National Arbitration Forum
DECISION
130946 CANADA LIMITED O/A POSTER PALS v. Generic Domain Names c/o Jurgen Maaser
Claim Number: FA0703000945113
PARTIES
Complainant is 130946 CANADA LIMITED O/A POSTER PALS (“Complainant”), represented by Richard
Sivyer,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <posterpals.com>, registered with eNom, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panellist in this proceeding.
Robert A. Fashler as Panellist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2007.
On March 26, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <posterpals.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@posterpals.com by e-mail.
A timely Response was received and determined to be complete on April 27, 2007.
On May 7, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panellist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Before identifying Complainant’s contentions, it is worth noting that Complainant has represented itself in this proceeding. Complainant obviously lacks familiarity with legal principles, particularly those relating to intellectual property. Complainant also lacks an understanding of the UDRP. Complainant’s lack of knowledge in these areas is clearly reflected in the Complaint, which is seriously deficient.
Complainant asserts that:
(i)
Complainant is a Canadian corporation named 130946 Canada Limited, which was
incorporated in 1984.
(ii)
Complainant carries on business under the name POSTER
PALS.
(iii)
“POSTER PALS was issued a Vendor’s Permit under the
Ontario Retail Sales Act on Nov. 13, 1981 as a sole proprietorship to the (sic)
Richard Sivyer.” Richard Sivyer is also
designated in the Complaint as Complainant’s representative. Complainant does not provide any information
to indicate whether or not Mr. Sivyer carried on business under the
proprietorship name POSTER PALS or whether any interest held by Mr. Sivyer in
the proprietorship name POSTER PALS has been transferred to Complainant.
(iv)
Complainant “is a manufacturer and wholesale/retail
marketer of posters, visual aids, books and other products for the teaching of
French and Spanish as second languages.”
(v)
“At the time of incorporation” (on March 5, 1984), “a
name search was done and the name POSTER PALS was registered to 130946 Canada Limited.”
(vi)
“A Vendor's Permit under the Ontario Retail Sales Act was issued to 130946 Canada Limited to operate under the trade name
POSTER PALS on August 10, 1984.”
(vii)
“The Master Business License issued by the
(viii)
“posterpals is the obvious first choice domain name for
POSTER PALS.”
(ix)
“POSTER PALS registered the domain name <posterpals.ca>
on September 4, 1996 and launched its website <posterpals.ca>
in October of 1996.”
(x)
Respondent registered the domain name <posterpals.com> (the
"Disputed Domain") “on March 20, 2001 shortly after
Respondent attended Complainant's Christmas party as a guest of one of
Complainant's employees.”
(xi)
“Respondent's use of the domain name or a name
corresponding to the domain name does not appear to be in connection with a bona fide offering of goods or
services.”
(xii)
“Respondent has not been commonly known by the domain
name.”
(xiii)
“Respondent does not appear to be making a legitimate
use of the domain name.”
(xiv)
Respondent has advertised the Disputed Domain “for sale
or lease ever since its creation. It is
currently advertised for sale on <afternic.com> for $5,000 USD.”
(xv)
The Disputed Domain has recently “been linked to <payperclickportfolio.com>,
a site that misleads and diverts potential customers of POSTER PALS. Specifically, <posterpals.com> provides links to Spanish and French
posters, flash cards and other educational products, some of which lead to
websites of competitors of POSTER PALS.
At <posterpals.com>,
keywords have been included that are very similar to the key words used
by <posterpals.ca> that poster
pals has used for more than 10 years and has created search engine
recognition”, such as “Classroom Decorations, Spanish Posters, Flashcards in
French, French O Canada, Poster Pals, French Class, Motivational Posters, and
on the list of favourites, School Emotions and Certificates which are the names
of some specific popular POSTER PALS products.”
B. Respondent
Respondent also is not represented by counsel in this proceeding and
has prepared its own Response.
Respondent asserts that:
(i)
“Since there was no trademark registered to
“Poster Pals” at the time of the registration of the domain name <posterpals.com>,
the domain name <posterpals.com>
is at the most identical similar (sic) to the business name of the company 130946 Canada Limited.”
(ii)
“The fact is that the company 130946 Canada Limited
registered the business name Poster Pals the first time in January 2004, as
shown in their “master business license”, that is almost three years after I
registered the domain name <posterpals.com>”.
(iii)
Complainant “was never issued a trademark or a service
mark throughout their (sic) existence.”
(iv)
Complainant's assertion that it has held Vendor Permits
under the name POSTER PALS proves nothing because “there could be dozens of
vendor permits issued worldwide to this particular name.”
(v)
“The domain name posterpals is made up of two generic
dictionary words, poster and pals. A
search in <google.com> yield (sic) over 1,000,000 links for
posterpals! Most of these websites are
for educational materials in all kinds of languages. And these websites certainly do not all
belong to the complainant. One Specific
(sic) example is the company Frog Street Press, Inc., with a line of posters
called “Poster Pals.” The fact is that
these key words are very popular and used by millions of websites. There is no exclusive right to these key
words; after all, this is the worldwide web!”
(vi)
“There is another company who registered a trademark
with the name posterpals after my domain name registration. This is a trademark for educational material
too! The Registrant is Bright of
America, Inc. c/o Russ Berrie & Company.”
(vii)
Respondent has “had a domain name business since early
2000.” Respondent is “in the legitimate
business of buying, renting and selling domain names.” Some of Respondent’s “best domain names will
be undoubtedly developed into my own websites when the time is right.” Respondent puts “a lot of effort, research,
time, and funds into finding valuable domain names before they are all gone.” Respondent owns “several hundred of domain
names right now. Respondent “was
acquiring generic domain names long before I received this complaint, and long
before I registered <posterpals.com>.”
(viii)
Respondent is very careful when registering domain
names. Respondent always conducts “an
intensive trademark search, especially for American or Canadian trademarks.”
(ix)
“Complainant did have the chance to register the
generic domain name <posterpals.com>
for himself or for his company in that matter (sic), for 4 years after he
registered <posterpals.ca>.”
(x)
Respondent never solicits “offers to any potential
buyers of my domain names. I only
respond to inquiries through the parking pages for my domain names, or directly
through e-mail inquiries.”
(xi)
Respondent has “no control over the links the parking
companies post on my domain names. But,
I am sure that these well established companies make sure they do not infringe
on any trademarks or service marks. The
links on my domain names are relevant to the generic terms of the domain names
and not linked to offensive or pornographic websites. This in part makes it a legitimate website.”
(xii)
The Panel should find under ICANN Rule 15(e) that this
proceeding is an attempt to engage in reverse domain-name hijacking because
Complainant knew at the time of filing its complaint that it had no trademark
or service mark rights to the POSTERPALS mark and that other companies,
unconnected with Complainant, exist that sell teaching material under the
POSTERPALS mark.
FINDINGS
The Panel finds that Complainant has not proven the first element stipulated in Paragraph 4(a) of the Policy and consequently the Disputed Domain should not be transferred from Respondent to Complainant.
The Panel also finds that Complainant has not brought its Complaint in bad faith, and therefore has not committed reverse domain name hijacking.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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:
the domain name registered by
Respondent is identical or confusingly similar to a trademark or service mark
in which Complainant has rights;
the Respondent has no rights or
legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The first element that Complainant must establish is that the Disputed Domain is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As a preliminary matter, the Panel notes that the Disputed Domain contains the entirety of the words POSTER PALS, the only difference is the removal of the space between the two words and the addition of the “.com” suffix. The Panel finds that both of those changes are purely functional, and that POSTER PALS and the Disputed Domain are identical for the purposes of Paragraph 4(a)(i) of the Policy.
However, that does not dispose of the issue. Complainant bears the onus of proving that POSTER PALS is a trademark or service mark in which it has rights.
Complainant does not say that POSTER PALS is a registered trademark. Complainant does not provide any evidence of the existence of any trademark registration for the words POSTER PALS. The Panel concludes that Complainant is not asserting rights in a registered trademark. With no trademark registration, Complainant can only satisfy Paragraph 4(a)(i) of the Policy if it can establish that POSTER PALS is a common law trademark.
Complainant does not assert or suggest that POSTER PALS is a common law trademark or service mark. Rather, Complainant refers to POSTER PALS exclusively as a business name, trade name or domain name.
At this juncture, it is helpful to take note of the legal
distinction between a trademark and a trade name. As Complainant and Respondent are both
located in
“‘trade-name’ means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual.”
“‘Trade-mark’ means a mark that is used by a person for the purpose of
distinguishing or so as to distinguish wares or services manufactured, sold,
lease, hired or performed by him from those manufactured, sold, leased, hired
or performed by others.”
The definition of trademark includes three other special categories
of trademark that are not relevant for the purpose of this proceeding. In
Cases decided under the Policy normally require complainants to
establish trademark or service mark rights and have refused to enforce the
Policy in respect of words that are used merely as trade names. See
Sealite Pty Ltd. v. Carmanah Techs., Inc., D2003-0277 (WIPO June 11,
2003) (It is well settled that the Policy does not protect trade names or
company names when this is the extent of their use.”); see also Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527
(Nat. Arb. Forum March 9, 2007) (the ICANN Policy is expressly limited to trade
or service mark rights to the exclusion of trade names).
As noted above, Complainant refers to POSTER PALS exclusively as a
“trade-name” or a “business name,” but not a as “trade-mark.” Further, Complainant provides no evidence of
use of POSTER PALS in any manner, whether as a trademark or a trade name. Rather, it points to Vendor Permits,
searches, a domain name registration, and the like. While those documents are consistent with
use, standing alone they prove nothing of relevance. The only statement in the Complaint that even
remotely approaches evidence of use of any kind is the bare assertion:
“POSTER PALS is a manufacturer and
wholesale/retail marketer of posters, visual aids, books and other products for
the teaching of French and Spanish as second languages. It is the intent of the company to continue
to produce educational visual products for the second language market.”
Complainant completely fails to allege, never mind provide evidence
of, actual use of POSTER PALS as a trademark in association with goods
and services. Without evidence of use as
a trademark, the Panel cannot find that POSTER PALS is a common law trademark
or a service mark in which Complainant has rights.
Even if Complainant had asserted that POSTER PALS is a common law
trademark used by Complainant, that would not have been sufficient to meet
Complainant’s burden under Paragraph 4(a)(i) of the Policy. Normally, a complainant who claims to have
common law rights in a trademark is required to demonstrate that at least some
goodwill has been generated in connection with the mark as a consequence of
active use in commerce. To that end, a
complainant seeking to prove goodwill in a common law mark should both allege
and demonstrate use of the mark in association with goods and services such
that some goodwill or reputation is likely to have been generated in the minds
of some member of the public. See Molecular Nutrition, Inc. v.
Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003)
(finding that the complainant failed to establish common law rights in its mark
because mere assertions of such rights are insufficient without accompanying
evidence to demonstrate that the public identifies the complainant’s mark
exclusively or primarily with the complainant’s products); see
also Vachovsky, COO, Aplus.Net Internet Servs. v. At Hosting Inc.,
D2006-0703 (WIPO Oct. 26, 2006) (“It is well-established that mere assertions
of common law rights in a mark are insufficient without accompanying evidence
to demonstrate that the public identifies the Complainant’s mark exclusively or
primarily with the Complainant’s products.”).
Complainant has provided no evidence whatever from which the Panel
can infer that POSTER PALS has actually been used at all as a trademark or that
these words enjoy any reputation or goodwill.
The Panel
finds that Complainant has failed to satisfy its burden under Paragraph 4(a)(i)
of the Policy.
Rights or Legitimate Interests and Bad Faith
Because Complainant has failed to demonstrate that POSTER PALS is a
trademark in which it holds rights, it is not necessary for the Panel to
consider the other elements contemplated in Paragraph 4(a) of the Policy.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has engaged in reverse domain name
hijacking pursuant to ICANN Rule 15(e), the relevant portion of which follows:
If after considering the submissions the
Panel finds that the complaint was brought in bad faith, for example in an
attempt at Reverse Domain Name Hijacking or was brought primarily to harass the
domain-name holder, the Panel shall declare in its decision that the complaint
was brought in bad faith and constitutes an abuse of the administrative
proceeding.
"Reverse Domain Name Hijacking" is defined in ICANN Rule 1
as "using the Policy in bad faith to attempt to deprive a registered
domain-name holder of a domain name."
In order to prevail in such a claim, Respondent should demonstrate that
Complainant knew or should have known it could not prove one of the three
essential elements of the Policy, yet it nonetheless brought forward the complaint.
See
Futureworld Consultancy (Pty) Ltd. v. Online advice, D2003-0297 (WIPO
July 18, 2003); see also CDG v.
WSM Domains - Privacy Registrations, FA 933942 (Nat. Arb. Forum May 2,
2007). A finding of reverse domain name
hijacking should be made only when Complainant has partaken in "utterly
clear" bad faith conduct. See Great American Ins. Co. v.
Hamilton, FA 109753 (Nat. Arb. Forum July 9, 2002).
In the current case, Complainant appears to operate a legitimate
business under the business name POSTER PALS.
While Complainant failed to adduce evidence sufficient to prove the
existence of common law trademark rights in the words POSTER PALS, the Panel
takes into account the fact that Complainant is unrepresented by legal counsel,
and therefore cannot be expected to have appreciated the requirements of the
Policy. Simply because Complainant,
lacking proper legal guidance, has failed to construct a satisfactory Complaint
does not mean that Complainant is acting in bad faith.
Respondent never answered Complainant’s allegations that Respondent
acquired the Disputed Domain shortly after attending Complainant’s annual
Christmas party, and the Panel draws a negative inference from that failure. In other words, the Panel considers
Respondent’s silence on this point to be an admission that the allegation is
true. Such behaviour does not reflect
favourably on Respondent.
It is not at all clear that Complainant completely lacks legal
rights as against Respondent in connection with the words POSTER PALS. Respondent has not proven that it is not, in
fact, cybersquatting. Rather,
Complainant has simply failed to make out its case.
The Panel finds that it is far from "utterly clear" that
Complainant brought its Complaint in bad faith. The Panel therefore refuses to
find that Complainant committed reverse domain name hijacking.
DECISION
Consequently, the Panel finds that it is not "utterly
clear" that Complainant brought its complaint in bad faith, and refuses to
find that Complainant committed reverse domain name hijacking. Having not established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <posterpals.com> domain name not be transferred from
Respondent to Complainant.
Robert A. Fashler, Panelist
Dated: May 23, 2007
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