Intrawest ULC v.
Claim Number: FA0711001108455
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.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to 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.
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.
The Complainant owns and/or operates
mountain, golf and/or beach resorts in
Complainant’s trademark INTERWEST has been
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.
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 ¶
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.
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.
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”).
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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