Her Majesty the Queen in Right of the Province of Alberta v. David Indge
Claim Number: FA0205000114297
Complainant is Her Majesty the Queen in Right of the Province of Alberta, Vancouver, BC, CANADA (“Complainant”) represented by Bradley J. Freedman. Respondent is David Indge, Cobble Hill, BC, CANADA (“Respondent”) represented by Philip J. LeSeur, of Jones Emery Hargreaves Swan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <albertahealth.com>, registered with Verisign - Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Charles A. Kuechenmeister (Ret.) is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 16, 2002; the Forum received a hard copy of the Complaint on May 17, 2002.
On May 22, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <albertahealth.com> is registered with Verisign - Network Solutions, Inc. and that the Respondent is the current registrant of the name. Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, Inc. 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 May 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 11, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on June 11, 2002.
Complainant’s additional submission was received on June 17, 2002.
Respondent's additional submission was received on June 21, 2002.
On July 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Commencing in or about 1989, Her Majesty the Queen in Right of the Province of Alberta ("Complainant"), through its Department of Health and Wellness used the trade name and trademark ALBERTA HEALTH in association with the services it provides. Further, pursuant to the Canadian Trademark, the ALBERTA HEALTH mark is an official mark owned by Complainant.
Complainant has used the ALBERTA HEALTH trademark in association with the provision of its services in Canada since 1990. The ALBERTA HEALTH trademark has come to be associated with Complainant and its services as distinct from the services provided or carried on by others. Complainant has developed a well known reputation and has acquired substantial goodwill in the ALBERTA HEALTH trademark in Canada. The ALBERTA HEALTH trademark is a well known and determinative designation of source for Complainant's services. Complainant enjoys the exclusive right to use the ALBERTA HEALTH trademark in Canada and to preclude others from using it, or trademarks or trade names confusing or likely to be confused with it.
Respondent registered the <albertahealth.com> domain name on February 1, 2000. He uses the domain name in connection with a website that currently indicates that it "will be opening soon." The said website invites internet users to send e‑mail inquiries to email@example.com. The Respondent has admitted that internet users have already mistakenly sent health-related e‑mails intended for Complainant to this address.
The <albertahealth.com> domain name is identical to Complainant's trademark. The only difference is elimination of the space between "alberta" and "health," and the addition of the top level domain ".com" at the end. These distinctions are insufficient to support a claim that the disputed domain name is not identical or confusingly similar to ALBERTA HEALTH trademark.
Respondent has no right or legitimate interest in respect of the <albertahealth.com> domain name.
Respondent cannot have acquired any right or legitimate interest in the disputed domain name, since it suggests that the goods or services represented by said domain have received, or are produced, sold or performed under royal, vice-regal or governmental patronage, approval or authority, pursuant to Section 9(1)(d) of the Canadian Trade‑marks Act.
Alberta has never authorized, licensed or otherwise permitted the Respondent to use the <albertahealth.com> domain name or any of its trademarks or official marks.
The Respondent registered and is using <albertahealth.com> in bad faith.
Bad faith is evidenced first by the fact that, when contacted by Complainant to transfer the same for payment of the associated transfer costs, Respondent, through his attorney, refused to do so, but did indicate an interest in entering into a license agreement. This implies a demand for payment in excess of the original registration costs.
Additionally, Respondent has registered and is using <albertahealth.com> primarily in order to prevent Complainant from registering and using its trademark in a corresponding domain name.
Finally, Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant, as Respondent's competitor. For the purposes of Policy ¶4(b)(iii), parties are competitors if they act in opposition to each other, including by competing for the same internet users. There is no requirement that the parties be commercial competitors.
Finally, by registering and using <albertahealth.com>, the Respondent is intentionally attempting to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's trademark.
Respondent acquired rights and legitimate interest in respect of <albertahealth.com> by purchasing the same through Network Solutions in January 2000, when the name was available to others as well.
Respondent owns and has owned various internet domain names, including <albertahealth.com>, since 1998. Among the Internet names Respondent owns are:
Respondent purchased all of these names through Network Solutions for face value.
Since 1998, when the purchase of the first of his internet domain names occurred, Respondent convinced development of providing a series of provincial, medically related websites for easy, stable access by consumers.
Development of Respondent's website was halted in 1999 by legal action, which delayed all development of its sites until June 2001, when the action was settled in favor of Respondent.
In order to avoid a claim of cyber-squatting while awaiting the ongoing legal action and continued development, Respondent opened the sites with a face page. Respondent believes that Complainant is guilty of reverse domain name hijacking.
Complainant does not use its alleged ALBERTA HEALTH trademark in connection with the offering of any of its goods or services. Its website and advertising for its services use other names, but not ALBERTA HEALTH.
Respondent did not offer any type of licensing agreement with Complainant until after Complainant contacted Respondent about transferring the same in March of 2002.
Complainant had no trademark rights in ALBERTA HEALTH prior to its recent application for a trademark.
Respondent still intends to develop a stable nationwide medical portal system for consumers. Its offer to consider a licensing agreement with Complainant was for the purpose of promoting those efforts, not of profiting financially.
Respondent has directed every inquiry intended for Complainant to it, without any fee, commission or other charge payable by the user, or Complainant.
The services provided by Respondent are totally free of charge to all. Respondent has received no financial reward or gain from using the website <albertahealth.com>, nor has it charged any fee or service charge for any service rendered by him.
Respondent refused Complainant's offer to pay $500.00 because he does not wish to sell or transfer <albertahealth.com>.
C. Additional Submissions
The Additional Submissions of both parties contain extensive argument with little if any additional material factual allegations or information not contained in the Complaint and the Response.
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 or Confusingly Similar Policy ¶ 4(a)(i).
Complainant has a trademark pursuant to the 2002 Canadian Trade-marks Act. According to the Trade-marks Act the force of the ALBERTA HEALTH official mark has effect from the date the Registrar has “given public notice of its adoption and use.” Furthermore, Complainant reiterates that it has used the ALBERTA HEALTH mark since 1990, and that Respondent has failed to adequately disprove Complainant’s common law rights. See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”).
Respondent’s <albertahealth.com> domain name is identical to Complainant’s ALBERTA HEALTH mark because it incorporates Complainant’s entire mark and merely omits a space and adds the top-level domain name “.com.” The omission of a space in a domain name is inconsequential when determining whether a domain name is identical or confusingly similar. See Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark). Furthermore, the addition of a top-level domain name such as “.com” is irrelevant when determining whether a domain name is identical to Complainant’s mark. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Beyond the likelihood of confusion, it is clear from the evidence presented by both parties that actual confusion has occurred. In addition to that described in Exhibit “A” to the Stewart Declaration, the Respondent presented many more instances of actual confusion in Exhibit “E” to his Indge Declaration. The e-mails contained there demonstrate that Internet users are confused by the Respondent’s use of <albertahealth.com>. Respondent acknowledges numerous requests for information about health services, policies and coverages, available doctors, application forms, premiums and other governmental matters. The level of confusion one would expect to result from Respondent's use of <albertahealth.com> is experienced in fact.
Based upon the foregoing, the Panel finds and determines that <albertahealth.com> is identical or confusingly similar to the mark ALBERTA HEALTH, in which Complainant has rights.
Rights or Legitimate Interests Policy ¶ 4(a)(ii).
Complainant has not licensed or authorized Respondent in any other way to use either its mark ALBERTA HEALTH or <albertahealth.com>. Complaint, Declaration of Alex Stewart, ¶ 10.
Under the Canadian Trade-marks Act, §9(1)(d), it is unlawful for any person "to adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be mistaken for, . . . . any word or symbol likely to lead to the belief that the goods or services in association with which it is used have received, or are produced, sold or performed under royal, vice-regal or governmental patronage, approval or authority." Because health services are furnished by the Province of Alberta, Respondent's use of ALBERTA in <albertahealth.com> fits within this proscription. Under applicable Canadian law, Respondent does not and cannot have the right to use ALBERTA HEALTH or any variation thereof.
Respondent is not commonly known as ALBERTA HEALTH or <albertahealth.com>. On the contrary, while this name is one of many domain names he apparently uses to attract Internet traffic, it is not a trade or assumed name under which he conducts his activities or purports to do business. His contention that his registration of <albertahealth.com> gives him rights to the name is completely misdirected. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Based upon the foregoing, the Panel finds and determines that Respondent has no right or legitimate interest in respect of < albertahealth.com>.
Registration and Use in Bad Faith Policy ¶ 4(a)(iii).
Respondent registered not only <albertahealth.com> but numerous other domain names containing the names or well-known abbreviations of Canadian provinces. The complete list follows:
Response, p. 5. He states that his intent in doing so is to provide "a series of provincial medically related web sites for easy, stable access by consumers." He cites lack of funds and legal proceedings which have delayed development of his sites. Id. The fact is, however, that his registration and use of these domains offend §9(1)(d) of the Canadian Trade-marks Act in the same fashion as does <albertahealth.com>. The Panel concludes that by such registration and use Respondent is attempting to prevent Complainant, and perhaps other provinces as well, from reflecting their marks in corresponding domain names. The number of such registrations demonstrates a pattern or course of dealing in this regard. While Respondent's website at <albertahealth.com> apparently refers to Complainant's website Internet users who are mistakenly attracted to Respondent's, the fact remains that his registration and use of that domain is wrongful under the Trade-marks Act and prevents Complainant from reflecting its ALBERTA HEALTH mark in a corresponding domain name of its own. This demonstrates registration and use by Respondent in bad faith. Policy ¶4(b)(ii). See also, Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name [by Respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).
The evidence also supports a finding that Respondent registered <albertahealth.com> primarily for the purpose of disrupting the business of Complainant as a competitor. As Complainant points out, parties are competitors within the meaning of Policy ¶ 4(b)(iii) if they act in opposition to each other, including by competing for the same Internet users. There is no requirement that the parties be commercial competitors. Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000). The word "competitor" has often been broadly interpreted to encompass claims by entities that might not traditionally be viewed as competing. See, Tufts Univ. v. Creation Research, FA 102787 (Nat. Arb. Forum Jan. 18, 2002) (finding bad faith under the identical STOP policy ¶ 4(b)(iii) where Complainant was a university and Respondent was a research company). By Respondent's own admission (Response, ¶¶76‑78, Ingde Declaration ¶¶46 & 47 and Exhibit E), his website at <albertahealth.com> wrongfully attracts Internet users intending to contact Complainant, and his registration and use of <albertahealth.com> have obstructed the Complainant’s supply of some goods or services to the public and have thus disrupted the “business” of the Complainant.
Based upon the foregoing, the Panel finds and determines that the Respondent registered and is using <albertahealth.com> in bad faith.
Based upon the foregoing Findings and Discussion, the relief sought in the Complaint is granted. The domain-name <albertahealth.com> is ordered transferred to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: July 24, 2002
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