WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
9170-4205 Quebec Inc. v. WhoIsProtector Inc. / Indyca Solutions Inc.
Case No. D2016-1773
1. The Parties
The Complainant is 9170-4205 Quebec Inc. of Blainville, Quebec, Canada, represented by Kaufman Laramée LLP, Canada.
The Respondent is WhoIsProtector Inc. of Chicago, Illinois, United States of America / Indyca Solutions Inc. of Vaughan, Ontario, Canada, represented by Selvam and Selvam, India.
2. The Domain Name and Registrar
The disputed domain name <bathdepot.com> is registered with DomainPeople, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2016. On August 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 12, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2016. On September 30, 2016, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed with the Center on October 8, 2016.
The Center appointed J. Nelson Landry as the sole panelist in this matter on October 17, 2016. 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
Upon reviewing and analyzing the facts and events in this case, the Panel considers it useful to present a review of the facts in a chronological order.
The Respondent, Indyca Solution Inc., was founded by the three Paramalingam family members who started their furniture business in 1993 through their first company Magick Woods Ltd. active in the design, manufacture and installation of kitchen and bathroom furniture. At about the same time, the same family members started a business dealing with software development and information technology services under the current Respondent’s company. The Respondent and Magick Woods Ltd. are subsidiary companies to other companies incorporated in India such as Indyca Solutions (India) Private Limited and Magick Woods Exports Private Limited. Initially, the said companies were operating with the domain name <magickwoods.com> purchased in 1996. On April 3, 2003, Magick Woods Ltd. purchased three domain names <vanitydepot.com>, <lifestylebath.com>, <fashionbath.com>.
On February 12, 2004, Magick Woods Ltd. purchased the disputed domain name <bathdepot.com>.
On June 8, 2006, the Complainant was incorporated and on November 23, 2006, the Complainant filed in Canada an application based on proposed use, to register the trademarks BATH DEPOT and BAIN DÉPÔT in association with the sale of baths, faucets and other bathroom products and services. Subsequent to the filing of a declaration of use since July 2, 2008, both registrations issued on August 5, 2008. The trademark BATH DEPOT was applied for in the United States of America on December 7, 2006, and the registration issued on December 9, 2008 (hereinafter, the “BATH DEPOT” Trademark and “BAIN DÉPÔT” Trademark). The registration certificate in Canada indicated the presence of a disclaimer for the words “bain” and “dépôt” in the French Trademark and “bath” in the English one in relation to the exclusive use of these terms apart from the trademarks.
The Complainant licensed the above mentioned three trademark registrations to its fully owned and controlled sister-company Bain Dépôt Inc. having a principal place of business next door to the Complainant.
The Complainant further purchased and is the current owner of several domain names such as <bathdepot.ca>, <baindepot.com>, both registered in 2007 and owned via Technologies iWeb Inc; <baindepot.org>, <bathdepot.org>, owned via Tucows Domains Inc.; <bathdepot.biz>, <baindepot.biz>, <bathdepot.tv> and <baindepot.tv>, owned via Tucows Domains Inc., and finally <baindepot.net>, owned by the Complainant as well as four others registered in 2011 incorporating the terms “bath”, “bain” and “depot”, which registrations expired on August 16, 2016.
On May 12, 2014 and on March 2, 2016, the Complainant sent a demand letter to the Respondent and simply received a read receipt notice from the Respondent’s email address.
The Respondent did not provide any response to the Complainant’s demand letters.
On August 30, 2016, the Complaint was filed with the Center.
5. Parties’ Contentions
The Complainant, as the owner of the registered Trademark BATH DEPOT and also of several domain names including <bathdepot.ca> registered on August 15, 2007, submits that the said Trademarks are not descriptive nor generic pursuant to their ten years of active and consistent use and refers to UDRP precedents. See, Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Eauto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096 and Magnum Piering Inc. v. The Mudjackers and Gardwook S. Wilson Sr., WIPO Case No. D2000-1525.
The Complainant further submits that the disputed domain name creates significant confusion with its registered Trademarks and domain name, thereby misleading the public and the Complainant’s clients by luring them away from its own domain name and website and that if the generic suffix “.com” is ignored the disputed domain name is identical to its BATH DEPOT Trademark.
The Complainant states and represents a lack of evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services in Canada. The Complainant further states that the Respondent identifies itself as “venture promoted by the Toronto, Canada based Magick Woods Group (www.magickwoods.com) with interests in Light Manufacturing and Information Technology”.
The Complainant further represents that the Respondent has not acquired any trademark rights in relation to the disputed domain name and is not making a legitimate noncommercial or fair use of the said disputed domain name which is blatantly infringing in the Complainant’s Trademark and goodwill for ill-intentioned purposes. The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. First, it claims the confusing similarity of the disputed domain name with the Complainant’s registered domain name and that such use is equivalent to an unauthorized use of the Complainant’s Trademarks registered both in Canada and the United States of America. Furthermore, the Complainant claims the absence of a bona fide use of the disputed domain name since the Internet users trying to access the website at the disputed domain name are informed by Google Chrome web browser that the DNS server for the disputed domain name cannot be found and the website cannot be reached. The said browser, according to the Complainant, redirects users to the Complainant’s registered website “www.bathdepot.ca” adding to the confusion between the two domain names and dilution of the Complainant’s valuable intellectual property.
The Respondent denies the Complainant’s rights in its registered BATH DEPOT and DÉPÔT Trademarks since the terms are common and descriptive.
The Respondent represents that the UDRP decisions cited by the Complainant do not apply to the facts in the present dispute since in these instances none of the registered Trademarks had a disclaimer for a substantial portion of the trademark as it is the case for the BATH DEPOT Trademark. The Respondent relies on Ideation Unlimited, Inc. v. Dan Myers, WIPO Case No. D2008-1441. The Respondent denies any confusion between the Complainant’s registered Trademarks and the disputed domain name, as well as contending that the Complainant’s trademark rights are denied.
The Respondent represents that it had activities in association with its corporate partner Magick Woods Ltd. in the business of furniture and bath fittings since about 1996, registered the disputed domain name in 2004, two years before the Complainant was incorporated in 2006, and four years prior to their BATH DEPOT Trademark registration in 2008, and had even registered a few related domain names with a clear intention of using them for the creation of an online ecommerce portal which eventually did not take place.
In respect of the absence of development of the planed portal or website, the Respondent relies on the UDRP decision Nanosonics Limited v. An Nguyen-Dinh, Vermon S.A, WIPO Case No. D2015-0681 wherein the panel did not see absence of rights or good faith “since the respondent had not used its domain name for 13 years further to its registration” and further concluded that the respondent, for this reason, had not necessarily registered it in bad faith. The panel in this case further observed “it is in principle legitimate for businesses to register domain names which they reckon they might want to use in good faith even if this eventually does not come to pass.” On this basis the Respondent submits that it has rights or legitimate interests in respect of the disputed domain name.
The Respondent revisits the four criteria stated in paragraph 4(a)(iii) of the Policy to deny that the disputed domain name was registered and used in bad faith. Relying on the purchase of the disputed domain name, prior to the incorporation of the Complainant and the registration of its alleged Trademarks, the Respondent submits that it had not acquire the disputed domain name for the purpose of selling, renting or transferring it to the Complainant. The earlier registration of the disputed domain name prior to the incorporation and acquisition of the Complainant’s trademark rights was not made to prevent the Complainant from reflecting its trademarks in a corresponding domain name and furthermore, in view of the earlier registration, the Respondent did not register the disputed domain name for the purpose of disrupting the business of a competitor since the Complainant was not even incorporated in February 2004.
In respect of paragraph 4(b)(iv) of the Policy regarding the use of the disputed domain name to intentionally attempt to attract, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the Complainant’s Trademark, the Respondent represents that its purchase of the disputed domain name was done many years prior to the incorporation and first use and registration of the Complainant’s Trademarks in 2008 and on that basis submits that the disputed domain name was registered in good faith.
The Respondent denies the allegation of confusion made by the Complainant relying on the evidence that an Internet user upon trying to access the disputed domain name, the Google Chrome web browser informed the Internet user that the DNS server could not be found at the address of the disputed domain name and the website could not be reached. The Respondent represents that the suggestion observed and noted by the Complainant “are based on user profiles of the browser and does not direct or suggest the Complainant’s website”.
The Respondent relies and cites the Consensus view on paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”): “Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further par 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant would not have contemplated the complainant’s then non-existent right.”
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well established in the UDRP decisions that upon considering the confusing similarity between a complainant’s trademark and a disputed domain name that the panel does not take into consideration the date of registration of the disputed domain name nor the date of registration or common law use of the complainant’s trademark nor the wares and services associated with either of the complainant’s trademark and respondent’s activities and furthermore that one does not take into consideration the addition of the domain name gTLD suffix “.com”, in the present instance. The Panel does not consider appropriate nor necessary to discuss the validity of the BATH DEPOT Trademark on the basis of the presence of these dictionary words.
The “bathdepot” term, part of the disputed domain name, is identical to the registered Trademark BATH DEPOT of the Complainant.
The Panel determines that the disputed domain name is confusingly similar to the registered Trademark of the Complainant and the first criterion has been met.
B. Rights or Legitimate Interests
The Panel considers important and quite significant that the four domain names registered by the Respondent including the disputed domain name (see Factual Background) were all registered at least three years prior to the incorporation of the Complainant and prior to the latter’s application to register its BATH DEPOT and BAIN DÉPÔT Trademarks in Canada based on proposed use in November 2006 and then registration in August 2008. The Panel further observes that in respect of the BAIN DÉPÔT Trademark of the Complainant, the registration carries a disclaimer for the use of the terms “bain” and “dépôt” outside of the Trademark and similarly a disclaimer for the use of the word “bath” in the BATH DEPOT registered Trademark.
The Panel observes that the terms “bath”, “depot”, and “bain” are descriptive terms present in the dictionaries and that it is appropriate and normal in the present circumstances, for the Respondent to register one or more domain names including descriptive terms such as “bath”, “depot”, “fashion”, “life style” and “vanity”, since they clearly relate to its field of activities.
The Panel also determines that on February 12, 2004, the Respondent, in the absence of any third party use of a common law or registered Trademark for BATH DEPOT, had a right or legitimate interest to register the disputed domain name.
Accordingly, the Panel determines that the Complainant has failed to show that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As already mentioned under the previous second criterion, at the time of the registration of the disputed domain name, the Complainant was not yet incorporated nor it or anybody else using BATH DEPOT as a trademark in association with its products or services. As mentioned in WIPO Overview 2.0, paragraph 3.1 cited by the Respondent “the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then none existent right”. The Panel adopts this position which clearly applies to the present circumstances of the case.
Therefore, and noting the Panel’s determination under rights or legitimate interests, the Panel finds that the registration of the disputed domain name on February 12, 2004 was not in bad faith.
The third criterion has not been met.
D. Reverse Domain Name Hijacking
The Respondent has asked for a declaration by the Panel that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Upon considering the Respondent’s submissions on this point and the evidence of the Complainant’s rights, the Panel does not consider this a case of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
J. Nelson Landry
Date: October 28, 2016