WIPO Domain Name Decision: D2006-0143

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Simple Abilities Inc. v. Jeff Hoogveld and Adaptivies Abilities Inc.

Case No. D2006-0143

1. The Parties

The Complainant is Simple Abilities Inc., Richmond, British Columbia, Canada, represented by Richard Rainey Law Corporation, Coquitlam, British Columbia, Canada.

The Respondents are Jeff Hoogveld, Kelowna, British Columbia, Canada and Adaptivies Abilities Inc., Calgary, Alberta, Canada.

2. The Domain Names and Registrars

The disputed domain name <simpleabilities.com> is registered with eNom.

The disputed domain names <simpleabilities.net> and <simpleabilities.org> (herein collectively “the domain names in dispute”) are registered with The NameIT Corporation d/b/a Aitdomains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2006. On February 3, 2006, the Center transmitted by email to eNom and The NameIT Corporation d/b/a Aitdomains.com a request for registrar verification in connection with the domain names at issue. On February 3, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent, Jeff Hoofveld, is listed as the registrant of the domain name <simpleabilities.com> and providing the contact details. On February 14, 2006, the NameIT Corporation d/b/a Aitdomains.com transmitted by email to the Center its verification response confirming that the Respondent, Adaptivies Abilities Inc., is listed as the registrant of the domain names <simpleabilities.net> and <simpleabilities.org> and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 25, 2006. The Center verified that the Complaint, together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on March 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2006. The Response was filed with the Center on March 29, 2006.

The Center appointed J. Nelson Landry as the sole panelist in this matter on April 20, 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 April 26, 2006, the Panel issued a first Procedural Order requesting the Respondent Hoogveld to certify his Response in accordance with paragraph 5(b)(vii) of the Rules and the Complainant to comment on the Respondent’s Response, in particular in respect of establishing common law rights in the trademark SIMPLE ABILITIES and also of the registration in bad faith of the domain names by the Respondent Hoogveld. While the Respondent Hoogveld acknowledged receipt of the Procedural Order, he did not provide the requested certification of his evidence. The Complainant provided First Supplemental Submissions on May 5, 2006.

On May 15, 2006, the Panel issued a second Procedural Order inviting the Complainant to supplement its evidence of common law rights in the trademark and to distinguish in its evidence the use of SIMPLE ABILITIES as a trademark from that of a corporate denomination or trade name, which rights do not come under the jurisdiction of UDRP proceedings and the Respondents to comment on the additional evidence of the Complainant, which possibility he had expressed pursuant to the First Procedural Order, and to provide the certification under the Rules in respect of all the Respondents’ representations and statements of facts. The Complainant provided First Supplemental Submissions on May 24, 2006. On May 29, 2006, the Respondents provided a Reply to the Complainant’s First and Second Supplemental Submissions, as well as the certification pursuant to the second Procedural Order.

4. Factual Background

The Complainant was constituted as a British Columbia company on July 11, 2001, with Jeff Hoogveld, the Respondent, named as a director and two other individuals, Lorne Broten and Leslie Geirholm, along with Respondent Hoogveld as officers of the company.

Respondent Hoogveld first registered the domain name <simpleabilities.com> on October 25, 2001, and then both domain names <simpleabilities.net> and <simpleabilities.org> on May 10, 2005.

The trademark SIMPLE ABILITIES (herein “the Trademark”) is not registered, but has been used by the Complainant in association with the sales, wholesale and retail, of about 3,500 products and services principally intended for use by persons with physical disabilities. Prior to June, 2005, the Complainant’s principal business was conducted through the website at “www.simpleabilities.com”.

In June 2005, the Respondent Hoogveld decided to resign as Chief Operating Officer of the Complainant, although he remained a director of the Complainant.

The two other officers of the Complainant were completely unaware that the domain name <simpleabilities.com> had been registered in October 2001, in Respondent Hoogveld’s name until the latter ceased being active in the company and later on in October 2005 demanded payment from the Complainant to use the domain name in dispute. The Complainant had always understood that it already owned it.

The Respondent Hoogveld, in his capacity as an officer of the Complainant, was responsible for the maintenance of the Complainant’s principal intellectual property assets, including the Complainant’s domain names.

The Respondent Hoogveld is a related party to the Respondent Adaptivies Abilities Inc. (“AAI”).

The domain names <simpleabilities.net> and <simpleabilities.org> have not been used by the Respondents.

5. Parties’ Contentions

A. Complainant

The Complainant contends to have common law rights in the Trademark SIMPLE ABILITIES which has been continuously used since at least 2001 in association with the services of locating resources to assist people with disabilities, offer wholesale and retail sales of products and other services principally intended for use by persons with physical disabilities and further submits that the three domain names in dispute which are registered by the Respondents are identical to the Trademark.

The Complainant represents that prior to June 2005 the Complainant’s principal business was conducted and promoted through the website at “www.simpleabilities.com” and in sending various circular letters and brochures. Its commercial revenue was gained principally through e-commerce transactions generated through that website.

The Complainant alleges that the Respondent Hoogveld , as officer of the Complainant, was responsible for the maintenance of the Complainant’s principal intellectual property assets, including the Complainant’s domain names, had no legitimate rights and interests in registering the domain names in dispute in his name and furthermore alleges that the Respondent Hoogveld at all times held the domain name <simpleabilities.com> as bare trustee for the Complainant and that after his resignation in June 2005 as Chief Operating Officer of the Complainant, he remained a fiduciary of the Complainant. The domain names in dispute were registered in contravention of these obligations, and in breach of his duty as bare trustee of the domain names.

The Complainant represents on belief that Respondent Hoogveld is a related party to the Respondent Adaptivies Abilities Inc.

The Complainant contends that, unbeknownst to it, the Respondent Hoogveld, while he was a director of the Complainant, used the domain name <simpleabilities.com>, for the purpose of re-directing web traffic from the Complainant’s website, to the Respondent’s website “www.adaptiveabilities.com”, and thus disrupting the legitimate business of the Complainant which has temporarily had to relocate its website to “www.simple-abilities.com” and yet contends that notwithstanding this step, it has suffered a significant and demonstrable reduction in its website traffic and commercial revenues.

The Complainant contends that Respondent Hoogveld has thus caused the domain name <simpleabilities.com> to be redirected to “www.adaptiveabilities.com”, which is an e-commerce website unrelated to, and competitive with the Complainant. The effect and apparent intent of such redirecting was to divert web traffic and commercial business away from the Complainant and to the owners of the “www.adaptiveabilities.com” website.

Finally, the Complainant alleges that the domain names <simpleabilities.net> and <simpleabilities.org> have not been used by the Respondents and said domain names have been acquired by the Respondents for the exclusive purpose of “cybersquatting” or preventing the Complainant from acquiring ownership of the domain names.

In its Second Supplemental Submissions, the Complainant represented with the assistance of nine exhibits produced that the Trademark had been used in association with its services.

B. Respondent

The Respondent Hoogveld filed a Response and a Reply with specific comments on each of the nine exhibits submitted by the Complainant pursuant to Procedural Orders No 1 and No 2.

The Respondent Hoogveld who has three family members living with disability has been involved since 1988 in helping and working with people with disabilities in community organizations as a volunteer board member and active participation. He represents that the Complainant was a small start-up company of three people from which Lorn Brothen resigned as chief financial officer in March, 2005 and the company had severe financial difficulties and was unable to carry out its activities as evidenced by a series of letters and e-mails accompanying the Response.

The Respondent Hoogveld contends that he personally purchased the domain name <simpleabilities.com> to test his concept, the design and the possible implementation of a solution for disabled persons on the Worldwide Web.

He strongly denies having tried to sell in full or in part the domain names in dispute to the Complainant, which domain names he had managed and personally registered since 2001.

As to the operations of the Complainant, Respondent Hoogveld contends that there are no documents or agreement involved to buy, sell, trade or lease any personal property between the three individual officers which were individually working from their homes with their own equipment covering their own expenses. The Complainant was without physical location other than a third-party mailbox, and had no intention to set up a location to manage the business.

The Respondent Hoogveld submits that there were no services ever employed directly or indirectly that could have magnified the Complainant’s presence in the marketplace and which could have created a trademark. He represents that the initial development of the website, after the concept and design, did not begin until 2003 at which point all pages on the website were generated with little or no communication with vendors and or product manufacturers. He further submits that the Complainant had no wholesale sales.

Furthermore, the Respondent Hoogveld contends that the Complainant had no marketing plan developed to create a website, awareness customer loyalty, company branding and furthermore that Lorne Geirholm, the person responsible for marketing, refused to participate with company marketing events and that the company became insolvent before the website was even fully finished as evidenced by numerous e-mails, accompanying the Response.

The Respondent Hoogveld further denies having ever been personally employed by the Complainant, but he was reimbursed for his services as a contractor and that Lorn Brothen had withdrawn his services before he, himself, withdrew his contractual services.

The Respondent Hoogveld furthers contends that he offered a license for the domain name <simpleabilities.com> to the Complainant which was refused. He further denies the breach of trust allegations made in the Complaint.

In respect of Adaptive Abilities, the Respondent Hoogveld represents that it is a private company in which he has a contractual interest and he works from his home with his own tools, while Samson Industries is a company registered to himself similarly to the private companies of the two other officers.

The Respondent Hoogveld acknowledges that, by mistake, for a short period of time the domain name <simpleabilities.com> was directed to Adaptive Abilities but that was at the time that the said domain name was inactive and subsequent to the license offer refused by the Complainant.

Furthermore, the Respondent Hoogveld, having personally registered and paid for the domain name <simpleabilities.com>, considers it his personal property and disagrees with fiduciary characterization made by the Complainant.

In his Reply, Respondent Hoogveld represents that the website of the Complainant was never terminated and in operation, that Mr. Geirholm and Mr. Broten created false documents within the exhibits produced, and by way of justification, he specifically singles out exhibits F and G. Respondent Hoogveld represents that said two exhibits were created on May 28, 2008, while they were produced for the Panel by the Complainant on May 24, 2006.

While not denying the existence of other exhibits produced, Respondent contends that they did not have as wide a use or distribution as the Complainant represents and reiterates that the Complainant did not engage in any marketing activity, at best a few brochures were passed around and a handful of out-bound calls were made.

Finally, Respondent Hoogveld submits that the Complainant did not have any office of its own, that the different officers, himself, Mr. Geirholm and Mr. Broten were all operating from their respective residences as reflected in the addresses in some of the exhibits of the Complaint (Exhibit B). At times, the Complainant had a mailbox at the UPS store and thereafter the address and telephone numbers of the Kelowna office were dropped in order to reduce costs. He further represents that the company had a few suppliers with whom it had dealer or reseller agreements.

Respondent Hoogveld stated in his Response that he “will not and can not” contest the domain names <simpleabilities.net> and <simpleabilities.org>.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the complainant has rights, and

(ii) The Respondents have no rights or legitimate interests in respect of the domain name; and

(iii) The domain names have been registered and are being used in bad faith.

Comments on the evidence

Prior to engaging in the discussion, the Panel considers it appropriate to comment on the quality and sufficiency of the evidence in this case which were the cause of the two Procedural Orders.

The Trademark SIMPLE ABILITIES is not registered, but this fact is not a bar to a claim under the Policy. However, it is necessary for the Complainant to not only state that it used the Trademark but also to establish that it has acquired common law rights in the Trademark as distinct from the corporate denomination and trade name of the Complainant, when, as in the present case, all three comprise the same terms “Simple Abilities”.

The Complainant did not state when the respective domain names in dispute had been registered nor when the Complainant’s company had been set up. The Panel located said information. On the other hand, while one of the Respondents, obviously without any legal background, has provided a Response accompanied by numerous copies of letters and e-mail communications, he did not initially provide the certification.

In fairness to both parties and with the hope that there would be better evidence produced, two Procedural Orders were issued by this Panel and both parties took advantage to supplement and comment on the evidence. Respondent Hoogveld also provided the certification required under the Rules. The latter characterized many of the facts and representations by the Complainant as personal and malicious attacks upon him and he in turn provided many facts and information which are not relevant to the three criteria to be considered under the Policy and Rules. Many of the issues, such as the absence of company reports to shareholders, alleged insolvency of the Complainant and termination of the support of the developer of the website raised by the Respondent Hoogveld are not relevant to these proceedings.

Substantive issues

A. Identical or Confusingly Similar

In the absence of any registration of the Trademark, the Panel has to determine if the Complainant has any common law rights in the Trademark. It is not essential in these proceedings that common law trademark rights had been established before the registration of a domain name in dispute. See Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 and Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575.

As reflected in the factual background, the Complainant was set up on July 11, 2001, adopted the name Simple Abilities and initiated the preparation of its activities. The domain name <simpleabilities.com> was registered by the Respondent Hoogveld on October 25, 2001.

First, the Complainant stated that it was conducting its business through its website and then provided nine different exhibits in its Second Submission pursuant to the Procedural Order No. 2.

Throughout the review of these exhibits, the Panel observed that the Complainant at times has used its trade name Simple Abilities instead of its corporate name with “inc.” to identify itself when, by way of example, the Panel read “Simple Abilities is a one stop source….”, “Simple Abilities has over 3500 products in 14 convenient groups”. as well as in its name and address at the bottom of its stationary, as illustration of numerous instances of the use of Simple Abilities as a trade name.

However, in each of the exhibits, the Trademark appears in the logo form with the website address underneath it and then frequently in sentences such as “Simple Abilities resource centre”, “the Simple Abilities website” or “the Simple Abilities online catalog”, to mention only a few, as illustration of use of the Trade-mark. The Panel has also observed in these last two illustrations that there is no apostrophe after Abilities, which presence would have reflected a trade name use so as to identify the online catalog of Simple Abilities.

It is therefore established within the evidence that the Trademark SIMPLE ABILITIES has been used on all correspondence, various letters of wide circulation such as to The Workers Compensation Board (WCB)in Canada, reabilitation specialists, brochures, banners at trade shows and public exhibitions, promotional material, e-mail and advertisements of its activities. While Respondent Hoogveld does not acquiesce the large distribution of documents, he admits at least that some of the exhibits were circulated to WBC groups in British Columbia, and out-bound calls were made (exhibits A, B and C) and even acknowledges that he personally “cut and pasted” the Complainant logo into a Microsoft Word generic template on his home computer and shared it with Mr. Geirholm and Mr. Broten so that they could also use it on their home computer. The Panel appreciates that this contribution of Respondent Hoogveld was obviously to permit all three officers to communicate with other people under the logo of the Complainant, not simply for the ornamentation of their computer main page.

According to the evidence, for a long period of time “Simple Abilities” was associated only with the Complainant, whether it was used as a Trademark, a trade name or the corporate denomination and was distinctive of the Complainant.

This Panel is satisfied from the evidence presented, even taking into account the comments of Respondent Hoogveld, that the Complainant has used the Trademark to a sufficient degree to derive benefits therefrom. Had the Complainant applied in Canada to register the Trademark in association with its services, it is likely that it would have obtained a registration notwithstanding the common terms “Simple” and “Abilities” which constitute the mark. Upon considering the Trademark, the services associated therewith, while these terms are suggestive, they are not descriptive of the nature of the services associated with the Trademark, the whole in conformity with Canadian trademark law and jurisprudence.

Even without any quantity of revenue or advertising being particularized, this Panel has no difficulty in finding that the term Simple Abilities has been used both in the logo and in the documents as noted above, as the Trademark, which is distinctive of the Complainant. Its use in promoting the Complainant’s services constitutes Trademark use in Canada under the Trade-marks Act R.S.C., c. T-10, s 4 (2).

The Panel determines that the Complainant has established that it has common law rights in the Trademark.

In the present circumstances where the domain names in dispute are identical or confusingly similar to the Trademark, it is not necessary to have substantial goodwill or fame associated with said Trademark.

The three domain names in conflict are identical to the Trademark of the Complainant. As held in numerous UDRP panel decisions, the addition of “.com”, “.net” or “.org” does not change the situation and finding of being identical or confusingly similar.

The first criterion has been met.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case that the Respondent lacks right or legitimate interests in the domain names in dispute by stating that the Respondent Hoogveld while he was responsible for the intellectual property assets of the company and a director of the company had registered the domain name <simpleabilities.com> in his own name, although it is the Complainant, through its three officers on their home computers, that made use of this domain name on its website at least until financial difficulties arose in 2005.

The registration of the domain name <simpleabilities.com> had not been authorized by the Complainant or the other officers and it was only in June 2005 that such fact was discovered by the Complainant. The registration of the two other domain names in dispute was not authorized either.

There is no evidence, even within that provided by Respondent Hoogveld that Respondents have ever engaged in any legitimate business under the Complainant’s Trademark other than for the Complainant. While Respondent Hoogveld has filed a Response and a Reply, he did not in his representations and evidence rebut the case made by the Complainant on this point and it is certainly fair to conclude that the holding of the domain names in dispute denies Complainant access to the use of these domain names corresponding to its Trademark.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It should be noted that the circumstances of bad faith are not limited to those above.

The Complainant contends that the domain names in dispute were registered and used in bad faith.

It is well established in UDRP decisions namely Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, supra, and Uitgerverij Crux v. W. Frederic Isler, supra, that trademark rights need not be established at the time that a domain name in dispute was registered, in particular in October 2001, in the case of the domain name <simpleabilities.com>.

The company of the Complainant was set up in July 2001, with Respondent Hoogveld as its director and the person responsible for the management of the intellectual property assets, this latter fact not being denied by the Respondent Hoogveld either in his Response or in his Reply. Under such a context, when the company was barely starting up, this Panel finds that the registration of the domain name <simpleabilities.com> by the Respondent Hoogveld was in bad faith as were the registrations of the two other domain names in dispute. They were registered without the authorization and knowledge of the Complainant and the domain names in dispute are identical to the Trademark of the Complainant. The Complainant never acquiesced this situation once it found out about these registrations. Until 2005, when financial difficulties of the Complainant caused the departure of Respondent Hoogveld, the domain name <simpleabilities.com> was used by the three officers in such capacity for the benefit of the Complainant.

The use or retention thereof by Respondent Hoogveld from the summer of 2005 was against the will and without any authorization from the Complainant. From that point in time, the fact that Respondent Hoogveld used the domain name <simpleabilities.com> to re-direct web traffic from the Complainant’s website to the Respondent’s website “www.adaptiveabilities.com”, has thus disrupted the legitimate business of the Complainant which has temporarily relocated its website to “www.simple-abilities.com”. Respondent Hoogveld acknowledges that such activities were temporary and rapidly terminated. This does not excuse the fact that such behavior is one of bad faith, even more so when one considers that such redirecting was to an e-commerce website unrelated to and competitive with the Complainant. The Panel agrees with the Complainant that the effect of such redirecting was to divert web traffic and commercial business away from the Complainant and to the owners of the “www.adaptiveabilities.com” website. The fact that the Complainant was in financial difficulties or insolvent at that time is no excuse to create more difficulties.

Finally in respect of the two domain names <simpleabilities.net> and <simpleabilities.org> their registration made without justification constitute acts of “cybersquatting” which were done in bad faith.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the domain names <simpleabilities.com> <simpleabilities.net> and <simpleabilities.org> are identical or confusingly similar to the Complainant’s Trademark; and

(b) the Respondents have no rights or legitimate interests in the domain names in dispute; and

Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <simpleabilities.com>, <simpleabilities.net> and <simpleabilities.org> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Dated: June 4, 2006