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WIPO-UDRP Entscheid
D2008-1902

Fallnummer
D2008-1902
Kläger
Canada Post Corporation
Beklagter
Alain Lambert, Alfa inc., 569 Dorset suite A
Entscheider
Féral-Schuhl, Christiane
Status
Geschlossen
Entscheidung
Transfer
Entscheidungsdatum
18.02.2009

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canada Post Corporation v. Alain Lambert, Alfa inc., 569 Dorset suite A

Case No. D2008-1902

1. The Parties

The Complainant is Canada Post Corporation of Ottawa, Ontario, Canada, represented by Smart & Biggar, Canada.

The Respondent is Alain Lambert, Alfa inc., 569 Dorset suite A, all of Mascouche, Quebec, Canada, represented by Alain Lambert, Canada.

2. The Domain Names and Registrars

The disputed domain names <postecanada.biz>, <postecanada.com>, <postecanada.name>, <postecanada.net>, <postecanada.org> are all registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2008. On December 15, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On December 16, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 24, 2008, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center in that email communication also informed the Complainant that according to the information that the Center had received from the concerned Registrar Wild West Domains, Inc., the domain name <postecanada.biz> was registered with Wild West Domains, Inc. and not Namescout Corp. as indicated in the Complaint. The Center requested the Complainant to further amend the Complaint in that regard. The Complainant filed an amended Complaint on January 2, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2009. The Response was filed with the Center on January 27, 2009.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 4, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Canada Post Corporation, which is a Canadian Crown corporation established in 1981 under the provisions of the Canada Post Corporation Act, RSC 1985, c. C-10. The Complainant functions as the Canada's postal operator.

The Complainant owns the following registered trademarks in Canada:

- Canadian Official Mark No. 910,350 for POSTES CANADA, obtained on October 10, 1998 under Section 9 of the Canadian Trade-Marks Act;

- Canadian Trademark Registration No. TMA593,495 for POSTES CANADA, registered on October 29, 2003;

- A number of trademark registrations that contain the term POSTES CANADA or its English equivalent CANADA POST.

The Complainant also owns the following domain names:

- <postescanada.org>, registered on April 29, 1998;

- <postescanada.com>, registered on June 8, 1998;

- <postescanada.ca>, registered on October 1, 2001;

- <postescanada.net>, registered on April 29, 2008.

The Respondent is Alain Lambert, Alfa inc., 569 Dorset suite A. The Respondent owns a website related to poetry.

The Respondent owns the following domain names, which all redirect to this same website:

- <postecanada.com>, registered on March 2, 2000;

- <postecanada.org>, registered on December 22, 2001;

- <postecanada.net>, registered on December 22, 2001;

- <postecanada.biz>, registered on July 25, 2006;

- <postecanada.name>, registered on May 26, 2008.

5. Parties' Contentions

A. Complainant

(i) The Complainant contends that the disputed domain names are confusingly similar to its prior registered trademarks.

The Complainant submits that its trademarks and official marks for POSTES CANADA are well known throughout Canada and enjoy extensive goodwill.

The Complainant states that the disputed domain names are only different in that they remove the letter “s” from its trademarks and official marks and that this does not create a distinctive domain name.

(ii) The Complainant contends that the Respondent lacks any rights or legitimate interests in the disputed domain names.

The Complainant states that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services.

The Complainant also points out the Respondent's illegitimate commercial use of the disputed domain names, evidenced by the commercial advertising contained on the Respondent's website and by the indirect links to the Respondent's other websites, which offer various products for purchase and contain advertising and links to other commercial websites.

(iii) The Complainant contends that the Respondent registered and used the domain names in bad faith as demonstrated by a pattern of registering domain names based on well known marks and using those domain names for commercial gain.

The Complainant submits that the Respondent demonstrated bad faith by using the disputed domain names to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.

The Complainant requests that the disputed domain names be transferred to him.

B. Respondent

(i) The Respondent states that the Complainant's trademarks have only been registered on October 29, 2003, and that they are only the association of two generic terms, “postes” and “canada”, and thus are not distinctive.

The Respondent also states that the Complainant, in its function of domain name registrar, allowed the Respondent to register two domain names containing the terms “postecanada” on July 26, 2006, and that this constitutes an explicit consent of the Complainant.

The Respondent also submits that its website is well-known and used by many Internet users.

The Respondent also states that its use of the terms “poste” and “canada” is legitimate because the Respondent is Canadian and its website is used in order to “post” poetry on-line.

(ii) The Respondent contends that it has a legitimate interest in the disputed domain names.

This legitimate interest, according to the Respondent, results from the numerous users of its website. The Respondent further states that the audience of this website is worldwide, contrary to the Complainant's websites.

The Respondent submits that it does not use the disputed domain names in a commercial way and that its website does not pretend to be a professional one.

(iii) The Respondent contends that it has registered and used the disputed domain names in good faith.

The Respondent states that its good faith is proved by the fact that it proposed to transfer the disputed domain names to the Complainant for the price paid to register these domain names.

The Respondent submits that the Complainant tries to illegitimately capture its domain names.

6. Discussion and Findings

In order to obtain the transfer of the disputed domain names, the Complainant should demonstrate, in accordance with the Policy, paragraph 4(a), that:

(i) The registered domain names are identical or similar to the trademark or service mark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in the domain names.

(iii) The Respondent has registered and used the domain names in bad faith.

A. Identical or Confusingly Similar

“Poste”, or “postes” in its plural form, refers in French to the postal activity.

The Complainant proves that it operates under the name Postes Canada as Canada's postal operator.

The Complainant further proves that it is the owner of the Canadian Official trademark for POSTES CANADA and that it used numerous domain names containing the terms “postes canada” since 1998. The Panel notices that the association of two generic terms may produce a distinctive expression.

The Panel considers that the Complainant obtained a Mark for POSTES CANADA, on October 10, 1998 under Section 9 of the Canadian Trade-Marks Act. Therefore, all of the disputed domain names registered by the Respondent are posterior to the trademarks registered by the Complainant.

The Panel notices that the disputed domain names registered by the Respondent are strongly similar to the trademark in which the Complainant has rights. Indeed, the Respondent's domain names are only different in that they remove the letter “s” from the Complainant trademark. This removal only changes the term “postes” from its plural form to its singular form. This removal does not create distinctive domain names from the Complainant's trademark.

As a consequence, the Panel considers that the disputed domain names are confusingly similar to the POSTES CANADA trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent contended that it has a legitimate interest in the disputed domain names but did not provide evidence of the legitimate interest.

The Panel notices that the Respondent's website deals with poetry and gives the opportunity to the Internet users to publish poems online. This website does not provide postal services.

The Panel considers that there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services.

The Panel also notices that the Respondent's website contains commercial advertising. The Panel thus considers that the Respondent does not make a legitimate noncommercial or fair use of the domain name.

As a consequence, the Panel is satisfied that none of the circumstances required under paragraph 4(c) of the Policy exist, and concludes that the Respondent had no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Based on the evidence submitted in this case, the Panel is of the opinion that the Respondent has registered and uses the disputed domain names in bad faith.

The Respondent was aware, at the time of registration of the disputed domain names, of the rights held by the Complainant on the POSTES CANADA trademark. Indeed, this trademark is very well known in the Canada and is widely used by the Complainant, which is Canada's postal operator.

The only possible reason for the Respondent's registration of the disputed domain names is to benefit from the reputation and goodwill in the POSTES CANADA trademark and to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark.

The Panel believes that the Respondent intentionally misspelled the Complainant's trademark by removing an “s”. This removal does not change the French pronunciation or the idea conveyed by the trademark: it only changes the French word “postes” from its plural form to its singular form. The Panel believes that the Respondent made this minor change in order to increase the traffic to its website and derive more revenue as a result.

Such practice is known as “typosquatting” and has been clearly condemned in various decisions (See, for example, Yahoo! Inc. and GeoCities v. Data Art Corp.,DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).

These circumstances justify the conclusion that both the registration and the use of the disputed domain names have been made in bad faith.

The Panel, therefore, concludes that there is sufficient evidence that Respondent's registration and use of the domain names have been made in bad faith, fulfilling the requirements set out by paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <postecanada.biz>, <postecanada.com>, <postecanada.name>, <postecanada.net>, <postecanada.org> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist

Dated: February 18, 2009