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and Mediation Center
ADMINISTRATIVE PANEL DECISION
X-Copper Legal Services Inc. v. Majid Hashemi
Case No. D2007-0251
1. The Parties
The Complainant is X-Copper Legal Services Inc., Ontario, Canada, represented by Lang Michener LLP, Toronto, Ontario, Canada.
The Respondent is Majid Hashemi, Mississauga, Ontario, Canada.
2. The Domain Names and Registrar
The disputed domain names are <xcopper.net> and <xcopper.org>, and are registered with NameScout Corp. Ottawa, Ontario, Canada.
3. Procedural History
On February 20, 2007, a complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”). On February 23, 2007, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain names at issue. On February 26, 2007, NameScout Corp. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact.
On March 1, 2007, the Center verified that the complaint satisfied the formal requirements of 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent that the administrative proceedings was formally commenced on March 1, 2007, and that in accordance with the Rules, paragraph 5(a), the due date for a response was March 21, 2007.
On March 23, 2007, the Center notified the Respondent of its default to submit a response by the aforementioned due date.
On March 30, 2007, the Center appointed Hugues G. Richard as the sole panelist in this matter. 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
As the Respondent did not file a response, facts contended by the Complainant or asserted in documents filed by it will be considered proven, unless they are contradictory or are contradictory with judicial knowledge the Panel can properly resort to or with information the Panel can take judicial notice of.
The Panel finds the following facts, contained in contentions or documents filed by the Complainant, to be sufficient for disposing of the dispute:
1. Contention by the Complainant that it provides paralegal services in traffic courts and specializes in helping drivers defend their record against traffic tickets, speeding tickets and drunk driving offenses in North America;
2. Contention by the Complainant that it has continuously used the trade-mark X-COPPER in association with its services since at least as early as 1998;
3. Copy of Canadian trade-mark registration no TMA644951 for the trade-mark X-COPPER. The Complainant is there listed as registrant and the registration bears an issuance date of July 26, 2005, in connection with the offering of paralegal services since at least as early as January 1998;
4. Copy of WHOIS records indicating that the Respondent registered the impugned domain names on December 2, 2005;
5. Screenshot dated September 14, 2006, of an internet browser pointed to “www.xcopper.org”. The web page displayed indicates “Xcopper.org Traffic ticket information for the Toronto, Ontario area. Information for all traffic offences; speeding; seatbelt, no insurance, no license, careless driving, fail to signal, and all other offenses under the Ontario Highway Traffic Act. Coming soon. xcopper.org”
6. Copy of a letter to the Respondent, dated September 14, 2006, in which the Complainant declares its displeasure with respect to the aforesaid website;
7. Contention by the Complainant that the aforesaid letter was sent by e-mail and facsimile to the particulars specified in the WHOIS records related to the impugned domain names (same particulars for the two domain names);
8. The Respondent is established in Canada;
9. Contention by the Complainant that in a conversation between its solicitors and the Respondent, on September 21, 2006, the Respondent “advised that he would not transfer the disputed domain names to the Complainant without payment”;
10. The Complainant seeks transfer of the impugned domain names.
5. Parties’ Contentions
To dispose of the dispute, the Panel finds sufficient to pronounce itself on the following pleadings:
1. The Complainant contends that:
- the impugned domain names are confusingly similar to its trade-mark in that “the respondent’s domain names differ in appearance from the complainant’s trade-mark[s] only by omission of a hyphen between “X” and “Copper” and the addition of gTLD extensions.”
- “It is well established that both (1) the addition of a hyphen between two words; and (2) the addition of a gTLD extension are differences without legal significance in comparing domain names to trade-marks. […] See General Electric Company v. John Bakhit,
WIPO Case No. D2000-0386, Tata Tea Ltd v. Gem Lifts Ltd,
WIPO Case No. D2000-1823, Club Mediterranйe v. Yosi Hasidim,
WIPO Case No. D2000-1350. […]”;
2. The Complainant asserts the Respondent’s lack of rights or legitimate interests in the impugned domain names (requirement set forth in paragraph 4(a)(ii) of the policy) by putting forward various arguments or assertions inspired by paragraphs 4(c)(i), (ii) and (iii) of the Policy, in an effort to establish the existence of circumstances opposite to the ones there described;
3. The Complainant asserts the impugned domain names have been registered and used in bad faith by the Respondent. Bad faith being a fact for which direct proofs are usually beyond reach, the Complainant invites the Panel to share its views on inferences drawn from various facts.
The Respondent failed to submit a response.
6. Discussion and Findings
A. Identical or Confusingly Similar
Existence of a trademark in which the Complainant has rights
It is well established that short of exceptional circumstances, the owner of a registered trademark satisfies the threshold requirement of having trademark rights.
- Uniroyal Engineered Products, Inc. v. Nauga Network Services,
WIPO Case No. D2000-0503;
- Thaigem Global Marketing Limited v. Sanchai Aree,
WIPO Case No. D2002-0358;
- Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano,
WIPO Case No. D2003-0661.
Accordingly, the Complainant has succeeded in establishing rights in the X-COPPER trademark.
Existence of confusing similarity to the trademark
The Panel read the relevant sections of the decisions submitted by the Complainant. They indeed support the Complainant’s contention about the existence of precedents to the effect that hyphens and gTLD extension are in general differences without legal significance in comparing domain names to trademarks. On its own, the Panel would have reached the same conclusion in this case.
If those differences are set aside, the impugned domain names become identical to the X-Copper trade-mark. The Panel further notes previous findings that:
“[…] in the context of the Policy, it is appropriate to assess whether the Domain Names are confusingly similar to the Complainant’s mark on the basis of a comparison between the names and mark, without considering whether the Domain Names are or could be used in a way which avoids or might avoid confusion: see
WIPO Cases Nos. D2000-0068 <myinfospace.com>;
D2001-1367 <banco.com>.” Deutsche Telekom AG v. Oded Zucker,
WIPO Case No. D2004-0749.
Hence, the Panel sides with the Complainant, and concludes that the domain names <xcopper.net> and <xcopper.org> are identical or confusingly similar to the trademark X-COPPER, in which the Complainant has rights.
B. Rights or Legitimate Interests
With respect to the <xcopper.org> domain name, the Panel finds that sufficient proof has been filed to demonstrate the existence of a situation contrary to the one depicted in paragraph 4(c)(i) of the Policy, and shall restrict itself to the existence of this situation to conclude in the absence of rights or legitimate interest of the Respondent in this domain name. This paragraph provides that:
“c. […] Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) :
(i) before any notice to you of the dispute, your use of, 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”
As on September 14, 2006, Complainant complained in a letter to the Respondent, of the latter’s establishment of website representing that services overlapping the Complainant’s were coming soon, under a domain name registered on December 2, 2005, entertaining confusing similarity to a trademark for which Complainant obtained registration on July 26, 2005, in association with a superset of the up-coming services in a territory covered by the registered trademark. The Panel concludes that the use or demonstrated preparation to use the <xcopper.org> domain name cannot be said to be in connection with a bona fide offering. In the Panel’s view, the Respondent could have, at the very least, investigated the status of the name in the country where it is established and intends to offer services. Considering that hyphens are irrelevant for the purpose of assessing confusion, the above extends to hyphen-split variations of the contemplated name.
The Complainant made no contention that the <xcopper.net> resolved to the url for which it provide a proof of use in the form of a web-browser screenshot, but considering that <xcopper.net> was registered by the Respondent on the same day as <xcopper.org> and that they are identical for the purposes of determining confusion with a trademark for the reasons set forth in section 6A of the decision, the circumstances surrounding the registration and use of the <xcopper.org> fall upon the <xcopper.net> domain name and the Panel concludes that the Respondent has no rights or legitimate interest in the <xcopper.net> domain name. In the absence of convincing reasons, the Respondent cannot make the clearest derogatory use of one domain name, and expect that the same name registered at the same time under another TLD will be afforded a different treatment. As the use of the <xcopper.net> does not seem to go beyond being bundled with <xcopper.org> in sale offer, the Respondent provides further reasons not to make a separate case of the former.
Hence, the Panel finds for the Complainant on the second element of the Policy.
C. Registration in bad faith and bad faith use
The reasons set forth in Section B of the decision in support of an absence of a bona fide offering in connection with the use or preparation to use the <xcopper.org> domain name are entirely applicable also to the issue of bad faith registration and use of the <xcopper.org> domain name.
The <xcopper.net> domain name having been registered after the registered trademark with which it entertains confusingly similarity, by a Respondent established in the territory in which the said trademark is protected, the Panel is of the opinion that the record indicates that the Respondent in all likelihood had notice of the Complainant’s trademark and that the domain name has been registered in bad faith. As discussed in section B of the decision, the Panel is of the opinion that the Respondent failed to verify the status of the xcopper name.
The undisputed evidence indicates that the <xcopper.net> domain name has at some stage been used to tout an upcoming offer of information related to the area of business of the Complainant under a domain name virtually identical to the Complainant’s mark. Such use appears calculated to trade off the reputation of the Complainant’s mark. Although neither of the disputed domain names currently appear to be in active use – indeed, they have the appearance of being held passively – the Panel finds it difficult in the circumstances to conceive of a use of the domain name that would not conflict with the Complainant’s rights in the X-COPPER mark. The Panel further notes that it does not consider the registration of the two disputed domain names on the same date as likely to have been a coincidence.
As for the use of <xcopper.net>, the Panel is of the opinion, for the reasons set forth above, that it cannot be separated from that of <xcopper.org>, and concludes it has also been registered and used in bad faith.
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 <xcopper.org> and <xcopper.net> be transferred to the Complainant.
Hugues G. Richard
Dated: April 14, 2007