Her Majesty the Queen in
Right of the
Claim Number: FA0902001246701
PARTIES
Complainant is Her Majesty the Queen in Right of the Province of
British Columbia (“Complainant”),
represented by Sarah Hudson, of Borden Ladner Gervais LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bconline.mobi>, registered with Directi
Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
PANEL
The undersigned, Daniel B. Banks, Jr., as Panelist, 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
electronically on February 9, 2009; the
National Arbitration Forum received a hard copy of the Complaint on February 10, 2009.
On February 10, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com confirmed by e-mail to the National Arbitration
Forum that the <bconline.mobi> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com and that the Respondent is the current
registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 11, 2009 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@bconline.mobi by e-mail.
A timely Response was received and determined to be complete on March 11, 2009.
On March 16, 2009, Complainant filed an Additional Submission that the
Forum deemed to be in compliance with Supplemental Rule #7.
On March 20, 2009, Respondent filed an Additional Submission that the
Forum deemed to be in compliance.
On March 20, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In July 1989, the Province commenced providing to the general public,
directly and through contractors, a service known as BC OnLine, which
facilitates electronic access to information from government-owned or
controlled databases. Since or about
October 1996, an Internet Web site using the domain name www.bconline.gov.bc.ca has been used to conduct the BC OnLine
business. BC OnLine provides services to
thousands of customers throughout
The Marks are official marks adopted and used in
A Canadian official mark is a trade-mark
within the meaning of the UDRP. Since
1989, the Province has also adopted and extensively used the Marks as trade-marks
in association with the BC OnLine business, services, and wares in
By reason of the Province’s adoption and
extensive, long-term use of the Marks, directly and through licensees: (a) the
Marks have come to be associated with BC OnLine and its services, as
distinct from the services provided or carried on by others; (b) the Province has developed a
well-known reputation and acquired substantial goodwill in the Marks in Canada;
(c) the Marks are a well known and
determinative designation of source for BC OnLine’s services; and (d) the Province enjoys the
exclusive right to use the Marks in Canada, and to preclude others from using
them, or trademarks or trade names confusing or likely to be confusing with
them.
The Respondent registered the Domain Name
on October 29, 2006 and it was most recently updated on October 21, 2008.
The
Respondent uses the Domain Name for a website with sponsored commercial
listings (the “Website”).
Notably, the listings include postings for “conveyancing software,” services in
connection with the filing of a “BC Marriage Certificate Vital Certificate
Application,” and services in connection with finding “Bc Government Jobs.” None of the links associated with any of the
sponsored links on the Website is associated with the Province or BC Online.
The Domain Name is identical or confusingly similar to the Complainant’s
mark in that it incorporates the BC OnLine mark in its entirety. The overall impression left by the Domain
Name suggests that it belongs to the Province and consumer confusion will
result.
The Respondent has no rights or
legitimate interests in the Domain
Name. The Respondent does not satisfy
any of the “rights or legitimate interests” criteria set forth in UDRP,
para. 4(c).
Respondent has not been commonly known by the Domain Name. Respondent
has neither registered nor applied to register any trademarks consisting of the
words “BC OnLine” in
The Respondent is using the Domain Name
for the Website, which is essentially a listing of links to various other
websites, some of which offer services confusingly similar to or misleadingly
associated with those offered by the Province.
The Respondent should not be considered
to be making a legitimate or fair use of the Domain Name, as some of the links
listed on the Website direct customers to companies which offer services
confusingly similar to or misleadingly associated with those offered by the
Province via its BC OnLine website. These misleading diversions tarnish the
trademarks and official marks at issue.
Respondent registered and is using the
Domain Name in Bad Faith. The Respondent
likely knew of the Province’s Marks before registering the Domain Name. Since 1996, the Province has used the domain
name <bconline.gov.bc.ca> to conduct the BC OnLine business. The
Respondent registered the Domain Name in 2006 and has posted sponsored links on
the Website directed to activities undertaken in
The Province’s BC OnLine mark is a
distinctive expression used in association with its online services and wares.
Given the Respondent’s selection of the Domain Name, its unauthorized use of
the BC OnLine trademarks, and the nature of the sponsored links on the Website,
the only logical inference is that the Respondent knew of the Province and its
Marks before registering the Domain Name. Where a
domain name is so obviously connected with a well-known or sufficiently
singular product, its very use by someone with no connection with the product
suggests opportunistic bad faith.
The Respondent uses the Domain Name in
connection with a Website that wrongfully attracts Internet users intending to
access the Province’s BC OnLine services.
In this way, Respondent is disrupting the Province’s business (which
includes using the Internet to facilitate public access to government
information databases). Parties are competitors within the meaning of UDRP para.
4(b)(iii) if they act in opposition to each other,
including by competing for the attention of Internet users. Accordingly, the Respondent registered the
Domain Name in bad faith ‑ for the purpose of disrupting the
Province’s business affairs and services.
The Respondent has “parked” the Domain
Name and is running a website with sponsored links to other commercial
websites. Internet users are likely to
confuse the Domain Name with the Province’s BC OnLine marks and the official website <bconline.gov.bc.ca>.
The Respondent’s Website offers products and services that are confusingly
similar to misleadingly associated with those offered by the Province.
UDRP, para. 2 provides that a
domain name registrant represents and warrants that to the registrant’s
knowledge the registration of the domain name “will not infringe upon or
otherwise violate the rights of any third party,” and the registrant is charged
with the responsibility to determine whether the domain name registration
infringes or violates someone else’s rights.
Bad faith registration and use should be found where Respondent failed
to discharge its responsibility to select, register, and use a domain name that
does not infringe the rights of others, namely the Complainant.
B. Respondent
The Domain Name is neither identical nor confusingly similar to the
Complainant’s specific mark. The “BCONLINE” term is incorporated by
numerous Domain Names and by numerous corporations/individuals located
throughout the world. The Complainant
has no greater claim than any other registrant and user over the Respondent’s
registration and use of the Respondent’s “BC ONLINE” Domain Name. If ICANN were
to accept the Complainant’s claim that any registrant/user of a domain
consisting of “BC ONLINE” is infringing the Complainant’s trademark and own
domain, then all parties worldwide would be displaced by the Complainant merely
on the basis of its assertions and limited Canadian trademark claim.
Further, the BCONLINE mark consists of two
specific words, “BC” and “Online”, which are internationally recognized generic
terms. “BC” is an acronym that can be used for limitless representations. “Online” is a term that is used by millions
of websites, corporations, organizations and individuals around the world to
describe the availability of services over the internet/intranet(s).
Since the words “BC” and “Online” (used separately
or jointly) are used by many existing Top Level Domain (TLD) registrants
throughout the world and they are internationally recognized as generic term(s)
with multiple interpretations the use of the Domain Name by the Respondent
cannot meet the confusingly similar test as alleged by the Complainant.
<bconline.com> website was established
by the Government of the
“…provide(s) access to a variety of
provincial government computer systems over the Internet” specifically to “…
meet the critical information needs of legal, business, government and
professional users.”
There are no other organizations,
corporations or individuals that the Government of the
The Complainant alleges that the Respondent is not commonly known by
the Domain Name, has neither registered nor applied to register for any
trademarks consisting of the words “BC Online;” and has no legitimate interest
in respect of the Domain Name. Whether
or not an individual, organization, or corporation has made an attempt to
register a trademark does not indicate legitimacy in the use of a Domain Name.
As stated in the Response, there are numerous other corporations,
organizations, and individuals making use of the words “BC Online” in their domain
names without having trademarks, all of whom have legitimate interests.
The Complainant alleges that the Respondent,
by having a “Website” with a list of links to various other websites, is not
using the Domain Name for a bona fide offering
of goods and services and is not making a legitimate or fair use of the Domain
Name. These allegations are false. The Respondent has been in the process of
developing and launching the <bconline.mobi> website prior to being
contacted by the Complainant. The <bconline.mobi> website will be
targeting an international clientele in the European-based consumer and
commercial banking and financial sector. This usage will not be in any way
similar to the Complainant’s use of <bconline.com>. The current economic downturn in the global economy has had a
detrimental impact on the launch of the website.
The Domain Name registrar, Directi Internet
Solutions Pvt. Ltd. (Directi), has been automatically redirecting traffic to
the Domain Name to a webpage that contains links to various websites that
Directi has selected. The “Website” that the Complainant has referred to in its
Complaint is not managed by the Respondent. The content of the “Website” where
Domain Name traffic has been redirected by Directi is controlled by Directi.
Respondent has not registered nor used the
Domain Name in bad faith. Respondent has
never requested of the Complainant or any of Complainant’s competitors any
remuneration in exchange for the Domain Name.
Respondent has no history of preventing the owner of a trademark from
reflecting the mark in a corresponding domain name. Respondent denies that it knew of
Complainant’s marks before registration because of the links to the sites on
the Domain Name. Those links were not
determined by Respondent but by the Domain Name registrar Directi. Respondent was not aware of the Complainant’s
marks before registration.
Respondent denies that it registered the
Domain Name to disrupt the business of a competitor. As stated in the response, there are no other
entities that the Complainant permits to provide access to the systems linked
to the Domain Name. Also, Respondent
denies that it is using the Domain Name to wrongfully attract internet users
intending to access Complainant’s website.
As previously stated, the domain name registrar has been automatically
redirecting domain name traffic to a webpage that provides a list of websites
that it has selected. None of those
sites are generated by Respondent.
Respondent has no relationship, commercial or otherwise, with any of the
sites.
C. Additional Submissions
Complainant
Respondent’s submissions on the element of “identical or confusingly
similar” erroneously conflate the test with a conventional trademark
infringement analysis. Under UDRP the
test is a literal and facial comparison of the disputed domain name and the
trademark. It is not an involved and
contextual trademark infringement inquiry.
Under this element, the only relevant facts are the advertisement of the
Complainant’s official marks and the Respondent’s registration of the disputed
Domain Name. UDRP does not require the
panel to go behind the Canadian Trademarks Register to determine whether the
mark is valid or invalid based upon lack of distinctiveness. Such a challenge is outside the scope of the
Policy and the jurisdiction of the Panel.
Complainant’s rights in the Marks are manifested in their advertisement
as official marks under the Canadian Trade-Marks Act. Nothing more is required nor does the Panel
have jurisdiction to inquire further.
Respondent lists various domain names around the world that incorporate
the Complainant’s Marks. Whether those
domain names are susceptible to challenge under the UDRP is not before this
Panel. Factors other than “identical or
confusingly similar” would remain to be considered under UDRP.
Once Complainant has made a prima
facie showing that respondent lacks rights to the domain name at issue, the
burden shifts to Respondent to demonstrate that it has rights or legitimate
interests in the domain name.
The Respondent has offered no evidence at all of its rights or
interests in the Domain Name. Its bare
assertions that it is developing a website “targeting an international
clientele in the European-based consumer and commercial banking and financial
sector” are completely unsubstantiated.
Respondent concedes the website is not currently operating and without
evidence, Respondent’s plans cannot be assessed. Respondent’s assertions that the present
content and use of the Website, which offers commercial listings for services
confusingly similar to those offered by Complainant, does not reflect or
determine Respondent’s legitimate or fair use.
Respondent says it does not control the website. Complainant submits that a website owner
cannot be reckless or indifferent as to what is placed by another on the
website that is associated with its domain name.
Moreover, Respondent’s assertion that it is not responsible for the
content of the Website only serves to underscore that it has no rights or
legitimate interests in the Domain Name.
Respondent has failed to provide any evidence of good faith when
selecting and registering the Domain Name.
The fact is that the Respondent is using, or is permitting the Domain
Name to be used, for a website which competes for the attention of Internet
users interested in Complainant’s services.
The UDRP exists to prevent the use of a domain name that is confusingly
similar to the Complainant’s marks by a user who has no rights or legitimate
interests in the Domain Name.
Respondent
Respondent says that the goods and services of the Complainant and the
Respondent are unrelated such that there would be no reasonable likelihood of
confusion between the two. Respondent
has not taken any actions which could be reasonably interpreted as intended to
harm or profit from Complainant’s activities.
The existence of many users of variations of the BCONLINE Domain Name is
indicative of its lack of singular identity or claim of ownership and use. Complainant’s intended website users are of
a high level of specialization and sophistication that it is even more highly
unlikely that any confusion would be created by the domain name.
Respondent repeats its intention to develop a banking and financial
sector website and is not using the Domain Name to compete with Complainant or
misdirect traffic.
FINDINGS
1 – The Domain Name in dispute is identical
and/or confusingly similar to Complainant’s trademark.
2 – The Respondent has or rights or
legitimate interests in respect of the domain name.
3 – The Domain Name in dispute was registered
and is being used in bad faith.
DISCUSSION
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.
Complainant has provided evidence of several registrations of its BC
ONLINE mark with the Canadian Intellectual Property Office (“CIPO”), (e.g. Reg.
No. 908,947 issued April 23, 1997). The
Panel finds Complainant’s registrations of its BC ONLINE mark with the CIPO
sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life
Ins. Co. v. Bonds, FA
873143 (Nat. Arb.
Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also
Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006)
(finding that the complainants had established rights in marks where the marks
were registered with a trademark authority).
Complainant contends Respondent’s <bconline.mobi> domain name is identical to Complainant’s BC
ONLINE mark because it contains the mark in its entirety with the deletion of a
space and the addition of the generic top-level domain (“gTLD”) “.mobi.” The Panel finds these alterations are both
irrelevant for the purposes of evaluating the identical nature of a disputed
domain name and a mark under Policy ¶ 4(a)(i). The Panel finds Respondent’s <bconline.mobi> domain name is
identical to Complainant’s BC ONLINE mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the addition of
“.mobi” was a functional change and thus the <gwbakeries.mobi> domain
name was identical to the GW BAKERIES mark under Policy ¶ 4(a)(i)); see also Bond &
Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of
a gTLD do not establish distinctiveness from the complainant’s mark under
Policy ¶ 4(a)(i).
While Respondent contends that <bconline.mobi> domain name is comprised of common,
descriptive abbreviations and terms and as such cannot be found to be identical
to Complainant’s mark, the Panel finds that such a determination is not
necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only
whether Complainant has rights in the mark and whether the disputed domain name
is identical or confusingly similar to Complainant’s mark. See
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007)
(finding that because the complainant had received a trademark registration for
its VANCE mark, the respondent’s argument that the term was generic failed
under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s
argument that each individual word in the mark is unprotectable and therefore
the overall mark is unprotectable is at odds with the anti-dissection principle
of trademark law.”).
The Panel finds that Complainant has made a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii). The burden shifts to Respondent to show it
does have rights or legitimate interests.
See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interests in the subject domain names.”).
Respondent has not shown to this Panel that it has rights or legitimate
interests in the disputed domain name. Respondent is listed in the WHOIS information as
“DNA International a/k/a DNA Intl.,” and there is no additional information in
the record to reflect Respondent has ever been known by the <bconline.mobi> domain name or
authorized to use Complainant’s mark.
Therefore, the Panel finds Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii). See
St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name); see also
Coppertown Drive-Thru Sys.,
LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Furthermore, Respondent is using the disputed
domain name to operate a parked website that provides links to varying third
parties, some of which compete with Complainant’s services. The Panel finds that Respondent is not using
the disputed domain name in conjunction with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)
(holding that the operation of a pay-per-click website at a confusingly similar
domain name was not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or services
or a legitimate noncommercial or fair use, regardless of whether or not the
links resolve to competing or unrelated websites or if the respondent is itself
commercially profiting from the click-through fees).
In its Additional Submission, Complainant
counters Respondent’s assertions that it has no control over the content of the
parked website and that the website is only temporarily parked until Respondent
can engage in its planned online banking services. Complainant asserts Respondent is ultimately
responsible for the content posted on the resolving website. The Panel agrees with Complainant’s
arguments, and finds that Respondent does not have rights or legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii). See St. Farm Mutual Auto. Insr.
Complainant also submits that Respondent has
provided no evidence of the preparations Respondent has undertaken in regards
to its planned banking services beyond the allegations in the Response. The Panel agrees and finds that Respondent
has not presented any evidence that it has made demonstrable preparations to
use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that the
respondent’s “vague and unsupported assertion of ‘plans to sell household
goods, supplies and appliances over the Internet’” was insufficient to be
considered proof of a legitimate business plan); see also AT&T Corp. v.
Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights
or legitimate interests where the respondent did not provide any documentation
on the existence of its alleged company that might show what the company’s
business was, or how the company’s years of existence, if it ever existed,
might mesh with the complainant’s trademark claims).
Respondent’s disputed domain name resolves to a parked website
displaying links to other websites, some of which compete with
Complainant. The Panel finds that
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Am. Airlines, Inc.
v.
Furthermore, Respondent is responsible for the content of the disputed
domain name website and using an identical disputed domain name to operate a
parked website is evidence of bad faith registration and use under 4(a)(iii). The Panel
finds that Respondent has engaged in bad faith registration and use under
Policy ¶ 4(a)(iii).
See St. Farm
Mutual Auto. Insr.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bconline.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: April 3, 2009
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