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Generic Top Level Domain Name (gTLD) Decisions |
2321-5205 Quebec Inc. v. Le Naturaliste
Education
Claim Number: FA0402000235830
PARTIES
The
Complainant is 2321-5205 Quebec Inc.,
Sainte-Foy, Province of Quebec, Canada (“the Complainant”) represented by Martin Dubois, of Bernier Beaudry, Counsels & Attorneys, 3340, de la Perade
Street, Suite #300, Sainte-Foy, Province of Quebec, G1X 2L7 Canada. The
Respondent is Le Naturaliste Education,
926, Belvedere Street, Saint-Nicolas, Province of Quebec, G7A 3V3, Canada (“the
Respondent”) represented by Richard Belanger.
The
domain name at issue is <lenaturaliste.com>,
registered with Tucows, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Hugues
G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 5, 2004; the Forum received
a hard copy of the
Complaint on February 5, 2004.
On
February 6, 2004, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <lenaturaliste.com> is
registered with Tucows, Inc. and that the Respondent is the current registrant
of the name. Tucows, Inc. has verified
that the Respondent is bound by the Tucows, Inc. registration agreement and has
thereby agreed to resolve
domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
February 9, 2004, the Forum sent a letter to the Complainant identifying the
following deficiencies in the Complaint: the <www.>
before all references
to the disputed domain name to be removed; the Registrant of the disputed
domain name to be changed for LE
NATURALISTE ÉDUCATION; and an additional copy
of the Complaint’s exhibits to be provided. In the view of those deficiencies,
the
Complainant has amended its Complaint on February 10, 2004.
On
February 12, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 3, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via
e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts,
and to postmaster@lenaturaliste.com by e-mail.
A
timely Response was received and determined to be complete on March 2, 2004.
On March 15, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hugues G.
Richard as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant contends that the mark LE NATURALISTE was used as a service mark
from May 16, 1980 until May 31, 1985 by Mr. Georges
Gilbert, the original
founder of the commercial venture bearing the mark. On May 24, 1985, Mr.
Gilbert incorporated the Complainant
under the laws of the Province of Québec,
Canada. The Complainant contends that from this date, it has continued to use
the mark
LE NATURALISTE. In 1998, the Complainant sold parts of its assets to
the Respondent, which went by 9058-0127 Québec Inc at that time.
As part of
this transaction, the Complainant has agreed to a five-years non-competition
clause allowing to the Respondent the exclusive
privilege to sell to learning
institutions under the name LE NATURALISTE ÉDUCATION. This clause has ended in
May 2003. On October
31, 2000, the Complainant’s administrators sold the
totality of the shares of the Complainant they owned to another corporation
owned
by Mr. Gianfranco Zoso and Mrs. Jeanne Corneau. The Complainant contends
that the non-competition clause from the agreement of 1998
was fully respected
by the new owners of shares of the Complainant.
The
Complainant contends it has an exclusive right in the mark LE NATURALISTE by
its continuous use in commerce in Canada since 1980,
in accordance with
Canadian trademark law. It contends that formal registration of a mark is not
deemed to create an exclusive right
on the mark in Canada. Establishing prior
and continuous use of a mark is therefore a sufficient base to demonstrate the
exclusive
rights pertaining to the mark against ulterior users of that mark. To
prove its rights in the mark, the Complainant has provided
copies of its yearly
catalogs with the Complaint.
The Complainant contends that the
Respondent’s domain name creates a clear confusion with its mark. The
Complainant adds that the
Respondent markets goods and wares that are identical
of confusingly similar to the goods and wares marketed by the Complainant.
The Complainant contends that the
Respondent does not hold a trademark or a service mark identical to the domain
name in dispute.
Furthermore, the Complainant argues that even though the
Respondent may have used the disputed domain name in relation with a bona fide offering of goods and
services, this should be interpreted as a revocable privilege, an indirect and
unforeseen result of the non-competition
clause from the agreement of 1998 that
is now terminated. The Complainant contends that if any authorization of
registration of the
disputed domain name could be inferred from the agreement,
it was limited in time and was automatically revoked with the termination
of
the non-competition clause. It adds that the Respondent has registered the
domain name without rights, but under a limited contractual
privilege. Finally,
the Complainant alleges that the Respondent is not commonly known as “LE
NATURALISTE” in the markets and areas
where the Complainant and the Respondent
usually conduct business.
The
Complainant contends that the Respondent has intentionally attempted to
attract, for commercial gain, Internet users to the Respondent’s
web site,
other on-line location or by fax and phone order placements. It therefore
creates a likelihood of confusion with the Complainant’s
mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or location
or of a product or service on
the Respondent’s web site or location. To illustrate
this confusion, the Complainant alleges that “checks, order forms or pricing
requests often are sent to Respondent instead of Complainant’s place of
business. Telephone inquiries about the exact identity and
place of business
still happen as of this date . . . Clients regularly are confused about the
identity of the Respondent and the
means to reach its representatives”. The
Complainant also contends that the Respondent has advertised on its web site
goods and wares
purchased from the Complainant. Furthermore, the Complainant
alleges that reaching the Respondent’s representatives at the contacts
advertised on its web site, is very difficult. His customers, who legitimately
thought they were reaching Complainant’s place of
business, lodged a complaint
to the Complainant. The Panel wishes to point out that the evidence submitted
by Complainant does not
support these contentions.
B.
Respondent
The Respondent did not address this
issue.
The Respondent did not contend that the
Complainant’s mark and the disputed domain are not identical. However, it
contends that both
parties do not make business in the same market, as it sells
exclusively to educational establishment. The Complainant for itself
sells to
the general public, items which are in most cases different from products
offered by Respondent.
The Respondent contends that the use of
the name LE NATURALISTE ÉDUCATION, was contractually transferred to him upon
the signature
of the contract of 1998 thus confirming that the agreement had no
effect of limiting the time of its use. Therefore, the Respondent
contends it
has rights to use the name LE NATURALISTE ÉDUCATION as it has legally acquired
it. The Respondent has provided a copy
of the agreement of 1998 in French with
its Response, and has translated parts of it. The Respondent contends that the
Complainant
has failed in its interpretation of the non-competition clause. It
alleges that the non-competition clause aims only at preventing
the Complainant
to compete with the Respondent “inside the walls of any educational
establishment” in order to avoid that the parties
will be in direct
competition. Furthermore, the Respondent alleges that its customers know him
since as early as 1980 under the name
LE NATURALISTE, as it appears from the
copy of the agreement of 1998 and from a copy of a letter of Georges Gilbert
attached to the
Response.
The
Respondent contends that it cannot intentionally attempt to attract for
commercial gain Internet users to its web site as it clearly
indicates on it
that it deals only with educational establishments, as shown by the evidence
submitted by it. It argues that the
domain name <lenaturaliste.com>
does not confuse the Complainant’s customers as the Respondent only sells to a
targeted clientele. Therefore, it alleges that it
is not interested in the
Complainant’s customers as it sells only to educational establishments.
Furthermore,
the Respondent denies that checks, order forms or pricing requests are sent to
the Respondent instead of Complainant
place of business because no deals are
made with its customers or suppliers through the Complainant’s web site. The
Respondent contends
that no transactions are made by its web site and all
communications between it and its customers or suppliers are made by fax or
telephone. For this reason, it argues that neither the Respondent nor the
Complainant can suffer from confusion which the Complainant
referred to. The
Respondent also denies that it has promoted, on its web site, products
purchased from the Complainant. The Respondent
denies also that the Complainant
receives complaints on the poor quality of the Respondent’s customer service,
because it has never
heard such assertions and because several customers’
surveys demonstrate the contrary. It does not support this allegation by
evidence.
FINDINGS
Having reviewed the evidence submitted by
the parties and their written representations, the Panel makes the following
findings :
·
The
Respondent’s domain name <lenaturaliste.com> is identical to the
mark LE NATURALISTE in which the Complainant has rights;
·
The
Respondent has no rights or legitimate interests in respect with the domain
name <lenaturaliste.com>; and
·
The
Respondent has registered and used the domain name <lenaturaliste.com>
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant proves each of the following
three elements to obtain an order that a domain
name should be cancelled or
transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
The Panel finds that the Complainant has
shown sufficient evidence that it has rights in the mark LE NATURALISTE, as it
uses the mark
since its incorporation in 1985. Furthermore, the Panel considers
that the Complainant’s mark is identical with the Respondent’s
domain name <lenaturaliste.com>,
because the domain name incorporates the mark in its entirety, with the
exception of the generic top-level domain “.com.” Such difference
is irrelevant
under the Policy, decided in the WIPO case Oki
Data Americas, Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001).
The Panel has taken upon itself to read
the agreement of 1998 between the Complainant and the Respondent, annexed to
the Response.
It clearly indicates that the Respondent has bought the rights to
use the mark LE NATURALISTE ÉDUCATION. Absent indication to the
contrary, the
right to use a mark includes the right to register this mark. Therefore, the
Panel cannot consider the Complainant’s
contention stating that the Respondent
has no rights in the mark LE NATURALISTE ÉDUCATION for the reason that it was
only a contractual
privilege. Nothing in the agreement of 1998, has restricted
the Respondent’s rights in the mark. Furthermore, the Panel must reject
the
Complainant’s contention that the right to use the mark has terminated with the
termination of the non-competition clause from
the same agreement. The
non-competition clause only prevents the Complainant to compete directly with
the Respondent for a five-year
period. It is therefore irrelevant to any
restriction to the use of the mark LE
NATURALISTE ÉDUCATION.
However, the Panel finds that the
Respondent has no rights or legitimate interests in the domain name <lenaturaliste.com>
as it has rights only in the mark LE NATURALISTE ÉDUCATION. The Respondent does
not carry business under the disputed domain name.
In the light of all that has
been submitted, it clearly uses the mark LE NATURALISTE ÉDUCATION, not the mark
LE NATURALISTE. Even
if the Respondent were commonly known by the disputed
domain name based on alleged use since February 15, 2001, the Panel finds that
the Respondent did not use the disputed domain name in connection with a bona fide offering of goods and services
nor a legitimate noncommercial or fair use because there would seem to be an
intent on the part of
the Respondent to divert Complainant’s customers to its
own web site, as provided for in Policy ¶ 4(c). In the WIPO case eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001), it is stated that using the
“Complainant’s entire mark in infringing domain name makes it difficult
to
infer a legitimate use.” Furthermore, in U.S.
Fran. Syn., Inc. v. Howell, FA
152457 (Nat. Arb. Forum, May 6, 2003) the panel found that the respondent’s use
of the complainant’s mark and the goodwill surrounding
that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods and
services. For those reasons, the Respondent should be considered as having no
rights or legitimate interests
in the domain name <lenaturaliste.com>.
The Panel finds that the Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iv) by
intentionally attempting to attract, for commercial gain, Internet
users, to the Respondent’s web site by creating a likelihood of
confusion with
the Complainant’s mark LE NATURALISTE. In the WIPO case Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629
(WIPO Mar. 15, 2001), the panel found bad faith where the respondent initially
used the domain name at issue to resolve
to a web site offering similar
services as Complainant into the market. The evidence submitted by the
Respondent shows that the parties
are in direct competition as many of the
goods advertised in their catalogs and web site are the same. Even if the
Respondent sells
to a targeted clientele, the Complainant must be considered as
a direct competitor, because it sells to the general public, and can
sell to
educational establishments, as the non-competition clause of the agreement of
1998 ended in May 2003.
Furthermore, the Panel must reject the
Respondent’s contention that it clearly indicates on its web site that it deals
only with education
establishments. Disclaimers do not negate the fact that the
Respondent has registered and used the disputed domain name in bad faith
because Internet users are misdirected prior to seeing the disclaimer. In the
case Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum
Oct. 31, 2000), a panel found that since a disclaimer does not, and could not,
accompany the domain name,
then the “domain name attracts the consumer’s
initial interests and the consumer is misdirected long before it has the
opportunity
to see the disclaimer.” In Ciccone
v. Parisi, D2000-0847 (WIPO Oct.
12, 2000), it has been stated that the “Respondent’s use of a disclaimer may be
ignored or misunderstood by
Internet users. Secondly, a disclaimer does nothing
to dispel initial interest confusion that is inevitable from the Respondent’s
actions. Such confusion is a basis for finding a violation of the Complainant’s
rights. Given these circumstances, the Panel considers
that the Complainant has
shown sufficient evidence to meet its burden.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lenaturaliste.com> domain name
be TRANSFERRED from the Respondent
to the Complainant.
Hugues G. Richard, Panelist
Dated: March 26, 2004
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