the Settlement Agreement provides for certain provisions, none of which relate to any obligation that the Respondent would have to the Complainant and any claim that the ownership of the Disputed Domain Namewas to be transferred to the Complainant is not correct. On this basis, the Respondent submits that the Complainant fails to satisfy the second element of the UDRP and that the claim should be dismissed. The Respondent submits that the Complainant fails to satisfy the third condition of the UDRP, i.e., that the Disputed Domain Name has been registered and used by the Respondent in bad faith. The Respondent alleges in this respect (among various arguments) that the Complainant tries to paint a picture of bad faith of the Respondent by various methods that do not have relevance. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy: (i) the Respondent’s Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Respondent’s Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that the Respondent’s Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel first notes that the Complainant cannot derive any right resulting from the Trademark Applications because the corresponding trademarks have not been granted in Canada. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.1.4 (holding that a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)). The Complainant claims that it owns a common law trademark on the Name. Pursuant to the WIPO Overview 3.0 (paragraph 1.3), to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. 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. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning. In this case, it is unclear whether the Complainant has satisfied the high burden of proof of establishing that it owns a common law trademark on the Name. The Name indeed consists of (i) a geographic term (“Rockcliffe”) which refers to a neighborhood in Ottawa where the Complainant operates and (ii) a generic term describing a business activity (which is the activity in which the Parties operate). In any event, the Panel does not have to decide on this issue given its decision on the two other conditions. B. Rights or Legitimate Interests The Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Panel notes from the outset that the dispute between the Parties is complex and arises in the context of business transactions involving various parties and legal entities. The Panel further notes that the Complainant has not established that the Respondent would have had the mission to hold the Disputed Domain Name for the Complainant, which is an issue that would require to assess the specific mission and function that the Respondent had for the Complainant (which is an issue that would be governed by Canadian law). The Respondent has on his side submitted elements on the basis of which it can be considered that the Complainant has not met the burden of showing that the Respondent has no rights in respect of the Disputed Domain Name for the following reasons: - The Panel considers that the Complainant has not established that the Respondent who has registered and continuously managed the Disputed Domain Name had no rights in respect of the Disputed Domain Name for the period until the Respondent sold its shares to David Arnold for the control of the Complainant in 2019. Given his position of shareholder of the Complainant, it can consequently be considered that the Respondent may very well have had rights and legitimate interests in the Disputed Domain Name until then. - For the period after the Respondent sold its shares for the control of the Complainant in 2019, the Panel notes that neither the Settlement Agreement nor the Mutual Release refer to the Disputed Domain Name. Based on a review of the Settlement Agreement (it being noted that the Panel cannot proceed to a final and binding interpretation of the Settlement Agreement which is governed by the laws of Ontario), it appears that the Settlement Agreement does not provide for the transfer of the Disputed Domain Name to the Complainant or to another entity for the benefit of the Complainant (contrary to what the Complainant seems to claim). In addition, the Panel notes that the Mutual Release does not provide either that the Complainant or another person connected to the Complainant could request the transfer of the Disputed Domain Name for the benefit of the Complainant (it being noted that the Panel cannot proceed to the final and binding interpretation of the Mutual Release which is governed by the laws of Ontario). On this basis, by following the reasoning made by other panels, and specifically by the panel in Aurelius RHO GTM Development Limited v. Office Depot, Inc.,WIPO Case No. D2017-2174, the Panel notes that the administrative proceeding under the Policy is limited in scope to cases of “cybersquatting” and is not intended to resolve complex commercial or contractual disputes. In this case, a dispute between the Parties on the issue of whether the Disputed Domain Name was intended to be owned by the Complainant as resulting from the Settlement Agreement (as claimed by the Complainant) is beyond the relatively limited scope of the UDRP and would be more appropriately addressed by a court of competent jurisdiction. It is outside the scope of the Policy for the Panel to opine on this issue and the Panel declines to do so. The Panel notes in this respect that the overall goal of the Mutual Release is to avoid the initiation of subsequent proceedings for “a matter that was raised, or could have been raised, in the Court Proceedings”. One issue to be decided by a court (it being noted that the Mutual Release provides for the jurisdiction of Ontario courts) would be to assess whether a dispute about the Disputed Domain Name would be covered by the Mutual Release and was a matter “that was raised, or could have been raised, in the Court Proceedings”. In view of this, and without prejudice to the right of the Parties to have their dispute finally resolved by a courts (which jurisdiction could depend on the interpretation of the scope of the Mutual Release), the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Consequently, the Complaint fails under this element of the Policy. C. Registered and Used in Bad Faith The Complainant claims that the Respondent’s Disputed Domain Name has been registered and is being used in bad faith. Given the finding made by the Panel with respect to the second condition, it would not be necessary for the Panel to decide whether the Complainant has established that the Respondent’s Disputed Domain Name has been registered and is being used in bad faith. This being noted, the Panel notes that the Respondent was in charge of managing the Disputed Domain Name when he was involved in the business of the Complainant. Consequently, it cannot likely be considered that he did initially register the Disputed Domain Name in bad faith. The Panel further notes that the Disputed Domain Name is not actively used whereby no clear explanations have been provided about this based on the record. In any event, similarly to what was noted above with respect to the second condition, it has not been established that the Respondent, who was in charge of the Disputed Domain Name when he was involved in the business of the Complainant and who did not have a contractual obligation to transfer the Disputed Domain Name to the Complainant or to another entity (resulting from the Settlement Agreement), acted in bad faith when registering and using the Disputed Domain Name even after the Respondent was not anymore a shareholder of the Complainant. Similarly to what other panels have decided (see e.g., Aurelius RHO GTM Development Limited v. Office Depot, Inc.,WIPO Case No. D2017-2174), the Panel notes again that this is not a case of cybersquatting suitable for resolution under the Policy, but rather a contractual dispute that should be addressed to the courts of competent jurisdiction. On this basis, the Panel does not consider that the Complainant has established that the Respondent's Disputed Domain Name has been registered and is being used in bad faith. 7. Decision For the foregoing reasons, the Complaint is denied. Jacques de Werra 1 The Panel indicates that this presentation of the facts and of the corporate transactions that took place and affected the Parties is based on the very limited facts and few documents submitted by the Parties in these proceedings.
Sole Panelist
Date: September 6, 2021
Full & Egal Universal Law Academy