WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Presse, Ltée, Cyberpresse Inc. v. Dan Kouri
Case No. D2008-0360
1. The Parties
The Complainants are La Presse, Ltée and Cyberpresse Inc, of Canada, represented by Leger Robic Richardo, of Canada.
The Respondent is Dan Kouri, of Québec, Canada, represented by Shawn Jacobaccio, of Canada.
2. The Domain Names and Registrar
The disputed domain names <cyberpresse.mobi> and <lapresse.mobi> (the “Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2008. On March 10, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On March 10, 2008, GoDaddy.com, Inc transmitted by email to the Center its verification response. In response to a notice of change of registrant by the Center, the Complainant filed an amendment to the Complaint on March 17, 2008. The Center verified that the Complaint together with the amendment 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 March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Response was filed with the Center on April 9, 2008.
On April 18, 2008, the Complainants submitted a supplementary filing in which they took issue with a number of factual allegations made in the Response. This in turn led to a short reply by the Respondent filed on April 25, 2008. The Panel has the discretion to either admit or reject supplementary filings; in the circumstances of this case, it has admitted both into the record.
The Center appointed Christopher Thomas QC as the sole panelist in this matter on April 30, 2008. 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.
On May 19, 2008, having reviewed the file, the Panel instructed the Respondent to provide a translation of an employment contract entered into between him and Sublimedia Multimedia Inc. The Respondent was given until May 26, 2008 to provide the translation and the Complainants were given an opportunity to comment thereon if they saw fit by May 30, 2008. By the same procedural order the Panel noted that the issuance of its Decision would be adjusted accordingly.
4. Factual Background
The Complainant La Presse Ltée (“LP”) is a Canadian corporation with its principal place of business at 7 St-Jacques Street, Montreal, Quebec, Canada. The Complainant Cyberpresse Inc. (“CP”) is a Canadian corporation with its principal place of business at the same address. Both are owned by the same parent corporation.
LP publishes La Presse, a well known daily newspaper which is available in major cities across Canada and throughout Québec, and in particular in the metropolitan area of Montreal. CP publishes a French-language news website which, according to the Complainants, is an online news reference for many Quebecers, French-Canadians and other francophones throughout the world.
LP and CP have been in existence for more than 100 and 30 years, respectively. The two media are integrated not only by common ownership but by the content of their respective publications: La Presse promotes the “www.cyberpresse.ca” website, and CP operates the website located at “www.cyberpresse.ca” on which original news elements and blogs as well as content from La Presse and other affiliated regional daily newspaper are published to Internet users.
LP owns the following registered trademarks:
LA PRESSE registered on February 18, 2002 under number 558,012 and used in Canada since October 20, 1884;
LA PRESSE & DESIGN registered on June 4, 1971 under number 176,501 and used in Canada since January 4, 1969;
LA PRESSE DESSIN registered on December 18, 1987 under number 335,463 and used in Canada since November 15, 1986. (Annex 10 to the Complaint)
LP also owns the unregistered trademark CYBERPRESSE & DESSIN applied for on October 7, 2004 under number 1233137 and used in Canada since June 23, 2000. A copy of the corresponding record from the Canadian Trade-Marks Database along with an unofficial translation of the services specified in the CYBERPRESSE & DESSIN trademark application was filed with the Complaint. The Complainants also have unregistered trademark rights in the word mark CYBERPRESSE (with the CYBERPRESSE & DESSIN mark, collectively referred to as the “Cyberpresse trademarks”) applied for on August 11, 2000 under number 1070665.
LP has licensed CP in respect of the CYBERPRESSE & DESSIN trademark. The Complainants note that WIPO panels have found a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP.
The Complaint named two Respondents to this proceeding, the first being Marie Beauregard, 103 de Pise Street, Laval, Québec, and the second, Dan Kouri, 50 De Lourmarin Street, Blainville, Quebec. The Panel has found that it is unnecessary to include the first named Respondent in its Decision and accordingly the Complainants’ allegations and discussion of her role in the matters in dispute need not be recorded in full and decided. The Decision proceeds on the basis that Mr. Dan Kouri is the sole Respondent.
5. Parties’ Contentions
The Domain Names are identical or confusingly similar to trademarks in which the Complainants have rights.
It is asserted by way of introduction that there is a consensus among WIPO domain name panelists that “if the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights” and accordingly, LP has established that it has rights in the LA PRESSE trademarks. Further, the Respondent cannot argue nor show that the LA PRESSE trademarks are not distinctive of LP’s wares and services. Section 12 of the Canadian Trade-marks Act provides that a trademark that would otherwise not be registrable because it is clearly descriptive of the character of the wares or services in association with which it is used, is nonetheless registrable if it has been so used in Canada by the applicant (or his predecessor in title) as to have become distinctive at the date of filing of an application for its registration. Since the LA PRESSE trademarks are registered, it follows that even if the LA PRESSE trademarks were considered to be clearly descriptive, which was not admitted by LP, the Canadian Trademark Office was satisfied that the LA PRESSE trademarks met the distinctiveness requirement by the date of filing of the respective applications.
As for the CYBERPRESSE trademarks, prior to LP’s filing the application to register the CYBERPRESSE & DESSIN trade-mark, CP had filed on August 11, 2000 under No. 1070665 an application to register CYBERPRESSE as a word mark. While both Complainants use the CYBERPRESSE trademarks, either directly or through licensing, it was asserted that the trademarks’ distinctiveness is preserved by virtue of (i) the fact that the Complainants are sister corporations owned and controlled by a common parent company; and (ii) a trademark licence agreement, dated October 8, 2004, between the Complainants pertaining to the trade-mark (filed with the Complaint). (Annex 14 to the Complaint)
It was further asserted that the CYBERPRESSE trademarks have become distinctive identifiers associated with the Complainants and their goods and services and were so when the Respondent registered the contested domain names. The Cyberpresse trademarks have been used since at least as early as June 2000, and subsequently along with the domain name <cyberpresse.ca>, registered by CP on October 12, 2000, to provide news and general information on various topics through the website located at “www.cyberpresse.ca”.
The Complainants claim that the website is the foremost French-language content-driven information source in North America. It is aimed mainly at French-speaking Canadians. Some 35 journalists and 500 correspondents and collaborators throughout the world are said to contribute to its content. In addition to world, political, national and regional news content, various “sections” such as arts & entertainment, health, lifestyle, op-ed, science, sports and travel are published, as well as “four ‘stand-alone’ yet related websites in the fields of automotive vehicles (<monvolant.ca>), business and finance (<lapresseaffaires.com>), real estate and home decor (<montoit.ca>) and technology (<technaute.com>).”
The “www.cyberpresse.ca” website is said to reach approximately 1.4 million monthly unique visitors who generate close to 50 million page views. Evidence was supplied as to the degree to which the website is visited in Canada and worldwide.
It was noted further that the CYBERPRESSE trademarks are continuously shown in daily editions of LA PRESSE newspaper and evidence was filed in support of the contention that a substantial portion of Quebecers is familiar with the “www.cyberpresse.ca” website.
In the Complainants’ submission, it is also significant that CP’s “www.cyberpresse.ca” website occupies the top position both in the Google.com and Google.ca search results for a search based on the keyword “cyberpresse” alone throughout the web as a whole and that it has occupied that position for several years, including when the Respondent first registered the contested domain names.
In the Complainants’ view, this demonstrates (i) the strong association between the CYBERPRESSE trademarks and themselves; (ii) the relative importance of their trademarks in comparison to other occurrences of the word “cyberpresse” on other websites; and (iii) the significant likelihood that when an Internet user is typing the word “cyberpresse” in Google or in the web address field of an Internet browser in Canada, he or she is looking for CP’s “www.cyberpresse.ca” website.
Pursuant to paragraph 4(2) of the Canadian legislation, “[a] trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.” It was contended that the Complainants have “abundantly and extensively” used the CYBERPRESSE trademarks and therefore, both CYBERPRESSE trademarks have become distinctive identifiers associated with the Complainants or their services and were so when the domain names were first registered.
It is submitted further that even if the Panel were to find that the Complainants have unregistered trademark rights in only one of either the CYBERPRESSE or the CYBERPRESSE & DESSIN mark, those rights suffice to establish their rights in a mark in respect of which the Domain Name <cyberpresse.mobi> is identical or confusingly similar.
The Domain Names are confusingly similar to trademarks in which the Complainants have rights.
In the Complainants’ submission, <lapresse.mobi> is confusingly similar to all three LA PRESSE trademarks and <cyberpresse.mobi> is confusingly similar to both CYBERPRESSE trademarks. At the outset, the Complainants note that when evaluating whether a domain name is confusingly similar to a trademark, the panel should ignore the descriptive suffix (“.mobi”, “.com”, “.ca”, etc.) which is an inherent part of a domain name or which may be a non-distinctive part of a trademark.
Continuing, it is asserted that the fact that CYBERPRESSE & DESSIN is a design mark should have no bearing on the evaluation of the degree of confusing similarity between it and <cyberpresse.mobi> given the primacy of the word “cyberpresse” in said trademark. Reference was made to Schneider Electronics GmbH v. Schneider UK Ltd, WIPO Case No. D2006-1039 where it was held that: “Since a domain name can not include a design element, the word component of a design mark is the only element that can be searched by an Internet user. Some panels have therefore concluded that the word element of a trademark is the only element that is assessed when determining confusing similarity between a trademark and domain name.”
In light of the foregoing, it is argued, in the case of <lapresse.mobi>, the comparison is to be between the “lapresse” part of the domain name and words “la presse” included in each of the LA PRESSE trademarks. Likewise, in the case of <cyberpresse.mobi> the comparison is to be between the “cyberpresse” part of the domain name and the CYBERPRESSE word mark or the “cyberpresse” word element of the CYBERPRESSE & DESSIN design mark.
It is submitted that the Domain Name <lapresse.mobi> is confusingly similar to the registered word mark LA PRESSE and the word elements of the registered design marks LA PRESSE & DESIGN and LA PRESSE DESSIN. In fact, the relevant portion of the Domain Name is entirely and solely composed of the same sequence of letters that are used in LP’s LA PRESSE trademarks.
It is also submitted that the Domain Name <cyberpresse.mobi> is confusingly similar to the CYBERPRESSE mark and to “cyberpresse”, the word component of the CYBERPRESSE & DESSIN mark. In fact, the relevant portion of the domain name is entirely and solely composed of the same sequence of letters that are used in the CYBERPRESSE mark and in the word component “cyberpresse” of LP’s CYBERPRESSE & DESSIN mark.
As a whole, therefore, the differences existing between <lapresse.mobi> and the LA PRESSE trademarks and between <cyberpresse.mobi> and the CYBERPRESSE trademarks are not sufficient to conclude that there is no confusing similarity between them. In light of the above-described set of circumstances and arguments, the Complainants submit that the Panel should find, on the balance of probabilities, that the Domain Names are confusingly similar to trademarks in which the Complainants have rights.
The Domain Names were registered and are being used in bad faith
Arguments were advanced as to the role of Ms. Beauregard in the registration of the contested domain names, certain communications between the disputing parties, and as a named Respondent. As noted earlier, the Panel has found that it need not address those in full.
Bad faith within the meaning of paragraph 4(b)(i) of the Policy
It is asserted that the circumstances of this case indicate that the Domain Names were registered and used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. In this respect, reference was made to the affidavit of Mr. Mathieu Delorme who affirmed that Mr. Kouri, through a prior attorney, initially requested payment of $200,000 for the transfer of the disputed Domain Names then subsequently amended his request to a payment of $30,000 and the transfer of the domain name <doyou.com>.
It was noted further that on May 4, 2007, LP, through its solicitors, sent a cease and desist letter demanding the immediate and unconditional transfer of the Domain Names. On May 15, 2007, Mr. Kouri, through counsel, requested a payment of $45,000 and the transfer of <doyou.com> in exchange for the transfer of the Domain Names. In the Complainants’ submission, these requests for monetary sums in exchange for the transfer of the Domain Names are relevant and should be considered indicative of the Respondent’s bad faith.
It was submitted further that the Respondent and his counsel, being located in the same metropolitan area where the Complainants carry their activities, were well aware of the existence of the Complainants, their trademarks, the domain names <lapresse.ca> and <cyberpresse.ca> and the “www.cyberpresse.ca” website. It is alleged that the Respondent took advantage, without regard to the Complainants’ rights, of the fact that the generic top-level domain “.mobi”, at the end of September 2006, entered into a Landrush and General Registration Period during which anybody could register “.mobi” domain names to register the disputed Domain Names.
A response sent on the Respondent’s behalf asserted that Mr. Kouri had been working for several months with an unidentified European partner to develop a project to launch a “.mobi” website in Europe. A previous conversation with Mr. Kouri’s first attorney, which took place less than a month before the response to LP’s cease and desist letter, had alluded merely to discussions between Mr. Kouri and potential unidentified investors for the development of a website accessible from “www.cyberpresse.mobi”. In the Complainants’ submission, these statements were contradictory and unreliable and should be considered signs of the Respondent’s bad faith. The response to LP’s cease and desist letter alleges that another European company, which was also unidentified, had contacted the Respondent to enquire about the Domain Name <cyberpresse.mobi>.
Even if any of these contentions were true, which the Complainants contested, no evidence in support thereof had been provided to the Complainants by the date of the filing of their Complaint. Accordingly, they could not be considered sufficient or viewed as the primary reason for which the Domain Names were registered in light of the Respondent’s behaviour since LP requested the Domain Names’ transfer. In addition, the Respondent never made any assertions as to a possible project regarding the Domain Name <lapresse.mobi> that was registered concomitantly with <cyberpresse.mobi>.
Therefore, the circumstances show, in the Complainants’ view, that Mr. Kouri registered the Domain Names primarily for the purpose of selling them to the Complainants for valuable consideration in excess of his out-of-pocket costs directly related to the Domain Names, or to otherwise intentionally and illegitimately exploit the Complainants’ trademarks or maliciously profit from the goodwill vested in them. Furthermore, in the course of his discussion with the Complainants, he never provided evidence, either directly or through one of his solicitors, of out-of-pocket costs he incurred in relation with the Domain Names of the magnitude of any of the payment requests he communicated to the Complainants.
Bad faith within the meaning of paragraph 4(b)(ii) of the Policy
It is submitted further that the Domain Names were registered and used in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. In this respect, the Complainants referred to findings of other panels that “pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks.”
In addition to the Domain Names, it was observed that Mr. Kouri had registered several “.mobi” domain names that are identical or confusingly similar to known trademarks of various Canadian companies other than the Complainants. More specifically, results of a registrant search regarding his email address email@example.com conducted on the “www.domaintools.com” website showed that Mr. Kouri registered – and is still the current registrant of – several other “.mobi” domain names, many of which are identical or confusingly similar to known trademarks of Canadian companies. A copy of the Whois records for the domain names <dumoulin.mobi>, <lesaffaires.mobi>, <puretracks.mobi>, <rona.mobi>, <st-hubert.mobi>, <sthubert.mobi>, <tqs.mobi>, <transcontinental.mobi>, <uniprix.mobi> were attached to the Complaint (Annex 28 to the Complaint). Those domain names are respectively identical or confusingly similar to corresponding known trademarks registered in Canada by third-parties, the Canadian Trade-Mark Database records of which were also attached to the Complaint (Annex 29 to the Complaint). These circumstances demonstrated, in the Complainants’ view, that Mr. Kouri registered multiple domain names similar to well-known trademarks and circumstances showed that he (and his counsel) was aware or should have been aware of the existence and bad faith use and registration of these other domain names.
It was noted further that due to the online commercial activities of the Complainants as news providers, they are well positioned to make use of the “.mobi” uniqueness as the first top level domain specially designed to delivering the Internet to mobile phones. LP has registered and is currently using and making plans to use other “.mobi” domain names. Had Mr. Kouri not registered the Domain Names, the Complainants would have been able to register and use them in the same manner as they have done with other “.mobi” domain names.
Thus, the Complainants assert that the fact that the Domain Names were registered almost at the same time, that both correspond to distinctive and well-known trade-marks in which the Complainants have rights, and that the Complainants carry their activities in the same metropolitan area where the Respondents live clearly indicate that the Respondent targeted them and that his primary purpose in registering the Domain Names was not to develop a “www.cyberpresse.mobi” website on his own. On the contrary, these circumstances show that the Respondents’ actions prevented the Complainants from legitimately extending use of trademarks in which they have rights in connexion with corresponding “.mobi” domain names.
Finally, it was asserted that regardless of any argument by the Respondent to the contrary, the Complainants had no duty to apply for the registration of the disputed Domain Names during the Sunrise Period or the very first days of the Landrush and General Registration Period, and no conclusion against the rights or interests of the Complainants should be derived from the fact that the Complainants had not done so.
On the basis of the above-mentioned circumstances, it was submitted that the Panel should find that the Respondent registered and used the Domain Names in bad faith within the meaning of paragraph. 4(b)(ii) of the Policy.
Bad faith within the meaning of paragraph 4(b)(iii) and paragraph 4(b)(iv) of the Policy
It was contended further that the circumstances showed that the Domain Names were also registered and used in bad faith within the meaning of paragraph 4(b)(iii) and paragraph 4(b)(iv) of the Policy.
In this regard it was observed that as of January 29, 2008, notwithstanding their registration in 2006, the Respondent was still not actively using either Domain Name online, as shown from print-out versions of the web pages located at the “www.lapresse.mobi” and the “www.cyberpresse.mobi” web addresses submitted with the Complaint. The Complainants stated further that they had recently became aware that the Domain Names had ceased to be “parked” with the Registrar and are now hosted on a server with an IP address the geographical location of which is in Québec, the Complainants’ main market, and is associated with the web design and hosting provider Créations Wedoonet Inc.
The websites accessible through both Domain Names now contain non-original news and general information, similar in nature to that of the Complainants, but in the Complainants’ view, unedited, unsophisticated and automated with external news feeds. Print-out versions of the web pages and content found on the “www.lapresse.mobi” website and the “www.cyberpresse.mobi” website on March 5, 2008 along with an emulation showing how the content made available by the Respondents from those websites is displayed on a mobile phone were attached to the Complaint.
This showed, in the Complainants’ view, not only that the Domain Names are now used by the Respondents to unfairly and unjustly compete, or pretend to compete, with the Complainants in the same markets by piggybacking on the goodwill vested in trademarks in which the Complainants have rights, they also contradicted the prior statements made by Mr. Kouri to the effect that the purpose of their registration was for development and use with a foreign partner.
These circumstances show that the Respondent is now intentionally attempting to attract Internet users to its websites by creating a likelihood of confusion with marks in which the Complainants have rights and that the Respondent is misleadingly diverting consumers and are tarnishing the trademarks in which the Complainants have rights by providing an online news service of greatly diminished quality and of an entirely different source, thereby disrupting the business of the Complainants or attempting to force the Complainants to purchase the Domain Names at an inflated price.
It was submitted that these recent changes to the manner in which the Domain Names are being used by the Respondent should also be viewed as an attempt to create the illusion that it is making use of the Domain Names in connection with a so-called legitimate and bona fide offering of services, as arguments for a defence in anticipation of the filing of the present as well as an attempt to exert a greater pressure on the Complainants to settle the dispute, and should be considered further evidence of bad faith on the Respondent’s part.
In light of the above-described set of circumstances as a whole and arguments related thereto, it was asserted that the Panel should find, on the balance of probabilities, that the Respondents registered and are using the Domain Names in bad faith within the meaning of paragraph 4(b) of the Policy.
The Respondents have no rights or legitimate interests in respect of the Domain Names
In this regard, it was asserted that a complainant is required only “to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.”
More specifically, the Complainants argued, there is no evidence that before any notice of the dispute, the Respondent has made use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, as paragraph 4(c)(i) of the Policy requires. In fact, at least until January 29, 2008, the Respondent made no “active” online use of the Domain Names since the Domain Names were simply “parked,” as discussed previously. Since then, the only online use that the Respondents made the Domain Names is to move their hosting to servers of Créations Wedoonet Inc. and publish an incomplete, unsophisticated, automated and unedited Canadian news website in the French language.
In these circumstances, any statements or documents that the Respondent might file as an attempt to support of a defence based on alleged demonstrable preparations to use the Domain Names before any notice of the dispute in connection with a bona fide offering of goods or services should be viewed either as insufficient or suspicious and should be dismissed.
There is no evidence that the Respondent (or his counsel) has been commonly known by either one of the Domain Names, as would require paragraph 4(c)(ii) of the Policy. Searches conducted in the trademark and business registries maintained by the government of Canada and of Québec revealed no trademark, business or organization related to the Respondent or his counsel and operating under the mark of LA PRESSE or CYBERPRESSE.
Nor was there any evidence that the Respondent was or are making a legitimate non-commercial or fair use of the Domain Names. As asserted earlier, the trademarks on which the Complaint is based are distinctive and well-known by French-speaking Canadians, including the Respondents, and Mr. Kouri registered and used the Domain Names primarily for the purpose of selling the domain name registrations to the Complainants for valuable consideration in excess of out-of-pocket costs directly related to the Domain Names. These circumstances should increase very substantially the Respondent’s burden to show that he has rights or legitimate interests on the basis of the so-called generic value or character of the Domain Names.
That being said, in the event that the Panel considers that the Domain Names or either one of them is formed of generic words, a position the Complainants rejected, but also finds that the Respondent intended to take advantage of the Complainants’ rights, the Respondent cannot be considered to have rights or legitimate interests on the basis of the fact that the Domain Names would be considered to be formed of generic words.
In light of the above-described set of circumstances and arguments, the Complainants concluded that they have made a prima facie case that the Respondents have no rights or legitimate interests in respect of the Domain Names and have met all of the requirements of the Policy to allow an order for the transfer of the Domain Names to the Complainants.
Whether the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights
With respect to the LA PRESSE trademarks, in the Respondent’s submission, the trademarks designate printed matter as a whole, especially newspapers and periodicals. The Complainants own and publish a daily newspaper called “La Presse.” As stated in section 12 (1) b) of the Canadian Trademark Act, this could not be a registrable trademark because it is clearly descriptive, in the French language, of the character of the wares or services in association with which it is used.
Even if the Complainants do have a registered trademark in LA PRESSE (which was not admitted but contested), it is not because they have met any distinctive requirements under the Act, but rather because the trademarks simply correspond to the logos used by LP, not the actual name “La Presse.” In other words, the registered trademarks owned by the Complainants simply confirm the distinctive character of their logo, not the name.
The Respondent’s Domain Name <lapresse.mobi> was purchased on September 30, 2006 and does not in anyway reproduce Gesca’s La Presse logo.
As for <cyberpresse.mobi>, it was asserted that the Complainants do not have any trademark in either CYBERPRESSE not CYBERPRESSE & DESSIN. The Complainants have applied for, but have not obtained, a trademark for CYBERPRESSE. Furthermore, ‘cyber’ is a prefix transposing the meaning of a word to the Internet space, as its definition indicates.
Therefore, the word “cyberpresse” is simply a combination of two extremely common, generic terms in French, as in many other languages, to designate matter as a whole, especially newspaper and periodicals distributed via the Internet. As such, the same above-mentioned analysis applies whereby trademark registration cannot be granted under the Canadian legislation because of its descriptive character. Only the logo can be subject to trademark registration.
It was asserted further that even if the Complainants did have valid trademark in the names “la presse” and “cyberpresse”, they are very weak ones because of their generic character (they are neither distinctive nor unique) and because others have been commonly using these terms on related goods and services. In this regard, the claimed trademark is also extremely weak because it is purely descriptive of the services offered. The Complainants do not benefit from a widespread fame and recognition.
In this regard, the Respondent asserted that a Google search for “la presse’ yields more than 11,000,000 results, giving a strong indication of the wide use and common character of these words in the French language. In his view, there is no issue of widespread fame, especially due to the extensive local and international use of such generic words. Such widespread use has had the necessary consequence that the rights of the users are circumscribed and, absent other circumstances, there is no reason why a new entrant into a new field should not adopt those words.
The Respondent does not contest that the Complainants own the generic top-level domain name <la presse.com> as well as <lapresse.ca> and <cyberpresse.ca>, nor does he contest that the Respondent’s Domain names, <lapresse.mobi> and <cyberpresse.mobi> are similar. This similarity does not however allow the Complainant to prevent anyone else from using these common words.
Lastly, it cannot be argued that the similarity is confusing. An ordinary person will not conclude that the “.mobi” websites are linked to Complainants’ business: (i) because of the widely and commonly used generic meaning of the terms used; (ii) because the “.mobi” websites do not in any way reproduce the Complainant’s logo or other characteristics; and finally (iii) because the “.mobi” websites do not in any way refer to the Complainants’ business or websites.
Whether the Respondent has rights and legitimate interests in respect of the Domain Names.
The Respondent noted that he was hired by Sublimedia in June 2007 for the very purpose of working on the business development of the website and project. Furthermore, there is an operating, active website which corresponds to the requirements of the Policy.
Respondent registered the Domain Names <lapresse.mobi> and <cyberpresse.mobi> on September 30, 2006 and October 1, 2006, at the time they became available, with the intension of developing a mobile news portal for the “European Market.”.
In furtherance of this project, in June 2007 the Respondent contracted with Créations Wedoonet Inc., to use Wedoo.com to market its RSS feed mobile site to people in France and Europe. Wedoo.com of Créations Wedoonet Inc.’s portals is one of the top 200 sites in France and, it was claimed, will provide great traffic to the Respondent’s site.
With respect to the discussions between the parties as to the Domain Names, the Respondent first received notice of the dispute on April 3, 2007, by e-mail sent on behalf of Gesca Ltée, the Complainants’ parent company.
The Respondent’s contracts with Sublimedia Inc. and Créations Wedoonet Inc. are said to clearly demonstrate the use and preparation to use the domain name in connection with bona fide offering of goods or services prior to any notice of the dispute. The Domain Names are linked to actual websites, “www.cyberpresse.mobi” and “www.lapresse.mobi”.
Furthermore, where the Respondent’s use of the Domain Names is “in connection with a bona fide offering of services,” previous panelist have found this to “bring the Respondent’s situation squarely within the provisions of paragraph 4( c)(i) of the Policy.”
This is precisely the Respondent’s situation, it was asserted, since he wants to position his enterprise as the premier mobile news aggregator for the European market through a partnership that also permits advertising opportunities and web traffic growth.
Respondent chose the disputed Domain Names simply because he considered them to concord with the services he intended to offer, as he has done with the other domain names he has registered.
Another relevant example of Respondent’s rights and legitimate interests under paragraph 4 (c) of the Policy is whether the Respondent (as and individual, business, or other organization) has been or is commonly known by the Domain Names in issue, even if the Respondent has acquired no trademark or service mark rights. In the present case, it was argued, the Respondent is indeed known as a business through his established websites, “www.cyberpresse.mobi” and “www.lapresse.mobi”.
The fact that the Respondent has a contract with Créations Wedoonet Inc. to work with Wedoo.com confirms his contention that he has never and still does not intend to market the Domain Names in Canada, but rather in Europe, where Complainants do not own or do business.
Therefore, it was asserted that the Respondent’s use of the Domain Names is fair because it was registered subsequent to a structured and organized project and with no intent to neither mislead or divert consumers nor tarnish the alleged trademarks at issue.
Whether the Domain Names have been registered and are being used in bad faith
With respect to this element, the Respondent argued that the Complainants’ contention about the request for payment for the transfer of the Domain Names by the Respondent should fail in its entirety for lack of accuracy, both on the facts and under the Policy.
While Mr. Kouri did not contest the fact that he offered to sell the Domain Names to the Complainants, the offer and the amounts do not in any manner demonstrate bad faith on his part. He registered the Domain Names with the intention of entering into a business and did in fact pursue the project, as shown by the employment contract.
The Complainants wrote to the Respondent on April 13, 2007 to inform him of their interest in the Domain Names <cyberpresse.mobi> (no mention was made of <lapresse.mobi>), and their intention to buy it, offering the sum of $500. They, not the Respondent, were the first to mention any payment and to indicate the amount.
Furthermore, on May 15, 2007, the Respondent made an offer to the Complainants to transfer both Domain Names to them, asking for financial compensation of $45,000 in exchange.
As previously asserted, the Respondent had engaged in a business project and had signed a contract with Sublimedia.inc, all of which were said to represent incurred costs reflected in the amount requested from the Complainants for the transfer of the Domain Names. This sum was said to represent the total amount of Respondent’s out-of-pocket costs directly related to the Domain Names.
It was noted further that other Domain Names for the terms “lapresse” and “cyberpresse” have been registered and many others are still available such as “.net”, “.biz”, “.name”, “.org”). In the Respondent’s view, this demonstrate the Complainants’ negligence in managing their Domain Names. It is obvious they are now realizing what has been their very own fault and trying to prevent others from a legitimate use of these Domain Names.
Bad Faith within the meaning of paragraph 4 (b) (ii) of the Policy.
Contrary to the Complainants’ contentions, Respondent does not carry out his business in the same metropolitan area. Rather, his business is international in nature (because of the Internet support dimensions) and most importantly, will be marketed in Europe. The Respondent has demonstrated his business plan as well as the progress he has achieved so far. These circumstances can only be said to show his legitimate interest, discussed previously.
Not only does the Respondent have a legitimate interest and right, he did not register the Domain Names in order to prevent the Complainants from reflecting the mark in a corresponding domain name nor has he, in connection therewith, engaged in any such conduct.
When the “.mobi” domain names were made available, the Respondent applied and obtained several such names, of which <lapresse.mobi> and <cyberpresse.mobi> were registered on September 30, 2006 and October 1, 2006 for the purpose of completing the marketing plan in Europe.
The “.mobi” Sunrise period provided for the opportunity for a trademark holder to apply for a “.mobi” domain name and this period expired on December 15, 2006. The Complainants did not make a claim during this sunrise period, thereby waiving the possibility for them to request the disputed Domain Names.
It was asserted further that the mere fact that the Respondent’s development plan is made for Europe, a continent where the Complainants do not do business and the absence of reference or link to Complainants’ website confirms that his intention is not to attract and it does not, in fact in any way attract commercial gain nor Internet uses to the websites by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location.
Although it was argued that Respondent has proven the absence of bad faith in his conduct, panels have previously found that that a “Respondent’s use of the domain name to find investors for its business does not satisfy (the bad faith element).”
Likewise, the Panel in this case should find for the Respondent because the Domain Names chosen clearly demonstrate the intent to benefit from a most common name, widely used and popular terminology, not to create confusion with Complainants’ marks.
The Supplementary Filings
As noted at the outset, the Response led to a supplementary filing by the Complainants on April 18, 2008. This filing took issue with many of the factual and legal assertions made by the Respondent. This in turn led to a short reply by the Respondent on April 25, 2008. The Panel will not record all of the disputing parties’ arguments made in their filings but will refer to certain salient points made therein.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by a complainant under the Policy, it is necessary that the complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested Domain Names, that:
(i) the disputed domain names are 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 names; and
(iii) the domain names have been registered and are being used in bad faith.
In the present case, the Panel is of the view that the record contains evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
The LAPRESSE Marks
The Complainant LP has established that it has three trademark registrations for LA PRESSE, LA PRESSE & DESIGN, and LA PRESSE DESSIN. While the Respondent attempted to argue against the validity of the trademarks, they have been accepted as meeting the distinctiveness requirement by the registration issued by the relevant Canadian authority. The Panel has no reason to view them as anything other than valid trademarks.
LP claims and the Panel has verified to its satisfaction that the Complainant is the owner of the LA PRESSE mark in Canada. The Panel also verified that LP operates the “www.lapresse.ca” website which incorporates the LA PRESSE mark. Accordingly, when the suffix is put aside, it follows that in registering the Domain Name <lapresse.mobi> the Respondent has registered a Domain Name that is not only confusingly similar but in fact identical to the trademarks in which the Complainant LP has rights.
The first Domain Name in dispute <lapresse.mobi> is plainly confusingly similar to the Complainant LP’s trade mark. It employs the mark in its entirety, adding to it only the suffix “.mobi”. Given that in Québec the LA PRESSE mark is notoriously connected to media products and services, the result is, a disputed Domain Name that is confusingly similar to the LA PRESSE mark.
The disputed Domain Name <lapresse.mobi> is thus confusingly similar to a mark in which the Complainant LP has rights. With respect to the first Domain Name, the Complainants have plainly fulfilled the requirements of paragraph 4(a)(i) of the Policy.
The CYBERPRESSE Marks
As for the unregistered trademark CYBERPRESSE & DESSIN, it is noted that an application for was made on October 7, 2004 under number 1233137 and used in Canada since June 23, 2000. The Complainants also have unregistered trademark rights in the word mark CYBERPRESSE .
The Panel concludes that the Complainants’ use of CYBERPRESSE is such as to have become a distinctive identifier associated with their goods and services in the Montreal and Québec markets. The Complainants have proved that through the combined effect of their common ownership, their integrated print and Internet marketing, the period of use of CYBERPRESSE in the relevant markets, and the use of LP’s content in CP’s website, they have the right to assert common law or unregistered trade mark rights. The CYBERPRESSE trademarks have become distinctive identifiers associated with the Complainants and their goods and services and were so when the Respondent registered the contested Domain Names. They have been used since at least as early as June 2000, and subsequently along with the Domain Name <cyberpresse.ca>, registered in October 2000, to provide news and general information on various topics through a website now located at “www.cyberpresse.ca”.
The disputed Domain Name <cyberpresse.mobi> is thus confusingly similar to a mark in which the Complainants have established rights with respect to the second Domain Name, the Complainants have thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names.
The evidence shows that the Respondent has no apparent connection with the Complainants, nor has it been licensed or authorized by it to use the disputed Domain Names. The disputed Domain Names are evidently not the Respondent’s name, nor is there any persuasive evidence that the Respondent is commonly known by those names. Nor, in the Panel’s view, is the Respondent making a legitimate non-commercial or fair use of the disputed Domain Names.
The Panel agrees with the Complainants therefore that the Respondent has no rights or legitimate interests in the disputed Domain Names within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Third, it must be shown that the Domain Names at issue have been registered and are being used in bad faith.
The Panel has devoted considerable time to reviewing the evidence in this proceeding. At the outset, it notes that it has found the following facts to be particularly salient in resolving this aspect of the dispute.
First, the Panel is struck by the fact that when the generic top-level domain “.mobi” was opened for registration, the Respondent registered not only the two disputed Domain Names but a number of other domain names containing well known Canadian trade names such as <rona.mobi>, <st-hubert.mobi>, <sthubert.mobi>, <tqs.mobi>, <transcontinental.mobi>, <uniprix.mobi>. These registrations support the inference that during the first stages of the “.mobi” registration period, the Respondent sought to lock up a series of well known names, not for legitimate reasons, but rather in order to sell them to the trade mark holders for valuable consideration.
Second, although the Respondent sought to deny the notoriety of the LA PRESSE and CYBERPRESSE marks in the greater Montreal area, this is in the Panel’s view utterly implausible, and must be rejected noting inter alia the Complainants notoriety in the Montreal area..
Third, although much was made of the Respondent’s claimed “European venture,” little in the way of convincing proof was submitted to support the relationship between the Domain Names and the claimed venture. The employment contract with Sublimedia Multimedia Inc. provided no evidentiary support for many of the factual allegations made by the Respondent. Put simply, it never mentioned the European venture, it was expressly restricted to the territory of Canada in its geographic scope and the level of hourly remuneration provided therein is inconsistent with the significant business venture portrayed by the Respondent. Moreover, while the Respondent placed great emphasis on the “cyberpresse” venture he did not make any assertions as to a possible project regarding the Domain Name <lapresse.mobi> registered concomitantly with <cyberpresse.mobi>.
As noted, the Complainants are well known in the metropolitan Montreal area and when a claimed offshore business venture emphasizes one of the two Domain Names registered around the same time and ignores the other, particularly when both Complainants are so well known in Montreal and Québec generally, the simultaneous registration tends to undercut the persuasiveness of the “European venture” defence.
Fourth, although the Respondent correctly points out that the Complainant’s parent company was the first to raise the issue of financial compensation, the amount initially offered was small and commensurate with the out of pocket expenses that would be incurred to register the Domain Names. It was a far cry from the sizable demands made by the Respondent and his representatives. The Respondent argued that the latter sum reflected his costs incurred with respect to the venture. No satisfactory proof was adduced and the argument is rejected. In both cases, the sums demanded were completely disproportionate to the probable expenses incurred, and evidence demands made in bad faith.
Fifth, the Complainants have adduced proof that the Respondent simply parked the websites until January 2008 at which time he migrated them to a server in Québec and constructed a clearly perfunctory and derivative “news service.” These websites, similar in nature to that of the Complainants, tend to contradict the “European venture” defence because they are inconsistent with Mr. Kouri’s prior statements that the purpose of the Domain Names’ registration was for development and use with a foreign partner. In the Panel’s view, this was a patent and colourable attempt to generate evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
In the circumstances, the Panel concludes on the present record before it that the Domain Names were registered and 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 Names, <lapresse.mobi> and <cyberpresse.mobi> be transferred to the Complainants.
J.C. Thomas Q.C.
Dated: June 10, 2008