28th Mar 2001
Sorel Corporation v. Domaine Sales Ltd.
Claim Number: FA0102000096674
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.
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.
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 email@example.com by e-mail.
A timely response was received and determined to be complete on March 12, 2001.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
- 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.
- 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.
- 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.
- 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.
- 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.
- Respondent claims that Sorel is a geographic term and therefore Complainant may not monopolize its use under the Policy.
- 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.
- 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.
- 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.
- The SOREL mark is well recognized by consumers of cold-weather footwear.
- Respondent filed for registration of the domain name “SOREL.COM” on August 9, 1997.
- Sorel is the name of a village in the province of Quebec, Canada.
- Complainant has not shown how Respondents use of the domain name “SOREL.COM” conflicts with or interferes with its protected interests.
- 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.
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).
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