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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Huronia Precision Plastics Inc. v. LDI Industries Inc.

Case No. D2001-1473

 

1. The Parties

The Complainant is Huronia Precision Plastics Inc., a corporation pursuant to the laws of Canada with its principal place of business 281 Cranston Cr., Box 115, Midland, Ontario, Canada.The Complainant is represented by May M. Cheng of Fasken Martineau DuMoulin LLP, 4200 Toronto Dominion Bank Tower, Box 20, Toronto-Dominion Center, Toronto, Ontario, M5K 1N5, Canada and John Grootveld, Controller of Huronia Precision Plastics Inc.

The Respondent is LDI Industries Inc. of 21 Laurier Road, Penetanguishene, Ontario, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is <huroniaplastic.com>. The domain name is registered with Melbourne IT Ltd., doing business as Internet Names Worldwide of Melbourne Australia whose address is Level 2, 120 King Street, Melbourne, Victoria 3000, Australia ("the Registrar").

 

3. Procedural History

The Complaint submitted by Huronia Precision Plastics Inc. was received on December 20, 2001 (electronic version) and December 27, 2001 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

An Acknowledgement of the Complaint was sent by the WIPO Center to the Complainant, copying the Respondent, on December 27, 2001, by e-mail.

On December 31, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, Melbourne IT Ltd.

By email dated January 21, 2002, the Registrar advised WIPO Center as follows:

- It had received a copy of the Complaint from the Complainant.

- It is the Registrar of the domain name registration <huroniaplastic.com>.

- The Respondent is shown as the "current registrant" of the domain name.

- The administrative contact is Mia Van den Heuvel of 21 Laurier Rd, Penetanguishene, L9M 1G8 Ontario, Canada.

- The UDRP applies to the registration.

- The domain name registration <huroniaplastic.com> is currently active.

- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on January 8, 2002, transmitted by post-courier, facsimile, and email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days, namely January 28, 2002. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

On January 10, 2002, at 7.56 p.m. the Respondent advised the Center by e-mail that it had not been officially notified by "hard copy" of the current situation and advised that the Center could not start the proceedings until such time as the Respondent had received the "hard copy". On the same day, January 10, 2002, at 9.25 p.m. the Respondent advised the Center by e-mail that it had just received the "hard copy" of the Complaint by FedEx and advised that the Center that it could now start proceedings.

On January 11, 2002, the Center advised the Respondent by e-mail that as stated in the Center’s Notification of Complaint and Commencement of Administrative Proceeding dated January 8, 2002, the last day for sending the Response to the Complainant and to the Center was January 28, 2002.

No response was received by the WIPO Center from the Respondent within the prescribed time. A Notice of Respondent Default was issued on January 29, 2002.

WIPO Center invited Mr. Ross Carson of Ogilvy Renault, Ottawa, Ontario, Canada to be the Panelist in the case. It transmitted to Mr. Carson a statement of acceptance and requested a declaration of impartiality and independence. Mr. Carson forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. On February 6, 2002, the Center forwarded to the Parties a Notification of Appointment of Administrative Panel and advised that the projected decision date was February 20, 2002.

On February 6, 2002, the WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by February 20, 2002.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

On February 6, 2002, Mr. David Wray of R. William Wray & Associates advised the Center by e-mail that he had been asked by the Respondent LDI Industries Inc. to represent them in this dispute. Mr. Wray requested the Administrative Panel to grant an extension of time in which to file a Response as he had not yet had an opportunity to review the file.

The Panel reviewed the case file and issued a Procedural Order No. 1 granting an extension of time for filing the Response until February 27, 2002.

On February 27, 2002, Mr. David Wray, the representative for the Respondent, forwarded a Response by e-mail to the Center. The Center forwarded the Response by e-mail to the Administrative Panel and to the representative for the Complainant. On February 27, 2002, the Center acknowledged receipt of the e-mail version of the Response and advised the representative for the Respondent that a signed original and four copies of the Response must also be sent to the Center and that one copy of the Response and all attachments must be sent by express mail or courier service to the Complainant. The Center also advised that the representative for the Respondent must send the e-mail of the Response to the Complainant.

Following review of the Response, the Panel issued Administrative Panel Procedural Order No. 2 dated March 5, 2002, advising that paragraph 12 of the Response includes the statement that the Respondent ". agrees that the domain name <huroniaplastic.com> may be transferred to the Complainant. The Respondent’s Consent is enclosed". Having regard to the Respondent’s stated agreement to transfer the domain name to the Complainant, the Panel requested the parties to execute a settlement agreement transferring the domain name <huroniaplastic.com> or provide proof of actual transfer of the domain name to the Complainant. Procedural Order No. two advised that the administrative decision would be suspended for fourteen days until March 19, 2002, to enable the parties to complete either of these steps, failing which the Panelist would proceed to render a decision in the administrative proceeding on or about April 3, 2002.

On March 18, 2002, the representative for the Complainant forwarded an e-mail to the parties advising that the Registrant had failed to return to them an executed Domain Name Transfer Agreement signed by a representative of the corporation who has authority to bind the corporation and the domain name had not been transferred. Complainant’s representative requested the Panel to proceed with the administrative proceeding.

On March 19, 2002, Mr. David Wray, the representative for the Respondent, forwarded an e-mail to the parties advising that a Settlement Agreement had not yet been signed by both parties. The Respondent had executed an Internet Domain Name Transfer Agreement and forwarded it to the Complainant’s attorneys, but the Complainant’s attorneys had some questions regarding the nature of the signatory’s position. The principal of LDI Industries Inc. Mr. van den Heuvel was on holidays until April. The Agreement was signed by Ms. Matyas as the authorized representative of the Respondent and the Complainant’s attorneys did not find this satisfactory. The Respondent was prepared to provide the signature of Mr. van den Heuvel on his return and requested a further extension of time to permit this to occur.

Following review of the request for an extension of time by the Respondent’s representative, the Panel found that there were no exceptional circumstances for granting a further extension of time fixed by the Panel and issued Procedural Order No. three refusing the further extension of time. The Panel advised that it would proceed and render a decision in the administrative proceeding on or about April 4, 2002.

 

4. Factual Background

The Trademarks

Huronia Precision Plastics Inc., is the owner of all rights, including trade names and trademark rights in and to HURONIA PRECISION PLASTICS in Canada. Huronia Precision Plastics Inc., uses its name and mark HURONIA PRECISION PLASTICS in relation to the manufacture and sale of a wide range of precision plastic parts, primarily for the automotive industry. Huronia Precision Plastics Inc., has been manufacturing, offering for sale and selling automotive parts under the mark and name HURONIA PRECISION PLASTICS since at least as early as January 31, 1995.

The Complainant submits that it is one of Canada's leading precision injection molding companies, primarily manufacturing plastic parts for the automotive industry, based in Midland, Ontario. The company was founded in 1988, and incorporated in Ontario in 1998, growing rapidly from five employees to almost one hundred. A copy of the articles of incorporation for Huronia Precision Plastics Inc., is attached as Annex E.

Complainant advises that it has established a solid reputation and significant goodwill in Canada and in the automotive industry in Canada and the United States for its quality manufactured precision plastic products.

In January 1999, Huronia Precision Plastics Inc., received the Midland Large Business Award from the Midland Chamber of Commerce. Its President, Ralph Befort, received the Midland Business Person of the Year Award in 2001. The growth and success of Huronia Precision Plastics Inc., was the subject of articles in the Huronia Business Times in April 1999, and in January 2000. A copy of the media coverage and awards are attached as Annex F.

Complainant submits that its business, in association with the HURONIA PRECISION PLASTICS trade name and trade-mark, have developed significant goodwill in Canada over the past thirteen years in the precision injection moulding business and automotive parts manufacturing industry. The use of the trade name and trade-mark HURONIA PRECISION PLASTICS is an integral part of the Complainant's business and fundamental to its financial success.

Samples of uses of the Complainant’s trade name and trade-mark as shown on the packaging for its products, at its place of business and on business stationery are attached as Annex G.

The Complainant advises that it intends to develop an Internet site using the domain name "<huroniaplastics.com>", which it currently uses as a hub for e-mail addresses for all of its employees. The domain name "<huroniaplastics.com>" was registered by the Complainant on December 11, 1997, and is presently under construction. (Annex H).

The domain name in dispute, <huroniaplastic.com> was registered by LDI Industries on September 21, 2001. (Annex A to Complaint)

Complainant advises that in or about May of 2001, the Complainant was advised by one of its customers looking for its web presence of the existence of the Respondent’s domain name and web site at <huroniaprecisionplastics.com>. The web site at <huroniaprecisionplastics.com> showed advertising for LDI Industries Inc., with no reference to "HURONIA PRECISION PLASTICS". Copies of the web pages dated May 18, 2001, for <huroniaprecisionplastics.com> are attached as Annex J. A copy of the letter from Shark Logic to Huronia Precision Plastics advising them of the confusingly similar domain name is attached as Annex K.

The domain name registrant for <huroniaprecisionplastics.com> is LDI Industries, the Respondent in the present proceeding. The domain name was registered on November 28, 2000. (Annex L to Complaint).

On May 29, 2001, the Complainant’s solicitors sent a cease and desist letter to the Respondent, demanding the cessation of use and delivery up of the domain name <huroniaprecisionplastics.com> and alleging trade-mark passing-off and unfair competition. A copy of the demand letter is attached as Annex M. Reminders were sent to the Respondent when it failed to respond to the Complainant’s demands. Copies of letters dated June 15 and 28, 2001, sent by Complainant are attached as Annex N.

On July 9, 2001, a person with the initials M.V. sent an e-mail response requesting until mid August to respond. A further e-mail reminder was sent on August 16, 2001, demanding a response by August 24, 2001. A response was received dated August 20, 2001, stating that "the HURONIAPRECISIONPLASTICS.COM name was inadvertently attached to the LDI web routings", and adding "Should your client wish to purchase the HURONIAPRECISIONPLASTICS.COM domain name, we will entertain offers for same with some reservations, in that your client’s name is close to one of the names which is under consideration for one of my new companies – Huronia Plastics Products Limited." The Respondent demanded that the Complainant cease using the letters HPP, stating that "we are in the process of patenting the HPP logo for my companies." The letter is signed C Van Den Heuvel. Copies of the e-mails exchanged are attached as Annex O and P.

On September 14, 2001, the Complainant filed an ICANN dispute resolution complaint with eResolution to seek the transfer of the domain name <huroniaprecisionplastics.com>. On November 5, 2001, the Administrative Panel rendered a decision granting transfer of the domain name <huroniaprecisionplastics.com> from the Respondent to the Complainant. A copy of the decision is attached as Annex Q to the Complaint.

In or about November of 2001, Complainant was advised by a representative of Bell Canada looking for its web presence of the existence of Respondent’s domain name and web site. The web site at <huroniaplastic.com> displayed "under construction", with no reference to "HURONIA PLASTIC" on the web site. Copies of the web pages dated November 23, 2001, for <huroniaplastic.com> are attached as Annex R.

On December 6, 2001, the Complainant’s solicitors sent a cease and desist letter to the Respondent, demanding the cessation of use and delivery up of the domain name "<huroniaplastic.com>" and alleging trade-mark passing-off and unfair competition. A copy of the demand letter is attached as Annex S.

Huronia Plastics Products is a business name of 1450942 Ontario Limited registered 2001/06/12 under the laws of Ontario. Cris Van Den Heuvel, 21 Laurier Road, Penetanguishene, Ontario, L9M 1G8 is named as the person authorizing registration. The business name was registered on June 12, 2001, after the date of the Complainant’s first cease and desist letter. A copy of the business names report for Huronia Plastics Products is attached as Annex T.

 

5. Parties’ Contentions

Complainant

(i) The domain name <huroniaplastic.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) Respondent has no rights or legitimate interests in respect of the domain name <huroniaplastic.com>.

(iii) Respondent registered and is using the domain name <huroniaplastic.com> in bad faith.

(i) Domain Name Confusingly Similar To Complainant’s Trademarks

The Complainant, Huronia Precision Plastics Inc., owns the trade-mark and trade name HURONIA PRECISION PLASTICS in Canada, where the Respondent runs a competing business in the precision injection molding business carried on under the name LDI Industries.

Complainant submits that the Respondent’s domain name <huroniaplastic.com> is clearly confusingly similar to the trade name and trademark of the Complainant, and has not been associated with the Respondent in the past, nor is it currently associated with the Respondent. Complainant submits that Respondent is also trying to adopt a confusingly similar business name to the Complainant, solely for the purpose of trading on the reputation and goodwill built up by the Complainant.

Complainant submits that the confusing similarity is apparent from a comparison of the Complainant’s trade name and trademark with the disputed domain name, which uses HURONIA PLASTIC and simply adds a .com on the end. Further, it only removes the letter "s" from the Complainant’s URL <huroniaplastics.com>, in use by the Complainant since December of 1997.

Complainant refers to the decision in AT&T Corporation v. Tala Alamuddin, WIPO Case No. D2000-0249 (May 18, 2000). By applying the same test, persons who have had dealings with Huronia Precision Plastics Inc., would definitely be or are likely to be confused into thinking that <huroniaplastic.com> is a site owned and maintained by Huronia Precision Plastics Inc. which uses the URL <huroniaplastics.com>.

(ii) Respondent Has No Rights Or Legitimate Interest In The Domain Name

Complainant advises that the Respondent is not a licensee of the Complainant and has no rights or legitimate interest in the domain name <huroniaplastic.com>.

Complainant submits that the sole purpose of the Respondent’s registration of the domain name <huroniaplastic.com> is for the deliberate purpose of trading on the goodwill associated with the well known name associated with the Complainant.

Complainant submits that the lack of legitimate interest of the Respondent is highlighted by the fact that the Respondent has recently registered as a business name Huronia Plastics Products, which is confusingly similar to the Complainant’s trade name and trade-mark.

Complainant submits that there is an obvious connection between the Respondent’s domain name <huroniaplastic.com> and the trade name and trade-mark of the Complainant.

Complainant submits that the domain name <huroniaplastic.com> does not correspond to any legitimate business name or business interests of the Respondent. Even having registered as a business name Huronia Plastics Products, the Respondent still has no legitimate interest in the domain name <huroniaplastic.com>, which is identical to Complainant’s trade name and trade-mark.

(iii) Domain Name Has Been Registered And Used In Bad Faith

Complainant submits that Respondent registered the domain name in dispute in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trade name and trade-marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site, products, and services.

Complainant submits that the deliberate registration of <huroniaplastic.com>, which is so closely associated with the Complainant’s trade name and trade-mark HURONIA PRECISION PLASTICS and domain name <huroniaplastics.com>, belonging to a direct competitor of Respondent, reveals the dishonest and bad faith nature of the Respondent’s activities.

Complainant submits that the bad faith of the Respondent is further evidenced by its attempts to register another confusingly similar domain name to that of the Complainant after just having had to deliver up <HURONIAPRECISIONPLASTICS.COM>.

Respondent

The Respondent filed a Response by e-mail on February 27, 2002, followed by hard copies.

1. The Respondent submitted the Affidavit and Exhibits A through J of Juliana Matyas, advisor to LDI Industries Inc., setting out the position of the Respondent with respect to the Complaint.

2. Respondent states that the Complainant alleges that it is entitled to the disputed domain name by virtue of its alleged use of a number of trade names and trademarks. The Respondent puts the Complainant to the strict proof of any such alleged trade names and trademarks.

3. Respondent states the Complainant also alleges that the disputed domain name is confusingly similar to the Complainant's trademarks.

4. The Respondent states that the Complainant alleges that the Respondent has no rights or legitimate interest in the Disputed Domain Name, and further alleges that the Domain Name has been registered and used in bad faith. The Respondent strenuously disagrees.

5. The Respondent advises that in her Affidavit, Ms. Matyas states that the word "Huronia" was chosen by Mr. Cris van den Heuvel, Respondent's owner, during a brainstorming session as part of a general plan to re-structure his business. It was felt that the word "Huronia" was an appropriate geographic reference given the Respondent's location in Penetanguishene, and the decision was made to pursue Huronia Plastics Products.

6. Respondent enclosed the Affidavit and Exhibits CG-1 through CG-3 of Carl Gauthier, trademark research-analyst with Thomson & Thomson Canada, an intellectual property research firm. Respondent submits that his research report clearly shows that the word "Huronia" is commonly used by individuals and companies and that this is particularly true for those individuals and companies in the Midland and Penetanguishene area.

7. Respondent advises that Ms. Matyas indicates that Mr. van den Heuvel’s daughter Myia registered <huroniaplasticproducts.com>. The additional domain name <huroniaprecisionplastics.com> was registered at the suggestion of the domain Name Company, who indicated that it was available. However, Mr. Van den Heuvel had no interest in this domain name and chose to let it run out.

8. Respondent submits that the company Huronia Plastics Products Corp. incorporated by Cris van den Heuvel on August 14, 2001 (Exhibit "A" to the Matyas affidavit) and the incorporation by Cris van den Heuvel on August 14, 2001 of HPP Corp. (Exhibit "B" to the Matyas affidavit) led Mr. van den Heuvel to believe that the trade name was clear to use and that no one could have any prior or superior rights.

9. Respondent submits that Mr. van den Heuvel also believed that the fact that the domain names <huroniaplasticsproducts.com> and <huroniaprecisionplastics.com> were approved and registered meant that the domain names were clear to use and that no one could have any prior or superior rights.

10. Respondent submits that as shown in the Trade Mark Search Report, attached as part of Carl Gauthier's Affidavit, the Complainant's recently filed trade mark applications were not pending at the time that the Respondent registered either its company names or domain names and they would not have appeared on any NUANS or trade mark search. At no time was there any bad faith on the part of Mr. van den Heuvel or anyone else associated with the Respondent.

11. Respondent submits that Ms. Matyas indicates in her Affidavit that she attempted to mediate a mutually-agreeable solution to the issues between the parties, based on Mr. van den Heuvel's belief that he had legitimate interests in the domain names and company names in question.

12. The Respondent advises that it remains committed to resolving the issues between it and the Complainant on an amicable basis, and therefore agrees that the domain name <huroniaplastic.com> may be transferred to the Complainant. The Respondent's unsigned Consent was enclosed with the Response.

13. The Respondent advises that it also undertakes to change the names of the two corporations Huronia Plastics Products Corp. and HPP Corp. and not to use the word "huronia" or the letters "hpp" as part of any trade mark, trade name or domain name in the future. Respondent advises that to date there has been no conducting of business under these two company names, nor has there been any offering of services or selling of products under these trade names. The Respondent's unsigned undertaking was enclosed with the Response.

 

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name <huroniaplastic.com> transferred to itself, Complainant must prove the following (Paragraph 4(a) of the UDRP Policy):

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

The first element that the Complainant must prove is that the domain name in dispute <huroniaplastic.com> is identical or confusingly similar to the Complainant’s trademark HURONIA PRECISION PLASTICS.

Both the Complainant and the Respondent are in the precision injection molding business and automotive parts manufacturing business. The Respondent also manufactures custom injected molded parts for the medial, electrical, industrial and construction industries. The Complainant and the Respondent are located respectively in the towns of Midland and Penetanguishene in the Southern Georgian Bay area of Ontario, Canada.

The Complainant has been manufacturing, offering for sale and selling automotive parts under the trademark HURONIA PRECISION PLASTICS since at least as early as January 31, 1995. The Complainant registered the domain name <huroniaplastics.com> on December 11, 1997, and the site is presently under construction. The Complainant employs over one hundred employees in precision injection molding of parts for the automotive industry. The Respondent LDI Industries Inc., also manufactures and sells injection moldings in the automotive industry.

The domain name in dispute <huroniaplastic.com> is confusingly similar to the Complainant’s trademarks HURONIA PRECISION PLASTICS INC. and HURONIA PRECISION PLASTICS.

The second element which the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the domain name <huroniaplastic.com>. The Respondent filed two affidavits, one by a consultant who is an advisor to LDI Industries Inc., and its owner Mr. van den Heuvel, and a second by an expert searcher working for Thompson and Thompson Canada. The consultant deposes that in August 1999, the owner’s daughter who had no prior knowledge of any other companies in the field of plastics and injection molding was keen that her father establish a website and become more internet-friendly. At a brainstorming session with the advisor about the same time the owner and the advisor decided that the name of an additional company which the owner proposed to establish would be "Huronia Plastic Products because there was no other company with the exact name of which he was aware." The owner gave his daughter permission to register the domain name <huroniaplasticproducts.com>. She was successful. The domain name company advised the owner’s daughter that the domain name <huroniaprecisionplastics.com> was also available and the domain name was also registered. The owner advised the daughter that this was not the name he wanted. The owner also incorporated a company Huronia Plastics Products Corp. on August 24, 2001. The owner also incorporated a company under the name HPP Corp. on August 24, 2001.

The Complainant initiated a Domain Name Dispute relating to the domain name <huroniaprecisionplastics.com> which is cited as Huronia Precision Plastics Inc. and L.D.I. Industries, Case No AF-001026. The affiant adviser states the owner had no interest in the domain name and the advisor decided to file a minimal response. The Administrative Panel decided that the domain name <huroniaprecisionplastics.com> be transferred to Huronia Precision Plastics Inc.

The affidavit of the advisor to the Respondent does not address the fact that the Complainant and the Respondent are in adjoining towns and that both companies are involved in precision injection molding business and both sell automotive parts to the automotive industry. In January 1999, Huronia Precision Plastics Inc., received the Midland Large Business Award from the Midland Chamber of Commerce (Annex F). On October 25, 1999, the local member of the Legislative Assembly of Ontario in his inaugural speech in the Ontario Legislature reviewed the growth of Huronia Precision Plastics from four employees in 1994, to 100 high-tech employees in 1999.

The advisor to the Respondent does not state that either the advisor or the president of the Respondent were unaware that the Complainant was using the trademarks HURONIA PRECISION PLASTICS or HURONIA PRECISION PLASTICS INC., in association with its wares at the date of incorporation of two corporations under the corporate names Huronia Plastics Products Corp. incorporated August 24, 2001 ((Exhibit "A" to the affidavit of Matyas) and HPP Corporation also incorporated August 24, 2001 (Exhibit "B" to the affidavit of Matyas). The Respondent registered the domain name in dispute <huroniaplastic.com> on September 21, 2001. The first director of the two above noted corporations was Cris van den Heuvel who is the owner of LDI Industries Inc.

The Respondent also filed an affidavit of Carl Gauthier a trademark analyst of five years experience with the firm of Thompson & Thompson, a firm specializing in conducting trademark availability searches. The Canadian Full Dilution Search was conducted and completed between February 5 and February 7, 2002. The purpose of the search was to determine whether the element HURONIA is commonly used as a trademark. The searcher also conducted a search on domain names including the element HURONIA. The searcher also conducted a common law search report for HURONIA which search comprises searches of federal and provincial corporate registers, electronic and printed sources, directories listing information on trade-names and company names throughout Canada, whether they were active or inactive.

The results of the trademark search disclosed seven trademarks registered or applied for which included HURONIA as part of a compound trademark. Of the seven trademarks three pending applications applied for by the Complainant were located. These applications were for the trademark HPP in an ellipse HURONIA; HURONIA PRECISION PLASTICS; HPP and ellipse design. The registrations including HURONIA included HURONIA SENIORS and design, HURONIA SUNDAY, HURONIA BUSINESS TIMES and 1984 PAPAL VISIT HURONIA & Design. None of the registered marks related to wares or services in the field of precision injection molding or car parts. The results of the search do not disclose any trademarks including HURONIA as part of a trademark in relation to precision injection molding or car parts other than applications field by the Complainant.

The Domain Name search disclosed nine hits of domain names for or including HURONIA, all of which appear to be registered in the name of or on behalf of the Complainant or the Respondent.

The Common Law search discloses that the combination of HURONIA and PLASTICS are only associated with the Complainant except for the company incorporated by Cris van den Heuvel under the name Huronia Plastics Products Corp.

The results of the trademark full dilution search lead to the inference that HURONIA in combination is in common use in relation to a broad range of wares and services. The results of the search also lead to the inference that HURONIA in combination with PLASTIC are only associated with the Complainant other than the domain name in dispute and the incorporation by the Respondent of Huronia Plastics Products Corp. (Exhibit A to Matyas) which corporate name has never been used in conducting business (Paragraph 13 of the Response).

The Complainant was carrying on business for many years at its plant in Midland before the Respondent registered the domain name in dispute <huroniaplastic.com>. On the basis of the evidence that the Complainant and Respondent are both involved in injection molding in adjoining towns, I find on the evidence that the owner of the Respondent was aware of the use of the trade-marks HURONIA PRECISION PLASTICS and HURONIA PRECISION PLASTICS INC. by the Complainant in association with injection molding and products of injection molding and the Respondent had no rights or legitimate interest in the domain name in dispute <huroniaplastic.com> registered on September 21, 2002.

The Respondent has not at any time prior to notice of the dispute used the domain name <huroniaplastic.com> or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The evidence discloses that the Respondent carries on business under the name LDI Industries. In paragraph 13 of the Response the Respondent states that there has been no conducting of business under the Corporate Names Huronia Plastics Products Corp and HPP Corp. or offering of services or selling of products under the trade or corporate names. Any use of the domain name <huroniaplastic.com> was not bona fide use of the domain name in connection with the offering of wares or services, as the Respondent did not offer wares or services in association with the domain name.

The Respondent as a business or organization was not commonly known by the domain name <huroniaplastic.com>.

The Respondent did not make a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark or service marks HURONIA PRECISION PLASTIC or HURONIA PRECISION PLASTICS INC.

The Internet Names Worldwide – Domain Name Registration Agreement between the Respondent and the Registrar provides "When you submit a domain name to INWW (the Registrar for <huroniaplastic.com>) you are stating that you have read and understood these terms and conditions and you (agree) to abide by them. (Annex C to the Complaint). Paragraph 9 reads as follows:

(9) No Warranty by Melbourne IT

Registrant agrees that neither a pre-registration application nor a registration of a domain name grants any legal rights of ownership of the relevant domain name, nor does it confer immunity from objection to the pre-registration, registration or use of the domain name.

The advisor for the Respondent deposes that the owner of the Respondent assumed that registration of the domain name in dispute and incorporation in Ontario of Huronia Plastics Products Corp., provided the Respondent with exclusive rights in the domain name or corporate name. The owner is mistaken in law and registration of a domain name does not grant any exclusive legal rights in the words forming part of the domain name. The Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

The third ground that the plaintiff must prove is that the domain name was registered and is being used in bad faith. The domain name was registered on September 21, 2001. The Complainant had a significant business in injection molding, a business which expanded from four employees to one hundred employees in six years and used the trademarks HURONIA PRECISION PLASTICS and HURONIA PRECISION PLASTICS INC. in association with the wares and services of the Complainant. The Complainant and Respondent carried on their respective business in adjoining towns.

The Respondent was served with a Complaint in respect of the domain name <huroniaprecisionplastics.com> as reported in Case No. AF-001026 between the same parties as the parties in this dispute on September 21, 2001. On the same date of September 21, 2001, the Respondent registered the domain name in dispute <huroniaplastic.com>. The fact that these events happened on the same date may be a coincidence.

Having reviewed the evidence I conclude on a balance of probabilities that the Respondent was aware from the Domain Registration Agreement that registration of a domain name does not grant any legal rights of ownership of the relevant domain name. I find that the owner of the Respondent as an experienced businessman knew that the Respondent could not in good faith register a domain name which is confusingly similar to the Complainant’s trademark used in association with injection molding.

The Respondent first registered the domain name <huroniaplasticsproducts.com> (Para 7 of the affidavit of Matyas). On November 28, 2000, the Respondent registered the domain name <huroniaprecisionplastics.com>. Finally, on September 21, 2001, the Complainant registered the domain name in dispute <huroniaplastic.com>. The Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the Complainant from reflecting the mark HURONIA PRECISION PLASTICS in a corresponding domain name.

The Respondent is not known by the domain name and is not making a legitimate or fair use of the domain name. These factors taken together lead to the conclusion that the domain name has been registered and is being used in bad faith. (Nabisco Brands Company v. the Patron Group Inc., WIPO Case No. D2000-0032).

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights; and

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

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

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <huroniaplastic.com> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: April 1, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1473.html

 

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