ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: MATÉRIAUX À BAS PRIX LTÉE
Respondent: PHILIPPE GAUTHIER
Case Number: AF-0581a;
AF-0581b
Contested Domain Name: AF-0581a: materiauxabasprix.com;
AF-0581b: bargainbuildingmaterials.com
Panel Member: David Lametti
 

 

1. Parties and Contested Domain Name

The Complainant is Matériaux à Bas Prix Ltée, a company registered in Canada, and whose civic address is located in St-Antonin, Quebec, Canada. The Respondent is an individual whose civic address is located in Beauport, Quebec, Canada. The contested domain names are materiauxabasprix.com and bargainbuildingmaterials.com. The Registrar is Easyspace Hotmaster.

2. Procedural History

The electronic version of the Complaint Form was filed on-line through eResolution's Website on November 7, 2000. The hardcopy of the Complaint Form and annexes were received on November 9, 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 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 Easyspace, the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by the Clerk's Office of eResolution to obtain confirmation and a copy of the Registration Agreement on November 7, 2000. The requested information was only received November 22, 2000 in spite of the several reminders sent to the Registrar by the Clerk's Office.

The Clerk 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 forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on November 23, 2000. This date is the official commencement date of the administrative proceeding.

Several emails were received from the Respondent by the Clerk's Office between November 14, 2000 and November 25, 2000. He has had actual notice of the administrative proceeding.

On December 14, 2000, the Respondent had still not submitted his response.

On December 14, 2000, the Clerk's Office contacted me, Mr. David Lametti, and requested that I act as panelist in this case. On December 15, 2000, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On December 18, 2000, the Clerk's Office forwarded to me a user name and a password, allowing access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On December 18, 2000, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 8, 2001.

On January 4, 2001, I notified the Clerks Office, under section 9(b) of the eResolution Supplemental Rules, of a fact that might be seen as impairing my neutrality in this matter. (I did not believe that it did, and stated as much in my notice.) On January 5, 2001, the Clerk notified the parties and asked for their responses by January 15, 2001. By that date, the Complainant had raised no objection, the Respondent had not submitted an opinion, and the fact in question was no longer material, as the party initially representing the Complainant had left the law firm representing the Complainant. The Clerk therefore determined that I could continue as a panelist, and that my impartiality was not affected. The parties were notified and I was asked to submit by decision by January 22, 2001.

3. Factual Background

The Complainant holds registered trademarks in Canada for the marks MATERIAUX A BAS PRIX and BARGAIN BUILDING MATERIALS, both as sets of words and as designs, in addition to an application made for the latter, English-language version in the USA. (Marks: MATÉRIAUX À BAS PRIX; Canadian Reg. No. 503,674; MATÉRIAUX À BAS PRIX & design; Canadian Reg. No. 515,327; BARGAIN BUILDING MATERIALS; Canadian Reg. No. 519,737; BARGAIN BUILDING MATERIALS & design; BARGAIN BUILDING MATERIALS & design; U.S. App. No. 75,529,446.) All marks are registered in association with the sale and wholesale distribution of building materials and retail store services featuring building materials. The filing and registration dates range between 1996 and 1999 for all the marks, and hence occurred before the Respondent's registration; with two exceptions: (1) the US application in 1998 is still pending, and (2) the registration for the English-language design in design was finally entered in June 2000, although the application dated back to 1998.

The Respondent registered the domain names with Easyspace Hotmaster on February 22, 2000 (Betterwhois Regsiter).

On July 25,2000, the Complainant, through its attorneys contacted the Respondent by letter, informing him of the existing trademarks, and asking for a transfer of the domain names. The Respondent, in an email dated August 10, 2000, offered the domain names to the Complainant for a fee of $25,000 each and thus for a total sum of $50,000. The Complainant effectively refused this offer in a letter of September 12, 2000, informing the Respondent of its intent to launch a proceeding under the Policy and asserted that the offer of transfer for $50,000 in and of itself constituted bad faith. The Complainant attempted, without success, to deliver this letter to the Respondent via post, fax and email.

The Complainant initiated this Complaint with eResolution on November 7, 2000.

The Respondent has not responded to any communication from either the Complainant or the eResolution Clerk since the email of August 10, 2000.

4. Parties' Contentions

The Complainant alleges:

(1) That the domain name materiauxabasprix.com and bargainbuildingmaterials.com are identical to a trademark or service mark in which the Complainant has rights, as per Policy paragraph 4(a)(i).

    The Complainant is the registered owner of the marks MATERIAUX A BAS PRIX and BARGAIN BUILDING MATERIALS (Annex D).

2. That the Respondent has no rights or legitimate interests in the domain name, as per Policy paragraph 4(a)(ii).

    The Complainant maintains that M. Gauthier does not operate any business and does not sell any products in association with any trade name or trade-mark corresponding to these domain names and has never done so (be it by himself or through licensees).

3. That the Respondent registered the name in bad faith, as per Policy paragraph 4(a)(iii).

    The Complainant asserts that the Respondent has clearly registered the "materiauxabasprix.com" and "bargainbuildingmaterials.com" domain names in bad faith and is clearly using such domain names in bad faith. The Complainant points to the e-mail dated August 10, 2000 (Annex B) from the Respondent to the Complainant's attorneys, the law firm of Desjardins Ducharme Stein Monast, in response to the letter from the firm dated July 25, 2000, wherein the Respondent offered to assign his domain names to Complainant in consideration for the price of $25 000 per domain name.

    The Complainant further maintains that the Respondent has registered these two domain names for the only purpose of preventing Complainant from registering its trademarks as domain names and of forcing Complainant to pay an excessive amount for their acquisition.

    The Complainant also points out that the Respondent has thwarted attempts to make contact with the Respondent. The Complainant has attempted, without success, to send the letter dated September 12, 2000, to Respondent (Annex C). This letter could not be sent by either fax or by e-mail, despite the fact that the same address had been used successfully in the case of Complainant's attorneys' letter dated July 25, 2000.

As noted above, the Respondent did not file a response.

5. Discussion and Findings

It is well established that these proceedings can proceed despite the Respondent's failure to file a response. The ICANN Rules and Policy explicitly allow such proceedings to go forward, but still require that the Complainant bear the burden of proving the complaint in the absence of a response. However, the Panel is allowed to infer whatever is appropriate from the absence of any failure to follow the ICANN Rules or Policy - including a failure to respond - according to the ICANN Rules paragraph 14(b). I need draw only one such general inference in this matter, however, as the rest of the facts before me is sufficient to decide the matter.

Identical or Confusingly Similar

    The domain names in question are identical to the Complainant's registered trademarks.

    The Panel thus concludes that the Complainant has proven the requirements of Policy paragraph 4(a)(i).

Rights or Legitimate Interest

    The second criterion is the most difficult for the Complainant to meet in this instance. Here the Panel must decide whether the Respondent has a legitimate interest or right in the names "materiaux a bas prix" and "bargain building materials". The ICANN Policy paragraph 4(a)(ii) gives three examples of circumstances where there is a legitimate interest. The examples pertain to the offering of services, or to a legitimate non-commercial use of the name. The Complainant asserts that this is the case. While there is no response filed, it is on balance determinable from the record that the Respondent has not made use of the name in any way for the provision of any kind of commercial or non-commercial service. Further, the Respondent's general behaviour appears to confirm that he had no intention to use the mark for any such legitimate purpose; he did not assert or even suggest any such use or right in response to the Complainant's initial letter, and has manifested no such intentions since then. This is enough to dispose of this criterion in this case.

    In addition, in making a claim of no legitimate right or interest (as well as bad faith, and, where the domain name not identical to a trademark, for a claim of confusing similarity), it is sometimes helpful for the Complainant to adduce some evidence of the distinctiveness, uniqueness or other pertinent characteristics of the mark. This evidence might help to prove that the Respondent could not have any legitimate interest in the mark from the outset simply because the mark is too well known in a given area (or, for bad faith, that the mark is so well-known that the Respondent's motives were likely negative). In this case, while such evidence is scarce, there is enough distinctiveness in the marks themselves, especially when taken together, to make such an inference. First, although neither phrase is especially fanciful or exceptionally distinctive on its own in either English or French, the marks in question are both relatively at least somewhat well-known in Quebec. This is especially true since the Complainant and the Respondent come from the same general area. More importantly, taking either the two domain names or the two marks together, one has two phrases, one in English and one in French; while they are not literal translations of each other, each conveys a similar and relatively specific idea. From an analysis of the marks themselves taken together, there is a strong degree of uniqueness in the ensemble. Although not impossible, it would nevertheless be very difficult to conceive of any legitimate interest or right that any person other than the Complainant could have in both of these names in the same general business locale which would not constitute an infringement on the Complainant's rights. This point, while not determinative in this case, does tend to support the evidence that the Respondent could not possibly have any legitimate rights or interests in the domain names. This supports the Complainant's claim of no legitimate interest or rights.

    The Panel thus concludes that the Complainant has met the requirements of Policy paragraph 4(a)(ii).

Bad Faith

    The Complainant's allegation falls under the rubric of paragraph 4 (a)(iii), according to the various criteria articulated in paragraph 4(b): in particular the criterion of paragraph 4(b)(i), that that the registration was undertaken primarily with purpose of selling the name to the Complainant. As set out above, the Complainant in effect first alleges that the Respondent's behaviour is itself evidence of bad faith.

    According to the Policy, the burden of showing that the Respondent has used or registered the domain names in bad faith on the Complainant. Although the Complainant has not adduced a great deal of evidence in this regard, there is enough persuasive evidence adduced compelling me to make a ruling in its behalf. First, the most important piece of evidence is the sum of $50,000 CDN asked for the transfer of the two domain names. This amount is exorbitant, and well above any out-of-pocket costs for registration and handing of a domain name, and is strong evidence of bad faith.

    Second, the Respondent's behaviour reaffirms this conclusion. When approached by the Complainant, the Respondent asked for a very large sum of money. When the Complainant effectively refused the offer and threatened proceedings, the Respondent disappeared completely from the scene, with a letter sent to his address - which had been successful in the first contact - was returned marked "address incomplete".). Since then the Respondent has failed to respond to repeated requests from the Clerk's Office of eResolution on a number of matters. While the mere failure to file a Response in a proceeding under the Policy is not in and of itself indicative of bad faith, disappearance from the scene even before this proceeding was commenced, as well as failing to respond to any communication from the Clerk's Office, indicates in this case that the Respondent probably has never had any other motive except to see what amount of money he could extract from the Complainant. While I am allowed to draw this inference under paragraph 14(b) of the Rules regarding a failure to respond, my inference is drawn primarily from the Respondent's pattern of behaviour generally, and not from the simple failure to file a response as such.

    Third, where it is the case that the domain names are identical to a trademark, it seems to me that the Complainant's burden is somewhat easier to bear, given that it is easier to show that the Respondent must have had the Complainant's marks in mind at the time of registration. The hallmark case is with an extremely well-known mark, but other examples are possible. (The Policy itself, on my reading of it, allows for mere registration, in and of itself, to be in bad faith, absent of any use made of the domain names. As the examples of bad faith in paragraph 4(b) of the Policy make clear, actual use is not a requirement for bad faith, notwithstanding the "and" used in paragraph 4(a)(iii). Mere registration deprives the bona fide trademark holder from articulating the trademark in the domain name.)

    While there is no evidence that the trademarks are very well-known in this case, it is fair to draw the same conclusion for reasons pertaining intrinsically to the marks. First, the marks are at least somewhat well-known, or ought to be, to someone who lives in the general geographic area of the trademark owner's place of business (and, indeed, it head office). Second, and more important, is the cumulative complexity of the marks and their identical copying in the domain names. In order for a person to register two domain names in two different languages, each of which, though similar, is not an exact, literal translation of the other, and where each domain name is exactly identical to each of registered and known trademarks of an area business, the Respondent must have had some knowledge of both the Complainant and its marks. One is forced to conclude that there must be some degree of strategic behaviour occurring. The degree of complexity of the marks and the corresponding degree of similarity - indeed, identity - of the domain names to the marks leads one to the conclusion that the registration of the domain names was in all likelihood deliberate. Thus it is reasonable to conclude that there is some degree of bad faith involved in this case merely by virtue of the fact of registration of the domain names. Moreover, the impact of the registration is to prevent the Complainant from embodying its trademarks as domain names on the world's most popular commercially-oriented gTLD.

    When either of the second or third arguments is coupled with the first, a finding of bad faith is warranted.

    The Panel thus concludes that the Complainant has met the criterion of Policy paragraph 4(b)(i) and (ii) and thus the requirements of Policy paragraph 4(a)(iii).

6. Conclusions

The panelist concludes:

1. That the domain names materiauxabasprix.com and bargainbuildingmaterials.com are identical to the trademarks in which the Complainant has rights;

2. That the Respondent has no rights or legitimate interests in the domain name; and

3. That the Respondent has registered the domain name in bad faith.

Therefore, pursuant to paragraphs 4(i) of the Policy and the section 15 of the Rules , the Panel orders that the domain names materiauxabasprix.com and bargainbuildingmaterials.com be transferred to the Complainant.

7. Signature

Date: January 22, 2001

Montreal , Canada

(s) David Lametti

Presiding Panelist