National Arbitration Forum

 

DECISION

 

Big White Ski Resort Ltd. v. James Henry c/o Private Registration

Claim Number: FA0712001118988

 

PARTIES

Complainant is Big White Ski Resort Ltd. (“Complainant”), represented by E. Blair Forrest, of Pushor Mitchell LLP, 3rd Floor, 1665 Ellis Street, Kelowna, BC V1Y 2B3, Canada.  Respondent is James Henry c/o Private Registration (“Respondent”), represented by Roger S. Watts, of Boughton Law Corporation, Suite 1000 - 595 Burrard Street, Vancouver, BC V7X 1S8, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bigwhiterealestate.com>, which was registered on July 24, 1998 with Enom, Inc. (“Enom”).

 

PANEL

The undersigned, Mr. David H Tatham, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 11, 2007; the Forum received a hard copy of the Complaint on December 13, 2007.

 

On December 12, 2007, Enom confirmed by e-mail to the Forum that the <bigwhiterealestate.com> domain name (“the disputed domain name”) was registered with it and that Respondent is the current registrant of the name.  Enom has also verified that Respondent is bound by the its 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 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of January 10, 2008 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@bigwhiterealestate.com by e-mail.

 

A timely Response was received and determined to be complete on January 10, 2008.

 

On January 15, 2008 an Additional Submission from Complainant was received by the Forum and judged to be timely and in compliance with Supplemental Rule 7.

 

On January 21, 2008 an Additional Submission from Respondent was received by the Forum and judged to be timely and in compliance with Supplemental Rule 7.

 

On January 22, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Big White Ski Resort Limited, operates a ski resort which, it claims, is widely recognized as one of the premier ski resorts in Canada and North America. The resort covers 7,365 acres and has 16 ski lifts and 118 alpine ski runs.  The current assessed value of the developed real estate within the resort area is approximately $649 Million.  Over the past 10 years, Complainant has averaged over 500,000 skier visits per year.  During this period, Complainant has spent approximately $26 Million for improvements to the ski resort, and has incurred approximately $18 million in marketing expenditure

 

Complainant’s Big White Ski Village and Big White Ski Resort consist of extensive real estate properties, including chalets, detached dwellings, town homes, condominiums and hotels.

 

Complainant is the owner of the following registered trade marks:

 

BIG WHITE SKI VILLAGE

Registered in Canada under No. 228,659 on June 23, 1978, claiming use in Canada since at least as early as 1963, for “Advertisement, management and operation of dwelling units; licensed dining; dining lounge and beverage rooms; entertainment facilities; shops for the sale or rental of clothing and equipment; ski schools; ski tours; ski lift facilities; and safety patrols.

[The words ‘SKI VILLAGE’ are disclaimed]

 

BIG WHITE

Registered in Canada under No. 448,822 on October 13, 1995 for “Clothing, namely T-shirts, sweaters and sweatshirts” claiming use in Canada since as early as 1985; and for “Services provided in the business of operating a ski resort; accommodation booking services; ski school services; racing and promotion of sport event services; ski equipment rental services; restaurant and catering services” claiming use in Canada since August 1985; and “Services provided in the business of operating a conference centre” claiming use in Canada since September 1995.  

[The word ‘BIG’ is disclaimed]

 

BIG WHITE

Registered in USA under No. 2,546,131 dated March 12, 2002 for “Promoting the ski races and events of others; ski resort services; ski school services; entertainment, namely, organizing and conducting ski races; ski equipment rental services; accommodation booking services; restaurant and catering services; providing general purpose facilities, namely, a conference center.

 

Complainant also claims rights in the following unregistered marks:

 

BIG WHITE

Used since at least 1985 for real estate development and sales services (as well as numerous other goods and services).

 

BIG WHITE REAL ESTATE

Used since at least August 31, 2001 for real estate development and sales services.

 

Complainant claims to have used and promoted the mark BIG WHITE and additional marks within the BIG WHITE family of marks extensively throughout North America, Europe, Asia and Australia. 

 

Complainant asserts that the disputed domain name <bigwhiterealestate.com> is identical to Complainant’s trademark BIG WHITE REAL ESTATE and the registered corporate name of Complainant’s wholly-owned subsidiary, Big White Real Estate Ltd. This company is an amalgamation of three companies (one of which had the same name) which took place in May 1993.

 

Complainant contends that the only distinctive features of the disputed  domain name, namely the words “big white” are identical to the Complainant’s US and Canadian trademark registrations for BIG WHITE, and merely add the descriptive words “real estate” to the Complainant’s mark.  The addition of a term to Complainant’s mark that describes Complainant’s business, such as the words “real estate” in the instant case, does not create a distinctive mark capable of overcoming a claim of confusing similarity.

 

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name because:

·        Respondent was not making any commercial or noncommercial use of the domain name as of the date of the Complaint.  Respondent had previously made use of the disputed domain name to direct the public to a web site promoting real estate agency services associated with the trade name “Mountain Realty.”  Respondent discontinued use of the domain name in 2002 in response to Complainant’s notification to Respondent and his associated business that the name infringed its trademark rights in Canada and the United States and requesting that Respondent and its associated business should cease and desist from any such use.

·        Respondent was, or ought to have been, well aware of Complainant and its use of its BIG WHITE family of marks, as Respondent’s associated business maintained its main office within Complainant’s Big White Ski Village.  Respondent’s prior use of the disputed domain name had the effect of attracting Internet users to the “Mountain Realty” web site by creating a likelihood of confusion as to the source, sponsorship, affiliation and/or endorsement of that web site and the associated business, which associated business operated for commercial gain in respect of substantially similar services to those in association with which the Complainant had used, and continues to use, its family of BIG WHITE marks.

·        Internet users, seeking information regarding Complainant’s real estate services, holdings and activities, and/or seeking information concerning Complainant’s wholly-owned subsidiary Big White Real Estate Ltd. by keying the domain name into their Internet browser, would receive an error message, a copy of which was annexed to the Complaint. As a result, some of these users might mistakenly conclude that the Complainant no longer maintains real estate operations, thereby diminishing the Complainant’s reputation and the goodwill attached to its BIG WHITE family of marks.

·        Respondent itself has not been commonly known by the disputed domain name, although his associated business has been commonly known as “Mountain Realty” and has operated a web site under that name and the domain name <mountainrealty.ca> since on or before the date that Respondent discontinued use of the disputed domain name in 2002.

·        Respondent cannot be viewed as making any legitimate noncommercial or fair use of the disputed domain name.  Respondent has been “cybersquatting” on the name since at least 2002 for the purpose of preventing Complainant from reflecting the mark in a corresponding domain name and/or or for the purposes of disrupting the business of a competitor, namely the Complainant and/or the authorized licensees of the Complainant’s trademarks.

 

Bad Faith

            Under this heading, Complainant contends as follows –

·        The fame of Complainant’s marks and the widespread reputation of its ski resort could permit the inference that Respondent had actual and constructive knowledge of the Complainant’s marks at the time of registering the disputed domain name and that Respondent knowingly adopted a domain name that was confusingly similar to Complainant’s mark.

·        Respondent’s associated business has indicated to Complainant that it may be prepared to sell the domain name to the Complainant for a figure which the Complainant believes would be in excess of Respondent’s documented out-of-pocket costs directly relating to the domain name.

·        Respondent is making no use of the domain name for its own business purposes.  Respondent’s continued ownership of the domain name, for no apparent reason other than perhaps to sell it, constitutes a passive holding that is evidence of bad faith.

·        Respondent’s prior use of the disputed domain name had the effect of attracting Internet users to the “Mountain Realty” web site by creating a likelihood of confusion as to the source, sponsorship, affiliation and/or endorsement of that web site and the associated business, which associated business operated for commercial gain in respect of substantially similar services to those in association with which Complainant had used, and continues to use, its family of BIG WHITE marks.

·        The dominant purpose of Respondent’s registration and prior use of the domain name can be viewed as making unauthorized and illegal use of the Complainant’s trademark BIG WHITE to enhance commercial activities of Respondent’s associated business, which commercial activities were and continue to be primarily directed at real estate properties comprising Complainant’s Big White Ski Resort and Big White Ski Village.

 

B. Respondent

Trademark

Respondent makes no comments on the alleged similarity of Complainant’s trademarks, but asserts that none of them show “real estate development or sales services” (or similar descriptions) in their lists of wares or services.

 

Rights or Legitimate Interest

Respondent goes on to contend that it does have rights and legitimate interests in the disputed domain name and outlines the following history of, and facts relating to, the name –

·        Although registered in the personal name of Respondent, James Henry, the disputed domain name has always been the property of one of two companies, for each of which the Respondent has acted in some capacity. It was originally the property of Mountain Resort Realty Ltd. (“MRR”), a British Columbia company initially incorporated in 1984. MRR carried on business, since at least 1996, as a provider of real estate purchasing and agency services in the Kelowna and Big White areas and surrounding region.  In 1996, the Respondent was employed as a real estate agent for MRR.

·        On or about July 24, 1998, Respondent registered the disputed domain name and it was thereafter used in MRR’s normal business operations; namely, to advertise real estate properties and services available in and around the Big White area.

·        In 2000, MRR ceased business operations and sold its assets (including the disputed domain name) to a new company, Mountain Realty at Big White Ltd. ("Mountain Realty”). Respondent was at that time a part-owner of Mountain Realty which continued to carry on MRR’s business as a provider of real estate purchasing and agency services in the Kelowna and Big White areas and surrounding region, and has done so on a continual basis since that time.  In so doing, Mountain Realty continued to use the disputed domain name in the same manner as MRR had done, in the course of its normal business operations.

·        It was not until August 31, 2001 that Complainant can claim any rights in the name “Big White Real Estate Ltd.” Complainant wrote to Mountain Realty in 2002, demanding that Mountain Realty discontinue using the disputed domain name, and threatened to take legal action if it did not do so. In direct response to the threat of a lengthy and costly court proceeding (and solely because of that threat), Mountain Realty ceased using the disputed domain name, and has not since resumed its use.  However, Mountain Realty continues to retain the name in the hope that it may resume its use following the resolution of this issue. In the meantime, Complainant’s threats of litigation have forced Mountain Realty to adopt and use the domain name <mountainrealty.ca>.

·        Mountain Realty has continued to operate its real estate business (including offering real estate properties and services for sale in the Big White area), having established itself as a leading player in the Big White real estate market over the last 10 years.

·        Before the present dispute arose, Complainant was not only well aware of Mountain Realty’s business activities and use of the disputed domain name, but also supported those activities and uses, and has continued to do so even after the present dispute arose. In its Response Respondent detailed the following as evidence thereof –

1.      The resort ownership has used Mountain Realty’s services in several real estate transactions over that time, including those spearheaded by Mr. Paul Poluktis, VP of Real Estate Development for the resort;

2.      In 2005, the resort used Mountain Realty as its agent to purchase a Big White restaurant property that Mountain Realty had listed for sale;

3.      From time to time, Complainant and its staff have requested the services of Mountain Realty in submitting opinions of market value or real estate in the Big White area, and in dealing with reporters, marketing firms and tour operators on Complainant’s behalf to publicize those opinions;

4.      Mountain Realty is a major marketing force in real estate sales at Big White, and has worked in close harmony with all of the Big White Ski Resort’s marketing directors and senior staff; and

5.      As recently as the Spring of 2007, Complainant invited Mountain Realty to accompany Complainant to a real estate conference in Hawaii, for the purpose of promoting the resort and speaking on Complainant’s behalf regarding real estate at the resort.

·        The disputed domain name has been (and continues to be) advertised as part of Mountain Realty’s operations on Complainant’s own website.  In several instances, this website directs users to links identifying Mountain Realty and the disputed domain name as sources of real estate information and services in and around the Big White area.  In other words, Complainant’s own website directs users away from its site, to Mountain Realty and the disputed domain name. Attached to the Response was a printout from the “Fast Facts” page on Complainant’s website, dated January 9, 2008 which, at paragraph 22, reads as follows: “For information on buildling (sic) lots, chalets, and condominiums, please call Big White Real Estate Sales at 250-765-3101 or bmoritz@bigwhite.com, or Mountain Realty at 1-877-765-1577 or 250-765-1577 or go to www.bigwhiterealestate.com. Also attached was a further printout from the “About Big White: Real Estate Sales” page on Complainant’s website, dated January 9, 2008 which reads: For more information on the Northern Lights, please contact Mountain Realty at Big White at 1-877-765-1577 or at www.bigwhiterealestate.com.

·        After 2002, Complainant took no further action on the matter until the fall of 2007.  At that time, Complainant’s counsel wrote to Mountain Realty, demanding that the disputed domain name be given over to Complainant, and again threatening to take legal action if Mountain Realty did not do so.

·        In the summer of 2007, Respondent sold his interest in Mountain Realty to that company’s remaining stakeholders.  In so doing, it was agreed that Respondent would take steps to transfer his registration of the disputed domain name to Peter MacLeod, who was at that time, and is currently, a director of Mountain Realty. A transfer request had been received by the registrar for the disputed domain name, and was in the process of being effected, when the present Complaint was filed. Respondent’s authorized representative has also been authorized to make these submissions on behalf of Peter MacLeod and Mountain Realty.

·        Respondent denies that it was “cybersquatting” or otherwise improperly holding the disputed domain name in any way.  Respondent submits that the above facts clearly show that he, and Mountain Realty, made demonstrable preparations to use and did in fact use the name in connection with a bona fide offering of commercial real estate services.  The facts also show that Respondent did so years before having been notified of any dispute on the part of Complainant.

·        Respondent and Mountain Realty have held and used the disputed domain name since July 1998.  The Complainant was aware of this, but raised no issue whatsoever concerning its use until 2002, and did not commence the present proceeding until late in 2007.  Equally telling is the fact that Complainant, despite its stated opposition to Mountain Realty’s use of the disputed domain name, has continued to advertise both Mountain Realty and the name on its own website as a referral for real estate services in the Big White area.  Even if those references have inadvertently been left on Complainant’s website, it is patently clear that at some point, Complainant was aware of, condoned, and supported Respondent’s interest in and use of the disputed domain name.

·        Respondent submits that its bona fides is further demonstrated by the fact that the name “Big White” refers not only to the Big White Ski Resort, but actually represents a commonly-known geographical area, located approximately 50 km east of Kelowna, BC.  That area is characterized by the presence of Big White Mountain, upon a portion of which Complainant’s business activities now take place. That mountain and the surrounding area were commonly known as “Big White” well before Complainant’s commercial operations commenced, and well before Complainant acquired any intellectual property in the name BIG WHITE or derivatives thereof. The Big White area has long been an area of recreational and natural interest.  For example, the BC Government established a provincial Ecological Reserve in the area in 1972, known as “ER 42 – Big White Mountain”.  As proof of this nomenclature Respondent annexed the following documents:

1.      An excerpt from a 1976 BC Government publication titled “Landforms of British Columbia:  A Physiographic Outline”, in which Big White Mountain is referred to by name.

2.      An excerpt from the BC Protected Areas of British Columbia Act and Schedule B thereto, which identify “Big White Mountain Ecological Reserve, established by Order in Council 1166/72”.

3.      An excerpt from a Friends of Ecological Reserves newsletter published in Summer 2003, referring to and describing ER 42 and its history.

·        Complainant’s interest in the name BIG WHITE does not pre-date the above.  Complainant’s own evidence shows that the earliest trademark it registered, “Big White Ski Village”, was not registered until June of 1978, and that it claims use of an unregistered mark BIG WHITE for real estate development and sales services only from 1985. A considerable number of other private entities and businesses have come to use “Big White” in their names, advertising, and Websites.  This is self-evident from even a cursory standard Internet search.

·        Respondent submits that, like other businesses in the area, Complainant originally derived its marks from the well-known “Big White” geographic identifier for the region.  Similarly, the Respondent registered the disputed domain name not to unfairly capitalize on a perceived association with Complainant’s business interests, but rather to provide services to potential real estate purchasers within that known and commonly recognized geographical area. In this regard, Respondent refers to Sun Peaks Resort Corp. v. 505398 BC Ltd., D2003-0873 (WIPO January 8, 2004), where the panel found that the domain name in question had been used only after “Sun Peaks” had been declared a public authority under the BC Municipal Act.  As a result, the panel found that it was a “legitimate, bona fide use for a resident of a municipality to want to offer a portal to inform potential customers of services available there.  Respondent therefore submits that the same considerations should apply here, where the name “Big White” has clearly been recognized by the BC Government and the public to describe a specific geographical area, and where Respondent’s business is directly focused on providing real estate services to residents (and prospective residents) in that area.

·        Respondent submits that its election not to use the disputed domain name between 2002 and the present constitutes no evidence whatsoever of illegitimate use of the name. On the contrary, Complainant admits that its use was discontinued only in response to Complainant’s cease-and-desist demand, made under pain of litigation.  In the Sun Peaks decision (where a similar demand had been made), the panel found:

One reason that could have led this Panel to find an absence of legitimate interest is the fact that the domain name was not used between 1997 and 2003.  However, the Respondent offered a credible explanation:  they received a cease-and-desist letter and, as a small company, did not want to incur the cost of a court battle.  Establishment of rights or legitimate interests in a domain name is not precluded by the absence of active use, when such absence is justified by the circumstances.

Applying this finding to the present case, Respondent submits that its disuse of the disputed domain name between 2002 and the present is justified in the circumstances, and does not assist Complainant.

·        Respondent points out that Complainant has filed no evidence of confusion but, in response to the allegation of confusion, Respondent submits that if there has been any confusion between the disputed domain name and Complainant’s trademarks, it is a direct result of Complainant’s own actions; namely, advertising the disputed domain name and Mountain Realty in obvious conjunction on its own website, yet at the same time forcing the Respondent to discontinue use of it. 

·        Complainant has filed no evidence to show that Respondent had, at any time, an intent to misleadingly divert customers or tarnish Complainant’s trademarks.  Rather, the presence of Mountain Realty’s name alongside the disputed domain name on Complainant’s website, as well as the extensive business dealings between Mountain Realty and Complainant, indicates quite the opposite.

 

Bad Faith

Respondent contends that the disputed domain name should not be considered as having been registered and used in bad faith for the following reasons:

·        Respondent strenuously denies that it at any time offered to sell the disputed domain name to Complainant. Complainant’s bald accusation to that effect is unsupported by any evidence, and offers no details of any alleged offer, when it was made, to whom, or by what medium. There is no evidence of any intent on Respondent’s part to sell the disputed domain name. On the contrary, it is clear from the above evidence that the disputed domain name was not created for any such improper purpose, but rather in furtherance of Respondent’s legitimate business operations.

·        Complainant has filed no evidence that Respondent either registered the disputed domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, or has engaged in any pattern of such conduct.

·        At the time the disputed domain name was created (and until late 2001), Complainant’s subsidiary company “Big White Real Estate Ltd.” did not even exist, and none of Complainant’s ski resort’s trademarks registered prior to that time make any reference to real estate purchasing or agency services.

·        The disputed domain name’s disuse after 2002 (and the reasons therefor which are set out above) do not assist Complainant in proving bad faith on the part of Respondent.

·        Respondent submits that it used the disputed domain name not for the purpose of adopting a name that was confusingly similar to Complainant’s marks, but in order to create a name that was consistent with both its normal business operations and the well-known geographical area within which it conducts that business.

·        There is no evidence that Respondent had any intention of disrupting Complainant’s business, or that any such disruption occurred.  At the time the disputed domain name was registered, Complainant was not a competitor of Respondent, as its real estate subsidiary did not even exist.  Moreover, the presence of Mountain Realty and the disputed domain name as links on Complainant’s site suggest that Complainant and Respondent had a mutually beneficial business relationship.

·        There is no evidence that Respondent has intentionally attempted to confuse Complainant’s customers or improperly lure them away from Complainant’s site.  As stated above, the circumstances under which the disputed domain name was created and used, and the presence of Mountain Realty and the name as links on Complainant’s site, completely contradict such a suggestion.

 

C. Additional Submissions

Both parties filed lengthy Additional Submissions in which they mostly picked holes in each other’s main submissions and disagreed about the import of various UDRP Decisions.  The new facts and arguments to come out of these Additional Submissions can be summarized as follows –

 

Complainant

In its Additional Submission, Complainant contends as follows:

·        Complainant sent an e-mail to Respondent in October, 2001 which, it contends simply alerted Respondent to the fact that the disputed domain name conflicts with Complainant’s trademark and requested that Respondent cease this unauthorized use of Complaint’s trademark. There was no threat to initiate legal proceedings. 

·        Subsequently, there were a number of further communications between representatives of Complainant and Respondent which culminated in a verbal agreement in 2002 whereby Respondent agreed to discontinue its use of the disputed domain name and to transfer it to Complainant after a reasonable transition period of unspecified duration for the purposes of gravitating Respondent’s customers and other members of the public to a new domain name to be adopted by Respondent. 

·        From 2002 to 2007, Complainant made repeated requests to Respondent for the transfer of the disputed domain name as the parties had earlier agreed. Respondent, individually and on behalf of Mountain Realty, repeatedly responded that they had not yet completed the transition to the new domain name, notwithstanding the fact that the disputed domain name had become a dead link that did not even redirect to the Respondent’s new website at <mountainrealty.ca>. Respondent requested additional time, but stated that they would eventually complete the transfer of the disputed domain name as had been promised in 2002.

·        By the fall of 2007, Respondent had sold his interest in Mountain Realty to new owners, including Peter MacLeod. When Complainant again requested the transfer of the disputed domain name as agreed in 2002, in spite of that agreement Mr. MacLeod indicated that Mountain Realty owned the disputed domain name, that it had considerable value and that Mountain Realty had no intention of transferring it to Complainant for no additional consideration. Complainant was left with the impression that Mr. MacLeod was implying that the disputed domain name was most valuable to Complainant, and that he would only be prepared to transfer it to Complainant if he were compensated in a manner commensurate with that perceived value.

·        Eventually, Complainant’s legal counsel provided Mountain Realty’s legal counsel with a letter outlining Complainant’s trademark rights and setting a deadline for Respondent to effect the transfer of the disputed domain name, failing which Complainant’s legal counsel had instructions to “commence UDRP arbitration proceedings against your client immediately thereafter.”  The letter went on to indicate that Complainant reserved “the right to commence litigation against your client in Canada and/or the United States for trade-mark infringement without further notice.”

·        The website links referred to by Respondent are dead links and, to the best of Complainant’s knowledge, have been so since at least the time that Respondent discontinued use of the disputed domain name.  The web page annexed to the Response appears in an obscure and little used section of the Complainant’s extensive website.  The continued inclusion of the cited paragraph was an oversight as it includes a reference to the e-mail address of Brenda Moritz (<bmoritz@bigwhite.com>) who was previously a real estate sales employee of Complainant but who has not been employed by Complainant for over 18 months. While the information on this web page has now been updated, the continued inclusion of the disputed domain name was the result of Complainant’s agreement to the above-mentioned transition period. The other web page annexed to the Response was replaced by Complainant on November 2, 2007 in conjunction with the opening of its Big White Real Estate office. Complainant therefore contends that Respondent’s suggestion that the appearance of the disputed domain name on Complainant’s website somehow serves as an admission of a “legitimate purpose” on the part of Respondent is untenable.

·        Respondent cannot have made any bona fide use of the disputed domain name in circumstances where he knew, or ought to have known, that it infringed Complainant’s trademark rights. In addition, Respondent has not alleged any meaningful commercial use of the disputed domain name, or preparations therefor, since at least the date that Respondent deactivated all links and web pages previously accessible through the disputed domain name. As indicated above, even Respondent’s apparent successors (Mr. MacLeod and/or Mountain Realty) did not have any intention of making any use of the disputed domain name and that they continued to assert control and ownership of the name for no apparent reason other than perhaps to sell it.  Even if the initial use of the name by Respondent could be viewed as legitimate in the circumstances of this case, he cannot be viewed as having had any legitimate interests in the disputed domain name since agreeing that it should be the property of Complainant or since it actually discontinued all actual use of the name.

·        Complainant disputes the suggestion that it knew of Respondent’s registration and use of the disputed domain name since July 1998. Complainant only learned of the nature and extent of Respondent’s registration and use of the disputed domain name in or about August 2001 when it established Big White Real Estate Ltd. and sought to enhance and protect its trademark rights in the marks BIG WHITE and BIG WHITE REAL ESTATE by registering a name identical to the disputed domain name.

·        Complainant agrees that its ski resort, real estate and associated goods and services are located and provided on a portion of a geographical place which is officially recorded and named as “Big White Mountain” in the Canadian Geographical Names Data Base (“CGNDB”) database maintained by Natural Resources Canada, an administrative division of the federal government of Canada. Complainant annexed an excerpt from the CGNDB database, and the associated database query for “Big White,” which indicates that the official name of the relevant geological formation is “Big White Mountain.”  It also annexed a further excerpt from the Natural Resources Canada website indicating that the official geographical names contained in the CGNDB are authorized by the Geographical Names Board of Canada. However, the Complainant’s marks, including its mark BIG WHITE and its associated and derivative marks, such as BIG WHITE REAL ESTATE, have acquired an actual secondary meaning since at least 1978 when Complainant’s predecessors in title registered the trademark BIG WHITE SKI VILLAGE, and at which point the then owners had operated the original Day Lodge for over two years. Complainant’s ski resort and the real estate development contained therein constitute the primary, if not sole, development on Big White Mountain other than certain Forest Service roads built by third parties for logging and other forestry related purposes. Complainant believes that less than one per cent of the annual visitors to Big White Mountain venture outside the boundaries of its ski resort development and primary access road thereto. However, Complainant’s ski resort development constitutes only a small fraction of the geographical area of Big White Mountain. 

·        Complainant has expended considerable time, effort, energy and money advertising and promoting its ski resort development and operations as BIG WHITE and as distinct from the geographical location “Big White Mountain.”  Accordingly, it can be presumed that when the average member of the public refers to “Big White” they are referring specifically to the Complainant’s ski resort development and not to the general geographical location of Big White Mountain.  Even if this were not the case, there is a presumption that a trademark is not generic where, as here, it has been registered in the United States Patent and Trademark Office. Furthermore, it is now incontestable.  Accordingly, the Respondent’s argument that the term BIG WHITE is merely geographically descriptive and therefore incapable of serving as a trademark must be rejected.

·        The original ski resort development and operations, of which Complainant is the successor in title were, in fact, established in 1967.

·        Respondent has not specifically identified any private entities or businesses which it alleges “have come to use” Complainant’s mark BIG WHITE in their names, advertising and web sites but instead has attempted to refer the Panel to evidence existing outside any of the actual submissions of the parties.  Even if this were not prohibited by the applicable UDRP and Supplemental Rules, it is effectively impossible for Complainant to respond to such an allegation in these circumstances or to comment whether such use is unauthorized, authorized or outside of the scope of its trademark rights. However, Complainant can say that there are a number of local businesses using one or more of Complainant’s marks under license. Furthermore, there are numerous unauthorized commercial entities using or attempting to use Complainant’s marks, and/or marks confusingly similar thereto, and in respect of which Complainant is actively enforcing its trademark rights.

·        Respondent has provided no credible evidence that he was commonly known by the disputed domain name during its period of use by him or at all.  Even the cited instances of the appearance of the disputed domain name on Complainant’s website clearly referred to the Respondent by the actual name that it was (and is) known by, namely “Mountain Realty.” Complainant submits that Respondent has never been known as BIG WHITE REAL ESTATE or <bigwhiterealestate.com>.

·        Complainant contends that a Respondent cannot be found to have been making “legitimate” use of a disputed domain name where such domain name contains or is confusingly similar with a Complainant’s trademark and is being used on an unauthorized basis for goods and/or services that are similar to those offered by Complainant under its trademark or service mark (whether registered or unregistered).  Such use constitutes an infringement of a Complainant’s trademark rights, whether or not the Respondent intended to misleadingly divert consumers or tarnish Complainant’s mark(s).

·        In answer generally to Respondent’s contention that there is no evidence of bad faith on its part, Complainant submits that the registration of a domain name despite actual or constructive notice of Complainant’s mark is evidence of bad faith.

 

Respondent

In its Additional Submission, Respondent contends as follows:

·        Contrary to Complainant’s submission, the date of inception of Big White Real Estate Ltd. is indeed relevant to showing a bona fide offering of goods or services by Respondent and/or Mountain Realty in connection with the disputed domain name.  It was only after the creation of that company that Respondent and Mountain Realty received any notice whatsoever of the present dispute.  If Complainant had any issues with Respondent’s longstanding use of the disputed domain name prior to that time (of which there is no evidence), such issues were not (and could not have been) known to either Respondent or Mountain Realty. 

·        Respondent agrees with Complainant’s admission that there were a number of communications between the parties following the October 2001 e-mail. It was in the course of those communications that Complainant made the subsequent threats of legal action referred to in the Response.

·        Respondent and Mountain Realty strenuously deny that they, at any time, agreed to transfer the disputed domain name and Complainant has filed no evidence whatsoever to substantiate this fanciful allegation.

·        Respondent further denies the allegations made by Complainant concerning a proposed “transition period” or that it refused to transfer the disputed domain name when requested to do so.

·        Respondent reiterates that it discontinued its use of the disputed domain name only in response to a direct threat of legal action on the part of Complainant in early 2002. His intention has always been, and remains, to retain the disputed domain name for the legitimate business purposes for which it was created.

·        Respondent contends that Complainant’s entire theory of a transfer agreement and associated transition period is inconsistent with the behaviour of the parties, and the treatment of the disputed domain name. If the agreement of the parties were truly to transfer the name to Complainant for its continued use, it would make no sense at all for them to abruptly shut down the disputed domain name and render it a “dead link.”  To do so would render the disputed domain name of diminished value; its recognition and goodwill value would steadily drop as customers attempted to use it and found no link.  One would instead expect such an agreement to see the link remaining active pending the alleged “transition period.”  The abrupt and extended nature of the shutdown, however, is entirely consistent with Complainant’s threat to take legal action if Respondent did not immediately discontinue using the site.

·        Respondent denies that Mr. MacLeod made any statement that he had no intention of transferring the disputed domain name “for no additional consideration.”  Complainant’s attempt at insinuating an improper motive on the part of Mr. Macleod is without any basis in evidence, and is contrary to the facts set out in the Response.  Any refusal on the part of Mr. Macleod to transfer the disputed domain name has been for the legitimate business purposes and other reasons set out in the Response.

·        Respondent disputes Complainant’s assertion that the web pages annexed to the Response were “dead links” at the time the Response was submitted.  Both pages were readily accessible upon keying in the subject page addresses. In addition, far from appearing in “an obscure and little-used section of the Complainant’s website,” one of them was easily accessible through a link titled “Fast Facts” from the “About Big White” dropdown menu, located on Complainant’s home page.  It is notable that since the Response was filed, that page remains in virtually an identical form, but with the references to Mountain Realty and the disputed domain name abruptly deleted. Respondent denies that its inclusion on either page was the result of any alleged transfer agreement or “transition period,” and reiterates that those pages demonstrate Complainant’s actual acknowledgment of the legitimate purposes to which the disputed domain name was being put by Respondent.

·        Respondent contends that Complainant has not shown that he has infringed its trademark rights through the use of the disputed domain name.  Such a finding is beyond the scope and authority of this Panel to make, and does not comprise an element of the Policy.  Rather, the question is whether, notwithstanding the issue of trademark infringement, Complainant has discharged its onus to show that Respondent had no rights or legitimate interest of any kind in the registration and use of the disputed domain name.  Such rights or interest can be established under the Policy via evidence of bona fide offerings of commercial services prior to notice of a dispute.  The evidence is clear that Respondent, through Mountain Realty and its predecessor MRR, had been offering such services in the Big White area for years even before the name was registered, much less made the subject of a dispute. 

·        The existence of Complainant’s trademarks or the infringement thereof, are findings that are beyond the scope of the present proceeding. The recognition of Big White as a known geographical area goes directly to the critical issue of whether, in registering the disputed domain name, Respondent did so in connection with a bona fide offering of services. The establishment as a municipality is not the only conclusive means by which a geographical area may be publicly recognized. Respondent has pointed to a number of examples to show that the Big White region, though not formally incorporated as a municipality, was known and officially documented as such long before the establishment of Complainant’s intellectual property rights.

·        Respondent is permitted to use the name of a legitimately recognized geographic region in describing its locally provided business services.  It cannot be said that the registration and use of the disputed domain name were not undertaken in the furtherance of a bona fide offering of commercial services. 

·        Complainant’s argument that Respondent could have used a different name that did not infringe on trademark rights is without merit. Complainant could equally use a domain name that is more accurately descriptive of its own true trademark rights rather than the region itself, such as <bigwhiteresortrealestate.com>.

 

DISCUSSION AND FINDINGS

 

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 [4(a)(i)]

 

Not one of Complainant’s registered trademarks is identical to the disputed domain name, and although Complainant does claim unregistered user rights in the identical name BIG WHITE REAL ESTATE since August 2001, no proof of this has been produced so the Panel cannot therefore take it into account. Complainant’s primary activity lies in running a ski resort, which it has done since at least 1963. It may also have operated a peripheral real estate business, and it has actually owned a subsidiary company called Big White Real Estate Limited since late 2000. However, at the same time it appears to have tolerated – and even encouraged – the real estate business which Respondent ran inside Complainant’s Ski Village, by using its services and by including a reference to Respondent on its website. Although suggesting at various points in the Complaint that it operated a business that was similar to Respondent’s, in its Additional Submission, Complainant states that it was not until the fall of 2007 that it “arranged for the establishment of an official Big White Real Estate office.”

 

There is a dispute between the parties as to the generic nature of the name ‘Big White’ (see below) but Complainant has a trademark registration of BIG WHITE which is incontestable under U.S. law.

 

A crucial element in the discussion under this sub-paragraph of the Policy is that Respondent has not challenged Complainant’s assertions regarding the similarity of his domain name to its trademarks. He does note that none of the registered trademarks contains real estate services in their lists of goods and services but there is nothing in the Policy to say that the goods or services of a complainant’s trademark must overlap with the activities of a respondent.

 

It was held in Whitney National Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) that “The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark.” Also, in Allianz of America Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) it was found that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark. Precisely the same facts apply in the present case: Complainant owns the registered trademark BIG WHITE and Respondent has added to this the generic terms ‘real estate’. On the basis of the above two findings therefore, the Panel concludes that Paragraph 4(a)(i) of the Policy is proved.

 

Rights or Legitimate Interests [4(a)(ii)]

 

In the opinion of the Panel, the Complainant has made out a prima facie case, which is a prerequisite to a finding of no rights or legitimate interests. As a result, the burden of proof shifts to Respondent to show that he does have rights or a legitimate interest in the disputed domain name.

 

The Panel believes that he has probably not done so. The reason for saying this is that the domain name belongs to an individual – Mr. James Henry – while such use as has been made of it was made initially by a company called Mountain Resort Realty Limited and, from 2000 – 2002, by its successor in business Mountain Realty at Big White Limited. (Both parties have referred to this latter company as ‘Mountain Realty’ and the Panel will do the same hereafter.) Mr. Henry has apparently worked for both companies and claims to have been a part-owner of the latter for a period of time. As a result of this use, Respondent (i.e. Mr. Henry) can hardly claim that he himself has made bona fide use of the disputed domain name, or that he has been commonly known by it, or that he is making a legitimate non-commercial or fair use of it.

 

However, although Mr. Henry has admitted that Mountain Realty and its predecessor have used the name, rather than himself, he has referred throughout the Response and Additional Submission to Mountain Realty as if it were the Respondent in this matter. Complainant has done the same. The Panel has therefore decided to follow them both and make its decision on the basis that Mountain Realty is the true Respondent.

 

Firstly, however the Panel must deal with two matters that are only indirectly relevant to the matter in hand.

 

The disputed domain name has not been used since 2002. However the parties completely disagree as to how this cessation came about. Complainant asserts it is because Respondent agreed to cease using the name, following its own objection to it, while Respondent states that it was only because he did not wish to become involved in long and expensive court proceedings as a result of Complainant’s objection. Complainant further contends that as a result of its objection, Respondent agreed to transfer the disputed domain name to itself once he had established an alternative name. Respondent “strenuously denies” this, describing it as “fanciful.”

 

It is not the job of the Panel to make a definitive ruling on what is, by all accounts, a commercial dispute between the parties, only insofar as the matter is of relevance to the dispute. However the Panel is of the opinion that if Complainant is to be believed, there would surely have been something in writing to formalize Respondent’s alleged acknowledgement of Complainant’s rights in the disputed domain name and his agreement to transfer it in the fullness of time. Yet no documentation on this point has been produced by either party. The alleged events occurred over 5 years ago and in that time memories can fade and the true facts can become embellished, but on balance the Panel has concluded that Respondent’s version of the events is probably closer to the truth.

 

Respondent has made a strong claim that the domain name is merely a generic term, because no one can claim a monopoly of the term ‘real estate’, and ‘Big White’ is the name of the geographical area where both parties operate. In support thereof, he filed copies of three documents. He also alleges that “a considerable number” of others use the term ‘Big White’ in their names.

 

However Respondent’s evidence on this point is not very convincing. In the two British Columbia Government documents produced, at no point is the area referred to as ‘Big White’ but always as ‘Big White Mountain’, while in the Newsletter excerpt there is one reference to ‘Big White Mountain’ and one to ‘Big White’. He has produced nothing to confirm his claim that other people use ‘Big White’ in their names, their websites and their advertising   

 

Complainant responds to this charge by producing copies of two official publications to the effect that the real name of the area is ‘Big White Mountain,’ and asserting that although some others may use the term ‘Big White’ in their names, either they have been licensed to do so or they are doing so wrongly and Complainant is, or will be, taking appropriate action to protect its trademark rights. Absent any actual names from Respondent, Complainant is unable to comment further.

 

The Panel has concluded that the proper name for the geographic area is indeed ‘Big White Mountain’ and that although visitors to the area may shorten this to ‘Big White,’ in a familiar way, that is only an unofficial name. The Panel also notes that Respondent’s allegation on this point is somewhat late in time as, firstly, Complainant has a registered U.S. trademark for BIG WHITE which is an acknowledgement that the term is not generic, secondly that trademark registration is incontestable, and thirdly he has accepted that Complainant’s trademarks are either identical or confusingly similar to his domain name.

 

So, has Mountain Realty any rights or legitimate interests in the disputed domain name?

 

One of the circumstances that is stated in paragraph 4(c) of the Policy as being evidence of a respondent having rights or legitimate interests is said to be that before the dispute commenced, he used the name. In this case, both parties are agreed that, prior to 2002, Mountain Realty or its predecessor in title did indeed use the disputed domain name although Complainant does not appear to have learned about this until October 2001 following the formation of its subsidiary Big White Real Estate Limited some time in 2000.

 

The name has not been used since 2002 and this of course is why the parties have made so much of the events in that year when Complainant objected to Respondent’s use of the domain name.

 

Complainant alleges that Respondent’s use of the disputed domain name cannot be bona fide because he either knew, or he ought to have known, that it infringed Complainant’s trademark rights. However, since Respondent’s activities seem to have been confined to the real estate business and as none of Complainant’s registered trademarks are protected for the same, there could not be any infringement. Unfair competition (or passing off) possibly, but that is something different.

 

In support of his case, Respondent cites the case of Sun Peaks Resort Corp. v. 505398 BC Ltd., D2003-0873 (WIPO Jan. 8, 2004). This case has several similarities with the present one, in that both parties were Canadian entities, Complainant operated a ski resort, the domain name incorporated a geographical name, and for a time the parties enjoyed an amicable relationship. Complainant has argued that certain aspects of this case are not relevant to the present one, but does not criticise its finding regarding the non-use of the domain name for a period of time. On that issue the Panel in Sun Peaks found:

 

One reason that could have led this Panel to find an absence of legitimate interest is the fact that the domain name was not used between 1997 and 2003.  However, the Respondent offered a credible explanation: they received a cease-and-desist letter and, as a small company, did not want to incur the cost of a court battle.  Establishment of rights or legitimate interests in a domain name is not precluded by the absence of active use, when such absence is justified by the circumstances.

           

Also, in Excmo. Cabildo Insular de Tenerife & Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, D2003-0525 (WIPO Sept. 9, 2003) appears the following sentence: “This sole panelist has in several contexts determined that the establishment of rights or legitimate interests in a domain name is not precluded by the absence of active use, when such absence is justified by the circumstances.

 

Complainant alleges that Respondent’s non-use since 2002 amounts to cybersquatting, something which Respondent vehemently denies. According to the U.S. Anticybersquatting Consumer Protection Act, a cybersquatter is someone who registers, traffics in, or is using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else. There is nothing in that description which could conceivably describe Respondent’s actions in relation to the disputed domain name since 2002.

 

There is nothing in the Policy to say that the use of a disputed domain name must have been continuous, only that it has been used or that a Respondent can demonstrate that he has prepared to use it. Consequently this Panel, like the panel in Sun Peaks, finds that Respondent’s inactive use of the disputed domain name as a direct consequence of Complainant’s cease-and-desist letter, does not permit a finding of a lack rights or legitimate interests in the disputed domain name.

 

As noted above, Respondent has made genuine use of the disputed domain name, and Complainant connived therein. As a consequence the Panel finds that paragraph 4(a)(ii) of the Policy has not been proved.

 

Registration and Use in Bad Faith [4(a)(iii)]

 

As a result of the above finding it is unnecessary for the Panel to make a finding on the bad faith issue, but on balance would probably have found this to be not proved also.

 

DECISION

As only one of the three elements required under the ICANN Policy has been proved, one not proved, and the other not analyzed as a result, the Panel concludes that relief shall be DENIED.

 

 

 

 

David H Tatham, Panelist
Dated: February 5, 2008

 

 

 

 

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