Generic Top Level Domain Name (gTLD) Decisions

2.10 On May, 30, 2001, the Clerk’s Office forwarded a user name and a password to Jean-François Buffoni, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution’s Automated Docket Management System.

2.11 On May, 30, 2001, the parties were notified that Jean-François Buffoni had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 13, 2001.

3. Factual Backgrounds

3.1 The Complainant is the owner of Canadian trademark registrations for the trademark ESSAIM (registered in 1989), ESSAIM & Design (1999), GROUPE ESSAIM (1995), and ESSAIM & Design (1996). The Complainant also has pending trademark applications for trademarks which contain the word “essaim.” The trademark ESSAIM and its variants have been used in Canada by the Complainant in association with the operation of pharmaceutical stores distributing a wide range of pharmaceutical and para-pharmaceutical products, including health and body care products.

3.2 &nbsp ; In 1997, the Complainant registered the domain name essaim.ca, which is not in issue in the present proceeding.

3.3 &nbsp ; The Respondent is a marketing firm which was set up by a Mr. Baril to market personnel training products developed by a sister company, which started its activities in 1985 as a sole proprietorship and was incorporated as a company in 1991. That company is specialized in the training of personnel in major retail and service businesses.

3.4 &nbsp ; The Respondent registered the contested domain name essaim.com in April 2000.

4. Parties' Contentions

4.1 The Complainant contends that (i) it has all the rights, titles and interests in the trademark ESSAIM since 1989 and the contested domain name is confusingly similar to such trademark, (ii) the Respondent has no legitimate proprietary rights in the contested domain name and (iii) the Respondent has registered and used the domain name in bad faith.

4.2 &nbsp ; The Respondent objects that the Complainant cannot claim a monopoly on the common word “essaim” outside of its business activities, that it has legitimate proprietary rights in the contested domain name and that it has in no way registered or used such domain name in bad faith

5. Discussions and Findings

Analysis of the evidence in this case

5.1 The panel will examine the evidence to determine whether the Complainant has proven, in accordance with article 4(a) of the ICANN Policy:

i. that the contested domain name is identical or confusingly similar to a trademark in which the Complainant has rights, and

ii. that the Respondent has no rights or legitimate interests in the contested domain name, and

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

5.2 Similarity between the trademark and the domain name

5.2.1 The contested domain name clearly is at least confusingly similar (if not identical) to the name of the Complainant, since the only difference between the domain name and the name of the Complainant is the addition of ".com" to the word “essaim.” Not surprisingly, the Respondent has not taken issue with the Complainant on that aspect.

5.3 Lack of rights or legitimate interests in the contested domain name

5.3.1 The thrust of the Complainant’s argument with respect to that issue may be summarized as follows: since the Complainant has exclusive rights over the mark ESSAIM, more particularly by virtue of Section 19 of the Canadian Trademarks Act, the Respondent cannot claim any right or legitimate interest in that word as a domain name.

5.3.2 The Respondent claims that the word “essaim” is part of the common vocabulary and that it was chosen in connection with a field of activity which is very different from that of the Complainant. More particularly, it is explained that “essaim,” a French common word which in this context means “bee swarm,” was chosen to designate a website hosting a discussion forum where people can exchange ideas on various issues related to the retail and services businesses. It was felt that this word would be appropriate to suggest a group of persons coming from different parts of the world and discussing topics of common interest relating to personnel training.

5.3.3 By invoking the “exclusive rights” of Section 19 of the Canadian Trademarks Act, the Complainant seems to have overlooked that the so-called monopoly granted by that section is not universal, as it does not extend to all possible types of business activity, wares or services. Section 19 reads as follows:

Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services. (emphasis added)

5.3.4 It follows that the exclusive rights claimed by the Complainant apply to the operation of pharmaceutical stores distributing a wide range of pharmaceutical and para-pharmaceutical products, including health and body care products. It is difficult to conceive how these rights would extend to the Respondent’s activities.

5.3.5 The explanation given by the Respondent as to how it has chosen the contested domain name brings this panel to the conclusion that the Respondent had valid rights and legitimate interests in the contested domain name.

5.3.6 Furthermore, this panel finds that the Respondent, before any notice to it of the dispute, made demonstrable preparations to use the domain name in connection with a bona fide offering of its services, a situation which matches the first example provided by paragraph 4(c) of the ICANN Policy which, if found by the panel to be proven based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii).

5.3.7 The panel therefore concludes that the Respondent has demonstrated its rights to and legitimate interests in the contested domain name and the Complainant has failed to discharge its burden to prove the second essential element of the Complaint.

5.4 Bad faith registration and use of the contested domain name

5.4.1 Pursuant to paragraph 4 (a) (iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the domain name in bad faith.

5.4.2 Paragraph 4(b) of ICANN's Policy states that bad faith registration and use can be proven by submitting evidence establishing:

1) the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of a trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

2) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

3) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

4) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or a product or service on the respondent's website.

5.4.3 The evidence produced by the Complainant falls short of proving any one of these four non-exhaustive examples of bad faith registration and use. There is no evidence to show that the Respondent acquired the domain name for any of the purposes illustrated by those examples. It was the Complainant who initially contacted the Respondent to acquire its domain name. Up to that point, there is absolutely no indication that the Respondent, who operates in a completely different area of activity, would have had any desire, even implied, to do any one of those acts of bad faith.

5.4.4 Beyond those non-exhaustive examples of bad faith, the evidence shows no indicia of bad faith on the part of the Respondent.

5.4.5 Another reason to find in favour of the Respondent lies in the generic nature of the common word “essaim.” As was decided by a three-member panel in Microcell Solutions Inc. v. B-Seen Design Group Inc., eResolution number AF-0131, May 2, 2000,

Furthermore, registration of a common or generic name such as FIDO can hardly be considered indicative of bad faith, absent other factors (whereas registration of a an unusual term such as Vodaphone could, in itself, be considered suspicious, absent other factors). Even when a common name has become highly distinctive of a particular product because massive advertising has generated substantial secondary meaning, another party might legitimately register the common name because of its primary meaning.

Incidentally, this decision was followed by the undersigned panelist in Für München – Tombola für kulturelle und sociale Einrichtungen E.C. v. PesaroService, eResolution number AF-0422, November 17, 2000.

5.4.6 The panel therefore finds that the test of paragraph 4(a)(iii) of the ICANN Policy has not been satisfied.

5.5 Reverse domain name highjacking

5.5.1 Paragraph 15(e) of ICANN Rules states that if the panel finds that the complaint was brought in bad faith, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Respondent raised the possibility that the Complainant could be guilty of reverse domain name highjacking since the latter has, in 1997, registered the domain name essaim.ca and it could have registered the contested domain name at a low cost. The Respondent then suggested that the Complainant might have a hidden agenda. This panel does not find in the evidence enough elements to make more than a conjecture as to the Complainant’s state of mind. On the whole, it would seem that the Complainant honestly believed that its “exclusive rights” did prevail over those of the Respondent. Paragraph 15(e) does not apply in a case where the Complainant made an honest mistake

6. Conclusion

6.1 For the reasons set forth above, the panel finds that the Complainant has not met all of the requirements of the ICANN Policy. Thus, the Complainant’s request to the transfer the contested domain name is denied.

7. Signature

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