ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
1.1 See caption above.
2. Procedural history
The electronic version of the Complaint form was filed on-line through
eResolution’s Website on May,
03, 2001. The hardcopy of the Complaint Form and annexes were received on
May, 03, 2001. Payment
was received on May, 03, 2001.
Upon receiving all the required information, eResolution’s clerk
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
This inquiry lead the Clerk of eResolution to the following conclusions:
the Registrar is Tucows 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
obtain confirmation and a copy of the Registration Agreement on March 9, 2001.
The requested information was received March 12, 2001.
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 May, 08,2001.
This date is the official commencement date of the administrative
The complaint, official notification and all the annexes were sent via
registered mail with proof of service, to the Respondent.
According to the Canada Post tracking system, all were delivered.
On May, 28, 2001, the Respondent submitted, via eResolution Internet
site, its response.
The signed version of the response was received on May, 28, 2001, 2001.
On May, 29, 2001, the Clerk’s Office contacted Jean-François Buffoni,
and requested that he acts as panelist in this case.
On May, 30,
2001, Jean-François Buffoni,
accepted to act as panelist in this case and filed the necessary Declaration of
Independence and Impartiality.
On May, 30,
2001, the Clerk’s Office forwarded a user name and a password to Jean-François
Buffoni, allowing him to
access the Complaint Form, the Response Form, and the evidence through
eResolution’s Automated Docket Management System.
2.11 On May, 30, 2001, the parties were notified that Jean-François Buffoni had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 13, 2001.
3. Factual Backgrounds
The Complainant is the owner of Canadian trademark registrations for the
trademark ESSAIM (registered in 1989), ESSAIM & Design (1999), GROUPE ESSAIM
(1995), and ESSAIM & Design (1996). The
Complainant also has pending trademark applications for trademarks which contain
the word “essaim.” The
trademark ESSAIM and its variants have been used in Canada by the Complainant in
association with the operation of pharmaceutical stores distributing a wide
range of pharmaceutical and para-pharmaceutical products, including health and
body care products.
In 1997, the Complainant registered the domain name essaim.ca, which is
not in issue in the present proceeding.
The Respondent is a marketing firm which was set up by a Mr. Baril to
market personnel training products developed by a sister company, which started
its activities in 1985 as a sole proprietorship and was incorporated as a
company in 1991. That company is
specialized in the training of personnel in major retail and service businesses.
3.4 The Respondent registered the contested domain name essaim.com in April 2000.
4. Parties' Contentions
The Complainant contends that (i) it has all the rights, titles and
interests in the trademark ESSAIM since 1989 and the contested domain name is
confusingly similar to such trademark, (ii) the Respondent has no legitimate
proprietary rights in the contested domain name and (iii) the Respondent has
registered and used the domain name in bad faith.
4.2 The Respondent objects that the Complainant cannot claim a monopoly on the common word “essaim” outside of its business activities, that it has legitimate proprietary rights in the contested domain name and that it has in no way registered or used such domain name in bad faith
5. Discussions and Findings
of the evidence in this case
The panel will examine the evidence to determine whether the Complainant
has proven, in accordance with article 4(a) of the ICANN Policy:
that the contested domain name is identical or confusingly similar to a
trademark in which the Complainant has rights, and
that the Respondent has no rights or legitimate interests in the
contested domain name, and
that the domain name has been registered and is being used in bad faith.
Similarity between the trademark and the domain name
The contested domain name clearly is at least confusingly similar (if not
identical) to the name of the Complainant, since the only difference between the
domain name and the name of the Complainant is the addition of ".com"
to the word “essaim.”
Not surprisingly, the Respondent has not taken issue with the Complainant
on that aspect.
Lack of rights or legitimate interests in the contested domain name
The thrust of the Complainant’s argument with respect to that issue may
be summarized as follows:
since the Complainant has exclusive rights over the mark ESSAIM, more
particularly by virtue of Section 19 of the Canadian Trademarks
Act, the Respondent cannot claim any right or legitimate interest in
that word as a domain name.
The Respondent claims that the word “essaim” is part of the common
vocabulary and that it was chosen in connection with a field of activity which
is very different from that of the Complainant.
More particularly, it is explained that “essaim,” a French common
word which in this context means “bee swarm,” was chosen to designate a
website hosting a discussion forum where people can exchange ideas on various
issues related to the retail and services businesses.
It was felt that this word would be appropriate to suggest a group of
persons coming from different parts of the world and discussing topics of common
interest relating to personnel training.
By invoking the “exclusive rights” of Section 19 of the Canadian Trademarks
Act, the Complainant seems to have
overlooked that the so-called monopoly granted by that section is not universal,
as it does not extend to all possible types of business activity, wares
Section 19 reads as follows:
to sections 21, 32 and 67, the registration of a trade-mark in respect of any
wares or services, unless shown to be invalid, gives to the owner of the
trade-mark the exclusive right to the use throughout Canada of the trade-mark in
respect of those wares or services.
It follows that the exclusive rights claimed by the Complainant apply to
the operation of pharmaceutical stores distributing a wide range of
pharmaceutical and para-pharmaceutical products, including health and body care
It is difficult to conceive how these rights would extend to the
The explanation given by the Respondent as to how it has chosen the
contested domain name brings this panel to the conclusion that the Respondent
had valid rights and legitimate interests in the contested domain name.
Furthermore, this panel finds that the Respondent, before any notice to
it of the dispute, made demonstrable preparations to use the domain name in
connection with a bona fide
offering of its services, a situation which matches the first example provided
by paragraph 4(c) of the ICANN Policy which, if found by the panel to be proven
based on its evaluation of all evidence presented, shall demonstrate the
Respondent’s rights or legitimate interests to the domain name for purposes of
The panel therefore concludes that the Respondent has demonstrated its
rights to and legitimate interests in the contested domain name and the
Complainant has failed to discharge its burden to prove the second essential
element of the Complaint.
Bad faith registration and use of the contested domain name
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 ICANN's Policy states that bad faith registration and
use can be proven by submitting evidence establishing:
the respondent registered or 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 a trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of the
documented out-of-pocket costs directly related to the domain name; or
the respondent 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 the respondent has engaged in a pattern of such conduct; or
the respondent registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
by using the domain name, the respondent intentionally attempted to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with the complainant's mark as to the source, sponsorship,
affiliation, or endorsement of the respondent's website or a product or service
on the respondent's website.
The evidence produced by the Complainant falls short of proving any one
of these four non-exhaustive examples of bad faith registration and use.
There is no evidence to show that the Respondent acquired the domain name
for any of the purposes illustrated by those examples.
It was the Complainant who initially contacted the Respondent to acquire
its domain name.
Up to that point, there is absolutely no indication that the Respondent,
who operates in a completely different area of activity, would have had any
desire, even implied, to do any one of those acts of bad faith.
Beyond those non-exhaustive examples of bad faith, the evidence shows no
indicia of bad faith on the part of the Respondent.
Another reason to find in favour of the Respondent lies in the generic
nature of the common word “essaim.”
was decided by a three-member panel in Microcell
Solutions Inc. v. B-Seen Design
Group Inc., eResolution
number AF-0131, May 2, 2000,
registration of a common or generic name such as FIDO can hardly be considered
indicative of bad faith, absent other factors (whereas registration of a an
unusual term such as Vodaphone could, in itself, be considered suspicious,
absent other factors).
Even when a common name has become highly distinctive of a particular
product because massive advertising has generated substantial secondary meaning,
another party might legitimately register the common name because of its primary
Incidentally, this decision was followed by the undersigned panelist in Für München – Tombola für kulturelle und sociale Einrichtungen E.C.
v. PesaroService, eResolution number
AF-0422, November 17, 2000.
The panel therefore finds that the test of paragraph 4(a)(iii) of the
ICANN Policy has not been satisfied.
Reverse domain name highjacking
5.5.1 Paragraph 15(e) of ICANN Rules states that if the panel finds that the complaint was brought in bad faith, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Respondent raised the possibility that the Complainant could be guilty of reverse domain name highjacking since the latter has, in 1997, registered the domain name essaim.ca and it could have registered the contested domain name at a low cost. The Respondent then suggested that the Complainant might have a hidden agenda. This panel does not find in the evidence enough elements to make more than a conjecture as to the Complainant’s state of mind. On the whole, it would seem that the Complainant honestly believed that its “exclusive rights” did prevail over those of the Respondent. Paragraph 15(e) does not apply in a case where the Complainant made an honest mistake
6.1 For the reasons set forth above, the panel finds that the Complainant has
not met all of the requirements of the ICANN Policy.
Thus, the Complainant’s request to the transfer the contested domain
name is denied.