National Arbitration Forum
Big White Ski Resort Ltd. v.
James Henry c/o Private Registration
Claim Number: FA0712001118988
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.
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
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
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 firstname.lastname@example.org
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
Complainant requests that the domain name be transferred from
Respondent to 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
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’
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]
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
Complainant also claims rights in the
following unregistered marks:
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:
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
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
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
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
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
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.
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.
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.
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.
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 –
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 –
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
2005, the resort used Mountain Realty as its agent to purchase a Big White
restaurant property that Mountain Realty had listed for sale;
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;
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
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.
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 email@example.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.
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,
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:
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.
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”.
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
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
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
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.
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.
contends that the disputed domain name should not be considered as having been
registered and used in bad faith for the following reasons:
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 –
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 (<firstname.lastname@example.org>) 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
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
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.
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
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
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 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
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
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
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
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.
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
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
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.
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
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.
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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