Ebénisterie Beaubois ltée (Alex Vignola) v. Reserved for Customers / MustNeed.com
Claim Number: FA1511001645810
Complainant is Ebénisterie Beaubois ltée (Alex Vignola) (“Complainant”), represented by Martin St-Amant, Canada. Respondent is Reserved for Customers / MustNeed.com (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beaubois.com>, registered with Moniker Online Services LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2015; the Forum received payment on November 6, 2015.
On November 6, 2015, Moniker Online Services LLC confirmed by e-mail to the Forum that the <beaubois.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 November 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2015 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@beaubois.com. Also on November 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶4(a)(i)
Complainant has common law rights in the BEAUBOIS mark dating back to its first use in 1977. Respondent’s <beaubois.com> domain name is identical to the BEAUBOIS mark because they are differentiated by only the generic top-level domain (“gTLD”) “.com.”
Policy ¶4(a)(ii)
Respondent is not commonly known by the <beaubois.com> domain name, as there is nothing on record to suggest such. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains a search engine and links to other businesses which are operated for profit.
Policy ¶4(a)(iii)
Respondent registered the <beaubois.com> domain name in bad faith because it did so for the purpose of selling it to Complainant. Respondent has demonstrated a pattern of bad faith registration and use of domain names through multiple prior adverse decisions against it. Respondent uses the <beaubois.com> domain name in bad faith because it hosts pay-per-click links on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is neither identical nor confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Complainant has failed to prove Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has NOT been proven to be registered and used in bad faith.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claim to have registered the BEAUBOIS mark with any trademark authority. However, Policy ¶4(a)(i) does not require registration if a complainant can demonstrate having “common law” rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims “common law” rights in the BEAUBOIS mark dating back to 1977. In order to have common law rights, a complainant must show the mark has acquired a secondary meaning. It is possible to acquire “common law” rights to a mark even though a complainant is based in a civil law jurisdiction (such as Quebec). Canadian trademark law is national and allows a person to acquire rights to a mark though use.
Relevant evidence of secondary meaning can include continuous and lengthy use of the mark, as well as ownership of a domain name identical to the mark. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark). Complainant has provided evidence of operating the <beaubois.ca> domain (but has provided only a section of the web site located at that domain name). However, the mere registration of a domain name does not automatically create common law trademark or service mark rights.
Complainant has not provided any evidence of secondary meaning to the claimed mark. To prove a secondary meaning, the evidence must show the public associates the mark with Complainant’s goods or services. The Panel considers relevant evidence of secondary meaning include the income produced by the mark (sales), the advertisement and media recognition. Complainant has shown none of that. Complainant has provided a history of the company since it was apparently founded in 1977. The history of the company doesn’t clearly indicate what Complainant does. In 2009, it appears as though Complainant is in the healthcare field. But the line above that suggests Complainant provides estimating, engineering and project management services (which would be the construction industry). Providing evidence of Complainant’s registration as a business enterprise in Quebec is likewise not sufficient. While Complainant’s business may be legally known by that name, there is not a scintilla of evidence Complainant’s products or services are known by that name. Complainant’s evidence is NOT sufficient to establish secondary meaning. This Panel finds Complainant has no common law rights in the BEAUBOIS mark.
Complainant claims Respondent’s <beaubois.com> domain name is identical to the BEAUBOIS mark because they are differentiated by only the “gTLD “.com.” This is true. Domain name syntax requires a TLD on very domain name, whether is it a gTLD or a ccTLD. The TLD must be ignored when conducting a Policy ¶4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”). Respondent’s <beaubois.com> domain name identical to Complainant’s BEAUBOIS mark (if it was a mark) under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) NOT satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <beaubois.com> domain name because there is nothing on record to suggest such. The WHOIS information lists “Reserved for Customers” and “MustNeed.com” as Registrant Name and Registrant Organization. This suggests Respondent is a web site developer and registered the domain name for a client. It could be Respondent is a privacy service and is acting as a nominee. This Panel does not know and will not speculate. Panels agree a lack of evidence on record can show a respondent is not commonly known by a domain name under Policy ¶4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Respondent is not commonly known by the <beaubois.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the <beaubois.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent’s resolving website contains a search engine. No evidence of this is shown. Not even a single screenshot was presented. The Panel is left wondering if the domain name forwards to a search engine portal (such as Google’s main page) or resolves to a parking page containing “click through” links. It is Respondent’s responsibility to provide this information and it has utterly failed to do so. There is insufficient evidence to find Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Therefore, Complainant has not established a prima facie case Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
This Panel has long held that using a privacy service prevents a Respondent from acquiring any right to the domain name by virtue of the domain name registration. That analysis holds true here as well. However, this presumption does not apply here because Complainant has so completely failed in meeting its burden of proof. In this case, Respondent has not managed to prove Respondent is a privacy service.
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
Complainant claims Respondent registered the <beaubois.com> domain name in bad faith because it registered it to sell it to Complainant. Complainant has not provided any evidence to support this claim. While there is no doubt Respondent has done such things in the past, this Panel found no evidence Respondent did that in this case.
Complainant claims Respondent has demonstrated a pattern of bad faith use and registration of domain names. Respondent has been named as a Respondent in at least 10 other UDRP actions, including CyberMatric Corporation, Inc. v. MustNeed.com, FA0402000236364 and First Place Financial Corp. v. MustNeed.com, FA0506000493838. Regrettably, this pattern has not prevented Complainant from registering its mark (to the extent Complainant has a mark) as a domain name. It should be noted Respondent prevailed in one of those cases.
Complainant claims Respondent uses the <beaubois.com> domain name in bad faith because it hosts pay-per-click links on the resolving website. Complainant has not provided evidence to show such use by Respondent. Once again, Complainant’s proof falls short.
This Panel has repeatedly held registered and using a domain name with a privacy service raises the rebuttable presumption of bad faith registration and use. In this case, Complainant has not managed to prove Respondent is a privacy service. Respondent might well be purchasing the domain names for resale (although that hasn’t been established in this case…see above).
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <beaubois.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, December 7, 2015
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