Intrawest ULC v.
Claim Number: FA0711001108458
Complainant is Intrawest ULC (“Complainant”), represented by Lisa
Martz, of McCarthy Tétrault LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <intrawestresort.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 12, 2007.
On November 12, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <intrawestresort.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 November 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 2007 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is an internationally recognized developer and operator of resort properties.
Complainant owns and operates more than twenty resorts of
different types in
Complainant has used its INTRAWEST mark since at least 1976, and holds trademark registrations for the mark with both the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA430535, issued July 15, 1994) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,931,088, issued October 31, 1995).
Complainant also operates a website at the <Intrawest.com> domain name.
Respondent registered the <intrawestresort.com> domain name on January 26, 2006.
Respondent’s domain name resolves to a website that displays, among other things, hyperlinks to third-party websites in direct competition with the business of Complainant.
Respondent’s <intrawestresort.com> domain name is confusingly similar to Complainant’s INTRAWEST mark.
Respondent does not have any rights or legitimate interests in the domain name <intrawestresort.com>.
Respondent registered and uses the <intrawestresort.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant holds trademark registrations for
the INTRAWEST mark with both the CIPO and the USPTO. These registrations adequately establish
Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that the <intrawestresort.com> domain name is confusingly similar to its INTRAWEST mark inasmuch as the disputed domain name combines Complainant’s entire mark with the generic term “resort,” which has an obvious relationship to Complainant’s business, as well as the generic top-level domain (“gTLD”) “.com.” We agree, concluding that none of the disputed domain name’s alterations to Complainant’s mark sufficiently distinguishes the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to a complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the business in which that complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the burden of presenting a prima facie case that Respondent lacks rights to or legitimate interests in the contested domain name. Once Complainant satisfies this burden, the burden shifts to Respondent to present evidence that it nonetheless has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
On the facts before us, Complainant has met its burden under the Policy, and Respondent, for its part, has failed to respond. Nothing further is required to permit a finding for Complainant under this head of the Policy. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
We will nonetheless examine the record to determine whether there is any basis for concluding that Respondent has rights to or interests in its domain name sufficient for purposes of Policy ¶ 4(c).
We begin by noting that there is no evidence before us indicating that Respondent is or ever has been commonly known by the <intrawestresort.com> domain name, or that Complainant has authorized Respondent to use its mark. Respondent therefore cannot establish that it is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark there in question).
We also observe that there is no disagreement as to Complainant’s allegation to the effect that <intrawestresort.com> domain name resolves to a website that displays hyperlinks to various websites, some of which are in direct competition with the business of Complainant. Such use by Respondent constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We may presume from the record
facts that Respondent is operating the website that resolves from the <intrawestresort.com>
domain name to benefit commercially from click-through fees when an Internet
user selects a hyperlink displayed on the website. Moreover, the disputed domain name and
corresponding website create a likelihood of confusion as to Complainant’s possible
sponsorship of or affiliation with or endorsement of the <intrawestresort.com>
domain name and resulting website. Such
use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003): “Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”
In addition, it appears that Respondent registered the <intrawestresort.com> domain name with at least constructive knowledge of Complainant’s rights in the INTRAWEST trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <intrawestresort.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 17, 2007
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