WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enbridge Inc. v Youngchul (Michael) Chang and IG Communication Inc.
Case No. D2001-0576
1. The Parties
The Complainant is Enbridge Inc. a Canadian corporation. The respondents are YoungChul (Michael) Chang and IG Communication Inc. of Hanam, AK, South Korea. In this decision the respondents shall be referred to collectively and individually as the Respondent.
The Complainant is represented by Field Atkinson Perraton, Barristers and Solicitors, 2000, 10235-101 Street, Edmonton, Alberta, Canada T5J 3G1. The Respondent has made no response or submissions in this proceeding and is not represented.
2. Domain Name and Registrar
The domain name in issue is <enbridgeinc.com> (the "Domain Name").
The Registrar is Network Solutions Inc. ("NSI").
3. Procedural History
A Complaint was filed electronically on April 19, 2001, with the hard copy being field on April 24, 2001.
Confirmation from NSI was received by the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2001, stating that the Respondent is the current registrant of <enbridgeinc.com>.
Notice of the proceedings was served on the Respondent on April 27, 2001, in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy").
No response being received from the Respondent, a Response Default Notification was sent by the Center on May 18, 2001.
A Panel was constituted on May 29, 2001, with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.
The date scheduled for the Panel to render its decision is June 11, 2001.
4. Factual Background
The Complainant, Enbridge Inc., is a publicly traded company and is understood to operate (within Canada and the USA) the worldís longest crude oil and liquids pipeline system. It changed its name in October 1998 from IPL Energy Inc. to its current name.
The Complainant is the applicant for two Canadian trade marks for ENBRIDGE, which are expected to issue automatically on the payment of fees. It is also the registered proprietor of the following domain names: enbridge.com, enbridge.net, enbridgeinc.net, enbridge.org and enbridgeinc.org.
The Complainant operates a website at www.enbridge.com.
According to a Whois search, the Respondent registered the Domain Name <enbridgeinc.com> with NSI on October 26, 2000.
On around November 10, 2000, the Respondent emailed the Complainant informing it that he had the Domain Name for sale. The Respondent by email dated December 4, 2000, offered to sell the Domain Name for US$20,000 and also stated that he intended to establish a website under the Domain Name but had insufficient funds to do so currently.
The Complainant refused this offer by email on December 5, 2000, and informed the Respondent that it would commence proceedings under the ICANN UDRP if the Domain Name was not transferred free of charge to the Complainant within 10 days. The Respondent subsequently emailed the Complainant on December 13, 2000, offering to sell the Domain Name for US$2,000. So far as the Panel is aware, the Complainantís response was to commence ICANN proceedings.
5. The Partiesí Contentions
A. The Claimant
Trade marks for ENBRIDGE and the trade name Enbridge Inc. have been used extensively by the Complainant since October 1998.
Apart from the gTLD ".com" extension, the Domain Name <enbridgeinc.com> is identical or similar to the trade name, the domain names and to the trade mark applications of the Complainant.
The offers by the Respondent to sell the Domain Name for a sum far more than the cost of registration is clear evidence of the bad faith registration of the Domain Name.
Further, the Complainant says that the Respondentís "warehousing" of the Domain Name for no purpose other than to sell it is another indication of bad faith on the part of the Respondent.
The Respondent has not sought the Complainantís permission to make use of the ENBRIDGE name. The registration of the Domain Name enbridgeinc.com occurred after the Complainant commenced use of its trade marks and trade name.
The remedy sought by Complainant is the immediate transfer to it of the registration of the Domain Name <enbridgeinc.com>.
B. The Respondent
No formal contentions have been made by the Respondent. In his email of December 13, 2000 (and therefore prior to commencement of these proceedings) the Respondent states "I am student. I have no money to make website. I donít know about domain. Please help me!! I need money to make website."
6. Discussion and Findings
The Panel has reviewed the Complaint and the documents annexed thereto. On the basis of this material this Panelís findings are set out below.
This dispute properly falls within the scope of the Policy.
The Panel finds the domain name in dispute is identical or confusingly similar to the Complainantís unregistered trade mark for Enbridge Inc. and is confusingly similar to the Complainantís trade mark applications for ENBRIDGE.
The Panel finds that on the balance of probabilities the disputed domain name was deliberately chosen by the Respondent and intended as a reference to the Complainant. The word "enbridge" has no other meaning and the choice of "enbridgeinc" as a domain name at the time the Complainant adopted this name clearly suggests this to be the case.
There is no evidence before the Panel to demonstrate that the Respondent had any legitimate basis to register the Domain Name. The Panel infers from the offer made to sell the Domain Name to the Complainant in the Respondentís email of November 10, 2000 (only 15 days after the registration of the Domain Name) that this was the most probable intention of the Respondent at the time of registration.
The Panel therefore finds that on the balance of probabilities the Respondent lacked any legitimate basis.
In the light of the Respondentís involvement in previous domain name dispute resolution proceedings (WIPO Case Number D2000-1469), the Panelís view is that the Respondent has registered the domain name in dispute in order to prevent the owner of the trade mark (the Complainant) from reflecting the mark in a corresponding domain name. The Panel regards the previous proceedings as demonstrating that the Respondent has engaged in a pattern of such conduct.
Moreover, the Panel infers that the Domain Name was registered with the primary intention of selling it to the Complainant for valuable consideration in excess of the Respondentís out of pocket costs directly related to the Domain Name (paragraph 4(b)(i) of the Policy).
Evidence of subsequent use in bad faith is the Respondentís conduct first in seeking to elicit an offer from the Complainant for the transfer of the disputed Domain Name and then in proposing a price, whilst at the same time claiming that it was the Respondentís intention to set up a website under the Domain Name.
In the light of the above findings, the Panelís decision is as set out below.
The Domain Name is identical or confusingly similar to the Complainantís unregistered trade mark for Enbridge Inc. and confusingly similar to the Complainantís trade mark applications for ENBRIDGE (see paragraph 4(a)(i) of the Policy).
The Respondent has no rights or legitimate interests in the Domain Name (see paragraph 4(a)(ii) of the Policy).
The Domain Name was registered and is being used in bad faith (see paragraph 4(a)(iii) of the Policy).
This Panel directs that the disputed Domain Name be transferred to the Complainant.
Dated: June 11, 2001