Her Majesty the Queen in Right of the
Province of Alberta v. David Indge
Claim Number: FA0205000114297
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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
postmaster@albertahealth.com 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.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
info@albertahealth.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.
B. Respondent
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:
|
<BCMedical.com> <BCMedical.org> <BCMMedicalhealth.com> <Albertahealth.com> <Albertamedical.com> <Ontariomedical.com> <Quebecmedical.com> |
<Canadamedical.com> <SanteQuebec.com> <Africamedical.com> <Ukmedical.com> <Kiwimedical.com> <Ozmedical.com> <Healingpages.com> |
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:
|
<BCMedical.com> <BCMedical.org> <BCMMedicalhealth.com> <Albertahealth.com> <Albertamedical.com> <Ontariomedical.com> <Quebecmedical.com> |
<Canadamedical.com> <SanteQuebec.com> <Africamedical.com> <Ukmedical.com> <Kiwimedical.com> <Ozmedical.com> <Healingpages.com> |
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.
DECISION
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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