WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Encana Corporation v. Dallas Paisley, Paisleys Contracting Company

Case No. D2018-2358

1. The Parties

The Complainant is Encana Corporation of Calgary, Canada, represented by Gowling WLG LLP, Canada.

The Respondent is Dallas Paisley, Paisleys Contracting Company of Prince George, Canada.

2. The Domain Names and Registrar

The disputed domain names <encana.company> and <encana.world> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 17, 2018, 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. On October 24, 2018, the Complainant filed an amended Complaint to address an administrative formality.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2018.

The Center appointed J. Nelson Landry as the sole panelist in this matter on November 28, 2018. 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.

4. Factual Background

The Complainant is the owner of the following trademark registrations, each containing the term “ENCANA”, seven registered in Canada, first the term ENCANA, two ENCANA & Design, the earliest one registered in 2004, then one ENCANA NATURAL GAS and three others ENCANA NATURAL GAS & Design and five similar ones registered in the United States of America, namely one term ENCANA and four others ENCANA NATURAL GAS (hereinafter the “ENCANA Trademark” or the “ENCANA Trademarks”). The first of said ENCANA Trademarks was used since 2002, and all others have been used thereafter and generated significant goodwill and wide spread recognition associated therewith.

The use of the said ENCANA Trademarks in the Complainant’s activities in association with their promotion have generated significant financial results, in particular over USD 6 billion in revenue for each of the years 2016 and 2017. The Complainant has also registered the domain name <encana.com> and operated its related website since 2002.

The Respondent registered the disputed domain name <encana.company> on June 29, 2018. The Complainant, concerned over the misleading nature of the website associated with the disputed domain name <encana.company>, issued a cease and desist letter dated July 4, 2018, sent by email to the Respondent, to which no response was received. A second follow up letter was similarly sent by email to the Respondent on August 2, 2018, which also remained without a response. Subsequently to these emails, the Respondent registered the disputed domain name <encana.world> on September 2, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant represents that in respect of each of the two disputed domain names, the Respondent is not a licensee of any of its ENCANA Trademarks and the latter has not otherwise obtained authorization from the Complainant to use any of the Complainant’s ENCANA Trademarks nor to register any of the two disputed domain names. The Complainant further represents that the addition of the generic Top-Level Domain (“gTLD”) suffix “.company” or “.world” is without legal significance in the determination of the similarity of the two disputed domain names with the ENCANA Trademark. See Research In Motion Limited v. International Domain Names Inc. / Moniker Privacy Services, WIPO Case No. D2008-0780.

The Complainant concludes that by reason that the disputed domain names incorporate the whole of the term ENCANA Trademark or the ENCANA element in the ENCANA Trademarks, the two are therefore confusingly similar to said ENCANA Trademark which has been misappropriated and further adds that the gTLD “.company” and “.world” serve to enhance the confusion since consumers are likely to be misled into believing that the disputed domain names resolve to a website operated by the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names based on the following representations or facts that the Complainant has never had any relationship with the Respondent since the latter is not licensed nor authorized, either directly or indirectly, to register or use any of the ENCANA Trademarks in any manner, including in or as part of a domain name as any of the two disputed domain names.

The Complainant further submits that a use which intentionally trades on the notoriety of another person or company cannot constitute a bona fide offering of goods or services and to conclude otherwise would mean that the Respondent could rely on intentional infringement to demonstrate a legitimate interest and interpretation obviously contrary to the Policy. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 and Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791.

The Complainant further submits that there is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services. To the contrary, the Complainant states that the Respondent has hyperlinked the disputed domain names to its website located at “www.paisleyscontracting.com” which promotes the Respondent contracting and construction services where furthermore a number of these services are promoted as overlapping with the services of the Complainant as well as with services of other energy companies.

Finally, the Complainant represents that there is no evidence that the Respondent has been commonly known by the disputed domain names or that the Respondent is making or intends to make a legitimate noncommercial or fair use of the disputed domain names as demonstrated within the domain name website of the Respondent wherein representations of current or future related activities are planned or in preparation. The Complainant concludes its representations that the Respondent does not have rights or legitimate interests in the disputed domain names and therefore cannot benefit from the application of paragraph 4(c) of the Policy.

Relying upon paragraphs 4(b)(ii) and (iv) of the Policy, the Complainant submits that the disputed domain names were registered and are used in bad faith.

The Complainant respectfully submits, as contemplated in paragraph 4(b)(ii) of the Policy, that the Respondent has previously engaged in a pattern of registering domain names which contain trademarks to which it is not entitled and in the present case has prevented the Complainant from registering the disputed domain names and relies on two UDRP decisions to claim that only two unauthorized domain name registrations are sufficient to establish a pattern of such registration incorporating the trademarks of third parties. See New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 and Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338. In this respect the Complainant represents that the Respondent has registered at least seven domain names where each contains a third party trademark, namely the two ENCANA disputed domain names herein and <suncor.world>, <suncor.company>, <tervita.world>, <tervita.company>, and finally <secondcup.company>. The Complainant argues the Respondent thus has engaged in a pattern of unauthorized domain name registrations, as further trademarks are incorporated in all of the domain names registered by the Respondent without any entitlement which is, according to the Complainant, sufficient to establish bad faith as per paragraph 4(b)(ii).

Thirdly, the Complainant, relying upon paragraph 4(b)(iii), submits that the Respondent registered the disputed domain names for the purpose of disrupting the business of the Complainant, a competitor of the Respondent who offers goods or services similar to those offered by the Complainant, the trademark owner of the ENCANA Trademarks. See Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772. In this respect the Complainant represents that the Respondent has hyperlinked the disputed domain names to its website in promoting first its energy, efficient contracting and construction services and then indicating that it is skilled in the fields of “mining” and “petroleum” exploration.

In reference to paragraph 4(b)(iv) of the Policy, the Complainant claims that the presence of bad faith registration is present when there is such use of a dispute domain name to intentionally attempt to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s Trademarks as to source, sponsorship, affiliation or endorsement, a situation present when the disputed domain names are identical to and confusingly similar with the ENCANA Trademarks.

The Complainant further claims that the surrounding circumstances in the present case further support a finding of bad faith registration and use of the disputed domain names. The Complainant argues that its numerous registrations of the ENCANA Trademark and its constructive knowledge to third parties of the Complainant’s rights and secondly the fame associated to the ENCANA Trademarks, the Respondent must have had actual knowledge of the ENCANA Trademarks. The Complainant also claims that the Respondent’s statement of its expertise and use of the Complainant’s logo on the website to which the disputed domain names resolve lead the reader to the conclusion that the Respondent had actual knowledge of the Complainant’s Trademarks when it proceeded to register the two disputed domain names. This knowledge is further enhanced upon considering the Respondent’s failure to respond to the first letter of the Complainant but subsequently proceeding rapidly to register the second disputed domain name, <encana.world>, all such activities supporting a claim of registration and use of the disputed domain names in bad faith.

The Respondent did not file any Response to nor comments on the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has clearly established that it owns the ENCANA Trademarks and has used the same since 1902 to achieve a group of well-known and highly distinctive Trademarks. The Panel observes that the sole minor distinction with the disputed domain names resides only in the presence of the suffixes “.company” and “.world”, and it is well established that the presence of such gTLD suffix does not in any way diminish the conclusion that the disputed domain names are identical to the Complainant’s ENCANA Trademarks, which the Panel finds justified. The Panel finds that the disputed domain names are confusing similar to the Complainant’s ENCANA Trademarks.

The first criterion has been met.

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant needs only to make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by producing evidence of its rights or legitimate interests.

The Complainant stated that actually there was no business relationship with the Respondent nor had the Complainant granted the Respondent any license to use its ENCANA Trademarks, or permission to register and use any of the two disputed domain names. Furthermore, the Complainant represents that there is evidence that there is preparation to exploit the disputed domain names for commercial gain. The disputed domain names revert to a website exploited by the Respondent “www.paisleyscontracting.com” (Exhibit 5 of the Complaint) which informs the visitors with elaborate evidence showing various excerpts of the said website thus associated with the disputed domain names. The Complainant represents in Exhibit 5 many mentions or references to diversified offers of business and interest, particularly when in said Exhibit 5 there are reproduced extracts of certain sections of the Respondent’s website “www.paisleyscontracting.com”, in which the reader will observe a section under a heading “Welcome to our future!” and a series of names or logos of various parties or company trademarks, including Second Cup, Tervita Earth Matters, Suncor, and Encana. There is no business relationship between the Complainant and the Respondent. The Panel does not see in these representations (in the absence of the license from the Complainant) how this may substantiate any rights or legitimate interests.

On the basis of this evidence the Panel finds that the Respondent has no rights or legitimate interests in any of the two disputed domain names. The second criterion has been met.

C. Registered and Used in Bad Faith

It is clear to the Panel from the evidence, in particular the website of the Respondent to which the disputed domain names revert, the references to the Complainant’s ENCANA Trademark along with the trademarks of other companies under the heading “Welcome to our future!”, such as Suncor, Tervita, and Second Cup, that the Respondent was well aware of the activities of the Complainant and had the Complainant in mind. Upon receiving the first cease and desist letter from the Complainant on August 9, 2018, the Respondent declined the invitation of the Complainant to transfer the <encana.company> disputed domain name but immediately proceeded to register the second disputed domain name, without any rights or authorization from the Complainant. The Respondent was therefore clearly aware of the ENCANA Trademarks of the Complainant at the time he registered the two disputed domain names on different dates, without any license or authorization. The second registration was done pursuant to the reception of the cease and desist letter of the Complainant requesting the transfer of the first disputed domain name <encana.company>, demonstrating domain name registration in bad faith.

The proposed activities by the Respondent as alleged by the Complainant and observed by the Panel upon visiting the Respondent’s website to which a visitor or the Panel in the present instance, was redirected to references “expansion” activities or plans by the Respondent involving the ENCANA Trademark of the Complainant and third parties’ trademarks. The Panel finds that in observing these representations by the Complainant that the Respondent was also using the disputed domain names in bad faith in association with trademarks of other parties or companies, namely Suncor, Tervita, and Second Cup.

The Panel, on the basis of this convincing evidence, determines that the two disputed domain names were registered and used in bad faith. The third criterion has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <encana.company> and <encana.world> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist
Date: December 11, 2018