Quebec.com UDRP

8/12/2019 Quebec.com UDRP

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ARBITRATIONANDMEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ministre des Relations internationales, de la Francophonie et du Commerceextrieur (Minister of International Relations, La Francophonie and ExternalTrade), acting in this proceeding for and on ehalf of the !o"ernment of#uec "$ %n&thing$com, Ltd$

Case 'o$ *+-+.+

1. The Parties

Complainant is Ministre des Relations internationales, de la Francophonie et du Commerce extrieur(Minister of International Relations, La Francophonie and External Trade), acting in this proceeding for andon ehalf of the !o"ernment of #uec, #uec, Canada, represented internall&, Canada$

Respondent is %n&thing$com, Ltd$, !eorge To/n, !rand Ca&man, 0"erseas Territor& of the 1nited 2ingdom

of !reat 3ritain and 'orthern Ireland, represented & Es4uire$com, 1nited 5tates of %merica (6157)$

2. The Domain Name and Registrar

The disputed domain name 84ueec$com9 (the 6isputed omain 'ame7) is registered /ith Tuco/s Inc$(the 6Registrar7)$

. Pro!ed"ra# $istor%

The Complaint /as filed /ith the :I;0 %ritration and Mediation Center (the 6Center7) on ecemer +


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da& extension of the deadline to file Response$ Complainant consented to such extension$ %ccordingl&, thene/ due date for Response /as ?anuar& A, *+>$ The Response /as filed /ith the Center on ?anuar& A,*+>$ 0n Feruar& >, *+>, Complainant filed an unsolicited 5upplemental Filing$ The CenteracBno/ledged receipt of the same on Feruar& @, *+>$

The Center appointed %lfred Meioom, the Don 'eil 3ro/n #$C$ and ?$ 'elson Landr& as panelists in thismatter on Feruar& *, *+>$ The ;anel finds that it /as properl& constituted$ Each memer of the ;anel

has sumitted the 5tatement of %cceptance and eclaration of Impartialit& and Independence, as re4uired& the Center to ensure compliance /ith the Rules, paragraph =$

&. 'a!t"a# Ba!(gro"nd

Complainant is the !o"ernment of #ueec, represented & a Minister$

Complainant is the registered o/ner of the follo/ing trademarBs

+$ TrademarB application numer *A**.*+ for #1E3EC and esign, registered in the Canadian Intellectual

;ropert& 0ffice and filed on 0ctoer A, +A=@

$ TrademarB application numer *A**.*> for #1E3EC and esign, registered in the Canadian Intellectual;ropert& 0ffice and filed on Ma& , +A. and

$ TrademarB application numer *A***@= for #1E3EC and esign, registered in the Canadian Intellectual;ropert& 0ffice and filed on Feruar& A, +A


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(a) It registered and used the isputed omain 'ame /ith the oecti"e of taBing ad"antage of Internet usersattempting to "isit ComplainantHs /esite() Respondent intended to enefit from hits generated & ComplainantHs notoriet& and official marBs(c) Respondent intended to maBe illicit use of ComplainantHs trademarBs & creating confusion for Internetusers, tarnishing ComplainantHs official marBs and notoriet&, pre"enting Complainant from registering itsofficial marBs in a domain name and creating confusion /ith ComplainantHs marBs regarding the source,sponsor, affiliation and appro"al of the products and ser"ices offered on the /esite 6///$4ueec$com7$

B. Res+ondent

Respondent made the follo/ing contentions

+$ Complainant does not ha"e trademarB protection for #1E3EC ecause it is a descripti"e term not suectto trademarB protection as a stand-alone /ord marB$

$ The isputed omain 'ame solel& incorporates the geographicall& descripti"e term 6#ueec7 /hich isthe common name of a Canadian pro"ince$

$ The !o"ernment of #ueec has also disclaimed an& right to the /ord 6#ueec7 in connection /ith thefollo/ing 1nited 5tates trademarBs

30'?01R #1E3EC (Registration 'o$ ,A,@>A) and#1E3EC 0RI!I'%L (Registration 'os$ >>.>. and >>.>=)$

>$ Respondent registered the isputed omain 'ame in good faith on ?ul& +*, +AA., /hen it /as a"ailale forregistration$ Respondent selected the isputed omain solel& ecause it is a common geographic /ordand it elie"ed that an&one /as entitled to register a geographic /ord domain name liBe 6#ueec$7

@$ The Complaint should e arred & the doctrine of laches ecause Complainant /aited +@ &ears toinitiate this proceeding$


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/hether the panel considers the content of the sumission essential to reaching a fair decision on the facts,and /hether the sumission could ha"e een made earlier and, if so, /h& it /as not (see, inter alia, NBTrademars, !nc. ". #omain $ri"acy %T# and &badaba '.&., :I;0 Case 'o$ **.-+A.>)$

In this case, ComplainantHs supplemental sumission consists of ComplaintHs 6choice of panelists J Repl& tothe response7 document /ith additional exhiits, "iG$ official marBs pulished under section A (+)(n)(Aiii)Canadian TrademarB %ct for 5KRET 1 #13EC ;0LICE and esign filed in +A.>, LE !R%'

ICTI0''%IRE TERMI'0L0!I#1E and esign7 filed in +AA=, 30'?01R #13EC filed in +AAA,30'?01R#1E3EC$C0M filed in +AAA, 30'?01R#1E3EC$C% filed in +AAA, and t/o marBs #13EC0R!I'%L and esign filed in *+$ The 5upplemental 5umission argued that Complainant actuall& holdstrademarB rights for the /ord 6#ueec7 standing alone, and has onl& disclaimed its rights to the /ord6#ueec7 in the 15 trademarBs cited & Respondent, ut not for the same marBs in the Canadian trademarBregister$ The 5upplemental 5umission further denies this eing a case of domain name hiacBing$

%lthough Complainant did not properl& explain /h& it could not ha"e filed the 5upplemental 5umission aspart of the Complaint, the ;anel understands that Complainant /ishes to alert the ;anel of a differentsituation /ith respect to the official marBs Complainant relies on in Canada as compared to the 15$ %s the;anel finds it necessar& to address this issue, the ;anel admits ComplainantHs 5upplemental 5umission

into the proceeding$

!i"en the outcome of the ecision, and since the ;arties /ill not e preudiced, and procedural efficienc& /ille etter ser"ed, the ;anel has decided not to pro"ide Respondent /ith an opportunit& to repl& toComplainantHs 5upplemental 5umission in this case$

B. Ana#%sis o the Com+#aint

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated inparagraph >(a) of the ;olic& ha"e een satisfied

(i) the isputed omain 'ame is identical or confusingl& similar to a trademarB or ser"ice marB in /hich

Complainant has rights and(ii) Respondent has no rights or legitimate interests in the isputed omain 'ame and(iii) the isputed omain 'ame has een registered and is eing used in ad faith$

C. Identi!a# or Con"sing#% Simi#ar

Complainant has adduced e"idence /hich the ;anel accepts and /hich sho/s Complainant is the registeredo/ner of the trademarBs descried ao"e, the& eing the trademarBs that Complainant relies on for thepurposes of paragraph >(a)(i) of the ;olic&$

In response, Respondent sumitted that this first element has not een satisfied ecause Complainant has

made an admission that it has no trademarB rights to the /ord 6#ueec7$ The reason /h& this is said to eso is that Complainant applied for a trademarB to e issued & the 1nited 5tates ;atent and TrademarB0ffice (615;T07) for each of 30'?01R #1E3EC, 30'?01R #1E3EC$C0M and #1E3EC 0RI!I'%Land in the course of that application had gi"en a disclaimer acBno/ledging that it made no claim to theexclusi"e right to use 6#ueec7 and 6#ueec$com7 respecti"el&, apart from the marBs for /hich it /asappl&ing$ Respondent adduced e"idence relating to the application to the 15;T0 and de"oted aconsiderale part of its sumissions to estalishing the general impression that Complainant had disclaimedits rights to the /ord 6#ueec7 alone$

Dad the trademarB on /hich Complainant relied een the 15 trademarBs 30'?01R #1E3EC, 30'?01R#1E3EC$C0M or #1E3EC 0RI!I'%L, RespondentHs argument /ould clearl& ha"e had some sustance$Do/e"er, ComplainantHs case is ased not on those trademarBs, ut on the Canadian trademarBs set out

earlier in this ecision$ Those trademarBs are clearl& "alid, do not contain an& disclaimer and estalishComplainantHs trademarB rights$


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The ;anel is also satisfied that the trademarB registrations & Complainant in Canada corresponding to the30'?01R #1E3EC and #1E3EC 0RI!I'%L trademarBs registered in the 1nited 5tates of %merica /ith adisclaimer for the /ord 6#ueec7 as contained in ComplainantHs supplemental sumission /ere pulished/ithout an& disclaimer for the /ord 6#ueec7$ The ;anel has also "erified the presence of other trademarBpulications for Complainant and has not located an& /ith a disclaimer$

%ccordingl&, the ;anel does not accept RespondentHs sumission that Complainant has no trademarB rights

to the /ord 6#ueec7$

The next 4uestion that arises is /hether the isputed omain 'ame is confusingl& similar to the CanadiantrademarBs$ The trademarBs are in each case #1E3EC and esign$ The 4uestion has often een asBedho/ the comparison is to e made in the case of a trademarB that consists partl& of a design$ In the presentcase, the dominant part of the trademarBs is the /ord 6#ueec7 and the 4uestion thus ecomes one of/hether Internet users /ould assume that the isputed omain 'ame /as in"oBing the pro"ince of or thecit& of #ueec$ The ;anelHs "ie/ is that most Internet users /ould proal& assume that the isputedomain 'ame relates to matters pertaining to #ueec in general rather than the more limited acti"ities of thego"ernment of the ;ro"ince of #ueec co"ered & its trademarB$ Do/e"er, as one of the rules of practice isthat in maBing the comparison onl& the text of the domain name and the trademarB ma& e considered, it is

possile that some oser"ers, efore seeing RespondentHs /esite, ma& /onder if the isputed omain'ame itself relates to the pro"incial go"ernment and the& ma& to that extent e confused$ %s it is alsosometimes said that this first element is a lo/ threshold, the ;anel is prepared to find that Complainant hasestalished this element to enale the matter to proceed to a deeper examination of the issues$

Complainant has therefore made out the first of the three elements that it must estalish$

D. Rights or Legitimate Interests

It is no/ generall& accepted that a complainant must first maBe aprima faciecase that the respondent hasno rights or legitimate interests in the domain name and that if aprima faciecase is made out, the urden ofproduction then mo"es to the respondent to sho/ rights or legitimate interests in the domain name$

5ome guidance in undertaBing that process is gi"en in paragraph >(c) of the ;olic& /hich descries "arious/a&s & /hich a respondent ma& sho/ that it has rights or legitimate interests in the domain name, namel&

6%n& of the follo/ing circumstances, in particular ut /ithout limitation, if found & the panel to e pro"edased on its e"aluation of all e"idence presented, shall demonstrate &our rights or legitimate interests to thedomain name for purposes of paragraph >(a)(ii)

(i) efore an& notice to &ou of the dispute, &our use of, or demonstrale preparations to use, the domainname or a name corresponding to the domain name in connection /ith a bona fide offering of goods orser"ices or

(ii) &ou (as an indi"idual, usiness, or other organiGation) ha"e een commonl& Bno/n & the domain name,e"en if &ou ha"e ac4uired no trademarB or ser"ice marB rights or(iii) &ou are maBing legitimate noncommercial or fair use of the domain name, /ithout intent for commercialgain to misleadingl& di"ert consumers or to tarnish the trademarB or ser"ice marB at issue$7

ComplainantHs case is that there is no right or legitimate interest as Complainant has ne"er authoriGedRespondent to use its official marBs, Respondent has ne"er otained a registered trademarB itself for#1E3EC, Respondent is not Bno/n as 6#ueec7 or & the isputed omain 'ame and, finall&, that 6theRespondent registered the domain name ()uebec.com* +ith the intention of di"erting, for profit,

eb users attempting to "isit the +ebsite of the -o"ernment of uebec, by creating confusionregarding and tarnishing the image of the Complainant/s official mars. The Respondent has

made illicit and unfair use of the domain name ()uebec.com*.
http://quebec.com/http://quebec.com/http://quebec.com/http://quebec.com/


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page @> (6a geographicall& descripti"e name is toe treated as a generic term$$ $7), Neusiedler &tiengesellschaft ". inaya 2ularni, :I;0 Case'o$ ***-+=


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fe/ other ser"ices such as immigration "isas$ It is true as Complainant sa&s that some of the linBs do notrelate specificall& or exclusi"el& to #ueec, ut a fair reading of the /esite lea"es no dout that it is a sitefor goods and ser"ices offered in #ueec and in Montreal in particular$

The ;anelHs o"erall assessment of the /a& that Respondent is using the isputed omain 'ame is that it isusing the isputed omain 'ame in its geographic sense,i.e.that it deals /ith goods and ser"ices a"ailalein and specificall& related to the region$ If Respondent /ere pretending to e Complainant itself, if its

/esite purported to offer go"ernmental ser"ices, if it laid some claim to speaB on ehalf of the region or toe an authoritati"e "oice on go"ernmental or municipal matters, or if it sought to mislead Internet users as tothe true nature of the site, the outcome ma& /ell ha"e een different$ 3ut one can examine RespondentHs/esite closel& and &et not find an& such matters$ The /esite is /hat it presents itself to e, namel& a sitefor people minded to find goods and ser"ices in #ueec through commercial linBs and for usinesses in#ueec to ad"ertise and promote their /ares$ %n examination of the record of the /esite at6///$archi"e$org7re"eals the same use o"er the &ears$

%ccordingl&, the ;anel finds that the use to /hich Respondent is putting the isputed omain 'ame is thelegitimate one of using a /ord for its "alue as a /ord, analogous to the use of a generic, descripti"e orcommon dictionar& /ord and not as an attempt to transgress & using it as a trademarB$

In particular, the ;anel does not accept the argument of Complainant that Respondent registered the#isputed #omain Name +ith the intention of di"erting !nternet users looing for the -o"ernment ofuebec, by creating confusion regarding and tarnishing the image of Complainant/s official mars.

There is no e"idence at all to support that proposition and, gi"en the contents of the +ebsite it is unlielythat the proposition reflects Respondents intention, although the passage of such a long period oftime since Respondent registered the #isputed #omain Name maes it difficult to discern this one

+ay or the other, maing it more difficult for Complainant to satisfy its burden proof. !t is far more

liely, udging from the contents of the site, that it +as established to attract users +antinginformation on subects such as tra"el and accommodation to, from and in uebec and the other

ser"ices referred to abo"e, being precisely the use that has been made of it.

For all of those reasons, the $anel finds that Complainant has not made out its case that Respondentdoes not ha"e a right or legitimate interest in the #isputed #omain Name.

E. Registered and /sed in Bad 'aith

;aragraph >() of the ;olic& sets out a series of circumstances that are to e taBen as e"idence of theregistration and use of a domain name in ad faith, namel&

6(+) circumstances indicating that Respondent has registered or has ac4uired the disputed domain nameprimaril& for the purpose of selling, renting, or other/ise transferring the disputed domain name registration

to Complainant /ho is the o/ner of the trademarB or ser"ice marB or to a competitor of Complainant, for"aluale consideration in excess of RespondentHs documented out-of-pocBet costs directl& related to thedisputed domain name or

() Respondent has registered the disputed domain name in order to pre"ent Complainant from reflecting themarB in a corresponding domain name, pro"ided that Respondent has engaged in a pattern of such conductor

() Respondent has registered the disputed domain name primaril& for the purpose of disrupting theusiness of a competitor or

(>) & using the disputed domain name, Respondent has intentionall& attempted to attract, for commercial

gain, Internet users to its /esite or other online location, & creating a liBelihood of confusion /ith
http://www.archive.org/http://www.archive.org/


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ComplainantHs marB as to the source, sponsorship, affiliation, or endorsement of its /esite or location or ofa product or ser"ice on its /esite or location$7Complainant sumits that the isputed omain 'ame in the present case /as registered and used in adfaith and that that is so for se"eral reasons$ The first and principal reason ad"anced is the argument used/ith respect to rights and legitimate interests and no/ rene/ed under ad faith, the argument thatRespondent registered the isputed omain 'ame 6/ith the ultimate oecti"e of taBing ad"antage of :eusers attempting to "isit the ComplainantHs /esite$7 That is essentiall& a sumission that Respondent

formed such an oecti"e or intention$ 3ut Complainant also argues that the same conclusion can also edra/n & inference from the fact that Respondent intended to enefit from hits generated & ComplainantHsnotoriet& and official marBs and that Respondent intended to maBe illicit use of ComplainantHs trademarBs &creating confusion for Internet users, tarnishing ComplainantHs official marBs and notoriet&, pre"entingComplainant from registering its official marBs in a domain name and creating confusion /ith ComplainantHsmarBs regarding the source, sponsorship, affiliation and appro"al of the products and ser"ices offered on the/esite 6///$4ueec$com7$

Respondent has replied to these allegations to the effect that registration of a geographic term or common/ord as a domain name is not ad faith and it adds correctl& that this is in the asence of e"idence to thecontrar&$ Respondent also sumits that Complainant has een inacti"e in the +@ &ears since Respondent

registered the isputed omain 'ame and that such a dela& supports its "ie/ that it acted in good faith$

Turning first toparagraph ;


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go"ernmental affairs or that it is in an& other /a& tr&ing to induce in a "isitor the false notion that it is an&thingother than the commercial site that it plainl& is$

%gain, the ;anel must also asB /hether, if there is no direct e"idence, are there ne"ertheless other mattersfrom /hich it ma& e inferred that this /as the intention of Respondent$ The fact that Respondent appearsto ha"e Bept strictl& to promoting its o/n interests, namel& commercial linBs, suggests that there are no suchmatters from /hich such an inference ma& e dra/n$

The situation in this regard is summed & the remarB of the three-memer panel in Conseo de $romoci@nTur7stica de 8Aico, '.&. de C.. ". %atin &merica Telecom !nc., :I;0 Case 'o$ **>-*> in /hich thetrademarB at issue /as MENIC0 and the domain name 8mexico$com9 and /here the panel oser"ed

6In this regard, Complainant has not persuaded the ;anel that Internet users, t&ping the /ord MENIC0into their ro/sers, expect to find the goods or ser"ices of Complainant, as distinct from goods,ser"ices or information aout the countr& Mexico$7

LiBe/ise, in the present case, there is nothing either expressl& or & inference to suggest that Internet users/ould thinB that & t&ping 84ueec$com9 into their ro/sers, the& /ould find the go"ernmental ser"ices of

the ;ro"ince of #ueec, rather than goods, ser"ices or information aout #ueec, /hich /as clearl&RespondentHs intention, udging from the a"ailale e"idence$

There are t/o other considerations in this regard to /hich the ;anel also dra/s attention$ The first is thatad faith, in general, means there has een a malicious or recBlessl& indifferent intention to do harm, /hichis not present on the facts in this case$ Indeed, there are no facts that are inconsistent /ith the intention ofRespondent eing solel& to promote its o/n interests in a la/ful manner$

Moreo"er, RespondentHs /esite seems to e promoting #ueec and enhancing the goods and ser"icesa"ailale there if an&thing, such conduct is more aBin to good faith than to ad faith$ In that regard the;anel notes that the /esite under the isputed omain 'ame &ields ad"ertisements related to thegeographic application of the term such as 6Things to do (in) #ueec7, 6@* Dotels in #ueec7, 6Cheap

flights7 and 6Montreal to #ueec Cit&7 as stated & the Respondent in its Response$

There is nothing related toor capale of eing randed as ad faith in such ad"ertisements /hich in factpromote, in fairness or good faith, the pro"ince or Cit& of #ueec$

5econdl&, although the argument on laches in 1R; proceedings can e a sterile one, the present case is aclassic example of the prolems facing complainants /ho do not pursue their remedies in a timel& manner$The ;anel is not prepared to sa& that laches is a"ailale as a defence in all 1R; proceedings, ut it is alsonot prepared to sa& that the dela& in ringing proceedings ma& ne"er e considered

For these reasons, the ;anel finds that the isputed omain 'ame /as not registered or used in ad faith$

'. Re0erse Domain Name $ia!(ing

The ;anel finds that ComplainantHs moti"ation in filing the Complaint /as more liBel& than not to protect itstrademarBs and to stop for the future /hat it sa/ as a "iolation of its rights, rather than an attempt tointimidate or harass Respondent$ To ring a claim that does not succeed, /hich has difficulties ecause ofthe passage of time or /here there turns out to e a lacB of conclusi"e e"idence does not amount to Re"erseomain 'ame DiacBing /here it essentiall& must e sho/n that the complainant has tried to harass therespondent, /hich is not so in the present case$ In an& e"ent, the ;anel has discretion on this matter andafter considering all of the e"idence and the sumissions the ;anel declines to maBe a finding of Re"erseomain 'ame DiacBing$

. De!ision


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For the foregoing reasons, the Complaint is denied$

A#red Mei-oom

;residing ;anelist

The $on Nei# Bro3n 4.C.

;anelist

5. Ne#son Landr%

;anelistate March =, *+>

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