national arbitration forum

 

DECISION

 

Trudeau Corporation 1889 Inc. v. Web Team

Claim Number: FA1212001475125

 

PARTIES

Complainant is Trudeau Corporation 1889 Inc. (“Complainant”), represented by Jean-Francois Nadon of Joli-Coeur Lacasse s.e.n.c.r.l., Canada.  Respondent is Web Team (“Respondent”), represented by Marc J. Lane, Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <trudeau.com>, registered with GoDaddy.com, LLC (“GoDaddy”).

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Mr. David H Tatham (Chairman), His Honor Judge Timothy O’Leary, and Professor David Sorkin.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 10, 2012; the Forum received payment on December 10, 2012.

 

On December 11, 2012, GoDaddy confirmed by e-mail to the Forum that the <trudeau.com> domain name is registered with it and that Respondent is the current registrant of the name.  GoDaddy has verified that Respondent is bound by its 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”) and the Rules for Uniform Domain Name Dispute Resolution Policy (“the UDRP Rules”).

 

On December 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 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@trudeau.com.  Also on December 19, 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.

 

A timely Response was received and determined to be complete on January 8, 2013.

 

On January 14, 2013 an Additional Submission from Complainant was received, here and on January 22, 2013  an Additional Submission from Respondent was received. Both were deemed to be in accordance with the Forum’s Supplemental Rule 7.

 

On January 16, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Administrative Panel, the Forum appointed Mr. David H Tatham, Judge Timothy O’Leary, and Professor David Sorkin as Panelists.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the UDRP 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 may issue its decision based on the documents submitted and in accordance with the Policy, the UDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

A. Complainant

Complainant states that it has been in business since at least 1899. It currently manufactures and sells Kitchen and Table products in North America under the trademark TRUDEAU, which it has done since the mid-1990s. Prior to that, it imported luxury goods for many years. The name of the company is derived from that of a Mr. Joseph-Arthur Trudeau who worked for the company for many years, and who was appointed President of the company in 1919.

 

Complainant filed copies of several registrations of the trademark TRUDEAU, either in block capital letters or in script form, in Canada, USA, China and the European Union and it contends that this name is identical to the disputed domain name <trudeau.com>.

 

In Canada, it is not possible to register as a trademark the name or surname of an individual who is living or who has died in the preceding 30 years unless it has been used by the applicant so as to have become distinctive. For this reason Complainant did not attempt to register the trademark TRUDEAU until 1999.

 

Complainant contends that Respondent has made no active use of the disputed domain name as it merely shows a home page which lists websites that refer to the sale of kitchen products that have no connection with itself. Furthermore, it is alleged that the disputed domain name is inactive and simply parked. Respondent has therefore never made any active, or demonstrable preparations to use the name in connection with a bona fide offering of goods or services.

 

Furthermore, Respondent has not been commonly known by the disputed domain name either as an individual business or other organisation. It could possibly refer to the family name of Respondent’s director, but no such link has been made. Consequently, Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name.

 

Complainant also contends that Respondent has acted in bad faith and that it is indisputable that Respondent must have had Complainant in mind when  registering the disputed  domain name in an attempt to trade on Complainant’s goodwill.

 

Complainant filed copies of printouts from Respondent’s web pages dated between November 7 and December 10 1999 in support of its contention that Respondent has not been actively using the disputed domain name. Indeed, the Complainant states that the website contains links to kitchen products sold by companies other than itself, such as travel mugs or pepper mills, both of which are products which it sells. As a result, Complainant contends that Respondent is ‘piggy-backing’ on its own goodwill and is thus intentionally attempting to attract internet users to its website, so creating a likelihood of confusion with a trademark in which it has rights.

 

B. Respondent

Respondent claims to be, in fact, a Mr. Kevin Trudeau, who is a best selling author of books relating to “natural cures” and weight loss. The “Web Team”, which is named as the owner of the disputed domain name is actually the staff that assist him. The disputed domain name was used from 1995 to 2004 to promote various products that Mr. Trudeau sold or endorsed for sale. Mr. Trudeau himself is the proprietor of a US registration for the trademark KEVIN TRUDEAU which was registered on February 2, 2010.

 

Respondent claims, firstly, that if the Panel finds that he does have rights or a legitimate interest, or that the disputed domain name was not registered in bad faith, then it is unnecessary for the Panel to consider whether or not it is confusingly similar to Complainant’s trademark.

 

Respondent then proceeds to quote from numerous UDRP Decisions to support his argument that he does have rights and a legitimate interest in the disputed domain name and that it has not been registered in bad faith. On the basis of these, he makes the following points:

·        He is not in the business for the registration and sale of expired domain names for commercial gain. His is an ongoing business so the fact that the disputed domain name is placed with a parking company is not relevant in this case;

·        It has been held that there is nothing per se illegitimate in using a domain parking service;

·        Unlike in other decisions involving a parking service, in this case Respondent derives no revenue from his use of one;

·        It may be true that the name of the Respondent is not known by the disputed domain name, but its e-mail address is <webteam@TruMgmt.com>. This actually does suggest a connection with Mr. Kevin Trudeau, and a simple search for the Respondent’s address would have brought up results that clearly indicate Mr. Kevin Trudeau.

·        To rebut a prima facie showing for a lack of rights or legitimate interest, a Respondent only needs to show “a plausible, non-infringing explanation for selecting the disputed domain name”. This he has done.

·        Several copies of screen shots from the website at the disputed domain name that were filed by Respondent show that Mr. Trudeau’s use of the disputed domain name began nearly 15 years ago.

 

In addition to his use of the disputed domain name, Mr. Trudeau states that he has also used the name “Kevin Trudeau” in connection with a bona fide offering of goods or services since long before this present action was commenced. He maintains that this name corresponds to the disputed domain name. He also points out that KEVIN TRUDEAU is registered as a trademark in the USA. He  also established the company Trudeau Approved products, Inc. in 2011. It is the Trudeau name that drives this business, and he claims to have been using this name as an identifiable mark in commerce, and to be well known by it in several industries for more than 25 years.

 

Mr. Trudeau has never sought to misleadingly divert any of Complainant’s customers; he has never wished to tarnish Complainant’s trademark; he has nothing to gain by diverting any of Complainant’s customers; and he does not sell, and never has sold, any kitchen products. Indeed it would be illogical for Mr. Trudeau to tarnish Complainant’s name as he would be tarnishing his own at the same time. This name is his bread and butter and the product of decades of investment.

 

Furthermore, although the disputed domain name is parked with GoDaddy there is nothing illegitimate about that, and the standard GoDaddy contract specifically states that all third-party advertisements on a parked site will be selected by GoDaddy and the registrant “will not be permitted to customize the advertising or, or entitled to any compensation in exchange therefor”.

 

Respondent contends that, in order to prove bad faith, a Complainant needs to demonstrate that the Respondent had actual knowledge of the Complainant’s name or trademark and selected his domain name for the purpose of taking advantage of that name or mark. However in this case, Complainant has, in the opinion of Respondent, produced no evidence thereof, but only alleged bad faith and this is not sufficient. This argument is also supported by reference to numerous decision under the Policy.

 

C. Additional Submissions

 

Complainant

In its Additional Submission, Complainant expands upon the reason why it could not register the trademark TRUDEAU until 1999. This is because, according to Section 4 of the Canadian Trade Marks Act 1985 a mark is not registrable “that is primarily merely the name or the surname of an individual who is living or who has died within the previous thirty years” and it was not until 1999 that Complainant was in a position to provide sufficient proof to circumvent this requirement.

 

Following the registration of its trademark, Complainant contacted GoDaddy in an attempt to obtain the transfer to it of the disputed domain name,  but received an e-mail from GoDaddy on August 3, 2012 saying that it had received no response from the domain name owner despite having made “continuous attempts”.

 

In spite of Respondent’s claim that he is not obtaining any revenue or benefit from the parked page at the disputed domain name, he is still letting it be used in order to display advertisements that directly refer to third parties offering lines which are identical to those of Complainant. In the opinion of Complainant, this is prima facie evidence that Mr. Trudeau lacks any rights or legitimate interest in the disputed domain name. Complainant quotes in full the paragraphs in WIPO’s Overview on Selected UDRP Questions, that relate both to pay-per-click links, and to the fact that automatically generated material on a website supports a finding of bad faith.

 

Respondent

Respondent reiterates the undisputed fact that the disputed domain name was registered prior to the registration of the trademark TRUDEAU, and so as a result there can be no finding of bad faith on his part. Respondent also follows Complainant’s example by quoting from WIPO’s Overview on Selected UDRP Questions on this point.

 

He also quotes from the same publication on the question of user rights in an unregistered trademark, and he points out that Complainant has filed no evidence thereof.

 

Respondent then asserts that Complainant is guilty of Reverse Domain Name Hijacking. This is because the relevant rights clearly post-date the registration of the disputed domain name. Complainant, by its own admission, did not have a distinctive trademark until 1999 and although this was filed in that year, it was not in fact registered until four years later in 2003.

 

The remainder of the Additional Submission is devoted to a destruction of Complainant’s allegations both of bad faith on the part of Respondent and of a lack of rights or legitimate interest. These arguments are supported by quotations from cases decided under the Policy

 

FINDINGS

The Disputed domain name <trudeau.com> was registered on October 11, 1995.

 

Complainant is a very old, established Canadian company although with facilities also in the USA. Its trademark, TRUDEAU, is derived from the name of one of its early Chairman. However it was not until the mid-1990s, fairly recently, that it began to make and sell it current range of Kitchen and table goods.

 

Respondent is identified as Web Team, but it is actually owned by a Mr. Kevin Trudeau. He is the author of a number of self-help books and he has been engaged in a variety of business ventures either under his full name or abbreviated to simply ‘Trudeau’, for many years.

 

DISCUSSION

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 in order 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.

 

Identical and/or Confusingly Similar

 

The Panel will consider this question, despite Respondent’s suggestion that there might be no need to do so if it finds in favor of Respondent under either of the other two elements of paragraph 4(a).

 

The word TRUDEAU is a surname. It is the surname both of a man hired by the original founders, in 1889, of Complainant and who eventually became the President of the company, as well as of the man behind Respondent. There was also a Mr. Pierre Trudeau who was well-known as a statesman and Premier of Canada firstly in the 1970s and again in the 1980s.

 

TRUDEAU is also a registered trademark belonging to Complainant and it is the subject of several registrations copies of which, in Canada USA, the EU, and China, were supplied by Complainant. The earliest of these is Canadian Registration No. 590767 which was filed on January 20, 1999 and registered on September 25, 2003, claiming use in Canada as early as October 1, 1996.

 

The Panel finds that the trademark TRUDEAU is identical to the disputed domain name <trudeau.com>, apart from the suffix ‘.com’. However it is well established that for the purposes of comparison under the Policy a ‘com suffix is to be ignored. See, for example, Rollerblade, Inc, v. Chris McCrady, D2000-0429 (WIPO June 25, 2000) in which the Panel found that a top level domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar  to the Complainant’s trademark. See also Bank of America Corporation v. Bill McCall, FA 135012 (NAF December 31, 2002) holding that attaching a gTLD to a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”.

 

The Panel finds that paragraph 4(a)(i) is therefore proved.

 

Registration and Use in Bad Faith

 

In the circumstances of this case, the Panel will first consider the question of bad faith.

 

The disputed domain name was registered on October 11, 1995 but despite having several years’ use of the name TRUDEAU, Complainant did not try to register this name as its trademark until January 1999. There is therefore a gap of four years between the two registrations, although the earliest Canadian trademark registration claimed 1996 as its date of first use. The reason for Complainant’s delay in registering its trademark is because it is a surname and so debarred prima facie from registration under Section 4 of the 1985 Canadian Trademarks Act.

 

The gap between the registration of the disputed domain name and the registration of the trademark is fatal to Complainant’s case, because it has been held in many decisions under the Policy that where a trademark is registered  after the date of a disputed domain name it can be difficult, if not impossible, to prove that the domain name was registered in bad faith – unless it can be proved that the Respondent was already aware of the Complainant. There is no suggestion of that in these proceedings.

 

According to the WIPO Review, the consensus opinion on this point is that “although a trademark can form the basis for a UDRP action …. Irrespective of its date …. when a domain name is registered by the respondent before the complainant’s relied upon trademark right is shown to have been first established (Whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right”.

 

See Meeza QSTP-LLC v. Torsten Frank/medisite Systemhaus GmbH WIPO D2009-0943 (WIPO September 15, 2009), in which the Panel found “that Respondent was not aware of Complainant’s not yet extant mark at the time he registered the domain name. Accordingly, Respondent’s registration of the domain name can not have been in bad faith.” The above absolutely mirrors the situation in the present case.

 

Also, in MediaSpan Group, Inc. v. Raghavan Rajagopaian  (WIPO D2005-1282 February 20, 2006), the Panel observed: “As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the Complainant’s non-existent right.”

 

The disputed domain name was registered four years before the earliest Canadian trademark was filed, and one year before its claimed date of first use. In such circumstances, and in the absence of any proof of earlier rights, the Panel finds that there was no bad faith on the part of Respondent and that paragraph 4(a)(iii) is therefore not proved.

 

Rights or Legitimate Interests

 

In view of the above finding of no bad faith on the part of Respondent, there is no need for the Panel to consider the question of rights or legitimate interest.

 

Reverse Domain Name Hijacking

 

Respondent has claimed that it would be appropriate in this case for the Panel to make a finding of Reverse Domain Name Hijacking.

 

Rule 1 of the UDRP Rules defines Reverse Domain Name Hijacking 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, a Respondent must show that Complainant knew of either the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See Gordano Limited v. NT Mail Server D2002-0277 (WIPO June 24 2002) (quoting Sydney Opera House Trust v. Trylinx Pty. Ltd. D2000-1224 (WIPO October 31, 2000)).

 

Also, it is said in Rule 15(a) that “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 …. 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 was found in Prime Pictures LLC v. DigiMedia.com L.P. D2010-1877 (WIPO February 2, 2011), where the Complaint failed because the relevant rights post-dated those in the disputed domain name. But in this case the Panel has already denied the Complaint on the basis that Complainant’s trademark rights are later than those of the disputed domain name. However unlike the Prime Pictures case, there is no clear evidence that the Complaint was brought in bad faith, and no evidence at all that Complainant knew or had heard of Mr. Kevin Trudeau

 

Consequently, the Panel declines to find that this Complaint is a case of Reverse Domain Name Hijacking.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

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

 

 

Mr. David H Tatham (Chairman),

 His Honor Judge Timothy O’Leary, Professor David Sorkin Panelists

Dated:  January 29, 2013

 

 

 

 

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