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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Aliant Inc. and Aliant Telecom Inc. v. Mr. Kenneth Harvey, AliantTelecom.com

Case No. D2002-0370

 

1. The Parties

Complainants are Aliant Inc. ("Aliant") and Aliant Telecom Inc. ("Aliant Telecom"), Canadian companies with a registered office at Charlottetown, Prince Edward Island, Canada. Complainants’ authorized representative is Blake, Cassels & Graydon LLP, of Toronto, Canada.

Kenneth Harvey of Burnt Head, Cupids, Newfoundland, Canada is alleged to be the Respondent in fact with respect to both the domain names.

 

2. The Domain Names and Registrar

The domain names in dispute are <alianttelecom.com> and <aliantmobility.com>.

The Registrar with which the disputed domain names are registered is Tucows, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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").

The Complaint was received by the Center on April 3, 2002, by e-mail and in hard copy on June 4, 2002. The Center acknowledged receipt of the Complaint on April 23, 2002.

On April 23, 2002, a request for Registrar verification was forwarded to the Registrar. On April 23, 2002, the Registrar confirmed receipt of the Complaint by e-mail. The Registrar advised the Center that the domain name <aliantmobility.com> expired on March 21, 2002 (the Registrar later clarified that the domain name would expire 40 days after that date). The Registrar advised the Center that the current registrant of the domain name <alianttelecom.com> was AliantTelecom.com of Rome, Italy. The Registrar further advised that the registrant of the domain name <aliantmobility.com> is AliantMobility.com of Cupids, Newfoundland, Canada.

The current status of the domain name <alianttelecom.com> is "on hold".

On April 24, 2002, the Center forwarded to the Complainant a Notification of Complaint Deficiency, advising that the Complaint did not clearly include a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. On April 27 (by email) and June 4, 2002 (by hard copy), the Complainant forwarded responses to correct the deficiency.

On June 6, 2002, the Center compiled a Formal Requirements Compliance checklist and confirmed that the Complaint complied with the formal requirements of the Rules.

Between May 30, 2002, and June 18, 2002, Kenneth J. Harvey corresponded with the Registrar, Tucows Inc., and the Center. The e-mails related to a number of matters:

(a) Mr. Harvey stated that the domain name <aliantmobility.com> expired and was registered by Aliant Inc., a matter soon to be challenged in the Supreme Court of Newfoundland.

(b) Mr. Harvey alleged that WIPO, Aliant Inc. and Aliant's law firm in this dispute have violated Canadian copyright laws by reproducing letters written by Mr. Harvey and clearly marked as copyrighted material without Mr. Harvey's consent.

(c) Mr. Harvey advised the Center that legal proceedings had been commenced by Aliant Inc., Aliant Telecom Inc. as Plaintiffs and Mr. Harvey as Defendant claiming relief relating to trade-mark infringement, creating domain names containing "Aliant" or "Aliant Telecom", defamation, depreciation of goodwill, and statutory passing off.

Mr. Harvey advised that he would be filing a Defence and Counterclaim.

Mr. Harvey requested that, pursuant to Section 18 of the Rules, the Center suspend or terminate Aliant Inc.'s complaint regarding the domain names <aliantmobility.com> and <alianttelecom.com>. The Center advised Mr. Harvey that the it was unable to suspend or terminate the administrative proceeding, but that the Panel had such a discretion and the Center would provide the Panel with Mr. Harvey's communications so that the Panel could consider the termination or suspension of the proceedings.

On June 6, 2002, the Center forwarded Notification of the Complaint and Commencement of Administrative Proceedings, together with a copy of the Complaint and Amendment to the Complaint to the Respondent by e-mail and courier. The Notification, Complaint, and Amendment to the Complaint (without attachments) were copied to the Complainants and the Registrar by e-mail. The Center advised the Respondent that the formal date of the commencement of the administrative proceeding was June 6, 2002, and that the last day for sending a Response to the Complainant and to the Center was June 26, 2002.

On June 18, 2002, the Center received the Respondent's Response by e-mail. The hard copy of the Response was received by the Center on June 25, 2002.

On June 19, 2002, the Center issued an Acknowledgement of Receipt of Response and notification of deficiency. An Amendment to the Response was received on June 20, 2002.

The Complainant elected to have the dispute decided by a single-member Panel. The Center appointed Ross Carson as the single member Panelist. Mr. Carson duly submitted a Statement of Acceptance and Declaration of Impartiality. On June 28, 2002, the Center forwarded Notification of Appointment of Administrative Panel to the Parties.

Also, on June 28, 2002, the Center e-mailed the Transmission of Case File to the Panelist and forwarded a hard copy by courier. The date scheduled for the Panel’s decision was July 12, 2002. The language of the proceedings is English.

On July 10, 2002, the Panel pursuant to its authority under Rule 12 of the Uniform Domain Name Dispute Resolution Policy requested the Complainant Aliant Inc. to confirm whether the Complainant Aliant Inc. was the current registrant of the domain name <aliantmobility.com>, if the Complainant failed to respond to the request the Complainant was to be deemed to be the owner. Not having received a response on July 11, 2002, the Panel deemed the Complainant Aliant Inc. to be the registrant of the domain name <aliantmobility.com>. The Panel forwarded the decision in the dispute to the Center on July 11, 2002, for receipt at the Center on July 12, 2002, the date on which the decision was due.

 

4. Factual Background

The Trademarks

Complainant advises that Aliant Inc. is the sole shareholder of Aliant Telecom. Aliant's wholly owned subsidiary, Aliant Telecom, operates under the names "Aliant Telecom" and "Aliant Telecom Mobility". Aliant Telecom uses the ALIANT trademark under license from Aliant Inc. which controls the quality of the services offered by Aliant Telecom.

Aliant owns and has registered or applied for registration in Canada, the United States and the United Kingdom of the trademark ALIANT and related trademarks, in association with services including telecommunications and wireless (mobility) services.

(i) Canada

Trademark: ALIANT

Registration Number: 558592

Status: REGISTERED, Feb. 27, 2002

Services Include: Wire and wireless multimedia and interactive telecommunications services, namely paging services, telephone services, cellular telephone services.

(ii) United States

Trademark: ALIANT

Registration Number: 2201718

Status: REGISTERED, November 3, 1998

Services Include: Telecommunications services, namely the electronic transmission of voice, facsimile, data, video and information, wire and wireless telephone services.

(iii) United Kingdom

Trademark: ALIANT

Registration Number: 2227621

Status: REGISTERED, March 30, 2000

Services: Telecommunications services, wireless communications services.

In addition to the ALIANT trademarks outlined above, Aliant has applied for several other trademarks in Canada and the United States that consist of ALIANT in combination with other word or design elements for use in association with telecommunications services. These are outlined as follows:

Canada

TRADEMARK	SER.NO.	DATE FILED	STATUS
1. ALIANT & A Design	TMA555436	August 6, 1999	Registered
2. ALIANT CELLULAR	0877598	May 7, 1998	Allowed
3. ALIANT COMMUNICATIONS	0877597	May 7, 1998	Allowed
4. ALIANT Design	1024875	August 6, 1999	Allowed
5. ALIANT LONG DISTANCE	0877600	May 7, 1998	Allowed
6. ALIANT PREMIUM	1068425	July 26, 2000	Searched
7. L’AVANTAGE ALIANT	1075406	September 19, 2000	Formalized

United States

TRADEMARK	REG'N NO.	REGISTRATION DATE	STATUS
1. ALIANT	2201718	November 3, 1998	Registered
2. ALIANT	2234601	March 23, 1999	Registered
3. ALIANT	2144363	March 17, 1998	Registered
4. ALIANT	2127251	January 6, 1998	Registered
5. ALIANT	2160154	May 26, 1998	Registered
6. ALIANT CELLULAR	2058431	April 29, 1997	Registered
7. ALIANT CELLULAR	2209428	December 8, 1998	Registered
8. ALIANT CELLULAR	2130406	January 20, 1998	Registered
9. ALIANT COMMUNICATIONS	2201728	November 3, 1998	Registered
10. ALIANT COMMUNICATIONS	2201756	November 3, 1998	Registered
11. ALIANT COMMUNICATIONS	2146089	March 24, 1998	Registered
12. ALIANT COMMUNICATIONS	2127252	January 6, 1998	Registered
13. ALIANT COMMUNICATIONS	2130407	January 20, 1998	Registered
14. ALIANT TOGO	2342454	April 18, 2000	Registered
15. ALIANT TOGO	2269033	August 10, 1999	Registered

 

5. Parties’ Contentions

A. Complainant

The following is taken from the Complaint:

(i) The Complainants submit that the domain names <aliantmobility.com> and <alianttelecom.com> are confusingly similar to the Complainant’s registered trade-mark for ALIANT alone or in combination. The word ALIANT is a created word. The distinctive portion of the domain names <aliantmobility.com> and <alianttelecom.com> is the prefix ALIANT.

(ii) The Complainants submitted evidence that the Respondent had no right or legitimate interest in respect of the domain names in dispute. The Complainants annexed to the Complaint a letter from Kenneth J. Harvey to Roch Dube the President of Aliant Telecom. The bottom of the letter includes a biography stating that Kenneth J. Harvey is the author of thirteen books and his writings have been nominated for numerous prizes and awards. Mr. Harvey is not involved in telecommunications. Mr. Harvey advised in a letter of December 19, 2001, that he is the owner of <alianttelecom.com>. In an e-mail dated January 8, 2002, Mr. Harvey advised Aliant Telecom that Mr. Harvey was also the owner of the domain name <aliantmobility.com>. In an e-mail dated January 30, 2002, Mr. Harvey advised Aliant Telecom that he had booked space in the Evening Telegram to offer his domain names <alianttelecom.com> and other aliant dot.coms including <newtelemobility.com>, <newfoundlandtelephone.com>, <mttmobility.com> and others for sale on February 9, 2002.

Mr. Harvey advised that he was sending the e-mail to Aliant Telecom in case Aliant Telecom wished to put in an early bid.

(iii) The domain names have been registered and are being used in bad faith.

a. The trademarks for ALIANT or including ALIANT as a prefix were known and used in Canada before the registration of the domain names in dispute by Kenneth Harvey.

b. Kenneth Harvey not only registered a series of domain names including ALIANT as a prefix but also registered a series of domain names confusingly similar to trade-marks registered by telecommunications companies now forming part of Aliant Telecom Inc.

c. To the best of Complainant's knowledge "Aliant Telecom.com" is not a legal entity but is merely a pseudonym used to register the domain name <alianttelecom.com>. The domain name <alianttelecom.com> was transferred from Ms. Power-Harvey to Kazen Gupta in Malaysia to Cardinal Guido McTavish in Rome. Yet we see in letters and e-mails by Kenneth Harvey to the Complainant, the Center and others reference is made to Mr. Harvey's domain names <aliantmobility.com> and <alianttelecom.com>.

d. Mr. Harvey wrote to Aliant Telecom advising of the proposed sale of the domain names including Aliant Telecom registered trademarks and informed Aliant Telecom that he was informing them of the proposed sale in case Aliant Telecom wished to put in an early bid.

B. Respondent

The Respondent, Kenneth Harvey, filed a Response dated June 18, 2002.

The Respondent submits that the domain names are not registered in the name of Kenneth J. Harvey.

<aliantmobility.com>

The Respondent Kenneth J. Harvey states that the Complainant – Aliant Inc. – is the current owner of <aliantmobility.com> as the domain name had expired and was registered by Aliant Inc. on May 2, 2002 (ie, after the filing of the Complaint).

The Respondent submits that the Complainant is continuing with the dispute over <aliantmobility.com> for improper purposes.

<alianttelecom.com>

The Respondent Kenneth J. Harvey submits that the Registrant of the domain name <alianttelecom.com> at the date of the Complainant according to the WHOIS database is Cardinal Guido McTavish and there is no evidence of Cardinal Guido McTavish using the domain name <alianttelecom.com> in bad faith.

The Respondent strongly urges the WIPO Panel to suspend or terminate the Complaint which is allegedly being used to harass the Respondent.

The Remedy Requested by the Respondent is that the Administrative Panel issue a decision to suspend or terminate the Complaint. The request is based on the allegation that the Complaint is being presented for improper purposes. The request is also based on the fact that Aliant Inc. and Aliant Telecom Inc. have commenced proceedings in the Supreme Court of Newfoundland and Labrador, Trial Division against Kenneth Harvey. The Respondent submits that the Complainants seek to claim the domain names <alianttelecom.com> and <aliantmlobility.com> in the Trial Division of the Supreme Court. A review of the Relief sought by the Complainants (the Plaintiffs in the court proceedings) in paragraph 32 of the Statement of Claim does not disclose a request for an order of the Court transferring the domain names in dispute in this administrative proceeding.

 

6. Discussion and Findings

Two matters which must be addressed are:

(i) Should the Panel suspend or terminate the proceeding in view of the action by Aliant Inc. and Aliant Telecom Inc. v. Kenneth Harvey in the Supreme Court of Newfoundland and Labrador?

(ii) Should the Panel entertain a dispute about the domain name <aliantmobility.com> which is currently registered in the name of Aliant Inc.?

The Respondent Kenneth J. Harvey has requested that the Panel suspend or terminate the administrative proceeding pursuant to the discretion vested in the Panel by Rule 18 of the Rules. The Panel has reviewed the relief requested by the Plaintiffs in the action before the Supreme Court of Newfoundland and Labrador and finds that the Plaintiffs, Aliant Inc. and Aliant Telecom Inc., have not requested the Court to order the Registrar to transfer the domain names in dispute. Secondly, if the Respondent were to commence a new action in a court of competent jurisdiction within ten business days after the Panel's decision, the decision of the Panel will not be implemented until the matter has been disposed of before the Court. (Policy, Paragraph 4(k))

On the issue as to whether the Panel should entertain the dispute relating to the domain name <aliantmobility.com> the Panel has decided that there is no dispute to be resolved under the Policy between the Complainants and Respondent. According to the WHOIS database the Registration of the domain name <aliantmobility.com> in the name of AliantMobility.com expired on March 21, 2002. The Respondent states that according to a recent WHOIS database the owner of the domain name <aliantmobility.com> is the Complainant, Aliant Inc.

As the current registrant of the domain name <aliantmobility.com> is the Complainant Aliant Inc. there is no dispute to be resolved under the Policy with the current Complainants and Respondent.

Domain Name <alianttelecom.com>

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

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) that the Respondent has no right or legitimate interest in respect of the domain name; and

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

The first element which the Complainants must prove is that the domain name is identical or confusingly similar to the Complainants’ trademark or service mark.

The Complainant Aliant Inc. is the owner of Canadian, United States and United Kingdom registrations for the trademark ALIANT registered in relation to telecommunication services. In addition the Complainant Aliant Inc. is the owner of one Canadian Trademark Registration and four allowed trademark applications in which the word "ALIANT" is the distinctive portion of the trademark. Aliant Inc. is the sole shareholder of Aliant Telecom. Aliant Telecom uses the trademarks under license from Aliant Inc. The word ALIANT is an inherently distinctive trademark which has been widely used in eastern Canada.

The domain name <alianttelecom.com> has a prefix, the word ALIANT. The suffix TELECOM is an abbreviation for the telecommunication services for which the Complainant's trademarks are registered or applied for. The domain name <alianttelecom.com> is confusingly similar to the Complainant's trademarks.

The second element which the Complainant is required to prove is that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

The Respondent in a biography which is part of an e-mail dated December 18, 2001, stated that Kenneth J. Harvey is the author of thirteen books and has been nominated for international and national awards. The Respondent is not involved in the telecommunications business. There is no evidence filed by the Respondent that before any notice of the dispute that there was use or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Respondent did not file any evidence that the Respondent was commonly known by the domain name. The Respondent did not file any evidence that the Respondent is making legitimate non-commercial or fair use of the domain name.

The Panel finds that the Respondent has no right or legitimate interest in respect of the domain name in dispute.

The third element which the Complainant is required to prove is that the disputed domain name has been registered and is being used in bad faith.

Four Respondents are named in the Complaint. The first named Respondent is Aliant Telecom.com, of Rome, Italy. The WHOIS search result of April 1, 2002 (Annex A to the Complaint), shows AliantTelecom.com as the Registrant of the domain name <alianttelecom.com>. The second named Respondent is Cardinal Guido McTavish of Rome, Italy. Cardinal Guido McTavish is the Administrative Contact and Billing Contact shown on the WHOIS search results of April 1, 2002, relating to the domain name <alianttelecom.com>. The third Respondent named in the Complaint is AliantMobility.com, Burnt Head, Cupids, Newfoundland, Canada, the Registrant of the domain name <aliantmobility.com> (Annex B to the Complaint). The fourth Respondent named in the Complaint is Mr. Kenneth Harvey, Burnt Head, Cupids, Newfoundland, Canada.

A WHOIS search of the domain name <alianttelecom.com> dated March 26, 2002, (Annex A to the Complaint) shows the Registrant as Alianttelecom.com, Kuala Lumpur, Kuala Lumpur, Malaysia. The Administrative Contact, Technical Contact and Billing Contact is shown as Kazin Gupta of the same address in Kuala Lumpur. A WHOIS search conducted February 21, 2002, shows the Registrant of <alianttelecom.com > as AliantTelecom.com, Burnt Head Loop, Burnt Head, Newfoundland. The Administrative Contact, Technical Contact and Billing Contact is a Ms. Power-Harvey at the same address as the registrant.

The Respondent Kenneth J. Harvey who filed and certified the Response submits in the Response that at the exact time of submission of the Complaint the WHOIS database shows Cardinal Guido McTavish as the Registrant and there is no evidence of Cardinal Guido McTavish using the domain name <alianttelecom.com> in bad faith. In fact the WHOIS database of April 1, 2002, shows AliantTelecom.com as the Registrant and Cardinal Guido McTavish as the Administrative Contact, Technical Contact and Billing Contact.

All the e-mails in the period May 30, 2002, to June 15, 2002, between the Respondent and Complainant and the Center were from or to Kenneth J. Harvey. Further, in e-mails from Kenneth J. Harvey to Aliant Telecom between December 19, 2001, and January 30, 2002, Kenneth J. Harvey states that he is the owner of the domain names <alianttelecom.com>, <aliantmobility.com> and other aliant dot coms (including <newtelmobility.com>, <newfoundlandtelephone.com>, <mttmobility.com> etc.

The Complainant states that there is no company by the name AliantTelecom.com. I find on a balance of probabilities that Kenneth J. Harvey under the name AliantTelecom.com is the actual or beneficial owner of the domain name <alianttelecom.com>.

The series of transfers of the domain name by the Respondent Kenneth J. Harvey and the provision of misleading Administrative Contacts, Technical Contacts and Billing Contacts is evidence of use in bad faith. (See World Wrestling Federation Entertainment Inc. v Mathew Bessette, WIPO Case No. D2000-0256).

Kenneth J. Harvey e-mailed Aliant Telecom advising that Kenneth J. Harvey is the owner of the domain names <alianttelecom.com>, <aliantmobility.com>, other aliant dot.coms including <newtelmobility.com>, <newfoundlandtelephone.com>, <mttmobility,.com> etc. By e-mail of January 30, 2002, Kenneth J. Harvey advised Aliant Telecom that he had booked ad space in The Evening Telegram to sell the above noted domain names. Kenneth J. Harvey in the e-mail informed Aliant Telecom that he thought Aliant Telecom should know of the proposed advertisement in case Aliant Telecom wished to put in an earlier bid.

The Panel finds that the Respondent Kenneth J. Harvey registered the domain name primarily for the purpose of selling the domain name <alianttelecom.com> to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

The Panel finds that the Respondent has engaged in a pattern of conduct of registering a series of domain names including the prefix ALIANT and other domain names including the names of predecessors or subsidiaries of the Complaints in order to prevent the Complainant trademark owner and its licensee from reflecting the mark in the corresponding domain names.

 

7. Summary of Findings

a) The domain name in dispute is confusingly similar to the Complainant’s trademark ALIANT and Complainant's trademarks including ALIANT.

b) The Respondent has no right or legitimate interest in respect of the disputed domain name.

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

 

8. Decision

In the Complaint, the Complainant requested that in accordance with Paragraph 4(i) of the Policy, the Panel issue a decision that the disputed domain name <alianttelecom.com> be transferred to Complainant. The Complainant having proved each of the three elements set out in Paragraph 4(a)(i), (ii) and (iii) of the Policy is entitled to the remedy requested. The Panel requires that the domain name <alianttelecom.com> be transferred to Aliant Inc.

 

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Ross Carson
Sole Panelist

Dated: July 11, 2002