WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alcan Inc. v. Digicom Technologies Inc.
Case No. D2003-0388
1. The Parties
The Complainant is Alcan Inc. of Montreal, Quebec, Canada, represented by Mr. Daniel I. Lack of Ogilvy Renault of Montreal, Quebec, Canada.
The Respondent is Digicom Technologies Inc. of Alma, Quebec, Canada. Its administrative contact is Mr. Gilles Boily.
Although duly served with notice of this proceeding, the Respondent has not participated in it directly or through counsel.
2. The Domain Name and Registrar
The disputed domain name <alcan.org> is registered with Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, M6K-3M1, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2003. On May 22, 2003, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On May 23, 2003, Tucows, Inc. 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 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 June 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 2, 2003.
The Center appointed Christopher Thomas, Q.C. as the sole panelist in this matter on July 23, 2003. 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 Alcan Inc. was the only party that filed evidence in support of its position. In respect of each of its findings, the Panel has satisfied itself that the evidence supports the Complainantís allegations of fact.
The Complainant was founded in 1902. The evidence is that it has registered the trade-mark ALCAN and/or has filed trade-marks applications for registration of the trade-mark ALCAN in 108 countries. Schedule 4 to the Complaint lists the Complainantís Canadian, United States and United Kingdom trade-mark registrations and applications for registration of the trade-mark ALCAN. Schedule 5 contains a list of the trade-mark registrations or applications for registration of the trade-mark ALCAN in countries other than the foregoing three.
Evidence has also been adduced showing that numerous trade-mark applications for the trade-mark ALCAN have been registered and/or filed in 108 countries. Evidence of such filings was provided in Schedules 6 and 7 of the Complaint.
Insofar as domain names are concerned, the Complainant adduced evidence in Schedule 8 that it (or its subsidiaries and/or sister-companies) has registered several domain names composed of the trade-mark ALCAN followed by either a generic top-level domain (gTLD) or a country code top-level domain (ccTLD). Several such domain names link to an active web site operated by the Complainant or by one of such subsidiaries or sister-companies.
Finally, many of the Complainantís subsidiaries or sister-companies, which operate in several countries do business under corporate names composed of the trade-mark ALCAN. An indicative list of such subsidiaries was attached to the Complaint as Schedule 9.
5. Partiesí Contentions
The Complainant asserts that since its founding in 1902, it has developed substantial goodwill and an enviable reputation in its trade-name, business, products, services and trade-marks, including the well-known trade-mark and trade name ALCAN. It asserts further that it has expended substantial sums of money advertising and promoting its products and services under the ALCAN trade-mark.
The Complainant observes that the domain name <alcan.org> is identical to its trade-mark ALCAN in which it has rights arising out of its extensive use and advertising of said trade-marks. Consequently, it submits that the contested domain name is identical and is thus confusing with a trade-mark in which it has rights pursuant to Policy 4(a)(i).
The Complainant asserts further that the Respondent has no legitimate right or interest in the domain name <alcan.org>. The domain name is identical to the trade-mark ALCAN and no licence has been granted to the Respondent to use that trade-mark. Nor has the Complainant authorized the Respondent to register the domain name.
The Complainant submits that this alone constitutes sufficient evidence, for the purposes of paragraph 4(a)(ii) of the Policy, of the Respondentís absence of rights or legitimate interests in respect of the domain name.
The Complainant goes on to assert that, without prejudice to the above submission, none of the circumstances under paragraph 4(c) of the Policy that would demonstrate the Respondentís rights or legitimate interests in the domain name exist in this case. There is no demonstrable preparation to use the domain name or a name corresponding to the domain name. Rather, an attempt to visit "www.alcan.org" leads to an offer for sale of the domain name <alcan.org>. (The Complainant directed the Panel in this regard to a series of printouts dated May 17, 2002, and October 1, 2002, and January 20, 2003, May 8, 2003, and May 20, 2003, of a page to which the user is led when an attempt is made to visit "www.alcan.org".) It observed further that the Respondent has not been commonly known by the domain name. Rather, Digicom Technologies Inc. is a "doing business as" name for 9045-2855 Québec Inc., a company incorporated under the laws of Quebec. As shown by a printout dated May 20, 2003, Digicom Technologies Inc. offers computer-related services, including web hosting and domain name registration services, under the trade names "Digicom," "Digicom Inc.," "Digicom Technologies" or "Digicom Technologies Inc." On the available evidence, there is nothing to support the assumption that the Respondent has been commonly known by the domain name <alcan.org>. Moreover, a trade-mark search revealed that the Respondent had no interest in any marks that include the coined word "Alcan." The Complainant concludes therefore that "the Respondent, to the best of the Complainantís knowledge, is not now, nor has it ever been commonly known by and could not have been known by the domain name <alcan.org>, as such domain name is identical to a famous mark of another, namely the trade-mark ALCAN and the trade name Alcan of the Complainant."
The Complainant then turns to the issues of legitimate non-commercial or fair use of the domain name without intent for commercial gain and whether the domain name misleadingly diverts consumers or tarnishes the trade-mark or service mark at issue. It is observed, firstly, that the Respondent makes no use of the domain name <alcan.org>; rather, a visit to the web site reveals an offer for sale of that domain name. Accordingly, there is no legitimate non-commercial or fair use of the domain name without intent for commercial gain. It is submitted further that the non-use of the domain name and its offer for sale to any person, including competitors of the Complainant, tarnish the famous trade name and trade-mark ALCAN in which the Complainant has clear rights.
The Complainant then argues that the Respondent has registered the domain name in bad faith. The circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the registration to the Complainant, as the owner of the trade name and trade-mark ALCAN, or to one of its competitors, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name. It is also argued that <alcan.org> was registered to prevent the Complainant from reflecting its trade-mark in a corresponding domain name. The Complainant finds evidence of this bad faith in the offer to sell the domain name and in the fact that no legitimate business or business of any sort is being carried on at that site. Further evidence of bad faith is said to exist in an affidavit filed by a paralegal employed by the law firm acting on the Complainantís behalf who telephoned the person responsible for domain names at Digicom Technologies Inc. regarding the contested domain name. She attests that she was informed that the last offer for that same domain name had been approximately Canadian $15,000, an amount far in excess of the registration fees for a ".org" domain name.
The Complainant submits that, pursuant to Policy 4(a)(iii), read together with Policy 4(b)(i), the offer to sell the domain name for valuable consideration in excess of the documented out-of-pockets costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith.
The Complainant contends that this is sufficient to dispose of the bad faith point but goes on to argue that in registering the domain name, the Respondent was well aware of the Complainantís trade name and trade-mark ALCAN and it simply could not have acquired or registered the domain name in good faith. It points out that the Respondent has a principal place of business in the city of Alma, Québec, a city where Alcan also has a plant. The Complainant infers from this that the Respondent, prior to registering the domain name, must have had knowledge of the trade name and trade-mark ALCAN. It cites further evidence of what it believes is the Respondentís continuing knowledge of the trade name and trade-mark, namely, a printout of the "www.digicom.ca" web site in which the Respondent announces its participation in the launch of the new ALCAN vat room by creating and providing a microwave link between the factory cafeteria and the vat room.
Finally, the Complainant observes that there is no evidence that the Respondent has ever operated an active web site offering wares or services at "www.alcan.org".
On the basis of the foregoing, it is submitted that the registration of the domain name <alcan.org> by the Respondent can only be seen as being in bad faith pursuant to the provisions of Policy 4(a)(iii) read together with Policy 4(b)(i) and 4(b)(ii).
In light of the foregoing, the Complainant requests that the domain name be transferred to it.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In order for the Panel to decide whether to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant prove, as required by paragraph 4 (a) of the Policy that:
(i) the contested 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As a domain name registrant, the Respondent has a contractual obligation to submit to these proceedings. Paragraph 4 of the Policy, which is incorporated into the registration contract, specifically states that the registrant is "required to submit to a mandatory administrative proceeding" in the event of a dispute under the Policy. Under these circumstances, the Panel believes it is appropriate to presume from the registrantís default after notice, that the Respondent does not contest the facts presented by the Complainant.
In the present case, the Panel is of view that the record contains sufficient evidence of each of the three requisite elements.
First, the Complainant claims and the Panel has verified to its satisfaction, that the Complainant owns registered trade-mark rights in the mark ALCAN.
The domain name in dispute, <alcan.org>, is identical to the Complainantís trade-mark. The Panel therefore concludes that the Complainant has rights and that the Complainant has fulfilled the requirements of Paragraph 4 (a)(i) of the Policy.
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has proven that the Respondent has no rights to the domain name. There is no evidence to suggest that the Respondent has ever used, or demonstrated 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 and services. Digicom Technologies Inc. and 9045-2855 Québec Inc. bear no resemblance to the Complainantís name. Nor do the computer-related services, including web hosting and domain name registration services, offered under the trade names "Digicom", "Digicom Inc.", "Digicom Technologies" or "Digicom Technologies Inc." that the Respondent offers. The Respondent has not been commonly known by the domain name, nor does it operate a business entity that utilizes the domain name.
The Panel agrees with the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of Paragraph 4 (a)(ii) of the Policy.
Third, the Complainantís evidence satisfies the third requisite element of bad-faith on the part of the Respondent. Paragraph 4 (b) of the Policy provides four circumstances that are evidence of registration and use in bad faith. They are said "in particular, but without limitation" to be evidence of bad faith. While the Complainant has advanced a number of different arguments going to bad faith, the point can be disposed of simply: the evidence shows that an offer was made to sell the domain name for valuable consideration in excess of the documented out-of-pockets costs directly related to the domain name. (At Schedule 19 to the Complaint, the Complainant provides evidence that the fees charged for the registration of a .org domain name usually ranges from about Canadian $25 to Canadian $50 per year.) As previous cases have decided, this establishes that the domain name has been registered and is being used in bad faith.
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, <alcan.org>, be transferred to the Complainant.
Christopher Thomas, Q.C.
Dated: July 28, 2003