Compresseurs Quebec wins a WIPO favourable judgement over Entreprise Larry. For more informations visite:
http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0240.html
The Parties
The Complainant is Inter-Power A.K. Corporation, St-Laurent, Quebec, Canada, represented by Fares Kabbani, Canada.
The Respondent is Entreprises Larry Inc., Montreal, Quebec, Canada, represented by Lozeau L’Africain, S.E.N.C., Canada.
2. The disputed domain name is registered with Tucows Inc.
Complainant is in the business of sale of compressors and providing service, parts and maintenance for compressors. It was incorporated on December 16, 1987, under the name Inter?Power A.K Corporation, and its places of business are situated in the province of Quebec, Canada, namely in Montreal and Drummondville.
However, the Complainant has adduced substantial evidence that it used that name prior to the date of the registration and indeed for some 15 years. Unregistered trademarks are recognized in Canada and in particular in Quebec. This is confirmed in Les Accessoires de Bagages Hudson v. Les Attaches Tri?Point Inc. et Johnson (Cour supérieure de Québec, July 21, 2003) at para. 44.
Shell International Petroleum Company Ltd v. Allen Jones, WIPO Case No. D2003?0821, provides a definition for unregistered marks: “An unregistered mark (as, for example, it is called in the USA) or common law trademark (e.g. as periodically called in England and other common law countries) is obtained when a trademark has been in continuous use and has obtained a distinctive character in association with the Complainant.”
In the present case, Complainant has provided evidence that it has been known under the name Compresseurs Quebec and has been using that name since the year 1990. All of Complainant’s bills, business cards and documentation refer to “Compresseurs Quebec.” More importantly, the Complainant has shown that it has used the name in connection with its advertising.
For all these reasons, the
Panel finds that Complainant has rights in the mark COMPRESSEURS QUEBEC
“The addition or subtraction, of a single character, such as a letter or number, to a mark for use in a domain name has not precluded Panels from finding the domain name to be identical or confusingly similar to a mark, especially where the conversion is from singular to plural.”
Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s unregistered mark COMPRESSEURS QUEBEC.
Although the word “Compresseur” has a link with the activities of Respondent, it does not offer any evidence concerning its intent to use the domain name in connection with a bona fide offering of goods or services. Respondent was already using the domain name to offer its services, and the contents of this website appear to be exactly the same as in “www.compresseurquebec.com” website.
Moreover, Respondent does not contend that it has been commonly known by the disputed domain name. Respondent could have resorted to many other names to describe its activities, namely to distribute “manufacturing brands of compressors and components.” Contact email addresses on end by and the words “compresseur” and “quebec” are not used on the website.
The Policy paragraph 4(b) sets forth four non?exclusive criteria for Complainant to show bad faith registration. Those criteria include the statement that:
“(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.”
Moreover, the evidence in this case is that these two competitors both use the Internet to offer their equipment and services relating to compressors. Complainant has used the website “www.compresseursquebec.com” since 1999. Respondent uses the website “compresseurlarry.com” since 2000. Then, in 2003, Respondent registered the domain name in dispute , while never making any use of the expression “Compresseur Quebec” in the “www.compresseurquebec.com” website, the latter having in fact the same content as that of the “www.compresseurlarry.com” website.
This created the likelihood of confusion with Complainant’s trademark and name (and with its domain name for that matter). It seems clear that there would be a danger of diverting customers who were looking for Complainant’s site to Respondent’s sites.
Therefore, according to the Policy paragraph 4(a)(iii), it appears that Respondent has registered and used the domain name in dispute in bad faith.
8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Thomas Webster
Presiding Panelist
Daniel J. Gervais
Panelist
Christiane Féral-Schuhl
Panelist
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