DECISION

Symbol Technologies Canada, ULC v. Barcode Systems Inc.

Claim Number: FA0403000249359

PARTIES

Complainant is Symbol Technologies Canada, ULC (“Complainant”), represented by J. Guy Joubert, of Aikins, MacAulay & Thorvaldson LLP, 30th Floor- 360 Main Street, Winnipeg, MB, R3C 4G1, Canada.  Respondent is Barcode Systems Inc. (“Respondent”), represented by David Sokolow, 4457 140 Ave. NE, Bellevue, WA 98005.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <symboltruth.com>, registered with Network Solutions, Inc.

PANEL

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.

Jacques A. Léger, Q.C. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 25, 2004; the Forum received a hard copy of the Complaint on April 1, 2004.

On March 26, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <symboltruth.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 27, 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@symboltruth.com by e-mail.

A timely Response was received and determined to be complete on April 27, 2004.

A timely Additional Submission was received from Complainant and determined to be complete on April 30, 2004.

On May 13, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jacques A. Léger, Q.C. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Trademark information

Complainant owns two Canadian trademarks which incorporate the element SYMBOL, namely SYMBOL & Design (TMA 372,318) registered on August 24, 1990 and SYMBOL as a common law mark, both used in Canada since at least as early as 1984 in association with electrical and scientific apparatus, namely:  optical scanners for reading printed symbols such as bar codes, and in association with related services.

Factual Background

Complainant, as part of a worldwide corporate family, is a Canadian company incorporated under the laws of Nova Scotia whose parent company, Symbol Technologies, Inc. is a world leader in mobile data management systems and services, that manufacture and sell laser bar code scanners, hand held computers and wireless communications networks for voice and data.

Respondent provides bar code solutions and services to its customers.  It also offers project management, site surveys and installations, service, maintenance and rental solutions to customers.  In addition, Respondent sells various products manufactured by other entities. Therefore, Complainant and Respondent offer identical goods and services, as well as use similar channels of trade and operate in the same market place.

Respondent was a party to contractual arrangements with Complainant and it is currently a party to litigation with Complainant before the Court of Queen’s Bench in Winnipeg, Manitoba, Canada.

Identical or confusingly similar

      But for the use of “truth” and “.com”, the Domain Name is identical or confusingly similar to Complainant’s trademarks. The addition of “truth” and “.com” to the Domain Name does not render the same non-confusing with its trademarks.

      Furthermore, but for the use of “truth” and “.com”, the Domain Name is identical or confusingly similar to the Parent’s domain name <symbol.com>.

      Rights and Legitimate Interests

Use of the Domain Name is not being used in conjunction with a bona fide offering of goods and services, nor does the use represent a legitimate noncommercial or fair use. 

The trademarks had been previously used in Canada by Complainant and by law, Complainant enjoys exclusive use of these trademarks.

Respondent registered the Domain Name two weeks after it had received a written notice from Complainant advising Respondent that Complainant intended to terminate contractual arrangements. The Domain Name was selected and the website was established for retaliatory purposes.

      The Domain Name directs users to a website that contains information and links to other websites containing information that is otherwise publicly available and relates to Complainant, the Parent and some employees.  The information pertains to, inter alia, newspaper articles and reports on pending and completed proceedings before various courts, tribunals and administrative bodies. 

The use of the Domain Name does not constitute fair use of the trademarks in that the website is not a repository of information or messages from third parties with respect to any positive or negative views that they may have pertaining to Complainant, the Parent and employees.  The website is arguably not a true forum for criticism as it does not contain unedited posted messages from users.

Respondent is not commonly known by the Domain Name and it no longer has an affiliation with Complainant and/or the Parent.

In proceeding with registering the Domain Name, Respondent failed to discharge the contractual obligations under ICANN Policy 2 with respect to determining that the Domain Name did not infringe the rights of any third party.  Under the circumstances, Respondent was obligated to conduct appropriate due diligence in order to satisfy itself as to possible conflicts with the rights of a third party.

      Bad Faith

          The use of the Domain Name was calculated to disrupt Complainant’s and the Parent’s business, as well as to discredit and embarrass these two parties and their employees. 

          The first use of Complainant’s trademarks clearly predates the registration date of the Domain Name.  By using the Domain Name, Respondent has and is intentionally attracting Complainant’s customers or potential customers to its website with the view to tarnishing and otherwise depreciating the value of the goodwill associated with Complainant’s trademarks. 

      Respondent deliberately does not disclose its identity on the website, nor does it disclose the fact that it is a competitor to Complainant and in light of this, Respondent clearly intends to divert customers and potential customers away from Complainant and to benefit commercially from an erosion of market position.

Respondent had actual knowledge of Complainant’s trademarks because Respondent was a party to contractual arrangements with Complainant whereby Respondent, inter alia, sold goods manufactured by Complainant and/or the Parent and which goods displayed the trademarks.

Furthermore, the Domain Name was registered for retaliatory purposes two weeks after Respondent had received the Termination Notice.

Respondent failed to discharge the responsibility to select, register and use a domain name that did not infringe the rights of a third party. In addition, Respondent uses the Domain Name in an effort to advance its goods and services that are substantially similar or identical to the goods and services of Complainant and the Parent.  Respondent is operating a similar business as Complainant and the Parent and as a result, there is no justifiable use of the Domain Name outside the realm of bad faith. 

B. Respondent

Identical or Confusingly Similar

Complainant uses the dictionary word “symbol” in its name and trademark in the manufacture and sale, of bar code and wireless products. Note: (The SYMBOL Trademark is a design. Nowhere does Respondent use that design.)

Respondent uses the dictionary word “symbol” in a domain name solely for the publication of information on the web and does not use the name to offer any product or service for sale and clearly states the site is informational only.

Complainant and Respondent do not offer identical goods and services. Complainant is a manufacturer of bar code related hardware. Respondent does not manufacture any product.

To ensure no person reading the articles posted on the website would think there was any attempt to take business from Complainant, Respondent did not mention its name as owner of the site. For any reader who wished to could go to any “who is it site” and see that Respondent is Barcode Systems Inc.

Rights and Legitimate Interests

Respondent has a legitimate right to use the dictionary word “symbol” in its domain name. In fact the dictionary word “symbol” is used in many information and business names, for example: (1) Symbol lookup (wording is used by both the New York Stock Exchange and NASDAQ. On both stock market lookups any person can type in Symbol Technologies and be directed to news similar to the <symboltruth.com> site), (2) <symbolart.com>, (3) <symbols.com>, (4) <atsymbol.com> and (5) <ultimatesymbol.com>.

Respondent claims to live in a free society where it is the right of any individual or company to print the truth about any subject. There is no attempt by Respondent’s site to sell any product or suggest any reader deal with Complainant or elsewhere, as it is only informational.

Complainant claims that Symbol Technologies and several of its executives conspired for personal gain and in so doing tarnished and depreciated Complainant’s trademark. Printing the truth does not cause depreciation or tarnishing of a company’s trademark, the illegal acts do. Respondent operates the <symboltruth.com> site to keep interested shareholders and brokers of Symbol Technologies informed of ongoing legal matters.

Bad faith

Respondent publishes articles from <newsday.com>, the Associated Press, the SEC, the Government of Canada, and other reliable sources. Respondent does not offer any links to Complainant’s competitors, nor does it evaluate how good or bad any Symbol products or services are.

The name <symboltruth.com> is 100% equal to the dictionary word “symbol” but for the “truth” and “.com.” Surely Complainant does not lay claim to the dictionary.

Complainant does not dispute the facts that are printed on the <symboltruth.com> site. If Symbol agrees they are true what possible harm can the truth cause to a company, unless it is Complainant’s position that hiding the truth in a public company is a way to enhance their trademark.

Respondent had journalists review the <symboltruth.com> site to report on any articles that they thought might be inaccurate or misleading. They reported back that to the best of their knowledge none of the articles were untrue or misleading. Complainant was given the opportunity to comment on any of the articles and have its unedited comments published on the site, but has refused.

C. Additional Submissions by Complainant

Respondent has failed to address the reasons why it registered the Domain Name some two weeks after it received notice from Complainant with respect to Complainant’s intention to terminate contractual relations with Respondent and furthermore, Respondent failed to deal with the reasons why it does not reproduce unedited messages from all users of the website.

DISCUSSION & FINDINGS

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 Complainant must prove 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 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.

Preliminary Procedural Issue

First and foremost, the Panel must address a procedural issue concerning some parallel lawsuits which are allegedly taking place before a court of common law jurisdiction. Indeed, the Complaint states, “[a]n action for trademark infringement and passing off, inter alia, has been commenced in connection with this matter.”  A Statement of Claim would have been filed in the Court of Queen’s Beach in Winnipeg, Manitoba, Canada, under File No. CI 03-01-32071. 

Respondent asserts that there are three related legal actions between the parties hereto or associated companies, namely: Barcode Systems is suing Symbol Technologies for breach of contract. Symbol has counterclaimed (included in the counterclaim is trademark abuse), the Canadian Government has granted leave for prosecution of Symbol Technologies for unfair trade policies, and Symbol has appealed and finally Barcode Systems has sued Symbol for conspiracy, Symbol has yet to defend.

Under the authority of Rule 18(a), the Panel finds that despite the pending litigation between the parties, this domain name dispute should be decided. The Panel relies on Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research, D2001-1094 (WIPO Dec. 18, 2001) wherein it was decided that “moreover, as the Panel reads the Complaint, the relief which Complainant seeks, which is predicated on allegations of federal trademark infringement and unfair competition under federal and state law, does not specifically include the relief sought through this proceeding; namely, cancellation of the contested domain name. The allegations raised and the relief sought by Complainant through its parallel proceeding extend well beyond those issues which this Panel can consider and the relief it can provide through the present administrative proceeding. Moreover, since both the Complaint and Response have been filed in this proceeding, hence providing the Panel with the documents necessary for it to proceed, the Panel has decided, in accordance with the discretion granted it under paragraph 18(a) of the Rules, to: (a) deny the Respondent's request to dismiss this proceeding, and, as such, (b) consider these filings and proceed to decision in this matter.”

 

Last but not least, neither party has deemed necessary to provide the Panel with the details of such proceedings hence it can be said that there is no evidence supporting it. The Panel is therefore in no position to subordinate this proceeding to the alleged other proceedings. Consequently, deference is not called for.

Accordingly, the Panel is exercising its discretion and will proceed to analyze and decide the merit of the matter submitted for adjudication.  See Fadesa Inmobiliaria, S.A. v. Madsen, D2001-0570 (WIPO July 20, 2001), see also AB SKF v. Pagaria, D2001-0867 (WIPO Oct. 11, 2001); see also Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003).

Identical and/or Confusingly Similar

The Panel finds that Complainant has common law rights to the SYMBOL mark as it has shown some use of the mark in commerce since 1993 by providing examples of use of the mark in advertisements and invoices that date back to 1993 and 1998, respectively.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) wherein it was found that common law rights in a mark exist where its use was continuous and ongoing, and secondary meaning was established; see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) wherein it was found that Complainant had common law rights in the mark FISHTECH which it has used since 1982.

The Panel will refrain from any findings as to whether or not such common law trademark rights go as far back as 1984 for lack of evidence.

Furthermore, the Panel finds that Complainant has rights to the SYMBOL (and design) mark resulting from registration with the Canadian Intellectual Property Office (CIPO) (TMA 372,318 – registered on August 24, 1990).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) wherein it was found that Panels have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. However, the burden rests on Respondent to refute this assumption.

The Panel is therefore of the opinion that the evidence provided by Complainant supports a finding that Complainant has rights in these marks.

While the domain name is not identical to Complainant’s SYMBOL mark, the Panel finds that it is confusingly similar.  The test of confusion in comparing the words or marks at issue is from the standpoint of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.

The Panel finds that Respondent’s <symboltruth.com> domain name is confusingly similar to Complainant’s SYMBOL mark because the domain name fully incorporates the mark and merely adds the generic term “truth.”  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) wherein confusing similarity was found where the domain name in dispute contained the identical mark of Complainant combined with a generic word or term; see also Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) wherein it was found that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case.” This position is consistent with Pfizer Inc. v. Robichaux, D2003-0399 (WIPO July 16, 2003).

Moreover, the Panel finds that the addition of the generic top-level domain “.com” is irrelevant in determining whether the <symboltruth.com> domain name is confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) wherein it was found that <pomellato.com> was identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant; see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) wherein it was found that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

Rights or Legitimate Interests

Any of the following circumstances, in particular but without limitation, if found by the Panel, shall demonstrate Respondent’s rights or legitimate interests to the domain name:

i) The 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) The fact that the Respondent has been commonly known by the domain name; or

iii) 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. [ICANN Policy: 4c)]

According to Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO, Aug. 21, 2000), once a complainant asserts that a respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to provide credible evidence in order to substantiate its claim of rights and legitimate interests in a domain name.

The Panel finds that given the evidence submitted, Respondent is a competitor and uses the <symboltruth.com> domain name to disrupt Complainant’s business. Indeed, the domain name resolves to a website that contains information that is otherwise publicly available and relates to Complainant and its Parent company.  The information pertains to newspaper articles and reports on pending and completed proceedings before various courts, tribunals and administrative bodies. 

The Panel is of the opinion that such use is likely to tarnish the goodwill associated with Complainant’s mark. Respondent’s use of the <symboltruth.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) wherein it was found that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website; see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) wherein it was held that Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like Complainant . . .  is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”; see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) wherein it was found that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark.

Furthermore, Respondent is not commonly known by the domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) wherein it was stated that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) wherein no rights or legitimate interests were found where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question.

Registration and Use in Bad Faith

It is often quite difficult to actually show bad faith with concrete evidence.  While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. 

The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed domain name relies squarely on the shoulders of Complainant and once it has done so, as it did in the present case, it is then incumbent upon Respondent to either justify or explain its business conduct (if not to demonstrate the contrary).  Failure to do so will, in some circumstances, enable the Panel to draw negative inferences.

Respondent uses the <symboltruth.com> domain name to post information that tarnishes Complainant’s mark and disrupts Complainant’s business.  Thus, Respondent has registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) wherein it was stated that although Respondent’s complaint website did not compete with Complainant or earn commercial gain, Respondent’s appropriation of Complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith; see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) wherein bad faith was found where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant.

Moreover, Respondent had actual knowledge of Complainant’s rights in the SYMBOL mark by the very fact that Respondent was previously a party to contractual arrangements with Complainant whereby Respondent sold goods manufactured by Complainant and its Parent company.  Registration of a domain name confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) wherein it was held that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”; see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) wherein it was found that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about Complainant’s mark when it registered the subject domain name.” In this regard, Complainant relies upon Digi Int’l Inc. v. DDI Systems., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), where the Panel concluded that there is a legal presumption of bad faith when a respondent reasonably should have been aware of complainant’s trademarks, actually or constructively. See also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <symboltruth.com> domain name be TRANSFERRED from Respondent to Complainant.

Jacques A. Léger, Panelist
Dated: June 3, 2004

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