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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rona, Inc. v. Merry Christmas Everyone!

Case No. D2000-1653

 

1. The Parties

The Complainant is Rona, Inc. of 220, chemin du Tremblay, Boucherville, Quebec, J4B 8H7, Canada.

The Respondent is Merry Christmas Everyone! of 8635 W. Sahara, Las Vegas, NV 89117, U.S.A.

 

2. The Domain Name and Registrar

The contested domain name is <ronacashway.com>.

The registrar is Network Solutions, Inc.

 

3. Procedural History

The electronic version of the Complaint was filed on November 28, 2000. The hardcopy of the Complaint form was received on November 30, 2000.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules, including payment of the prescribed fee.

On December 11, 2000, the Center formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.

The Respondent failed to file a response. On January 5, 2001, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.

On January 20, 2001, the Center contacted John Swinson and requested that he act as panellist in this case.

On January 22, 2001, Mr Swinson accepted to act as panellist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On January 24, 2001, the parties were notified that Mr Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on February 6, 2001.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the ICANN Rules; no Response was filed by the Respondent; the administrative panel was properly constituted.

 

4. Factual Background

The Complainant is the owner of the following registered Canadian trade marks:

- Canadian Registration No. 237,639 for the trade mark RO-NA Design;

- Canadian Registration No. 280,229 for the trade mark RO-NA;

- Canadian Registration No. 223,910 for the trade mark RO-NA;

- Canadian Registration No. 454,254 for the trade mark RO-NA HARDWARE & Design;

- Canadian Registration No. 527,401 for the trade mark RONA HARDWARE & Design;

- Canadian Registration No. 525,773 for the trade mark RONA HARDWARE & Design;

- Canadian Registration No. 526,965 for the trade mark RONA WAREHOUSE & Design;

- Canadian Registration No. 514,715 for the trade mark RONA WAREHOUSE & Design;

- Canadian Registration No. 454,255 for the trade mark RO-NA HOME CENTRE & Design;

- Canadian Registration No. 526,293 for the trade mark RONA HOME CENTRE & Design;

- Canadian Registration No. 526,042 for the trade mark RONA HOME CENTRE & Design;

- Canadian Registration No. 454,601 for the trade mark RO-NA L’ENTREPOT & Design;

- Canadian Registration No. 527,042 for the trade mark RONA L’ENTREPOT & Design;

- Canadian Registration No. 525,777 for the trade mark RONA L’EXPRESS & Design;

- Canadian Registration No. 526,044 for the trade mark RONA L’EXPRESS & Design;

- Canadian Registration No. 526,043 for the trade mark RONA L’EXPRESS MATERIAUX & Design;

- Canadian Registration No. 526,431 for the trade mark RONA LE RENOVATEUR & Design;

- Canadian Registration No. 526,046 for the trade mark RONA LE QUINCAILLER & Design;

- Canadian Registration No. 224,308 for the trade mark CASHWAY; and

- Canadian Registration No. 521,322 for the trade mark CASHWAY BUILDING CENTRES & Design.

The Complainant is the owner of the following Canadian trade mark applications:

- Canadian Application No. 1,014,629 for the trade mark RONA;

- Canadian Application No. 1,014,634 for the trade mark RONA Design;

- Canadian Application No. 1,059,326 for the trade mark RONA CASHWAY & Design;

- Canadian Application No. 1,059,323 for the trade mark RONA CASHWAY & Design;

- Canadian Application No. 1,059,324 for the trade mark RONA CASHWAY & Design;

- Canadian Application No. 1,059,325 for the trade mark RONA CASHWAY & Design; and

- Canadian Application No. 1,059,322 for the trade mark RONA CASHWAY BUILDING CENTRES.

 

5. Parties’ Contentions

A. Complainant

The Complainant is a leading distributor and retailer of hardware products, home renovation and building materials and gardening supplies in Canada. It employs a staff of more than 11,000 and controls a network of about 500 stores across Quebec, Ontario, New-Brunswick and Nova Scotia, which are operated under a variety of commercial banners composed of the well-known trade mark RONA, including some under the banner RONA CASHWAY.

The trade marks RO-NA and RONA have been used in Canada in association with the services of operation of hardware stores and related products and services since as early as 1960. RO-NA derives from the first two syllables of the first names of the founders of the Complainant company, Rolland Dansereau and Napoleon Piotte.

In early 2000, the Complainant acquired Cashway Building Centres Limited, a lumber and building materials leader in Ontario which has been in operation for over 100 years. As part of this acquisition, it acquired 61 stores and its trade marks, including the well known trade mark CASHWAY. The trade mark CASHWAY has been used in Canada by the Complainant’s predecessor in title since as early as May, 1959.

Pursuant to the acquisition of Cashway Building Centres Limited, the name of all existing Cashway stores was changed to RONA CASHWAY. The stores operating under the commercial banner Rona Cashway are medium-surface renovation centres recognised as specialists in building materials throughout Ontario.

The Complainant alleges that the contested domain name was registered by the Respondent the very same day that the Complainant issued a press release announcing that the Complainant had entered into an agreement to acquire Cashway Building Centres Limited. The press release stated that all existing Cashway stores would be called Rona Cashway.

B. Respondent

The Respondent failed to file a Response within the time limit set by the Center.

In accordance with Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complaint alone.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) the respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

6.1 Identical or confusingly similar to a trade mark or service mark

The panel finds that the Complainant is the owner of the common law trade mark RONA CASHWAY. The common law trade mark RONA CASHWAY is included in five of the Complainant’s pending Canadian trade mark applications.

The panel finds that the contested domain name is identical to the trade mark owned by the Complainant. The only difference between the domain name and the trade mark is the addition of the suffix ".com". See Microsoft Corporation v. Amit Mehrotra WIPO D2000-0053.

The Complainant is the owner of registered trade marks for both RONA and CASHWAY. The panel also finds that the contested domain name is confusingly similar to the combination of these two registered trade marks.

6.2 Illegitimacy

The Complainant contends that the Respondent has no legitimate interest in the use of the contested domain name as the Respondent:

(a) registered the domain name on the day that the Complainant issued a press release announcing that it had entered into an agreement to acquire Cashway Building Centres Ltd, and that all existing Cashway stores would be called Rona Cashway;

(b) is not using the contested domain name in connection with a bona fide offering of goods or services, and the contested domain name is not being used as an active address; and

(c) is not making a legitimate, noncommercial or fair use of the domain name and does not use the domain name in connection with any bona fide offering of goods or services.

The panel agrees with the Complainant’s assertions above.

There is no apparent association between the Respondent’s name, MERRY CHRISTMAS EVERYONE!, and the domain name <ronacashway.com>.

The Respondent became the registrant of the contested domain name on February 7, 2000. As a result, the Respondent has had adequate time in which to develop its website, had it had the intention of doing so.

In response to the Complainant’s attorney’s letter objecting to the Respondent’s registration of the contested domain name, the Complainant’s attorneys received three emails. The first email was signed by "Ms. Rona Cashway". The third email was signed by a presumed friend of Ms. Rona Cashway, without identifying himself or herself, advising that "Ms. Rona Cashway is prepared to sell her personal name <ronacashway.com> for 7,500 US$". The panel does not believe that Ms. Rona Cashway was the true name of any person.

Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondent’s legitimate rights in the contested domain name. The Respondent does not meet any of the three elements set out in this paragraph.

Accordingly, the panel finds that the Complainant has no rights or legitimate interests in respect of the domain name.

6.3 Bad Faith

The Complainant contends that the Respondent registered and is using the domain name in bad faith as:

(a) the Respondent registered the domain name on the day that the Complainant issued a press release announcing that it had entered into an agreement to acquire Cashway Building Centres Ltd, and that all existing Cashway stores would be called Rona Cashway;

(b) the Respondent has engaged in a pattern of conduct of registering trading names of third parties on the same day that third parties issue press releases disclosing their intended trade marks; and

(c) the Respondent has deliberately hidden its true identity throughout the process. In response to the Complainant’s attorney’s letter objecting to the Respondent’s registration of the contested domain name, the Complainant’s attorneys received three emails. The first email was signed by "Ms. Rona Cashway". The third email was signed by a presumed friend of Ms. Rona Cashway, without identifying himself or herself, advising that "Ms. Rona Cashway is prepared to sell her personal name ronacashway.com for 7,500 US$".

The panel finds that the Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(i), (ii) and (iii) of the ICANN Policy.

The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainant’s rights. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).

Paragraph 14 of the ICANN Rules provides that:

"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."

The panel was particularly persuaded on the element of bad faith by the offer from Ms. Rona Cashway to sell the domain name, along with examples where the Respondent had registered domain names including <knight-trimark.com>, <knighttrimark.com>, <mizuho-financial>, <mizuhofinancialgroup.com>, <quebecoronline.com>, and <bellmicroproducts.com> all apparently after press releases announcing new corporate names and the like.

The panel finds that the Complainant has established this element.

 

7. Decision

For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to the Complainant.

 

 

John Swinson
Sole Panelist

Dated: February 6, 2001