Construction Labour Relations - An Alberta Association v. Andre Bechamp
Claim Number: FA1212001474327
Complainant is Construction Labour Relations - An Alberta Association (“Complainant”), represented by Samantha C. Kernahan of McLennan Ross LLP, Canada. Respondent is Andre Bechamp (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2012; the National Arbitration Forum received payment on December 5, 2012.
On December 6, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rsapdrugtest.com, postmaster@rsapalberta.com, and postmaster@rsapfaq.com. Also on December 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and uses the RSAP trademark in relation with its administrative and educational services, particularly in drug testing programs for the construction industry, as well as education about drug testing and construction site safety. Complainant owns common law rights in the RSAP mark in Canada through its exclusive and continuous use of the mark.
Respondent infringes on Complainant’s proprietary rights in the RSAP mark by its unauthorized registration and use of the <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com> domain names. Respondent’s domain names are identical to Complainant’s RSAP mark and Respondent is not commonly known by any of the disputed domain names. Respondent uses the domain name to host websites that provide “spoiler” information regarding manipulation and circumvention of drug testing, which attests to Respondent’s bad faith, as access to such information compromises the safety of construction workers and the public. Respondent therefore disrupts Complainant’s services. Respondent misappropriates the RSAP mark to direct attention to its website in order to cause confusion as to the source of the information provided at the website, and thereby depreciates Complainant’s goodwill in the RSAP mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant does not provide evidence of any trademark registrations that it holds with governmental agencies. Previous panels have stated that a trademark registration is not a requirement in order for a complainant to demonstrate rights in its mark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant asserts common law rights in its RSAP mark by virtue of its long history of using the mark in its business. The Panel finds that Complainant can establish its rights in the RSAP mark under Policy ¶ 4(a)(i) without a trademark registration if it can demonstrate common law rights in the mark.
The Panel finds that Complainant’s uncontested allegations of use of the RSAP mark in business suffices to demonstrate Complainant has established a secondary meaning in the RSAP mark and therefore has common law rights in the mark under Policy ¶ 4(a)(i). See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Complainant claims that the <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com> domain names are identical to its RSAP mark, as the domain names “replicate [the mark] precisely as used” by Complainant. The Panel notes that the disputed domain names each incorporate the RSAP mark, and add a descriptive term (“drugtest”), a geographic term (“alberta”), or a generic term (“faq”), in addition to the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a term, whether descriptive, geographic, or generic, as well as a gTLD, does not prevent the disputed domain names from being confusingly similar to Complainant’s RSAP mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. Complainant satisfies its burden, and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not affiliated with Complainant in any way, nor is it permitted to use Complainant’s RSAP mark in any way. The Panel notes that the WHOIS information for the <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com> domain names identify “Andre Bechamp” as the registrant, and finds that the WHOIS information demonstrates that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant makes the assertion that Respondent uses the <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com> domain names to host websites that give information about circumventing the drug testing process, which Complainant contends depreciates its goodwill in the mark. The panel in Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003), stated that the respondent’s use of the disputed domain name with the purpose of diverting Internet users to the resolving website suggests that the respondent had no rights or legitimate interests in the domain. The Panel finds that by offering advice to website visitors on how to evade drug testing, in opposition to Complainant’s business, Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent’s use of the <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com> domain names disrupts Complainant’s services because providing information on manipulating drug tests affects construction workers’ and the public’s safety and constitutes bad faith. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel held that the respondent’s appropriation of the complainant’s mark to route the complainant’s customers to the respondent’s competing business is evidence of bad faith registration and use. The Panel finds that while providing information regarding drug test evasion is not direct competition, the Panel infers that Respondent’s use nonetheless interferes with Complainant’s business and demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <rsapdrugtest.com>, <rsapalberta.com>, and <rsapfaq.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 11, 2013
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