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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Labour Dispute Management Group Incorporated v. Stover, Silvina

Case No. D2006-0017

 

1. The Parties

The Complainant is Labour Dispute Management Group Incorporated, Burlington, Ontario, Canada, represented by Steven J. Gearing, Canada.

The Respondent is Silvina Stover, Mississauga, Ontario, Canada, represented by Blaney McMurtry LLP, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <ldmg.com> is registered with Internetters Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2006. On January 9, 2006, the Center transmitted by email to Internetters Limited a request for registrar verification in connection with the domain name at issue. On January 11, 2006, Internetters Limited 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, billing, and technical contact. 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 of the Complaint, and the proceedings commenced on January 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2006. The Response was filed with the Center on January 27, 2006.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 7, 2006. 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.

On January 31, 2006, the Complainant filed a Reply to the Response dated January 26, 2006. On February 1, 2006, the Respondent filed an Objection and Motion to Strike the Reply.

The Rules do not permit the parties to unilaterally file additional materials. Pursuant to Paragraph 12, only upon the Panel’s request may the parties file additional materials. In this case, the Panel made no such request. In any event, the Reply is simply an attempt to re-argue the merits of the Complaint, without bringing forward any exceptional circumstances to justify its acceptance in these proceedings. Allegations that are merely a secondary reply to the arguments already contained in the Complaint should not be taken into account (see Telefonaktiebolaget L.M. Ericsson v. iNuntius Inc., WIPO Case No. D2005-0732 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). The Complainant’s Reply and Respondent’s Objection and Motion to Strike will not be considered to form part of the record.

 

4. Factual Background

The Complainant in this proceeding is an Ontario corporation, that was incorporated on August 25, 2000. The Complainant offers the following services: consulting, contingency planning, security, investigations, transport and logistics support to organizations facing business interruptions due to labour disputes. The Complainant operates a website in connection with its business under the domain name <ldmg.on.ca>. There is no registered trademark for LDMG in Canada.

The Respondent in this proceeding is the individual Silvina Stover, who is the president of the company Creative Imagine Studio Corp. (“CIS”).

The domain name at issue in this proceeding, <ldmg.com> was registered by the Respondent on June 14, 2005.

On January 17, 2001, Mr. William Thomson (“Thomson”), the Complainant’s President instituted an action in the Ontario Superior Court of Justice bearing Court file No. 01-CV-203935. In this action, Thomson claimed against AFI-International Group Inc. (“AFI”) for wrongful dismissal, commissions owing, punitive damages and an accounting.

On February 12, 2004, AFI issued a counterclaim against William Thomson, Sandy Couto, Frontline Transportation Inc., Labour Dispute Management Group Inc. (the Complainant) and Corporate Support Services Inc. The counterclaim alleges breach of fiduciary duty, including wrongful solicitation of AFI’s clients, solicitation of AFI’s employees and making use of AFI’s confidential information of AFI.

On April 19, 2004, the defendants by counterclaim filed their defence to counterclaim. Copies of the relevant pleadings have been placed in evidence in this proceeding.

The Respondent Silvina Stover is not a party in the Ontario Court litigation.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions may be summarized as follows:

Identical or Confusingly Similar – The domain name is confusingly similar to the name, trade-mark and service mark in which the Complainant has rights.

Although the Complainant has not registered “LDMG” as a trade-mark or a service mark, it has acquired rights to the unregistered mark through its use of “LDMG” in their marketing and advertising brochures as well as on their stationary and on their website. In addition, within its business community, the Complainant is known by and associated with the letters “LDMG”.

Rights of Legitimate Interests – The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint. The Respondent has not used or demonstrated any preparations to use the domain name <ldmg.com> in connection with a bona fide offering of goods and services. Nowhere in the Respondent’s company’s business description or in the Respondent’s biography is there a reference to any undertaking connected to the name <ldmg.com>. The Respondent has not made any noncommercial use of the domain name since its acquisition. The <ldmg.com> website makes no mention whatsoever of the Respondent, her business or LDMG. The Respondent has acquired no trade-mark or service mark right to the combination of letters ‘LDMG’ nor is she commonly known by the domain name <ldmg.com>.

Registered and Used in Bad Faith - The domain name <ldmg.com> was acquired by the Respondent primarily for the purpose of selling, renting or otherwise transferring the domain name to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain acquisition. Anyone who visits <ldmg.com> is directly led to the website of AFI, which is a direct and substantial competitor of the Complainant. The Respondent acquired the domain name <ldmg.com> for use by AFI primarily for the purpose of disrupting the business of the Complainant.

By using the domain name <ldmg.com> in the manner that it has, the Respondent is intentionally attempting to attract for commercial gain internet users to the Respondent’s website and, in turn to a competitor’s website by creating a likelihood of confusion with the complainant’s mark as to the source of a product or service on the Respondent’s website.

B. Respondent

The Respondent’s submissions may be summarized as follows:

Identical or Confusingly Similar – The Respondent is associated with the Corporation Creative Imaging Studio Corp. (“CIS”), which is in turn associated with AFI International Group Inc. (“AFI”).

There is no risk of confusion to a user who enters <ldmg.com> and is directed to AFI’s homepage, as the Complainant’s and AFI’s homepages are markedly different.

The phrase “labour dispute management group” is neither distinctive nor famous, rather the words are a generic phrase which identify a category of services. By entering the words into a ‘Google’ search a user would not be brought immediately to either the Complainant’s or the Respondent’s websites. If a user were to enter “ldmg” into a ‘Google’ search the Complainant’s page appears as the third hit.

The Complainant has not shown that the Respondent’s use of the domain name <ldmg.com> will irreparably injure its reputation or hijack its customers.

Rights of Legitimate Interests – Neither the phrase “labour dispute management group” or the letters “ldmg” are registered trademarks of the Complainant and, the phrase “labour dispute management group” is neither distinctive nor famous.

The domain name <ldmg.com> is being used by the Respondent in bona fide commerce. The letters of the domain name denote the generic nature of the words. The use of the domain name to direct customers to the AFI site constitutes legitimate and fair use. The use does not mislead customers and does not tarnish any trademark rights.

AFI has been a labour dispute management group for 20 years and has used and intends to use the domain name in connection with bona fide offering of goods and services.

Registered and Used in Bad Faith – The <ldmg.com> domain name was not registered in bad faith. Mere knowledge of a trade-mark does not constitute bad faith registration and use. Further, if the Respondent were to sell, rent or otherwise transfer the domain name to any other party, specifically AFI, the consideration would be in the amount equal to the outlay made in acquiring the domain name. With respect to this, the Complainant has provided no evidence to substantiate their allegation to the contrary.

The Complainant registered the domain name <ldmg.on.ca> but took no further steps to register other domain names. When the domain name <ldmg.com> became available the Complainant did not purchase it. The fact that the Respondent did purchase it does not denote bad faith on their part.

The use of the domain name by the Respondent has been transparent and its use has been and will be for legitimate commercial purposes. The Complainant has failed to establish that the Respondent has profited from the registration of <ldmg.com>. No evidence has been provided by the Complainant of business loss, customer complaints or otherwise.

 

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements is present:

(i) the domain name in question 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.

Preliminary Matter – Impact of The Ontario Superior Court File No. 01-CV-203935 on this Proceeding

The Respondent in this action is the individual Silvina Stover. Despite the Respondent’s assertions that she is associated with AFI, there no evidence on record to substantiate this claim. On the contrary, based upon the evidence, AFI appears to be a separate corporate entity, and must be treated as such.

Having concluded that Silvina Stover and AFI are distinct from each other, it is apparent that the ongoing Ontario Superior Court litigation, in which Silvina Stover is not a party, will not resolve the domain name dispute between the Complainant and the Respondent in this Proceeding. This domain name dispute cannot be considered to be a part of or ancillary to the above referenced litigation, as it makes no reference to trade mark, trade name or domain name issues.

A. Identical or Confusingly Similar

1. Rights in unregistered or common-law marks:

The first matter to be dealt with is the issue of whether or not the Complainant has rights in an unregistered trade-mark or trade name.

There is ample authority to conclude that paragraph 4(a)(i) of the Policy does not expressly limit the application of the Policy to a registered trade-mark or service mark. (see: Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322, citing the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999).

The Panel concludes that the Policy applies to common law trade-marks but notes that the Complainant has the burden to show that the mark at issue has become a distinctive identifier associated with the Complainant or its goods and services.

2. Appropriate standard to establish rights in a common-law mark

With regard to Complainant’s contention that it has a common-law right in the unregistered mark ‘LDMG’, the Panel must consider whether there is sufficient evidence of secondary meaning, generated by sales, advertising, website or other tangible forms of use.

In this instance, the Complainant has submitted copies of advertising, marketing and other documentary materials that clearly show the use of a stylized logo incorporating the letters ‘LDMG’ from 2000 to 2005. In particular, the Complainant has provided samples of a letter, envelope and business card all of which show the use of the letters ‘LDMG’ as their logo. The Complainant has also provided copies of sample correspondence with third parties, which shows that they are commonly referred and known as ‘LDMG’. Finally, the Complainant has provided a copy of pages from its website where it is apparent that it refers to itself, and uses the letters ‘LDMG’ as one of its primary business identifiers. Significantly, the Complainant has operated its website under the related domain <ldmg.on.ca> since November, 2001, where the LDMG mark is prominently featured.

In the Panel’s view, this evidence is sufficient to establish the Complainant’s assertion that it has attained common law trade-mark rights in the acronym ‘LDMG’.

Given the findings of the Panel set out above, it is clear that the domain name in dispute, <ldmg.com> is not only confusingly similar, but in fact identical to the mark to which the Complainant has rights.

Accordingly, the Complainant has satisfied this first requirement of the Policy.

B. Rights or Legitimate Interests

The Panel also accepts the Complainant’s position that the Respondent has no rights or legitimate interests in the domain name as required by paragraph 4(a)(ii) of the Policy.

The evidence provided by the Complainant, in particular the website of Creative Image Studio Corp. (“CIS”), shows that neither the Respondent nor the associated company CIS is known as or associated with the combination of letters ‘LDMG’. Nowhere in the Respondent’s biography or in CIS’s company description is there any reference to the letters ‘LDMG’ or even the phrase “labour dispute management group”.

This evidence, in the Panel’s opinion, is sufficient to shift the evidentiary burden to the Respondent to show that she has a right or legitimate interest as set out at paragraph 4(c) of the Policy, or that she otherwise enjoys some right or legitimate interest in the domain name.

With respect to the criteria of Paragraph 4(c)(i), the Panel finds that the domain name is not being used for the bona fide offering of goods. The site is being used by the Respondent to redirect Internet traffic to a competitor of the Complainant. As set out in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, at a minimum for the offering to be bona fide the Respondent must actually be offering the goods or services at issue. (“To be bona fide the offering must meet several requirements. Those include, at the minimum, the following: Respondent must actually be offering the goods or services at issue”)

With respect to Paragraph 4(c)(ii), it is clear from the record that neither the Respondent, Silvina Stover, nor her company CIS, have been commonly know by the combination of letters ‘LDMG’ or the domain name <ldmg.com>. Unlike the Complainant, the Respondent has not provided any evidence that shows that she or CIS have taken any steps to be associated with the mark ‘LDMG’ or that they are known by the mark ‘LDMG’ within their industry.

Furthermore, contrary to the Respondent’s assertion that the letters ‘LDMG’ denote the generic words ‘labour dispute management group’, the Panel finds that the link between the phrase ‘labour dispute management group’ and the combination of letters ‘LDMG’ is clearly insufficient to give the Respondent a right or legitimate interest in that combination of letters.

With respect to Paragraph 4(c)(iii), it is the Panel’s opinion that the Respondent is making use of the domain name in order to misleadingly divert consumers looking for the Complainant’s website to a competitor’s website. It appears most unlikely to the Panel that an individual searching for a labour dispute management company would naturally enter <ldmg.com> into the URL field. In the view of the Panel, it is much more likely that an internet user looking for the Complainant’s webpage, who may vaguely recall the Complainant’s current domain name, <ldmg.on.ca>, and who may know the Complainant by their trade name LDMG, would enter <ldmg.com> into the URL field. This would lead the user who was looking to find the Complainant’s site directly to the Complainant’s competitor’s homepage.

The Panel is of the opinion that the Respondent has not satisfied her burden to displace the prima facie case established by the Complainant.

Therefore, the Panel concludes that the Respondent does not have any right or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

Pursuant to Paragraph 4(a)(iii) of the Policy, the Complainant must show that the domain name has been registered and is being used in bad faith. The Panel finds that the Complainant has proven this element of its case.

In addition to the appearance of bad faith in registration and use discussed below, this aspect of the case may be conclusively decided on the grounds that use of a domain name confusingly similar, or identical, to a complainant’s mark in order to redirect the user to the website of the complainant’s competitor constitutes bad faith under the Policy. (See National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128, citing “e.g. Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 (“[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”; Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“[R]egistration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of . . . a company which directly competes with the Complainant, constitutes bad faith registration and use.”); Zwack Unicom Ltd v. Duna, WIPO Case No. D2000-0037 (March 10, 2000) (respondent’s linking to complainant’s competitor held to constitute bad faith); Oly Holigan, L.P. v. Private, Case No. FA0011000095940 (N.A.F. December 4, 2000) (finding bad faith where respondent used the disputed domain name to “redirect the Complainant’s consumers and potential consumers to commercial websites which are not affiliated with Complainant”); Marriott International, Inc. v. Kyznetsov, Case No. FA0009000095648 (N.A.F. October 24, 2000) (finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”); Harvey World Travel Limited v. GamCo, WIPO Case No. D2003-1023, (“The overall impression of bad faith is reinforced by the Respondent’s actions in pointing the domain name to a website operated by one of the Complainant’s major competitors,”);Oznur Kablo San. v. Mesut Yuce WIPO Case No. D2004-0662 (“When the disputed Domain Name is directed to a website owned by a well-know competitor of the Complainant, the Respondent’s bad faith has also been proved.”)

It is apparent from the evidence that an internet user who enters <ldmg.com> into the URL field is not led to the Respondent’s homepage. Rather, they are redirected immediately to the Complainant’s competitor’s website. Furthermore, the site hosted by the Respondent at <ldmg.com> appears to be the exact same page as the site hosted by the Complainant’s competitor AFI on their website <AFI-international.com>.

In the Panel’s opinion, this is sufficient to conclude that the Respondent has registered and used the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(a)(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ldmg.com> be transferred to the Complainant.

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Christopher J. Pibus
Sole Panelist

Dated: February 22, 2006