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WIPO Arbitration and Mediation Center

The Complainants are Toromont Industries Ltd. and its wholly owned subsidiary, Toromont Energy Ltd., both Canadian corporations, represented by Haakon Saake, Web Development Coordinator of Ontario, Canada.

The Respondent is Wyatt Networks Inc., 12 Westerville SQ #340, Westerville, OH 43081, USA.

The domain name at issue is <toromontenergy.com>.

The Registrar is Tucows, Inc., of Ontario, Canada.

The Complaint was received by email on August 16, 2001, and in hard copy on August 22, 2001, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and the proceedings have been conducted in English. The Complainants have paid the specified fee to the Center.

The Center transmitted the requisite Registrar Verification request to Tucows Inc., on August 21, 2001, and received an email response from disputes@opensrs.org on August 28, 2001, confirming that the domain name is registered with Tucows, Inc., and that the Respondent, Wyatt Networks, is the current owner/registrant of the domain name <toromontenergy.com>.

Proceedings in this case were formally commenced on August 30, 2001, when the Center sent a copy of the Complaint to the Respondent by post at the address recorded in the Administrative Contact details for the domain name at issue and by email to domainadmin@wyattnetworks.com. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than September 19, 2001, to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on September 20, 2001, the Center issued a Notification of Respondent Default, which was duly transmitted to the Respondent and to the Complainants' representative by email.

On September 26, 2001, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and received his Statement of Acceptance and Declaration of Impartiality and Independence on September 27, 2001. The Center appointed Mr. Gymer as Panelist on September 28, 2001, and notified the Respondent and the Complainants' representative of this appointment by email on the same day.

Following an initial review of the Complaint, the Panelist asked the Center to issue an interim Procedural Order seeking the parties respective submissions regarding the relevant "applicable law" and the Complainants' entitlement to assert rights under that law. A Procedural Order No.1 was issued on October 4, 2001, giving the parties until October 11, 2001, to submit responses. The expected date for the Panelist taking a Decision in this case was correspondingly extended to October 15, 2001. A response was duly received from the Complainants to the Procedural Order. No response was received from the Respondent.

According to the Registrar's records, the domain name <toromontenergy.com> was registered to the Respondent on June 11, 2001.

The Complainant Toromont Energy Ltd., was created as a subsidiary of Toromont Industries Ltd. in or about January 1998, and is in the business of power generation and distribution. The Complainant Toromont Industries Ltd. itself first registered the domain name <toromontenergy.com> on March 13, 1998. It registered the domain name on behalf of, and leased use of it to, Toromont Energy Ltd. as its wholly owned subsidiary. Subsequently, it also renewed the domain name for the period March 13, 2000 to March 13, 2001, but failed to do so for March 13, 2001, reportedly owing to a failure to receive due notification from the then Registrar, Network Solutions, Inc. The Complainant Toromont Energy Ltd. also operates a website using the domain name <toromontenergy.ca>.

On June 11, 2001, the Complainants discovered that the domain name <toromontenergy.com> had been deleted from the Network Solutions database and that the domain name had thereafter been re-registered by the Respondent via Tucows, Inc. on the same day. The registration details on the OpenSRS WHOIS then showed the Registrant details as:

"DOMAIN NAME FOR SALE. EMAIL US FOR A QUOTE - Wyatt Networks".

Similarly, the Administrative, Technical and Billing Contact details each began:

"THIS DOMAIN, IS FOR SALE domainadmin@wyattnetworks.com"

On June 12, 2001, the Complainants' representative sent an email to the identified email address noting:

"We registered the domain name <toromontenergy.com> for our company (Toromont Energy Ltd.) Web site. We did not receive renewal notification from Network Solutions and today I realize you have registered our domain name already. Please explain your intentions. I would like to know what would be involved in getting our domain name back."

A reply was received from Wyatt Lehmenkuler, evidently the principal of Wyatt Networks, stating:

"We currently own this domain name, and may be interested in selling it. Please make a reasonable offer."

The Complainants then replied that their offer was $1,000, to which the response from Mr. Lehmenkuler was: "We were thinking more like $15,000." The Complainants did not follow this up further.

The Respondent has set up the domain name such that links to <toromontenergy.com> resolve to a holding page at <lowcostdomains.com> noting that the domain name "has been registered and is now parked" and inviting visitors to "register your own .com,.org, .net".

Otherwise, the Complainants have made a number of further contentions by way of a Statement of Case in the Complaint. These are summarised below.

The Complainants assert that:

"The Complainants own the exclusive rights to the "Toromont Energy" trademark and service mark according to the legislation applicable thereto, as a result of the commercial use of the said mark."

"Considering the continuous commercial use and the notoriety of the "Toromont Energy" trademark and service mark, the [Complainant Toromont Energy's] customers are confused and misled by the Respondent’s use of the Disputed Domain Name that refers the [Complainant Toromont Energy's] customers to Respondent’s Web site."

Confusion and similarity

"The second-level domain name of the Disputed Domain Name is in its entirety similar to the Complainants' trademark. Considering that these words are closely related to the Complainants' activities, being the distinguishing part of [Complainant Toromont Energy's] name, the use of the Disputed Domain Name by the Respondent is of a nature that misleads the public and causes confusion. Therefore, the Disputed Domain Name is confusingly similar to the trademark "Toromont Energy" owned exclusively by the Complainants."

Legitimate rights

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as evidenced by the following facts:

"The Respondent has no relationship with or permission from the Complainants for the use of the mark "Toromont Energy" nor have the Complainants consented to the Respondent's application for registration of, or use of, any domain name incorporating that mark."

"The Respondent registered the Disputed Domain Name on June 11, 2001. At that time, the Complainants had common law trade mark rights in the Toromont Energy name accruing since the beginning of its commercial use."

"The Respondent is not commonly known by the Disputed Domain Name, and do [sic] not commonly use any trademark or service mark related with the Disputed Domain Name."

"The Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name."

Bad faith

"[S]ince the first communication between the Complainants and the Respondent, the sole intention of the latter was to sell the Disputed Domain Name at a price in excess of the out-of-pocket costs directly related to the domain name (see Annex 2). Therefore, circumstances give rise to application of Paragraph 4(b)(i) of the Policy and the use in bad faith in violation of Paragraph 4(a)(iii) of the Policy is thereby evidenced."

The Complainants request that the domain name be transferred to the Complainants.

No Response to the Complaint was received from the Respondent.

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested 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 fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

In the present case, the Complainants claim unregistered mark rights in TOROMONT ENERGY. The domain name at issue is <toromontenergy.com>. The distinctive element of the domain name is essentially identical to the trademark claimed by the Complainant.

If the Complainants' mark was a registered trade mark, in force and not subject to any opposition or revocation action, then it would also be readily possible to conclude that the Complainant has relevant rights in the mark which would be protectable under the Policy. However, in this case the mark is apparently not a registered trademark.

The Panelist considers it settled interpretation that the reference to "rights" in Paragraph 4(a)(i) of the Policy includes both registered and unregistered rights (this issue has been previously addressed in various other cases). In the case of an unregistered mark, however, there can be no presumption of entitlement to rights under law and the onus must be on a Complainant to provide convincing evidence that it is entitled to claim such rights.

The evidence which may be required to support a claim to protection for these purposes does not necessarily need to be substantial - for example, it may be sufficient to establish a significant local rather than a national reputation in such a mark. Nonetheless, the Panelist considers that it requires more than mere assertion to justify any claim to proprietary rights in an unregistered mark.

The Panelist notes that the Respondent did not expressly challenge any of the assertions in the complaint. However, this cannot automatically be taken as an admission of all the claims in the Complaint. The Panelist may be entitled to draw reasonable inferences from the Respondent's lack of response but, in this Panelist's view, it is unlikely to be justifiable to go so far as to acknowledge a claim to unregistered rights which is inadequately substantiated. The Policy requires a Complainant to prove that it has relevant rights, not merely assert that such rights exist.

As noted at 5A above, in this case, the Complainants made strong assertions with respect to their ownership of rights in the TOROMONT ENERGY name and to the existence of such rights under the "legislation applicable thereto", but without clearly identifying the relevant legislation or providing substantive evidence supporting their claim. Since the Complainants are based in Canada and the Respondent is in the USA, it is also not unambiguously clear what necessarily may be the relevant "legislation applicable". However, considering all the aspects of the Complaint, the Panelist felt that there was a significant implication that such rights did exist at least in Canada. A basic Internet search by the Panelist for references to "Toromont" also produced references only to the Complainants, which were indicative of the likely distinctiveness of and proprietary nature of the name.

Whilst this moved the balance potentially in favour of the Complainants, owing to the uncertainties noted above, the Panelist considered it appropriate that both parties should have an opportunity to specifically address the fundamental issue of the existence of and the Complainants assertion of unregistered trade mark rights in the name TOROMONT ENERGY.

Accordingly, under Rule 12 of the Rules, with reference to the relevant paragraphs of the Complaint, the Panelist asked the Center to issue a Procedural Order inviting the parties to submit their further comments and observations (with appropriate references and supporting evidence if desired) on the following questions:

i. What, if any, is the relevant "legislation applicable thereto" […] and how may (or may not) a party become entitled to assert unregistered "rights" under such legislation?

ii. To what extent has the Complainant, or has it not, met the necessary requirements (e.g. of commercial use and notoriety) to be entitled to assert such "rights" under whatever is the "legislation applicable thereto" (i.e. what evidence is there, or is there not, that the Complainant has met the relevant legislative requirements, if any)?

The Complainant duly provided a detailed submission clarifying its entitlement to rights in an unregistered trade-mark under the Canadian Trade-Marks Act R.S.C. 1985, and providing examples of the use of its TOROMONT ENERGY mark in connection with services and wares in Canada. (The Panelist would encourage any future Complainants seeking to assert unregistered rights to ensure that they do provide such clarification and supporting evidence to support their assertions in the initial Complaint.)

The Respondent made no submission and did not make any challenge to the Complainants' assertion of rights.

The Panelist considers that the clarification provided by the Complainants is convincing. The Respondent has also had ample opportunity to challenge or rebut the Complainants claim to relevant rights, but has not done so.

In the present proceedings, it follows that, the Panelist accepts the Complainants' claim that it is entitled to such rights, and that it has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.

In the light of the distinctive and evidently exclusive nature of the "TOROMONT ENERGY" mark and the fact that the Complainants have established the validity of their claim to trade mark rights in the mark to the Panelist's satisfaction, the Panelist accepts the Complainants' unchallenged submissions (as summarised at 5 above) that the Respondent has no conceivable legitimate rights in the domain name at issue.

Consequently, the requirements of Paragraph 4(a)(ii) of the Policy are met.

Similarly, as all the evidence makes manifestly clear, the intention of the Respondent in snapping up the inadvertently lapsed previous registration of <toromontenergy.com> was to seek disproportionate, if not extortionate, recompense from the Complainants as the legitimate owners of rights in the TOROMONT ENERGY mark. The Respondent's motives and conduct were undisguised and plainly fall in the category of "bad-faith" use of the domain name for the purposes of the Policy.

The Panelist therefore concludes that the requirement of Paragraph 4(a)(iii) of the Policy is also satisfied.

For the reasons given in Section 6 above, the Panelist decides that the Complainants succeed with their Complaint and orders that the domain name <toromontenergy.com> be transferred to the Complainants.

Keith F.Gymer
Sole Panelist

Dated: October 15, 2001