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PARTIES
The Complainant is Sorel Corporation, Portland, OR, USA (“Complainant”)
represented by Gary H. Lau, of Stoel Rives LLP. The Respondent is
Domaine Sales Ltd., Sharjah, UNITED ARAB EMIRATES (“Respondent”) represented
by Ari Goldberger.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "sorel.com", registered with Bulkregister.com.
PANEL
On March 20, 2001, pursuant to Complainant’s request to have the dispute
decided by a One Member Panel, the Forum appointed James P. Buchele as
the sole Panelist. The undersigned Panelist certifies that he has
acted independently and impartially and to the best of his knowledge and
has no known conflict in serving as a panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(“the Forum”) electronically on February 15, 2001; the Forum received a
hard copy of the Complaint on February 20, 2001.
On February 16, 2001, Bulkregister.com confirmed by e-mail to the Forum
that the domain name "sorel.com" is registered with Bulkregister.com and
that the Respondent is the current registrant of the name. Bulkregister.com
has verified that Respondent is bound by the Bulkregister.com registration
agreement and has thereby agreed to resolve domain-name disputes brought
by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On February 20, 2001, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a
deadline of March 12, 2001 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax,
to all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@sorel.com by e-mail.
A timely response was received and determined to be complete on March
12, 2001.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the
Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The Complainant, Sorel Corporation, is a Delaware corporation
with its principal place of business in Portland, Oregon. Sorel Corporation
is a wholly-owned subsidiary of Columbia Sportswear Company, which manufactures
and distributes outdoor sportswear throughout the world.
2. On September 22, 2000, Sorel Corporation purchased all of the
intellectual property relating to the SOREL marks, including the goodwill
of the business symbolized by the SOREL marks, from William H. Kaufman
Inc., (“Kaufman”) Sorel Corporation continues the manufacture, distribution,
advertising, promotion, and sale of footwear and related clothing products
under the SOREL mark throughout the world.
3. Kaufman began making footwear in 1908 in Ontario, Canada.
In 1959, Kaufman began marketing a line of cold-weather footwear under
the SOREL mark and has spent substantial time and money promoting the SOREL
mark. The SOREL mark is the core brand of Sorel Corporation, and
the SOREL cold-weather footwear products have been sold in over 27 countries
around the world with annual sales averaging approximately $100 million
Canadian dollars. The SOREL mark is well recognized by consumers
of cold-weather footwear.
4. Complainant contends that Sorel Corporation has valuable and
legally protected rights and legitimate interests in the SOREL mark.
Kaufman duly registered “SOREL” as a trademark for its products with the
U.S. Patent and Trademark Office with a date of first use of 1963 and holds
Registration No. 918,570 registered on August 17, 1971. The SOREL trademark
is therefore incontestable under 15 U.S.C. § 1065 of the U.S. Trademark
Act as the trademark was in continuous use for five consecutive years following
federal registration in 1963 and is still in commercial use. The SOREL
mark was also registered with the Canada Intellectual Property Office on
March 17, 1978 with a date of first use at least as early as 1959.
In addition to the U.S. and Canadian registrations, Complainant holds the
exclusive rights to the SOREL trademark and various forms of the mark that
have been registered in several dozen countries for many years.
B. Respondent
1. Respondent, Domaine Sales Ltd., contends it registered the domain
name “SOREL.COM” for the sole reason for use in connection with its Cities.com
and WorldNews.com web site networks. Sorel is the name of a city in Canada
and respondent has registered many other city domain names for the same
purpose. Respondent contends this fact establishes both Respondents’
legitimate interest in, and its lack of bad faith in the registration and
use of, the disputed domain name.
2. Respondent claims that Sorel is a geographic term and therefore
Complainant may not monopolize its use under the Policy.
3. Respondent claims that it has not offered the “SOREL.COM” domain
name for sale or used it to offer goods in competition with Complainant’s
outdoor sportswear products or to disrupt Complainants business and therefore
bad faith cannot be shown.
FINDINGS
1. Complainant and its predecessor companies have made commercial use
of the term SOREL in connection with the manufacture and distribution of
outdoor footwear throughout the world for over forty years.
2. Complainant holds an uncontestable trademark registered by
the U.S. Trademark and Patent Office on August 17, 1971 to use the term
SOREL in connection with “footwear; namely shoes and boots”. Complainant
has also protected its mark with registration in Canada and other countries.
3. The SOREL mark is well recognized by consumers of cold-weather footwear.
4. Respondent filed for registration of the domain name “SOREL.COM”
on August 9, 1997.
5. Sorel is the name of a village in the province of Quebec, Canada.
6. Complainant has not shown how Respondents use of the domain name
“SOREL.COM” conflicts with or interferes with its protected interests.
7. There is no evidence that Respondent has acted in bad faith under
Section 4(c) (ii) as alleged in the complaint. Although Respondent
has registered a number of domain names, there is no evidence that this
was done in a manner targeted to prevent the Complainant from reflecting
its SOREL mark in connection with marketing of its footwear products online.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) instructs this Panel to “decide a complaint on the
basis of the statements and documents submitted in accordance with the
Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect
of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The domain name “SOREL.COM” registered by the Respondent is identical
to a trademark or service mark in which the Complainant has rights.
Rights or Legitimate Interests
Respondent is not commonly known by the SOREL mark, but is rather known
by the name “Domaine Sales Ltd.” Policy ¶ 4(c)(ii). Respondent’s
contention that the domain name was registered for use in connection with
its cities.com and worldnews.com websites, it is not convincing in face
of its use of the domain name as an oil and gas site prior to receipt of
the Complainant’s notice to Respondent regarding its use of the SORREL
mark. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16,
2000) (finding no rights or legitimate interests in the domain name where
there is no proof that the Respondent made preparations to use the domain
name or one like it in connection with a bona fide offering of goods and
services before notice of the domain name dispute, the domain name did
not resolve to a website, and the Respondent is not commonly known by the
domain name); Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO
May 2, 2000) (finding that the Respondent had no rights or legitimate interests
where he decided to develop the website for the sale of wall products after
receiving the Complainant’s “cease and desist” notice).
Registration and Use in Bad Faith
Respondent has shown that Sorel is used as a geographic term. Complainant
cannot claim an exclusive right to use the name SOREL as it is not exclusively
associated with Complainant’s business.
The Complainant has not established that:
(1) that Respondent registered for the purpose of sale to the
Complainant or otherwise transferring the domain name to the Complainant
for valuable consideration in excess of out of pocket costs. Policy
¶ 4(b)(i).
(2) that Respondent registered the domain name in order to prevent
a trademark owner from reflecting the mark in a domain name. Policy ¶
4(b)(ii).
(3) that Respondent registered the domain name primarily for
the purpose of disrupting the business of the Complainant or a competitor.
Policy ¶ 4(b)(iii).
(4) that Respondent intends to divert customers from Complainant’s
business for Respondent’s commercial gain. Policy ¶ 4(b)(iv).
See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat.
Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s
ownership and purported use of the domain name frustrates Complainant’s
efforts where the record does not indicate any purpose or intent on the
part of the Respondent to prevent Complainant from reflecting its mark
in a corresponding domain name, to disrupt the business of a competitor,
or to intentionally attract the customers of Complainant to Respondent’s
site by creating a likelihood of confusion).
DECISION
The Complainant has failed to show that Respondents registration and
use of the domain name “SOREL.COM” is in bad faith. Complainant has not
established that it holds exclusive rights to use of the term. It
is the decision of the Panel that the requested relief is denied and that
registration of the domain name “SOREL.COM” not be disturbed.
James P. Buchele,
Panelist
Dated: March 28, 2001
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