The Complainant is Pipe Restoration Technologies, LLC, Irvine, California, United States of America, represented by Rutan & Tucker, LLP, United States.
The Respondent is Cameron Manners, NuFlow Technologies 2000, Inc., South Oshawa, Ontario, Canada, represented by Higgs, Fletcher & Mack LLP, United States.
The disputed domain name, <whyrepipe.com> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2009. On June 19, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 19, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2009. The Response was filed with the Center on July 15, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 21, 2009. 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 July 24, 2009, the Complainant filed a further submission, seeking its admission into this administrative proceeding on the basis that it rectified various errors and false statements in the Response. The Panel has read it.
The named Respondent is the president of his company, NuFlow Technologies 2000, Inc. For the purposes of this administrative proceeding the Panel proposes to treat the Respondent and his company as one.
Both parties are engaged in inter alia the repair and restoration of pipelines. The Complainant is a Nevada corporation with its principal place of business in California and the Respondent is a Canadian corporation.
The Domain Name was registered on January 7, 2005.
On May 14, 2007, the Complainant filed suit against the Respondent for inter alia unfair competition.
On June 20, 2007, the Respondent filed suit against the Complainant for declaratory relief under various heads of claim, including an antitrust claim.
On February 20, 2008, the Respondent applied for a United States (“US”) trade mark registration of the mark WHY REPIPE under application serial no. 77401195.
On the same day (February 20, 2008) the Complainant applied for a US trade mark registration of the mark WHY REPIPE? under application serial no. 77402111. On February 28, 2008 the Complainant made a similar application to the Canadian trade mark office. In each case the Complainant claimed first use since at least February 28, 2002.
On September 22, 2008, the parties entered into a Settlement Agreement.
On December 9, 2008, the Complainant's Canadian trade mark application came through to registration under number 730534.
On January 14, 2009, the Complainant's lawyer wrote to the Respondent drawing the latter's attention to the existence of the Complainant's Canadian trade mark registration no. 730534 and alleging that the Respondent by its use of the Domain Name was in breach of the Settlement Agreement and the Complainant's trade mark rights.
On March, 10, 2009, the Complainant's US application no. 77402111 was published for opposition and on April 7, 2009 the Respondent's US application number 77401195 was published for opposition
The Complainant contends that the Domain Name is identical or confusingly similar to its Canadian registered trade mark, WHY REPIPE? The Complainant also claims common law rights in respect of its mark, which it claims to have used since at least February 28, 2002.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Respondent denies the Complainant's contentions and contends that the Complainant is guilty of Reverse Domain Name Hijacking.
The essence of the Respondent's position insofar as this administrative proceeding is concerned is that it was unaware of the Complainant's interest in the mark WHY REPIPE? when it registered the Domain Name on January 7, 2005. It claims to have been using the expression since 2003.
The Respondent points out that the Complainant has produced no evidence of any use of its mark WHY REPIPE? predating registration of the Domain Name.
The Respondent claims that its US trade mark application no. 77401195 for WHY REPIPE was filed 9 hours earlier than the Complainant's US trade mark application no. 77402111 for WHY REPIPE?
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
The Domain Name comprises the Complainant's Canadian registered trade mark, WHY REPIPE? (absent the space and the question mark) and the generic domain suffix, which may be ignored for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Name is identical or confusingly similar to the Complainant's registered trade mark.
In light of the Panel's finding under the next head, it is unnecessary for the Panel to address this issue
The Factual Background (section 4 above) demonstrates that the relationship between the parties, who are competitors, has not been a good one. The papers in this dispute bear that out. The Respondent asserts that the Complainant's abusive behaviour merits a finding of Reverse Domain Name Hijacking and in its Supplemental Filing the Complainant expressly accuses the Respondent of lying.
The Policy was introduced to deal with cybersquatting. It is not appropriate for resolving complex disputes between competitors where there has been a history and where the facts are not clear and the Panel would have been minded to reject the Complaint on this ground alone. However, there is a more fundamental objection to the Complaint.
To succeed under this head the Complainant has to establish to the satisfaction of the Panel that the Respondent both registered the Domain Name in bad faith and is using it in bad faith. Accordingly, it is fundamental to the success of the Complaint that the Complainant is able to demonstrate that the Respondent registered the Domain Name in January 2005 with knowledge of the Complainant's trade mark rights in respect of its WHY REPIPE trade mark. Notwithstanding subsequent use of the Domain Name, the Complaint cannot succeed if it is not established that registration of the Domain Name was made or is at least more likely than not to have been made in bad faith.
The Respondent asserts that it was unaware of the Complainant's interest in respect of the WHY REPIPE? trade mark when it registered the Domain Name back in January 2005.
On its own a bare denial of that kind carries little weight. In this case, however, it is not a bare denial. The Complainant has produced no evidence of the nature and extent of its use of its WHY REPIPE? trade mark prior to January 2005. There is absolutely nothing before the Panel to establish that the Respondent could or should have been aware of the Complainant's use of its trade mark prior to registration of the Domain Name, a trade mark which first matured into a registration in Canada in December 2008.
In the Complaint under the heading “The domain name was registered and is being used in bad faith”, there are 4 bullet points, three of which relate exclusively to use of the Domain Name (use with intent to dilute the Complainant's trade mark rights and to compete unfairly with the Complainant; holding the Domain Name with intent to block the Complainant and to divert consumers away from the Complainant's site; continuing to own and use the Domain Name in breach of the Settlement Agreement referred to in section 4 above, which is alleged to prevent the Respondent using registered trade marks of the Complainant).
The fourth bullet point reads “Respondent registered the Domain Name and filed trade mark applications in the US long after the Complainant first used the Trademark in commerce in both Canada and the US”. If the Complainant did in fact make first use of its WHY REPIPE? trade mark on or before February 28, 2002 (and the Panel does not doubt the claim), it would have been very helpful to the Panel for the Complaint to have set out the nature and extent of that and subsequent use to show that (a) the Complainant's trade mark rights predated registration of the Domain Name and (b) the Respondent, a competitor of the Complainant, was likely to have known of the trade mark when it registered the Domain Name.
In the absence of any evidence of that kind, the Panel is unable to conclude that the Domain Name was registered and is being used in bad faith.
The Respondent contends that the shortcomings of the Complaint demonstrate that the Complainant launched this administrative proceeding with intent either (a) to waste the Respondent's time at a time when the parties are poised to embark on hostile opposition proceedings over mutual claims to rights in the trade mark in question (see section 4 above) or (b) to hijack the Domain Name, a very desirable descriptive name for anyone engaged in their industry, hoping that the Respondent would default by failing to respond to the Complaint.
The Respondent prefaces its allegations in this regard with the introduction: “There are only two logical reasons why Complainant brought this unjustifiable Complaint (assuming that it was not out of ignorance).”
The Panel believes that that assumption may be misconceived. Additionally, the history of contention between the parties is such that the Panel finds it difficult to believe that either party would allow an opportunity to contest an issue to go by default.
Clearly, the Complaint was fundamentally flawed, but the Panel is not satisfied that he is in possession of all the relevant facts and is unwilling to conclude on the evidence before him that the Complaint was brought in bad faith.
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: August 2, 2009