Intrawest ULC v.
Claim Number: FA0711001108455
PARTIES
Complainant is Intrawest ULC (“Complainant”), represented by Lisa
Martz, of McCarthy Tétrault LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oneintrawest.com>, registered with Compana, LLC.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On November 29, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <oneintrawest.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 December 5, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 26, 2006 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@oneintrawest.com by
e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name at issue is confusingly
similar to its trademark; that Respondent has no rights or legitimate interests
in the domain name at issue; and, that the domain name at issue was registered
and is being used in bad faith.
B. Respondent
Respondent contends that it offered to transfer the domain name at
issue to Complainant, but was unable to get the domain protection removed and
obtain the authorization code necessary for the transfer.
FINDINGS
The Complainant owns and/or operates
mountain, golf and/or beach resorts in
Complainant’s trademark INTERWEST has been
used in
Respondent states
that it offered to transfer the disputed domain name to Complainant, but was
“unable to get the domain protection removed” in order to effectuate the
transfer.
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.
The domain name at issue is
confusingly similar to one or both of Complainant’s marks, as it contains
Complainant’s INTRAWEST mark in its entirety, and omits the word “CLUB” from
Complainant’s CLUB INTRAWEST mark. The
inclusion of a gTLD and a generic term such as “one” does not distinguish the
disputed domain name from Complainant’s marks and therefore the disputed domain
name is confusingly similar to Complainant’s marks pursuant to Policy ¶
4(a)(i). See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i)
analysis.”); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189
(Nat. Arb. Forum
Complainant has sufficiently
established its rights in both the INTRAWEST and CLUB INTRAWEST marks pursuant
to Policy ¶ 4(a)(i) dating back to the filing date of the registration held
with the USPTO. See Innomed Techs., Inc. v.
DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent has not
presented any evidence to indicate it has a relationship with Complainant and
has never been granted permission or authorization to use Complainant’s marks
in any way. Additionally, nothing in
Respondent’s WHOIS information indicates that Respondent is or ever was
commonly known by the disputed domain name.
It does not appear that Respondent is commonly known by the domain name at
issue pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
Further, the domain name at issue resolves to
a website that displays a series of “sponsored results” consisting of
resort-related links, some of which refer to Complainant or Complainant’s
resorts, and others who offer services in direct competition with
Complainant. Respondent is not using the
disputed domain name to make a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
or in a legitimate noncommercial or fair way pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with the
complainant, was not a bona fide offering of goods or services); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb.
Forum June 12, 2003) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to websites unrelated to the complainant’s
mark, websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Evidence presented reveals that the domain
name at issue resolves to a page displaying a series of links of competing
third-parties engaged in the same business as Complainant. This evidence suggests the Respondent is
using the domain name at issue in bad faith for the purpose of disrupting
Complainant’s business pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
As the website resolving from the domain name
at issue contains references and information on both Complainant’s INTRAWEST
and CLUB INTRAWEST marks, it would appear that Respondent had constructive
knowledge of Complainant’s marks and therefore registered and is using the
domain name at issue in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oneintrawest.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 17, 2008
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