The domain name of a common last name Trudeau.com was saved in a UDRP today.
How common is the name “Trudeau”?
Consider that Pierre Trudeau was twice the prime minster of Canada and hat the domain holder is the best selling author Mr. Kevin Trudeau and that the founder of the company filing the complaint was a Mr. Joseph-Arthur Trudeau.
The domain name Trudeau.com was registered on October 11, 1995.
So this domain is 18 years old which could be a record for the age of a domain subject to a UDRP.
Here are the relevant facts and findings by the three member panel:
“The Complainant Trudeau Corporation 1889 Inc, states as its name indicates that it has been in business since at least 1899.
“It currently manufactures and sells Kitchen and Table products in North America under the trademark TRUDEAU, which it has done since the mid-1990s.
“The name of the company is derived from that of a Mr. Joseph-Arthur Trudeau who worked for the company for many years, and who was appointed President of the company in 1919.
“Complainant filed copies of several registrations of the trademark TRUDEAU, either in block capital letters or in script form, in Canada, USA, China and the European Union and it contends that this name is identical to the disputed domain name trudeau.com.
“In Canada, it is not possible to register as a trademark the name or surname of an individual who is living or who has died in the preceding 30 years unless it has been used by the applicant so as to have become distinctive. For this reason Complainant did not attempt to register the trademark TRUDEAU until 1999”.
“Complainant contends that Respondent has made no active use of the disputed domain name as it merely shows a home page which lists websites that refer to the sale of kitchen products that have no connection with itself.
“Furthermore, it is alleged that the disputed domain name is inactive and simply parked.
“Respondent has therefore never made any active, or demonstrable preparations to use the name in connection with a bona fide offering of goods or services.
“Complainant also contends that Respondent has acted in bad faith and that it is indisputable that Respondent must have had Complainant in mind when registering the disputed domain name in an attempt to trade on Complainant’s goodwill.
“Respondent claims to be, in fact, a Mr. Kevin Trudeau, who is a best selling author of books relating to “natural cures” and weight loss.
The “Web Team”, which is named as the owner of the disputed domain name is actually the staff that assist him. The disputed domain name was used from 1995 to 2004 to promote various products that Mr. Trudeau sold or endorsed for sale”.
“Mr. Trudeau himself is the proprietor of a US registration for the trademark KEVIN TRUDEAU which was registered on February 2, 2010.
Respondent then proceeds to quote from numerous UDRP Decisions to support his argument that he does have rights and a legitimate interest in the disputed domain name and that it has not been registered in bad faith. On the basis of these, he makes the following points:
- He is not in the business for the registration and sale of expired domain names for commercial gain. His is an ongoing business so the fact that the disputed domain name is placed with a parking company is not relevant in this case;
- It has been held that there is nothing per se illegitimate in using a domain parking service;
- Unlike in other decisions involving a parking service, in this case Respondent derives no revenue from his use of one;
- It may be true that the name of the Respondent is not known by the disputed domain name, but its e-mail address is <webteam@TruMgmt.com>. This actually does suggest a connection with Mr. Kevin Trudeau, and a simple search for the Respondent’s address would have brought up results that clearly indicate Mr. Kevin Trudeau.
- To rebut a prima facie showing for a lack of rights or legitimate interest, a Respondent only needs to show “a plausible, non-infringing explanation for selecting the disputed domain name”. This he has done.
- Several copies of screen shots from the website at the disputed domain name that were filed by Respondent show that Mr. Trudeau’s use of the disputed domain name began nearly 15 years ago.
“In addition to his use of the disputed domain name, Mr. Trudeau states that he has also used the name “Kevin Trudeau” in connection with a bona fide offering of goods or services since long before this present action was commenced. :
“He maintains that this name corresponds to the disputed domain name. He also points out that KEVIN TRUDEAU is registered as a trademark in the USA. ”
“He also established the company Trudeau Approved products, Inc. in 2011. It is the Trudeau name that drives this business, and he claims to have been using this name as an identifiable mark in commerce, and to be well known by it in several industries for more than 25 years”.
“The Disputed domain name <trudeau.com> was registered on October 11, 1995.
“Complainant is a very old, established Canadian company although with facilities also in the USA. Its trademark, TRUDEAU, is derived from the name of one of its early Chairman. ”
“However it was not until the mid-1990s, fairly recently, that it began to make and sell it current range of Kitchen and table goods”.
“Respondent is identified as Web Team, but it is actually owned by a Mr. Kevin Trudeau. He is the author of a number of self-help books and he has been engaged in a variety of business ventures either under his full name or abbreviated to simply ‘Trudeau’, for many years”.
The word TRUDEAU is a surname. ”
“It is the surname both of a man hired by the original founders, in 1889, of Complainant and who eventually became the President of the company, as well as of the man behind Respondent”.
“There was also a Mr. Pierre Trudeau who was well-known as a statesman and Premier of Canada firstly in the 1970s and again in the 1980s”.
“TRUDEAU is also a registered trademark belonging to Complainant and it is the subject of several registrations copies of which, in Canada USA, the EU, and China, were supplied by Complainant. The earliest of these is Canadian Registration No. 590767 which was filed on January 20, 1999 and registered on September 25, 2003, claiming use in Canada as early as October 1, 1996”.
“The disputed domain name was registered on October 11, 1995 but despite having several years’ use of the name TRUDEAU, Complainant did not try to register this name as its trademark until January 1999”.
“There is therefore a gap of four years between the two registrations, although the earliest Canadian trademark registration claimed 1996 as its date of first use. The reason for Complainant’s delay in registering its trademark is because it is a surname and so debarred prima facie from registration under Section 4 of the 1985 Canadian Trademarks Act”.
“The gap between the registration of the disputed domain name and the registration of the trademark is fatal to Complainant’s case, because it has been held in many decisions under the Policy that where a trademark is registered after the date of a disputed domain name it can be difficult, if not impossible, to prove that the domain name was registered in bad faith – unless it can be proved that the Respondent was already aware of the Complainant. There is no suggestion of that in these proceedings”.
“The disputed domain name was registered four years before the earliest Canadian trademark was filed, and one year before its claimed date of first use. In such circumstances, and in the absence of any proof of earlier rights, the Panel finds that there was no bad faith on the part of Respondent and that paragraph 4(a)(iii) is therefore not proved”.
“In view of the above finding of no bad faith on the part of Respondent, there is no need for the Panel to consider the question of rights or legitimate interest”.
However the Panel declined to find Reverse Domain Name Hijacking.