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DECISION

 

BeneFACT Consulting Group Inc. v. Rarenames, Inc. / RN WebReg

Claim Number: FA1110001412205

 

PARTIES

Complainant is BeneFACT Consulting Group Inc. (“Complainant”), represented by Antoni G. Casalinuovo, Ontario, Canada. Respondent is Rarenames, Inc. / RN WebReg (“Respondent”), represented by Erik S. Zilinek of NameMedia, Inc., Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <benefact.com> (“the domain name at issue”), registered with Annulet, Inc. (the “Registrar”).

 

PANEL

Each of the undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a Panelist in this proceeding.

 

Debrett G. Lyons (Presiding), David E. Sorkin, and Rodney C. Kyle as the Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a complaint (the “Complaint”) to the National Arbitration Forum (the “Forum”) electronically on 19 October 2011; the Forum received payment on 13 October 2011.

 

On 18 October 2011, the Registrar confirmed by e-mail to the Forum the following as to the domain name at issue: it is registered with the Registrar and Respondent is the current registrant thereof. The Registrar has verified that Respondent is bound by the Registrar’s 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 20 October 2011, the Forum served the Complaint and all annexes, including a Written Notice of the Complaint, setting a deadline of 9 November 2011 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@benefact.com. Also on 20 October 2011, 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.

 

A timely response (the “Response”) was received and determined to be complete on 8 November 2011.

 

A timely Additional Submission as a reply to the Response (the “Reply”) was received from Complainant on 11 November 2011 and determined to comply with Supplemental Rule 7.

 

On 15 November 2011, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (Presiding), David E. Sorkin, and Rodney C. Kyle as Panelists.

 

A timely Additional Submission as a reply to the Reply (the “Sur-Reply”) was received from Respondent on 18 November 2011 and determined to comply with Supplemental Rule 7.

 

RELIEF SOUGHT

Complainant requests that the domain name at issue be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complaint makes three main sets of contentions.

 

FIRST MAIN SET

The first main set of Complaint contentions is by three points or sets of points: in accordance with Policy ¶ 4(a)(i),

(i)           the domain name at issue is registered with the Registrar and the registrant of the domain name at issue is Respondent;

(ii)          BENEFACT is a trademark or service mark in which Complainant has rights, in that

(a)  Complainant has existed since January 2006, as evidenced by Complaint Exhibit C (a copy of Complainant’s Corporate Profile Report from Ontario’s Ministry of Government Services),

(b)  since January 2006, Complainant is the owner and user in commerce (in association with the services of tax consulting to Canadians about Canadian scientific research and experimental development), of

(1)  BENEFACT as a common-law trademark and

(2)  a website that resolves through the domain name <benefact.ca>, as evidenced by Complaint Exhibit A (a copy of that website’s home page),

(c)  through that use, Complainant has established a strong reputation in the tax consulting services sector in Canada and BENEFACT is synonymous with that strong reputation, and

(d)  Complainant has applied for a Canadian trademark registration of BENEFACT, as evidenced by Complaint Exhibit B (a copy of a Canadian Trademark Office document of receipt and initial approval of that application); and

(iii)         the domain name at issue is identical or confusingly similar to that contended trademark.

 

SECOND MAIN SET

The second main set of Complaint contentions include that, in accordance with Policy ¶ 4(a)(ii), Respondent has no right or legitimate interest in respect of the domain name at issue.

 

THIRD MAIN SET

The third main set of Complaint contentions include that, in accordance with Policy ¶ 4(a)(iii), Respondent’s registration of the domain name at issue was in Policy ¶ 4(b) bad faith and Respondent is using the domain name at issue in Policy ¶ 4(b) bad faith.

 

B. Respondent

The Response makes three main sets of contentions.

 

FIRST MAIN SET

The first main set of Response contentions disputes neither point “i” nor point “iii” of the first main set of Complaint contentions, i.e. disputes neither that the domain name at issue (i.e. “<benefact.com>”) is registered with the Registrar and the registrant of the domain name at issue is Respondent nor that the domain name at issue is identical or confusingly similar to what Complainant contends is a trademark or service mark in which Complainant has rights (i.e. BENEFACT).

 

However, the first main set of Response contentions disputes the preamble of point “ii” of the first main set of Complaint contentions (i.e. that BENEFACT is a trademark or service mark in which Complainant has rights). More particularly, the Response first main set contends that

(i)            in so far as sub-points “a”, “b” and “c” of point “ii” of the first main set of Complaint contentions contend Complainant use of Complainant’s corporation name, such use of that corporation name does not show BENEFACT is a trademark or service mark in which Complainant has rights; and

(ii)           in so far as sub-point “d” of point “ii” of the first main set of Complaint contentions contends Complainant’s contended trademark registration application shows BENEFACT is a trademark or service mark in which Complainant has rights, then the contended application does not show BENEFACT is a trademark or service mark in which Complainant has rights.

 

SECOND MAIN SET

The second main set of Response contentions disputes the Complaint contention that, in accordance with Policy ¶ 4(a)(ii), Respondent has no right or legitimate interest in respect of the domain name at issue.

 

THIRD MAIN SET

The third main set of Response contentions disputes the Complaint contention that, in accordance with Policy ¶ 4(a)(iii), Respondent’s registration of the domain name at issue was in Policy ¶ 4(b) bad faith and Respondent is using the domain name at issue in Policy ¶ 4(b) bad faith.

 

C. Additional Submissions

The Reply contentions do not reply to the Response contention disputing that BENEFACT is a trademark or service mark in which Complainant has rights; and the Reply contentions repeat or try to amend other aspects of the Complaint.  In view of the findings and discussion set out below, for disposition of the Complaint it is unnecessary to set out the Sur-Reply contentions or otherwise set out the Reply contentions.

 

FINDINGS

The Panel finds that

(i)            the registrant of the domain name at issue is Respondent; and

(ii)           in this proceeding it has not been ascertained that BENEFACT is a trademark or service mark in which Complainant has rights.

 

DISCUSSION

The Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) ¶ 15(a) instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Policy ¶ 4(a) requires that a 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 is registered to the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)  the 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.

 

Identical or Confusingly Similar

 

Policy ¶ 4(a)(i) is not proven: there is a domain name registered to Respondent  (i.e. the domain name at issue) and it is identical or confusingly similar to what Complainant contends is a trademark or service mark in which Complainant has rights (i.e. BENEFACT), but in this proceeding it has not been ascertained that BENEFACT is a trademark or service mark in which Complainant has rights. More particularly, on the one hand, each of the following contentions is admitted by the Response having not disputed them: that the domain name at issue is registered to Respondent and is identical or confusingly similar to what Complainant contends is a trademark or service mark in which Complainant has rights. On the other hand, Complaint Exhibits A, B, and C are material evidence because the second main set of Response contentions disputes that BENEFACT is a trademark or service mark in which Complainant has rights, including to contend that

 

(i)            in so far as sub-points “a”, “b” and “c” of point “ii” of the first main set of Complaint contentions contend Complainant use of Complainant’s corporation name, such use of that corporation name does not show BENEFACT is a trademark or service mark in which Complainant has rights; and

(ii)           in so far as sub-point “d” of point “ii” of the first main set of Complaint contentions contends Complainant’s contended trademark registration application shows BENEFACT is  a trademark or service mark in which Complainant has rights, then the contended application does not show BENEFACT is a trademark or service mark in which Complainant has rights.

 

The Panel has therefore considered those three Complaint Exhibits individually and collectively. However, as to evidencing what the Complaint contends they individually and collectively evidence, on the one hand, they are irrelevant (i.e. not rationally probative) or, at most, relevant (i.e. rationally probative) and admissible but of insufficient weight. More particularly, when using a composite mark, one does not use only a part of it, and the test for whether a trademark registration should be expunged for non-use of the registered trademark is to compare the trademark as it is registered with the trademark as it is used, so as to determine whether the differences between the two marks are so unimportant

that an unaware purchaser would be likely to infer that both, in spite of their differences, identify products of the same origin. See, e.g., Registrar of Trade marks v. Compagnie Internationale pour l’informatique CIIHoneywell Bull, 1 F.C. 406 (1985); see also Riches v. Pepper King Ltd., 1 F.C. D-12 (2001). By analogy, in this case the Panel compared the mark contended to be a trademark (i.e. BENEFACT) with each respective mark contended to be used as that trademark, so as to determine in each instance whether the differences between the two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify products of the same origin. As a result,

 

(i)            Complaint Exhibit C is indeed a copy of Complainant’s Corporate Profile Report from Ontario’s Ministry of Government Services and it proves Complainant has existed since January 2006 and has the corporation name “BENEFACT CONSULTING GROUP INC.” as well as that one or more current (but therein unspecified) business names exist regarding Complainant, but it is irrelevant or of insufficient weight regarding Complainant use of BENEFACT (or even of Complainant’s corporation name) as a trademark or service mark in which Complainant has rights, and is therefore irrelevant or of insufficient weight  regarding the contention that BENEFACT is a trademark or service mark in which Complainant has rights;

(ii)           Complaint Exhibit A is a black-and-white copy of the home page of a website that

(a)   resolves through the domain name <benefact.ca>,

(b)   advertises the services of tax consulting to at least Canadians about Canadian scientific research and experimental development, and

(c)   includes at its top a logo comprising a graphic element surmounting the text “BeneFACT” which in turn surmounts  smaller-font text of “CONSULTING GROUP”, and therefore tends towards supporting the inference that Complainant is the owner and user in commerce of that domain name and website in association with those services, but the color, size, and font of composite-mark components matters— as noted in Pepper King Ltd., at paragraph 7—  so it is irrelevant or of insufficient weight regarding Complainant use of BENEFACT as a trademark or service mark in which Complainant has rights, especially since it is expressly only as of 12 October 2011;

(iii)          in turn, the Complaint contention that Complainant has established a strong reputation in the tax consulting services sector in Canada and that BENEFACT is synonymous with that strong reputation, is also not proven; and

(iv)         Complaint Exhibit B is a copy of a Canadian Trademark Office document of receipt and initial approval of a Canadian trademark registration application of BeneFACT (in association with such things as tax consulting services) by Complainant , but the initial approval is a “Filing Notice” and is only to the extent of application compliance with very basic application filing formalities, and although the application claims 27 January 2006 as the applicant’s date of first use of that mark in Canada, the application does not prove it, and Complaint Exhibit B is irrelevant or of insufficient weight regarding Complainant use of BENEFACT as a trademark or service mark in which Complainant has rights.

 

Consequently, the Panel may decline, and does decline, to make findings as to the other two elements of Policy ¶ 4(a). See, e.g., Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because a complainant must prove all three elements under the Policy, a complainant’s failure to prove an element makes further inquiry into the remainder unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into a respondent’s rights or legitimate interests or its registration and use in bad faith where a complainant has not satisfied the requirements of Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

For disposition of the Complaint, Policy ¶ 4(a)(ii) discussion is unnecessary.

 

Registration and Use in Bad Faith

For disposition of the Complaint, Policy ¶ 4(a)(iii) discussion is unnecessary.

 

DECISION

Since Complainant has failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <benefact.com> domain name REMAIN WITH Respondent.

 

 

Debrett G. Lyons, Presiding Panelist

 

Rodney C. Kyle, Panelist

 

Professor David E. Sorkin, Panelist

 

Dated:  November 29, 2011


 

 

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