ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and contested domain name.
The Complainant is Chemco Rubber Limited, a company that operates within the industry of repair materials for tires and belts, namely patches, rubber, cements, liquid rubber buffers, cleaners and solvents, fabric material, tire repair plugs, tire valves and valve hardware. This company is headquartered in the City of Toronto, Ontario, Canada.
The Respondent is Mr. Greg Ricks, living in the City of Los Angeles, California, United States, owner and operator of Yada.com E-mail, a free web-based e-mail service.
The domain name at issue is 'chemco.com'; the Registrar was Network Solutions, Inc.
The remedy sought is the transfer of the domain name to the Complainant.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on May 26, 2000. The hardcopy of the Complaint Form was received on May 26, 2000. Payment was received on the same date. Upon receiving all the required information, eResolution's clerk proceeded to confirm the identity of the Registrar for the contested Domain Name, verify the Registrar's Whois Database and confirm all the required contact information for Respondent, verify if the contested Domain Name resolved to an active Web page and verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 26, 2000. The requested information was received on May 30, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 6, 2000. This date is the commencement date of the administrative proceeding.
On June 6, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On June 23, 2000, the Respondent requested an extension to submit the response. The Clerk's Office granted an extension to the respondent until June 27, 2000 at 12:00h.
On June 27, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on the same date.
On June 29, 2000, the Clerk's Office contacted Mr. Giovanni Ziccardi, and requested that he acts as panelist in this case.
On June 30, 2000, Mr. Giovanni Ziccardi, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On June 30, 2000, the Clerk's Office forwarded a user name and a password to Mr. Giovanni Ziccardi allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On June 30, 2000, the parties were notified that Mr. Giovanni Ziccardi had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 13, 2000.
3. Factual background.
The Complainant, Chemco Rubber Limited, is a leading supplier of tire repair materials, tools and equipment for the Canadian tire repair industry. The company has been in business under the 'Chemco' name since the early 1960s. Its products are sold in Canada, the United States and internationally, and the company has a plant and office in Toronto, Canada and an office in Vancouver.
The Respondent, Mr. Greg Ricks, registered the domain name 'chemco'. The domain name has never been used in connection with a business, brand, product, or service that can be linked in any way to the word 'chemco', and the domain name has been routed at various times to several sites.
4. Parties' Contentions.
The Complainant highlights, first of all, that 'chemco' is a registered trademark of Chemco Rubber Limited.
The domain name Chemco.com is identical to the registered trademark and the name of the business of the company, and the Complainant declares that this fact will confuse potential customers in Canada, the United States and internationally.
The Complainant declares also that the domain name has never been used in connection with a business, brand, product, or service that can be linked to the word 'Chemco'.
The Complainant noticed also that, for some time, the Chemco.com domain name was for sale on the PerfectName.com website along with other Domain Names. Then the domain name at issue was being redirected to Motherboards.com, a site which markets motherboards for computers. There is, according to the Complainant, no conceivable connection between motherboards and the Chemco trade name.
First of all, according to the Respondent, the term 'Chemco' is a combination of two abbreviations for common terms employed in everyday speech in the United States. The term 'chem' being an abbreviation or prefix for the words chemical, chemistry or chemist and the term 'co' being an abbreviation for the word company.
Second issue, an Internet search reveals that there are thousands of sites that employ the term 'chemco' and numerous companies having a trademark containing the words chemco. There is nothing, according to the Respondent, that would prevent Mr. Ricks from registering the mark 'chemco' in connection with its use in a free web based e-mail service.
The Respondent says also that was intention of Mr. Ricks to provide free web hosting for one or more companies named Chemco, and that this web hosting service has been in the planning and development phase for several years.
Mr. Ricks declares also that he has never offered to sell or rent the name to the complainant and that the Complainant has failed to establish required elements of proof of bad faith.
5. Discussion and Findings
A. Copy or Similarity.
The domain name at issue is identical to the trademark 'Chemco', a registered trademark of Chemco Rubber Limited. As demonstrated by the Annexes, the registration was filed on November 25, 1963, with the name being officially registered on December 31, 1964. Most recently the registration was renewed December 31, 1994 and is currently in effect. The trademark is registered with the Canadian Intellectual Property Office; application number 027089; registration number TMA 138657.
The Panel, according to the Complainant's statements, believes that the term 'Chemco' has no meaning or significance other than as a trademark identifying 'Chemco' services.
The first requirement is satisfied: the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
First of all, there is no active website at 'chemco.com' address According to this Panel, the Respondent has not established any rights or legitimate interests in respect of the domain name under any of the circumstances set forth in Paragraph 4 (c) of the ICANN Policy.
The domain name in issue was not used and there was not a bona fide offering of goods or services.
In this case the domain has never been used in connection with a business, brand, product, or service that can be linked to the word 'Chemco'. More, during the time in which the Chemco.com domain name has been held by the registrant, the domain name has been routed at various times to sites entitled PerfectName.com (see Annex C), MotherBoards.com (see Annex D) and most recently Yada.com (see Annex E), none of which have any association with any business operating under the Chemco name nor the company.
It is not clear, to the Panel, the purpose for these redirects; it is sure, on the other side, that Mr. Ricks did not use or was preparing to use the domain name in connection with a bona fide offering of goods or services, neither has been commonly known by the domain name.
According to this Panel also the second requirement is satisfied: Mr. Ricks has no rights or legitimate interests in respect of the domain name.
C. Bad faith.
According to this Panel, the name 'Chemco' was primarily registered for the purposes of either selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the Domain Name.
There is also sufficient evidence to find that Mr. Ricks has registered the domain name in conjunction with a bulk registration of domain names for the purpose of sale.
According to this Panel, the Domain Name has been registered and is being used in bad faith.
The evidence, submissions of the parties, examination of documents, ICANN Regulations compel this Panel to conclude and decide that:
- The domain name 'chemco' registered by Mr. Greg Ricks is identical to the registered mark of 'Chemco', a mark in which the Complainant has rights.
- Mr. Greg Ricks has no legitimate interest in respect of that domain name, has not been commonly known by this domain name, and is not making legitimate non commercial or fair use of the domain names.
- The domain name at issue was registered and is being used in bad faith by Mr. Greg Ricks.
The Respondent failed to prove any of the three circumstances set out in ICANN Policy at Paragraph 4 (c).
Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3 (c), the Panel orders that the registration of the domain name at issue, 'chemco' be transferred from Mr. Greg Ricks to Chemco Rubber Limited.
This done and signed in Castelfranco Emilia, Modena, Italy, on July 13, 2000.
(s) Giovanni Ziccardi