ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Marine Expert Inc. (hereinafter the Complainant), a canadian company incorporated under the federal law. Marine Expert Inc. is located at 5900 Boul. Cousineau Suite 320, St-Hubert, Québec, J3Y 7R9, Canada. Complainant's prime Representative is Me Marc Lanteigne of Rouleau, Doss, d'Amours, 204 Notre-Dame O # 400, Montréal, Québec, H2Y 1T3
The Respondent is Major Cormier & Associés (hereinafter the Respondent), a canadian company located at 620 St-Jacques suite 500, Montréal, Quebec, H3C 1C7. Respondent's prime representative is Diane Bellavance of Lavery, de Billy, located at 1 Place Ville-Marie suite 4000, Montreal, Quebec, H2B 4M4.
The dispute concerns the domain name "marinexpert.com" (hereinafter referred to as the Domain Name). The Registrar with whom the Domain Name is registered is Network Solutions Inc. (hereinafter the Registrar).
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on October 18, 2000. The hardcopy of the Complaint Form and annexes were received on November 1, 2000. Payment was received on November 27, 2000. The delay to pay the applicable fees was extended by the Clerk's Office.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on October 18, 2000. The requested information was received October 19, 2000.
As the registration agreement was drafted in English, and the Complaint form drafted in French, the Case Administrator sent an email to the Respondent on November 6, 2000, to request it's consent to have the proceeding in French, in accordance with section 11 of the ICANN Rules. On November 7, 2000, the Respondent refused. On November 8, 2000, the Case Administrator requested from the Complainant a Complaint form drafted in English. The electronic format was received on November 29, 2000 and the hard copy format was received on December 5, 2000.
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 essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk 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 opens to an inactive Web page on October 18, 2000, the day the Complaint form drafted in French was received, but on December 5, 2000, the Domain Name related to an active Web page, redirecting to the site of another web site and hence the Complaint is administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet to the Respondent 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 forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on December 6, 2000 which is the official commencement date of the administrative proceeding.
On December 22, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on December 28, 2000.
On December 28, 2000, the Clerk's Office contacted a first Panelist, and requested that he acts as panelist in this case. On December 28, 2000, he declined.
On December 29, 2000, the Clerk's Office contacted Mr. Jacques A. Léger, Q.C., and inquired if he would act as panelist in this case.
On January 3, 2001, Mr. Jacques A. Léger, Q.C., accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On January 3, 2001, the Clerk's Office forwarded a user name and a password to Mr. Jacques A. Léger, Q.C., allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On January 3, 2001, the parties were notified that Mr. Jacques A. Léger, Q.C., had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 17, 2001.
3. Factual Background
In 1984, "Les Entreprises Mario Larosée Inc." was incorporated under the canadian federal laws and in 1993, changed its name to "176957 Canada Inc.". On the same year, it started to include the trade name "Marine Expert" for its marine division and in 1996 registered the name "Marine Expert", to finally change its name from 176957 Canada Inc. to Marine Expert Inc. on December 4, 1997. The Complainant offers insurance services in the field of pleasure crafts to individuals and to enterprises (retailers, mechanics, marinas) throughout Quebec and Ontario.
The Respondent is a Marine Insurance Managing General Agent for CNA-Maritime, Ace-Ina Wellington, CGU and CNA for Yacht Insurance, operating in all canadian provinces and Eastern USA. On April 30, 1999, Respondent registered the domain name marinexpert.com with the Registar.
A trademark application was filed on January 12, 2000, not by the Complainant, albeit by another legal entity i.e. "SERVICES D'ASSURANCES TRANSPORT EXPERT INC." for the trademark MARINE EXPERT.
On April 18, 2000, Complainant sent a demand letter advising the Respondent to stop using the Domain Name. The Respondent replied to this letter on April 20, 2000, denying any possible confusion.
4. Parties' Contentions
The Complainant claims that the Domain Name is similar and causes confusion with its corporate name, Marine Expert Inc. The fact that the Respondent simply removed the letter "e" and joined the two words does not diminish the similarity of the two names.
The Complainant alleges that the Respondent uses the Domain Name without any rights, since the Complainant has been using "Marine Expert" as part of its trade name since 1993. The Complainant further alleges that the Respondent has never and still does not use the name "Marine Expert" for its commercial activities. The Respondent uses the Complainant's good reputation and tries to mislead potential clients in thinking they are doing business with the Complainant's business. Since the Complainant has business relations with over 500 insurance brokers, 7000 boat owners and 100 marine related businesses, it claims it is for that reason the Respondent registered the Domain Name.
The Complainant alleges that the Respondent is acting in bad faith for the following reasons:
- Respondent tries to disturb the activities of the Complainant by using the Complainant's good reputation and tries to mislead potential clients in thinking they are doing business with the Complainant's business
- Respondent tries to attract internet users on its web site by creating a confusion with the name and trademark of Complainant
- Respondent admits that it has no intention of using the Domain Name
The remedy requested is the transfer of the Domain Name to the Complainant.
The Respondent claims that there is no evidence of confusion or confusing similarity of the Domain Name with Complainant's trademark since the Complainant does not have a valid trademark to claim rights on. Respondent further submits that the trademark application for "Marine Expert" was filed by "SERVICES D'ASSURANCE TRANSPORT EXPERT INC.", which is not the Complainant and that the Complainant did not allege or prove any rights in a common law trademark. In addition, the mere incorporation of a company name similar to a registered domain name does not create rights under the Uniform Domain Name Dispute Resolution Policy (hereinafter the Policy).
Should the Panel find that a common law trademark does exist, the Respondent submits that MARINE EXPERT is at best a very weak, self-laudatory, descriptive designation which cannot be protected unless a secondary meaning is proven, which is not in this case.
The Respondent denies that it registered the Domain Name to benefit from Complainant's business. In fact, it alleges that it used the Domain Name to redirect Internet users to Respondent's web site at mcayacht.com until CNA's and CNA-MARITIME's web site was functional, at which point the Domain Name was to be transferred to CNA-MARITIME. Actually, Respondent states that it tried to transfer the registration of the Domain Name to CNA-MARITIME as early as June 27, 2000, and that it is only a result of a technical error that Respondent is still listed as the owner of the Domain Name. Respondent also alleges that it has been consistently held by other Panels that redirecting to another site is a legitimate use if it is not misleading to consumers.
The Respondent further states that :
- the Complainant has failed to meet its burden to show that the Respondent has no legitimate right in the Domain Name and since MARINE EXPERT are generic terms, the Respondent has, in fact a legitimate right in the Domain Name.
- The Complainant did not submit evidence that would prove any of the circumstances as set forth in paragraph 4 (b) of the Policy.
- The Complainant has not alleged nor proved that the Domain Name at issue was acquired for the purpose of sale to the Complainant or a competitor of the Complainant
- There is no evidence that consideration in excess of documentable out of pocket costs was demanded
- The Respondent registered the Domain Name with the intent of transferring it to CNA-MARITIME, and that the Domain Name currently redirects users to CNA-MARITIME's future portal.
- It does not prevent the Complainant to reflect its mark in a corresponding domain name since the domain name registered by the Respondent is not identical to the terms to which the Complainant otherwise has rights.
- The Complainant has not shown evidence that the Respondent has registered the name primarily for the purpose of disrupting the business of a competitor and the Respondent specifically denies such behavior.
- The Respondent has never intentionally attempted to attract to its site internet users for commercial gain, or other on-line location by creating a likelihood of confusion with the Complainant's alleged mark as to the source, sponsorship, affiliation or endorsement of Respondent's web site on location.
Consequently, the Respondent requires the complaint to be rejected.
Lastly, the Respondent request the Panel to declare the Complainant guilty of reverse domain hijacking, since the Complainant brought the proceedings in bad faith only to spend Respondent's time and money
5. Discussion and Findings
Pursuant to the Policy, the Complainant must convince the panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to prove, on balance:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used by the Respondent in bad faith.
After having carefully reviewed the Complainant's allegations as well as its evidence, and the Respondent's response and evidence, the Panel hereinafter considers each of these three elements below, in light of the evidence submitted.
(i) Identity or Confusing Similarity and Holding of Rights
According to paragraph 4 (a) (i) of the ICANN Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to its trademark, and prove that it has rights in said trademark.
a) Identity or Confusing Similarity
First, the Panel notes that given the slight difference between the Domain Name and Complainant's business (i.e. the removal of the letter "e" between MARINE and EXPERT and the junction of the two words), it does not significantly affect the visual impression made by the Domain Name as compared with the mark nor does it affect the pronunciation of the Domain Name as compared with the mark [Diageo p.l.c. v. John Zuccarini, Case No. D2000-0541]. Consequently, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant's trade name.
b) Holding of Rights
Similarity is not in and of itself sufficient to succeed on this ground, as the Complainant also has the burden of showing that it holds a valid trademark right.
From the evidence submitted by the Complainant, it is obvious that it does not have rights into a registered trademark. At best Complainant presented evidence of a trademark application for MARINE EXPERT for which, however, the applicant is a different entity, i.e. "SERVICES D'ASSURANCES TRANSPORT EXPERT INC."
Of course, the Policy does not require the Complainant to prove rights into a "registered" trademark, as a proof of a common law trademark is sufficient. In Canada, both civil and common law courts have upheld enforcement of unregistered trademarks, in which case however there is a need to prove goodwill into such marks that benefits to its owner by virtue of use. It is trite law that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered. [Film Council v. Boolean Consulting Limited, AF-0505]
As it has been stated above, the application for a trademark has been filed by a third party, hence if there is goodwill, it presumably belongs to said third party (in the absence of evidence to the contrary), i.e. "SERVICES D'ASSURANCES TRANSPORT EXPERT INC." and not to the Complainant.
However, the mere incorporation of a trade name does not confer rights into a trademark or service mark; to establish such rights, a party has to demonstrate, for instance, that it has been using the trade name to distinguish its enterprise, products or services from those of others and that it has been using said trade name to distinguish itself for instance on company brochures, publicity, stationary, etc. Hence, the Panel is of the view that the Complainant has failed to submit sufficient proof to show evidence of use in order to be entitled to common law protection for a trademark or service mark, as it is not enough to prove its company name.
Consequently, the Panel finds that the Complainant did not meet its burden of proving, on balance, that it owns rights in a trademark or service mark identical or confusingly similar to the Domain Name.
(ii) Rights or Legitimate Interests
Since the Panel has found for the Respondent in relation to paragraph 4(a)(i) of the Policy it could be unnecessary for the Panel to consider the issues of rights or legitimate interest, or even bad faith. However in the event that the Panel was wrong in its findings in relation to paragraph 4(a)(i), the Panel considers that it is appropriate to address these issues as well.
Paragraph 4 (a) (ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4 (c) of the Policy illustrates as to how a Respondent can demonstrate rights or interest in the Domain Name at issue. This paragraph sets out three non-exhaustive examples, such as:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In the present case the Complainant has stated that the Respondent has never used the name marinexpert.com for its commercial activities; to which Respondent has responded that it has been using the Domain Name to redirect internet users to the CNA-MARITIME's and CNA's future maritime insurance portal site.
As to the issue of redirecting, the Panel adopts the finding made by previous panels that redirection (under certain circumstances) might be considered as legitimate use, if such redirection is not misleading to consumers. [Shirmax Retail Ltd/Détaillants Shirmax Ltée v. CES Marketing Group Inc., AF-0104] In appreciating the redirection, in the present case, the Panel has to take into consideration whether the redirection is misleading for the Complainant's consumers, not those of the Respondent, the proof of which lies upon the Complainant. No such proof was put forward; quite to the contrary, through its Annex 5 filed by the Complainant is a letter from respondent to Complainant dated April 20, 2000, stating: "Vous noterez qu'il n'y a aucun danger de confondre un géant mondial en Assurance Maritime et un courtier du Québec", which statement was never contradicted by Complainant. In the absence of such evidence, it is not incumbent upon the Panel to make a finding of confusion for the Complainant's consumers, merely because both parties are located in the same area and their commercial activities are similar, namely maritime insurance.
Furthermore, the name MARINE EXPERT cannot be monopolized solely in the field of insurance, as illustrated by the Respondent's evidence with its Annex 5 and 7. Clearly there are other entities using the same trade name in this province. To say the least, it cannot be said to be an inherently distinctive trademark.
Consequently, the Complainant also failed to meet its burden on this ground.
(iii) Bad Faith
Pursuant to paragraph 4 (a) (iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith.
Paragraph 4 (b) of the ICANN Policy states:
"For the purposes of Paragraph 4 (a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Noteworthy, the Panel is mindful of the fact that in a number of jurisdiction, including Quebec, good faith is deemed to exist in the absence of proof to the contrary.
There has been no positive evidence presented by Complainant to the Panel to show that the Respondent acquired the Domain Name to either sell it or otherwise transfer the registration to the complainant for a valuable consideration. The Panel cannot conclude that Respondent prevented the Complainant from reflecting the mark in a corresponding Domain Name, in the absence of proof of exclusive ownership by Complainant for a registered or common law trademark for same. In any event, Annex 5 and 7 of Respondent seem to point in the opposite direction.
Paragraph 4(b) of the Policy sets out inter alia circumstances where bad faith is deemed to exist, although the Panel is not limited to such examples.
As previously stated, the parties are direct competitors, as they are both located in the region of Montreal, Canada, and they cover the same field of expertise, namely maritime insurance. That in itself is not enough to conclude of bad faith.
Consequently, the Panel is of the view that the Respondent has not registered and is not using the Domain Name in bad faith.
(v) Reverse Domain Name Hijacking
The Respondent has asked the Panel to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. On that proposition, I could not find any evidence or hints thereof coming from the Complainant in bringing forward its complaint before the Administrative Panel. In my view, the burden that the Respondent has to face in seeking such remedy has to be a real burden, on balance, that cannot simply result from a rejection of one or more of the grounds of the complaint, if only because the Complainant cannot even respond to it. To do so would be against the right to a fair hearing (audi alteram partem) or the fundamental right of rebuttal. Therefore, unless clear circumstances are being put forward by the Respondent, which is certainly not the case here, such remedy should be denied.
The Panel does not find this Complaint was brought in bad faith, accordingly the Respondent's request for a declaration of bad faith by the Complainant is refused.
In light of the foregoing, the Administrative Panel therefore conclude that the Complainant has failed to meet its burden as required under each of the three elements under paragraph 4 (a) of the ICANN Policy and accordingly, the remedy seeked by the Complainant is denied and the Complaint is rejected.
Similarly, the request by Respondent for a declaration of Reverse Domain Name Hijacking is denied.
January 17, 2000
Montreal, (Quebec) CANADA
(s) Jacques A. Léger, Q.C.