ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

1. Parties and Contested Domain Name

The Complainant Trans-Canada Signs of Anjou, Quebec, Canada brought the present complaint against the Respondent Gregory Signs & Engraving Limited of Downsview, Ontario, Canada. The domain name at issue is transcanadasigns.com registered by Gregory Signs & Engraving Limited. The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy (ICANN policy), adopted by the internet Corporation for Assigned Names and Numbers on October 24, 1999. 

2. Procedural history

The electronic version of the Complaint form was filed on-line through eResolution Website on June 12, 2001. The hardcopy of the Complaint Form and annexes were received by eResolution on June 12, 2001. Payment was received on June 14, 2001

Upon receiving all the required information, eResolution's clerk proceeded to the required administrative inquiry. The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is Network Solution, The Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on June 12, 2001. The requested information was received on June 15, 2001.

The Clerk 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 forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on June 15, 2001. This date is the official commencement date of the administrative proceeding.

the emails to the postmaster@transcanadasigns.com were returned "undeliverable" and one of the two faxes failed.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent and according to the Canada Post tracking system, all were delivered.

The respondent failed to submit a Response either via eResolution website or by sending a signed version.

Between July 16 and July 26 the Clerk's Office contacted 4 panelists and requested that they act in this case. None of them were able to act at this time. On July 26. 2001 Mr. Ross Carson accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On July 26, 2001, The clerk's Office forwarded a user name and password to Mr. Ross Carson allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. 

On July 26, 2001, the parties were notified that Mr. Ross Carson had been appointed and that a decision was, save exceptional circumstances, to be handed down August 9 , 2001. 

All the information on the procedural history was provided by the Clerk at eResolution.

3. Factual Backgrounds

The complainant has registered the trademark TRANS-CANADA in Canada under  Registration No. TMA 176,137, registered on 14 May, 1971. The trademark TRANS-CANADA is registered in association with the wares "Panneaux-réclames, enseignes publicitaires de toutes sortes et/ou lumineuses et/ou luminescentes" based on use in Canada since at least early as 12 June 1947.The registrant disclaimed the right to the exclusive use of the word CANADA apart from the trademark. The registrant at the time of registration was Les Enseignes Trans-Canada (1967) Ltee. A copy of the registration and renewal certficate is attached as Exhibit A-1 to the Complaint.

The solicitors for the Complainant advised the Registrar of Trademarks on 7 May 2001 that the registrant of Registration No. TMA 176,137, TRANS-CANADA wished to renew the trademark and that the name of the trademark owner should be changed from Les Enseignes Trans-Canada of which was attached to the letter to the Registrar of Trademarks but not attached to the Complaint. (Exhibit A-1 to the Complaint).

Complainant submits that it became aware of the use of the domain name transcanadasigns.com by Respondent when Complainant decided to register said domain name. Complainant submits that its attorneys wrote to Respondent on June 26, 2000 advising that "their use of the domain name transcanadasigns.com was ill-founded in fact and in law since the last the rights of Complainant on the trademark TRANS-CANADA and its use since the last thirty years." (Subparagraph 3, Bad Faith, Exhibit C-1). 

Complainat has attached as Exhibit C-2 a copy of a letter dated July 5, 2000 from Respondent's attorneys. Complainant advises that the letter states: "Further, or in the alternative, should your client wish to purchase the subject domain name, it is invited to put forth a reasonable proposal".

4. Parties' Contentions

A. Complainant

(i) The Complainant submits that the domain name transcanadasigns.com identical or confusingly similar to the Complainant's registered trademark TRANS-CANADA. 

(ii) The Complainant submits that the Respondent has no rights or legitimate interests in the domain name transcanadasigns.com. 

(iii) The Complainant submits that the Respondent registered and is using the domain name transcanadasigns.com in bad faith. 

(i) Identical or confusingly Similar

The Complainant has registered the trademark TRANS-CANADA in Canada under Registration No. TMA 176,137, registered on 14 May, 1971. The trademark TRANS-CANADA is registered in association with the wares "Panneaux-réclames, enseignes publicitaires de toutes et/ou lumineuses et/ou luminescentes" based on use in Canada since at least early as 12 June 1947. The registrant disclaimed the right to the exclusive use of the word CANADA apart from the trademark. 

The Complainant submits that it has being carrying on business in the creation, manufacturing and installation of signs of all kinds throughout Canada since at least 1967.

The Complainant submits that its business is identical to that of the Respondent Gregory Signs & Engraving Limited. Complainant has attached a copy of Respondent's web page at Exhibit A-2. Exhibit A-2 discloses that entry of the domain name transcanadasigns.com connected directly to a web page of information about Gregory Signs & Engraving Limited

Complainant submits that the use by the Respondent of the domian name transcanadasigns.com creates a mass confusion with the Complainant's clients since they have been in business for the past thirty years and have been utilizing the trademark and the trade-name TRANS-CANADA throughout Canada for that period of time. (Para 7 of Complaint)

Complainant further submits that Respondent's use of the domain name transcanadasigns.com constitutes an infringement because it creates confusion with a registered trademark.

(ii) No Rights or Legitimate Interests

Complainant submits that there is no relation between the trade-name Gregory Signs & Engraving Limited and the use by Respondent of the domain name transcanadasigns.com 

Complainant advises that Complainant is the owner of trademark TRANS-CANADA.

Complainant submits that before the registration of the domain name transcanadasigns.com Respondent never operated or marketed its services under the trade-name Trans-Canada even though it had been in business for almost twenty years.

Complainant submits that Respondent's intent is to confuse Complainant's clients for the sole purpose of illegally soliciting them.

(iii) Registered and used in bad faith

Complainant submits that respondent's use of the domain name transcanadasigns.com has created enormous confusion within the market in which the Complainant is involved and continues to create confusion for the sole benefit of Respondent. 

Complainant submits that it became aware of the use of the domain name transcanadasigns.com by Respondent when Complainant decided to register said domain name. Complainant submit that its attorneys wrote to Respondent on June 26, 2000 advising that "their use of the domain name transcanadasigns.com was ill-fouded in fact and in law since he rights of Complainanton the trademark TRANS-CANADA and its use the last thirty years. "(Exhibit C-1)   

Complainant has attached as Exhibit C-2 a copy of a letter dated July 5, 2000 from Respondent's attorneys. Complainant advices that the letter states: Further, or in the alternative, should your client wish to purchase the subject domain name, it is invited to put forth a reasonable proposal.

Complainant submits that by utilizing illegally the domain name transcanadasigns.com Respondent is benefiting illegally from the enormous goodwill created by Complainant by at least thirty years of non stop operation.

B. Respondent

The Respondent did not file a Response.

5. Discussions and Findings

(1) Identical or Confusingly Similar

Paragraph 4(a)(i) of the ICANN policy requires that the Complainant establish that the domain name in dispute transcanadasigns.com is identical or confusingly similar to the Complainant's trademark or trademarks.

The Complainant's trademark is TRANS-CANADA. It is comprised of the words trans and Canada connected by a hyphen, both of which are words of low inherent distinctiveness when used in association with the wares "Panneaux-réclames, enseignes publicitaires de toutes et/ou lumineuses et/ou luminescentes". Trademarks of low inherent distinctiveness can by substantial use over a period of time acquire a trademark significance or secondary meaning. The TradeMarks Acts in some countries will permit registration of marks of low inherent distinctiveness upon proof of acquired distinctiveness. The Complainant submits that the Respondent has never used TRANS-CANADA or any mark including TRANS-CANADA as part of a tradename or trademark in Canada in association with signs.

The Complainant submits that it has used the trademark TRANS-CANADA and the tradename TRANS-CANADA throughout Canada for thirty years.

Complainant did not provide sales figures or samples of use of the trademark.

The trademark TRANS-CANADA is not identical to the domain name in dispute transcanadasigns.com. However, use of the trademark TRANS-CANADA and a good portion of the Complainant's business name TRANS-CANADA SIGNS INC. in association with the wares signs and publicity signs of all types aver a period of 30 years would indicates that the puplic would be likely to associate the domain name transcanadasigns.com with the Complainant's company.

Having reviewed the submissions I find that the domain name in dispute transcanadasigns.com is confusingly similar to the Complainant' trademark and tradename.

(2) No Rights or Legitimate Interest

Paragraph 4(a)(ii) of the ICANN policy requires the Complainant to establish that the Respondent has no rights or legitimate interest in the domain name transcanadasigns.com.

Paragraph 4(c) of the ICANN Policy sets out some circumstances which if found by the Panel t be proved based on its evaluation of all the evidence presented, shall demonstrate Respondent's rights to and legitimite interests to the domain name for purposes of Paragraph 4(a)(ii).

Entry of the web site address transcanadasigns.com connected directly to a web page providing information on the founding, growth, current size and capacities of Gregory Signs and Engraving Limited (Exhibit A-2). The Complainant states in the Complaint that the Respondent has never used TRANS CANADA as part of a tradename or trademark in association with Respondent's sign business. Areview of the description of Gregory Signs and Engraving Limited web page discloses no reference to any trademark or tradename incorporating TRANS CANADA (Exhibit A-2). As mentioned above the web site describing Gregory Signs appears in response to entry of the web site address transcanadasigns.com.

I find that a balance of probabilities the Complainant established that the Respondent has no rights or legitimate interest in rspect of the domain name transcanadasigns.com

(3) Bad Faith Registration and Use 

Paragraph 4(a) (iii) of the ICANN policy raises the issue whether the domain has been registered and is being used in bad faith. Paragraph 4(b) supplies four examples of situations which, if any of them is found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Evidence of bad faith can include using a domain name to intentionally attract, for commercial gain, Internet users to the Respondent's web site (ICANN Policy, para 4(b)(iv)).

The Respondent failed to file a response.

Based on the submissions and evidence, I conclude That Respondent has registered the domain name transcanadasigns.com with the intent to direct Internet traffic to the web site of Gregory Signs & Engraving Ltd. for commercial gain. Respondent's web site (Exhibit A-2) offers customers large commercial signage that includes banners, cut and printed vinyl, pylon signs, illuminated sign boxes, canopies, channel lettering and neon signs as well as small custom signs.

Typically, when Internet users wish to find the web site of a company or a particular brand when they do not know the URL, they will type in the name of the company or the brand with the extension ".com" Here, an Internet user searching for information about the Complaint Trans-Canada Signs Inc. Would type in the term "transcanadasigns.com" and be directed to Respondent's web site by using complainant's name for commercial gain.

Respondent has been in the business of sign making for 19 years which is the same line of business as Complainant. It is likely that Respondent has Knowledge of Complainant's business and is aware of Complainant's trademark and tradename incorporating the words TRANS-CANADA used in association with Complainant's sign business.

After reviewing and assessing facts summarized immediately above i conclude that the Respondent Gregory Signs & Engraving Limited registered the domain name in dispute transcanadasigns.com in bad faith and is using the domain name in bad faith by holding the same with a view to directing Internet traffic to its web site for commercial gain. By using the domain name transcanadasigns.com to attract internet users to Gregory Signs & Engraving Limited web site the Respondent's activities are proof of registration and use of the domain in dispute in bad faith as provided for in subparagraph 4.b.(iv) of the Uniform Domain Name Dispute Resolution Policy.

6. Conclusion

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the trademark and trademark and tradename in which the Complainant has rights; that the respondent has no rights or legitimate interests in respect of the domain name; and that the Respondent's domain name has been acquired and registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.

7. Signature