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Inter-Power A.K. Corporation v. Entreprises Larry Inc. [2004] GENDND 741 (15 June 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inter-Power A.K. Corporation v. Entreprises Larry Inc.

Case No. D2004-0240

1. The Parties

The Complainant is Inter-Power A.K. Corporation, St-Laurent, Quebec, Canada, represented by Fares Kabbani, Canada.

The Respondent is Entreprises Larry Inc., Montreal, Quebec, Canada, represented by Lozeau L’Africain, S.E.N.C., Canada.

2. The Domain Name and Registrar

The disputed domain name <compresseurquebec.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2004 by email and on April 1, 2004, in hardcopy. On March 31, 2004, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On March 31, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2004.

On April 16, 2004, Counsel for Respondent wrote to the Center, claiming that the Center had no jurisdiction. On April 19, 2004, Me Linteau, on behalf of Complainant, wrote to the Center, arguing that the Center had jurisdiction, since Respondent had accepted the conditions provided by the Tucows Inc. protocol.

On April 21, 2004, the Center sent an email to Me Linteau and Mr. Fares Kabbani, putting forward that the Complaint indicated that Mr. Fares Kabbani is the Complainant’s authorized representative, although it has been receiving communication from Me Linteau. The Center required an indication whether Me Linteau or Mr. Kabbani should be the authorized representative for the Complainant.

On April 21, 2004, Counsel for Respondent wrote to the Center, arguing that the arbitration clause in contracts can be set aside when imperfect or optional, and requiring that the Center remove the case from its jurisdiction. On the same day, the Center sent an email to Me Lozeau, Counsel for Respondent, confirming that “the administrative proceeding that was filed against you by the Complainant stands” and indicating that “the language of the proceedings is English.”

On April 21, 2004, Me Lozeau wrote to the Center, claiming that he was expecting a “motivated decision” on the issue of the Center’s jurisdiction and requesting further explanations. Counsel for Respondent also suggested that the language of future communication be French.

On April 22, 2004, the Center responded to Me Lozeau, confirming that “an administrative proceeding has been commenced against you pursuant to the Uniform Domain Name Dispute Resolution Policy,” adding that “the Policy is incorporated by reference into your Registration Agreement with the Registrar of your domain name(s) pursuant to which you are required to submit to and participate in a mandatory administrative proceeding in the event that a third party (the Complainant) submits a Complaint to an ICANN-approved dispute resolution service provider.”

The Center also indicated that “regarding the language of the proceeding, pursuant to Rules, Paragraph 11, the language of the administrative proceeding shall be the language of the registration agreement. According to the information we have received from the concerned registrar, the language of the registration agreement for the disputed domain name is English, so the case will continue to be handled in English.”

On April 22, 2004, the Center received an email from Mr. Kabbani indicating that the firm Lamarre Linteau Montcalm is the legal firm assisting his company, which is why Me Linteau responded directly to the Center. Mr. Kabbani confirmed that he is the authorized representative for Complainant and that he receives a copy of all correspondence sent to his office in Montreal while he is in Europe. Mr. Kabbani requested that all correspondence be sent to Me Linteau until his return on April 25, 2004.

The Response was filed with the Center by email and fax on April 26, 2004, and on April 30, 2004, the annexes were received in hardcopy.

On April 26, 2004, the Center sent an email to Counsel for Respondent, indicating that his response should have been in English since the language of the proceedings is English. The Center also required that the Respondent provide a list of names of three candidates, as the Complainant has opted for a three-member panel.

On April 26, 2004, Counsel for Respondent replied to the Center and indicated that in view of the fact that he was contesting WIPO’s jurisdiction, he had “deliberately decided not to provide you with our choice of candidates.”

The Center appointed Daniel J. Gervais from a list provided by the Complainant and Christiane Féral-Schuhl as panelist and Thomas H. Webster as presiding panelist in this matter on June 1, 2004. 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. Jurisdictional basis for the Administrative Proceeding

A jurisdictional objection has been raised by the Respondent. The Center has decided that the Panel is to proceed. However, the Panel must also review the relevant provisions to ensure that it has jurisdiction in this matter.

In paragraph 10 of the Complaint, the Complainant maintains that the Panel has the jurisdiction to decide this dispute stating:

“This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint is registered, incorporates the Policy. A true and correct copy of the domain name dispute policy that applies to the domain name in question is provided as Annex B to this Complaint.”

Annex B includes the Tucows Registration Agreement. Paragraphs 7 and 8 of that agreement provide that:

Paragraph 4(a) of the Dispute Policy provides as follows:

The Respondent argues that arbitration clauses are not obligatory if they are not “parfaits ou obligatoires.” The Respondent then cites two Quebec cases in which the Court held that the arbitration clause in that case did not exclude the jurisdiction of the Courts. The Respondent also argues that the registration agreement is an adhesion contract and therefore not binding.

The Panel is satisfied that it has jurisdiction to decide this matter. The Respondent accepted the Policy when it registered the domain name in dispute. The fact that this is in a standard form or adhesion contract does not in and of itself render such agreement invalid. The provisions of the Policy regarding dispute resolution are clear. Moreover, these provisions do not exclude the jurisdiction of the domestic Courts or in this case of the Courts of the Respondent’s place of business. In accordance with the Policy, the Complainant was required to accept a “mutual jurisdiction” for resolution of any dispute relating to this Complaint. The Complainant did so in the following terms (paragraph 14 of the Complaint):

“In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant will submit, with respect to any challenges that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts of Montreal, Quebec, Canada, the location of the domain name holder’s address, as shown for the registration of the domain name in the concerned registrar’s Whois database at the time of the submission of the Complaint to the Center.”

Therefore, these proceedings are binding but, in accordance with Paragraph 3(b)(xiii) of the Rules, the Respondent has the right to bring certain proceedings, in particular the right to challenge this decision, before the courts of Montreal, Quebec. Given that parties to this case are Canadian, the Panel finds additional support for the validity of the arbitration agreement in the Supreme Court of Canada’s recent ruling in the case of Desputeaux v. Les Éditions Chouette (1987) Inc. [2003] 1 R.C.S. 178, which recognized the validity of an arbitration agreement between Quebec-based parties in the face of “ordre public” considerations.

Moreover, in the Panel’s view, Respondent’s basic jurisdiction argument is fallacious. Respondent maintains that certain requirements must be met to exclude the normal courts. However, that does not mean that an agreement between two parties that does not totally exclude domestic courts is invalid. Otherwise, many mediation clauses would by their nature be invalid and Respondent has failed to cite any authority that they would be invalid. The cases relied upon by Respondent deal with the issue of whether recourse to the domestic courts is permissible or whether the parties should be directed to have their dispute settled by arbitration. That is not the case with the UDRP policy where there is no attempt to exclude the involvement of the domestic courts.

5. Factual Background

Complainant is in the business of sale of compressors and providing service, parts and maintenance for compressors. It was incorporated on December 16, 1987, under the name Inter-Power A.K Corporation, and its places of business are situated in the province of Quebec, Canada, namely in Montreal and Drummondville.

On October 23, 1990, Complainant filed a declaration with the Quebec authorities indicating that it wished to do business under the name “Compresseurs Québec A.K Enr.” That name was confirmed on July 5, 1995, by the Québec authorities.

From the years 1990 up to the year 2000, Complainant used both the name “Compresseurs Québec” and the name “Compresseurs Québec A.K Enr” to carry on its activities.

On May 1999, Complainant has registered the domain name <compresseursquebec.com>, and Complainant has been using that name since at least 1990.

Respondent does not provide any information on its activities.

The disputed domain name was registered on April 10, 2003, and its website states that Enterprises Larry is “an authorized dealer of the two biggest brand names in the air compressor and vacuum pump industries.”

Respondent has also registered the domain name <compresseurslarry.com> on April 10, 2003, and the website provides the same contents as the disputed domain name’s website: a description of Respondent’s products and services. Respondent was already the registrant of the domain name <compresseurlarry.com> since June 6, 2000.

Respondent also has its places of business in the province of Quebec, Canada, namely in Montreal and in Princeville.

6. Parties’ Contentions

A. Complainant

Complainant indicates that its domain name is <compresseursquebec.com> and has been used since its registration on May 5, 1999. Complainant adds that Respondent’s domain name was registered on April 10, 2003, “four years after Complainant’s registration.”

Complainant also indicates that it is “in the business of sale of compressors and providing service, parts and maintenance for compressors and has been doing so since its incorporation on December 16, 1987.”

Complainant alleges that it has filed with the Quebec authorities “a declaration indicating its intent to carry on business under the name Compresseurs Québec A.K. Enr.” and that “That name registration was reconfirmed on July 5, 1995, when the corporation proceeded to its incorporation under the new Act respecting the legal publicity of sole proprietorships, partnerships and legal persons (R.S.Q.c.T-45) of the province of Quebec.”

According to Complainant “During some years, until the year 2000, Complainant used the business names Compresseurs Québec A.K. Enr. and Compresseurs Quebec” and “from approximately June 19, 2000, Complainant ceased to use the business name Compresseurs Québec A.K. Enr. and used only the Compresseurs Quebec business name in its dealings.”

Complainant alleges that “the name Compresseurs Quebec is now widespread namely all over the Province of Quebec, Canada,” Complainant having its main office in Montreal and a second office in the center of Quebec. Complainant indicates that “Respondent, a direct competitor of Complainant, also has its main office in Montreal and a second office in Princeville, also in the center of Quebec.”

In addition, Complainant indicates that “On February 13, 2004, Complainant filed an application for a used trademark in Canada for the words Compresseurs Quebec and is in the process of having said name registered as a registered trademark.” Therefore, Complainant argues that is “has clearly established a right in Canada on the trademark Compresseurs Quebec.”

According to Complainant, Respondent’s domain name being identical to Complainant’s domain name, except for the “s” in the word “compresseur,” “Respondent’s domain name is a typosquatting of Complainant’s name.” Complainant concludes that “the domain name adopted by Respondent is similar (save for a marginal and slight difference being the singular/plural form of the word ‘compresseur’) to the domain name of Complainant.”

Moreover, Complainant contends that “Respondent clearly has no right or legitimate interest in respect of the domain name in issue as it is a coined replica of Complainant’s domain name.”

Complainant remarks that “it is obvious that Complainant and Respondent are in the exact same field of activities and services and operate in the same geographical area.”

Moreover, Complainant contends that it is “entitled to protection under the Canadian Trademarks Act on the basis of a used trademark and of a tradename, as per section 6(3) of the Act.”

According to Complainant, “likelihood of confusion is sufficient to conclude to infringement in Canada” and “the concepts of first impression and imperfect recollection will lead any customer of Complainant to confusion, should such customer make a spelling mistake when entering the domain name.”

Complainant also alleges that “the words ‘Compresseur Quebec’ is nowhere to be found on Entreprises Larry’s website. Consequently, Respondent does not use the name in its trading or service operations.”

Finally, Complainant argues that Respondent has registered and is using the domain name in bad faith. Indeed, Complainant puts forward that “Respondent is wilfully attempting to attract customers for the purpose of commercial gain through Internet. Respondent is namely aiming at Internet users to attract them to the website of Entreprises Larry, even though the website as such makes no use of the tradename or trademark Compresseurs Quebec or any variation thereof.”

According to Complainant “the domain name <compresseurquebec.com> serves only as an entering path or postal address to Respondent’s site” and “the fact that Respondent uses <compresseurquebec.com> as a postal address or entering path to its own website gives Respondent an easy gain of customers by using Complainant’s mark and goodwill.”

Complainant adds that “Any player in the compressor industry within the province of Quebec must and cannot fail to know the existence of Compresseurs Quebec” and consequently that “Respondent knew or should have known as at April 10, 2003, and throughout thereafter that he was using Complainant’s mark, without any right thereto.”

In addition, Complainant refers to the notion of constructive knowledge and indicates that “it is implied herein as both Complainant and Respondent are competitors and have so been competitors in the same geographical area for many years.” According to Complainant, “Respondent’s activities being identical or so similar to those of Complainant,” “a normal presumption of bad faith is implied and preponderance of evidence should apply.”

Finally, Complainant questions the fact that Respondent proceeded to a third domain name registration, namely <compresseurslarry.com> in April of 2003, “that is nearly three years after the registration of his <compresseurlarry.com> domain name” and argues that the reason is that “he did not want other people to do to him what he was doing to others: typosquatting.”

B. Respondent

Respondent argues that the language of the proceedings should be French, since the Parties both reside in Quebec.

Respondent alleges that Complainant has no rights in the expression “Compresseur(s) Quebec,” because it does not have the function of a trademark. According to Respondent, a mark should have a distinctive character and not be descriptive of a product, and the word “compresseur” is a generic term which is descriptive of the activities of Complainant. Respondent adds that the word “Québec” is also descriptive, and relates to the place of business of Complainant.

Therefore, according to Respondent, both the words “compresseur(s)” and “Québec,” either used individually or attached, do not permit to distinguish the services provided by Inter-Power A.K from those provided by Entreprises Larry Inc.

Respondent also contends that Complainant has no monopoly over these words and does not provide enough evidence of the reputation of the alleged mark.

According to Respondent, Complainant has no legitimate rights over the disputed domain name, since the Complainant has no more interests in the word “compresseur” than would any other person trading in this sector. Respondent puts forward that since it has registered the domain name first, not only did it acquire a legitimate interest in it, but also an exclusive right in it.

Respondent also contends that Complainant brings no evidence of bad faith on its part. According to Respondent, the expression “compresseur larry” being a distinctive mark, it was legitimately that it has protected the “plural form of expression.”

Respondent alleges that it did not register the domain name for the purpose of selling, renting, or otherwise transferring the domain name to a competitor or the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.

Respondent argues that it has not registered the domain name for the purpose of preventing Complainant to reflect its mark in a correspondent domain name since this mark does not exist or cannot be opposed to Respondent.

Finally, Respondent alleges that it has not registered the domain name to disturb Complainant’s business.

7. Discussion and Findings

As far as the language of the proceeding is concerned, the Panel reminds Respondent that Paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution provides that:

Therefore, the Response should have been filed in English. However, the Panel was able to decide on the issues raised despite the fact that it was filed in French. The Panel nonetheless notes that the contract between Respondent and the Registrar was drafted in English, is subject to Ontario law and that the Respondent does not question the validity of that agreement.

A. Identical or Confusingly Similar

Paragraph 4(a)i of the Policy directs that the Complainant must prove that:

Therefore it first has to be determined whether the Complainant has rights in the mark COMPRESSEURS QUEBEC and as of what date.

The Complainant did not apply for its trademark COMPRESSEURS QUEBEC until February 14, 2004, which is after the date of registration of the domain name in dispute and shortly before these proceedings were commenced.

However, the Complainant has adduced substantial evidence that it used that name prior to the date of the registration and indeed for some 15 years. Unregistered trademarks are recognized in Canada and in particular in Quebec. This is confirmed in Les Accessoires de Bagages Hudson v. Les Attaches Tri-Point Inc. et Johnson (Cour supérieure de Québec, July 21, 2003) at para. 44.

Shell International Petroleum Company Ltd v. Allen Jones, WIPO Case No. D2003-0821, provides a definition for unregistered marks: “An unregistered mark (as, for example, it is called in the USA) or common law trademark (e.g. as periodically called in England and other common law countries) is obtained when a trademark has been in continuous use and has obtained a distinctive character in association with the Complainant.”

In Museum of Science v. Asia Ventures Inc., WIPO Case No. D2003-0691, the Panel has found that: “….the wording of Paragraph 4(a)(i) to ‘trademark or service mark’ has been interpreted by numerous Panels in the past to include both registered marks and the common law marks. See inter alia The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v. Fantastic Sites, Inc., National Arbitration Forum, NAF Case No. FA0095560. With respect to the latter, the Complaint must show that the mark has been in continuous use. (See United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, WIPO Case No. D2002-0005, already cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and that the mark achieved secondary meaning (‘distinctive character’) in association with the Complainant. (See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726).”

In the present case, Complainant has provided evidence that it has been known under the name Compresseurs Quebec and has been using that name since the year 1990. All of Complainant’s bills, business cards and documentation refer to “Compresseurs Quebec.” More importantly, the Complainant has shown that it has used the name in connection with its advertising.

It is quite correct, as the Respondent points out, that the name in question has a descriptive element as it is composed of a word indicating the type of equipment and a geographical reference. In his letter of February 19, 2004, Respondent’s counsel cites a case of the Canadian Federal Court of appeal that states that a trademark that “se limite à décrire les marchandises ou leur origine géographique jouira d’une protection moindre.”

The Panel agrees that COMPRESSEURS QUEBEC is a relatively weak mark due to the descriptive aspect. However, that does not mean that it is non-existent and its weight is more relevant to the issue of bad faith discussed below.

For all these reasons, the Panel finds that Complainant has rights in the mark COMPRESSEURS QUEBEC.

The question remaining is whether Respondent’s registered domain name is identical or confusingly similar to that mark.

As found in Panavision, Inc. and Panavision International, L. P. v. Ed Meyer, d/b/a/ Panavisions Eyewear and Sunglasses, Domains by Proxy, Inc., and M.P.W., Inc. d/b/a Panavisions Eyewear and Sunglasses, Inc., WIPO Case No. D2004-0002: “The addition or subtraction, of a single character, such as a letter or number, to a mark for use in a domain name has not precluded Panels from finding the domain name to be identical or confusingly similar to a mark, especially where the conversion is from singular to plural.”

Accordingly, the Panel finds that Respondent’s domain name <compresseurquebec.com> is confusingly similar to Complainant’s unregistered mark COMPRESSEURS QUEBEC.

B. Rights or Legitimate Interests

Paragraph 4(a)ii of the Policy directs that the Complainant must prove that:

“The Respondent has no rights or legitimate interests in respect of the Domain Name.”

The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests (Policy, para. 4(c)), namely:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the word “Compresseur” has a link with the activities of Respondent, it does not offer any evidence concerning its intent to use the domain name in connection with a bona fide offering of goods or services. Respondent was already using the domain name <compresseurslarry.com> to offer its services, and the contents of this website appear to be exactly the same as in the “www.compresseurquebec.com” website.

Moreover, Respondent does not contend that it has been commonly known by the disputed domain name. Respondent could have resorted to many other names to describe its activities, namely to distribute “manufacturing brands of compressors and components.” Contact email addresses on <compresseursquebec.com> end by <compresseurslarry.com> and the words “compresseur” and “quebec” are not used on the website.

Therefore, Respondent brings no evidence that it is making a legitimate noncommercial or fair use of the domain name.

In addition, Respondent has registered the disputed domain name after the Complainant’s first use of the mark, and could not have ignored that the domain name <compresseursquebec.com> had been previously registered by Complainant.

These elements indicate that Respondent is not making a “legitimate noncommercial use of the domain name without intent for commercial gain to misleadingly divert consumers.” On the contrary, Enterprises Larry knew or should have known of the existence of its competitor’s domain name registration.

Therefore, in accordance with paragraph 4(a)(ii) of the Rules, it appears that Respondent has no rights nor legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration. Those criteria include the statement that:

In the present case, the trademark is relatively weak. However, unlike many domain name cases, the dispute is not between companies in different countries or continents. It is a dispute between two companies active in the same area in the same city. Complainant and Respondent should have had actual as well as constructive knowledge of each other’s activities.

Moreover, the evidence in this case is that these two competitors both use the Internet to offer their equipment and services relating to compressors. Complainant has used the website “www.compresseursquebec.com” since  1999. Respondent uses the website “compresseurlarry.com” since 2000. Then, in 2003, Respondent registered the domain name in dispute <compresseurquebec.com>, while never making any use of the expression “Compresseur Quebec” in the “www.compresseurquebec.com” website, the latter having in fact the same content as that of the “www.compresseurlarry.com” website.

This created the likelihood of confusion with Complainant’s trademark and name (and with its domain name for that matter). It seems clear that there would be a danger of diverting customers who were looking for Complainant’s site to Respondent’s sites.

Therefore, according to the Policy paragraph 4(a)(iii), it appears that Respondent has registered and used the domain name in dispute in bad faith.

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <compresseurquebec.com> be transferred to Complainant.

Thomas Webster
Presiding Panelist

Dated: June 15, 2004