Chemco Rubber Ltd. v. Mr. Greg Ricks
[Indexed as: Chemco Rubber v. Greg Ricks]
[Indexed as: CHEMCO.COM]
e-Resolution
Administrative Panel Decision
Case Number: AF-0235
Commenced: 26 May 2000.
Judgement: 13 July 2000.
Panel Member: Giovanni Ziccardi
Domain name - Domain name dispute resolution policy Canada - Canadian Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use.
Complainant, Chemco Rubber Limited, is a leading supplier of tire
repair materials, tools and equipment for the Canadian tire repair industry.
The company has been in business under the 'Chemco' name since the early
1960s. Its products are sold in Canada, the United States and internationally,
and the company has plants and offices in Toronto and Vancouver,
Canada.
Respondent, Mr. Greg Ricks, registered the domain name 'chemco'.
The domain name has never been used in connection with a business, brand,
product, or service that can be linked in any way to the word 'chemco',
and the domain name has been routed at various times to several sites.
Held, Domain name transferred.
The domain name at issue is identical to the trademark 'Chemco',
a registered trademark of Chemco Rubber Limited. The term 'Chemco'
has no meaning or significance other than as a trademark identifying 'Chemco'
services.
Respondent has not established any rights or legitimate interests
in respect of the domain name. The domain name in issue was not used and
there was not a bona fide offering of goods or services.
The name 'Chemco' was primarily registered for the purposes of either
selling, renting, or otherwise transferring it to the owner of the trademark
or service mark, or a competitor, for
valuable consideration in excess of the documented out of pocket costs
directly related to the Domain Name.
Policies referred to
Rules for Uniform Domain Name Dispute Resolution Policy
Ziccardi, Panelist: -
1. Parties and contested domain name.
The Complainant is Chemco
Rubber Limited, a company that operates within the industry of repair materials
for tires and belts, namely patches, rubber, cements, liquid rubber buffers,
cleaners and solvents, fabric material, tire repair plugs, tire valves
and valve hardware. This company is headquartered in the City of Toronto,
Ontario, Canada.
The Respondent is Mr. Greg
Ricks, living in the City of Los Angeles, California, United States, owner
and operator of Yada.com E-mail, a free web-based e-mail service.
The domain name at issue
is 'chemco.com'; the Registrar was Network Solutions, Inc.
The remedy sought is the
transfer of the domain name to the Complainant.
2. Procedural History
The electronic version of
the Complaint form was filed on-line through eResolution's Website on May
26, 2000. The hardcopy of the Complaint Form was received on May 26, 2000.
Payment was received on the same date. Upon receiving all the required
information, eResolution's clerk proceeded to confirm the identity of the
Registrar for the contested Domain Name, verify the Registrar's Whois Database
and confirm all the required contact information for Respondent, verify
if the contested Domain Name resolved to an active Web page and verify
if the Complaint was administratively compliant.
The inquiry leads the Clerk's
Office of eResolution to the following conclusions: the Registrar is Network
Solutions Inc., the Whois database contains all the required contact information,
the contested Domain Name resolves to an active Web page and the Complaint
is administratively compliant.
An email was sent to the
Registrar by eResolution Clerk's Office to confirm the name of the billing
contact and to obtain a copy of the Registration Agreement on May 26, 2000.
The requested information was received on May 30, 2000.
The Clerk's Office then
proceeded to send a copy of the Complaint Form and the required Cover Sheet
in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain
Name Dispute Resolution Policy.
The Clerk's Office fulfilled
all its responsibilities under Paragraph 2(a) in connection with forwarding
the Complaint to the Respondent on June 6, 2000. This date is the commencement
date of the administrative proceeding.
On June 6, 2000, the Clerk's
Office notified the Complainant, the Respondent, the concerned Registrar,
and ICANN of the date of commencement of the administrative proceeding.
On June 23, 2000, the Respondent
requested an extension to submit the response. The Clerk's Office granted
an extension to the respondent until June 27, 2000 at 12:00h.
On June 27, 2000, the Respondent
submitted, via eResolution internet site, his response. The signed version
of the response was received on the same date.
On June 29, 2000, the Clerk's
Office contacted Mr. Giovanni Ziccardi, and requested that he acts as panelist
in this case.
On June 30, 2000, Mr. Giovanni
Ziccardi, accepted to act as panelist in this case and filed the necessary
Declaration of Independence and Impartiality.
On June 30, 2000, the Clerk's
Office forwarded a user name and a password to Mr. Giovanni Ziccardi allowing
him to access the Complaint Form, the Response Form, and the evidence through
eResolution's Automated Docket Management System.
On June 30, 2000, the parties
were notified that Mr. Giovanni Ziccardi had been appointed and that a
decision was to be, save exceptional circumstances, handed down on July
13, 2000.
3. Factual background.
The Complainant, Chemco
Rubber Limited, is a leading supplier of tire repair materials, tools and
equipment for the Canadian tire repair industry. The company has been in
business under the 'Chemco' name since the early 1960s. Its products are
sold in Canada, the United States and internationally, and the company
has a plant and office in Toronto, Canada and an office in Vancouver.
The Respondent, Mr. Greg
Ricks, registered the domain name 'chemco'. The domain name has never been
used in connection with a business, brand, product, or service that can
be linked in any way to the word 'chemco', and the domain name has been
routed at various times to several sites.
4. Parties' Contentions.
A. Complainant.
The Complainant highlights,
first of all, that 'chemco' is a registered trademark of Chemco Rubber
Limited.
The domain name Chemco.com
is identical to the registered trademark and the name of the business of
the company, and the Complainant declares that this fact will confuse potential
customers in Canada, the United States and internationally.
The Complainant declares
also that the domain name has never been used in connection with a business,
brand, product, or service that can be linked to the word 'Chemco'.
The Complainant noticed
also that, for some time, the Chemco.com domain name was for sale on the
PerfectName.com website along with other Domain Names. Then the domain
name at issue was being redirected to Motherboards.com, a site which markets
motherboards for computers. There is, according to the Complainant, no
conceivable connection between motherboards and the Chemco trade name.
B. Respondent.
First of all, according
to the Respondent, the term 'Chemco' is a combination of two abbreviations
for common terms employed in everyday speech in the United States. The
term 'chem' being an abbreviation or prefix for the words chemical, chemistry
or chemist and the term 'co' being an abbreviation for the word company.
Second issue, an Internet
search reveals that there are thousands of sites that employ the term 'chemco'
and numerous companies having a trademark containing the words chemco.
There is nothing, according to the Respondent, that would prevent Mr. Ricks
from registering the mark 'chemco' in connection with its use in a free
web based e-mail service.
The Respondent says also
that was intention of Mr. Ricks to provide free web hosting for one or
more companies named Chemco, and that this web hosting service has been
in the planning and development phase for several years.
Mr. Ricks declares also
that he has never offered to sell or rent the name to the complainant and
that the Complainant has failed to establish required elements of proof
of bad faith.
5. Discussion and Findings
A. Copy or Similarity.
The domain name at issue
is identical to the trademark 'Chemco', a registered trademark of Chemco
Rubber Limited. As demonstrated by the Annexes, the registration was filed
on November 25, 1963, with the name being officially registered on December
31, 1964. Most recently the registration was renewed December 31, 1994
and is currently in effect. The trademark is registered with the Canadian
Intellectual Property Office; application number 027089; registration number
TMA 138657.
The Panel, according to
the Complainant's statements, believes that the term 'Chemco' has no meaning
or significance other than as a trademark identifying 'Chemco' services.
The first requirement is
satisfied: the contested domain name is identical or confusingly similar
to a trademark or service mark in which the complainant has rights.
B. Illegitimacy.
First of all, there is no
active website at 'chemco.com' address According to this Panel, the Respondent
has not established any rights or legitimate interests in respect of the
domain name under any of the circumstances set forth in Paragraph 4 (c)
of the ICANN Policy.
The domain name in issue
was not used and there was not a bona fide offering of goods or services.
In this case the domain
has never been used in connection with a business, brand, product, or service
that can be linked to the word 'Chemco'. More, during the time in which
the Chemco.com domain name has been held by the registrant, the domain
name has been routed at various times to sites entitled PerfectName.com
(see Annex C), MotherBoards.com (see Annex D) and most recently Yada.com
(see Annex E), none of which have any association with any business operating
under the Chemco name nor the company.
It is not clear, to the
Panel, the purpose for these redirects; it is sure, on the other side,
that Mr. Ricks did not use or was preparing to use the domain name in connection
with a bona fide offering of goods or services, neither has been commonly
known by the domain name.
According to this Panel
also the second requirement is satisfied: Mr. Ricks has no rights or legitimate
interests in respect of the domain name.
C. Bad faith.
According to this Panel,
the name 'Chemco' was primarily registered for the purposes of either selling,
renting, or otherwise transferring it to the owner of the trademark or
service mark, or a competitor, for valuable consideration in excess of
the documented out of pocket costs directly related to the Domain Name.
There is also sufficient
evidence to find that Mr. Ricks has registered the domain name in conjunction
with a bulk registration of domain names for the purpose of sale.
According to this Panel,
the Domain Name has been registered and is being used in bad faith.
6. Conclusions.
The evidence, submissions
of the parties, examination of documents, ICANN Regulations compel this
Panel to conclude and decide that:
- The domain name 'chemco'
registered by Mr. Greg Ricks is identical to the registered mark of 'Chemco',
a mark in which the Complainant has rights.
- Mr. Greg Ricks has no
legitimate interest in respect of that domain name, has not been commonly
known by this domain name, and is not making legitimate non commercial
or fair use of the domain names.
- The domain name at issue
was registered and is being used in bad faith by Mr. Greg Ricks.
The Respondent failed to
prove any of the three circumstances set out in ICANN Policy at Paragraph
4 (c).
Accordingly, the Complainant's
request is granted and, in accordance with Paragraph 3 (c), the Panel orders
that the registration of the domain name at issue, 'chemco' be transferred
from Mr. Greg Ricks to Chemco Rubber Limited.
This done and signed in
Castelfranco Emilia, Modena, Italy,
on July 13, 2000.
(s) Giovanni Ziccardi
Presiding Panelist
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