National Arbitration Forum

 

DECISION

 

Her Majesty the Queen in Right of the Province of British Columbia v. Northstar Communications Group c/o Dave Johnson

Claim Number: FA0905001262219

 

PARTIES

Complainant is Her Majesty the Queen in Right of the Province of British Columbia (“Complainant” or "Province"), represented by Robert J.C. Deane, of Borden Ladner Gervais LLP, British Columbia, Canada.  Respondent is Northstar Communications Group c/o Dave Johnson (“Respondent”), Ontatio, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bconline.info>, registered with GoDaddy.com, Inc., hereafter referred to the Domain Name.

 

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.

 

Hugues G. Richard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2009.

 

On May 12, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bconline.info> Domain Name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 2, 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.info by e-mail.

 

A timely Response was received on June 2, 2009.  However, because this Response was not received in hard copy, the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5.

 

On June 10, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complaint submits as follows:

 

In July 1989, the Province started to provide a service to the general public known as BC OnLine, either directly or through contractors, that facilitates electronic access to information from government-owned or controlled databases. 

Since October 1996, the Domain Name <bconline.gov.bc.ca> has been used to conduct the BC OnLine business through an Internet website.

The official marks BC ONLINE were advertised under numbers 910771 and 911222 on May 26, 1999 and September 22, 1999 respectively.

The official mark BC ONLINE and design was advertised under number 908947 on April 23, 1997.

The above referred BC ONLINE marks are hereinafter referred as to the Marks.

 

 

a) Identical and/or confusingly similar

 

- The <bconline.info> Domain Name is identical to the Marks owned by the Complainant since it incorporates the Marks in their entirety. The deletion of a space and the addition of the generic top-level domain “.info” are alterations that are irrelevant for the purposes of evaluating the identical nature of a domain name and a mark.

 

- The disputed Domain Name is confusingly similar to the Marks. The overall impression left by the Domain Name suggests that it belongs to the Province and consumer confusion will result.

 

 

b) Rights or legitimate interest

 

Respondent has no rights or legitimate interests in the Domain Name. 

 

- Respondent is not affiliated with BC OnLine, and is not authorized by the Province to register or use domain names or marks containing the BC OnLine Marks.  Respondent does not appear to have any connection with British Columbia

 

- Respondent has not been commonly known by the Domain Name, nor has he registered a trademark.

 

- Respondent has not used the Domain Name as a business name, or otherwise in connection with a bona fide offering of goods or services.

 

- 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 in competition with those offered by the Province via its BC OnLine website.

 

c) Registration and use in bad faith

 

- Respondent registered the Domain Name with knowledge of the Province’s Marks. 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. Respondent registered the Domain Name in 2003 and has posted sponsored links on the Website directed to activities undertaken in British Columbia.

 

- The Province’s BC OnLine Marks are a distinctive expression used in association with its online services and wares. Given the Respondent’s selection of the Domain Name, the 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. Respondent’s use of a domain name that is identical to the Province’s Marks to operate a parked website shows bad faith registration and use.

 

- Respondent registered and used the Domain Name primarily for the purpose of disrupting the business of a competitor. Respondent uses the Domain Name for a parked website displaying links to other external websites, some of which offer services confusingly similar to or in competition with those of the Province. Respondent uses the Domain Name in connection with a Website that wrongfully attracts Internet users intending to access the Province’s BC OnLine services.  

 

- Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website. Respondent has “parked” the Domain Name with the registrar “GoDaddy.com” and is using it for a website with sponsored links to other commercial websites, as well as several advertisements.

 

- Respondent failed to make good faith inquiries.

 

 

B.  Respondent

 

A response was received on June 2, 2009. 

 

- Respondent agrees to transfer the Domain Name for the sum of his expenses and transfer expenses.

 

- Respondent states that it intended to develop a network of Canadian sites linked together for information purposes.

 

 

FINDINGS

 

(1)    the Domain Name registered by Respondent is identical and confusingly similar to a trade mark in which Complainant has rights; and

(2)    Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(3)    the Domain Name was registered and is being used by Respondent 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.

 

 

 

Preliminary Issue #1: Deficient response

 

Respondent’s Response was submitted only in electronic format prior to the Response deadline; no hard copy was received. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. 

 

The Panel, at its discretion, however, may choose whether to accept and consider this Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”)

 

In this case, the Panel has decided to accept and consider this Response in order to resolve the real dispute between the parties.

 

In light of the response, Preliminary Issue #2 arises.

 

 

 

Preliminary Issue #2: Consent to Transfer

 

Respondent consents to transfer <bconline.info> Domain Name to Complainant for the sum of its expenses and transfer expenses.

 

The Panel, at its discretion, may choose whether to accept or decline the immediate transfer of the disputed Domain Name and instead may issue a decision on the merits. See, e.g., Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assoc., FA 1195954 (Nat. Arb. Forum July 17, 2008) (“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.  However, in the facts of this case, the Panel is of the view that the transfer of the disputed Domain Name deserves to be decided along with the findings in accordance with the Policy.”)

 

In this case, the Panel concludes that because the Complainant filed a complaint, it obviously did not agree with Respondent on the terms and conditions of the Domain Name transfer, therefore it is only appropriate to proceed to a decision on the merits.

 

 

 

Identical and/or Confusingly Similar

 

Complainant states it has been using the BC ONLINE Marks since 1996.  Complainant claims trademark rights in the Marks as official marks of the province of British Columbia.  Complainant submitted three applications to the Canadian Intellectual Property Office (“CIPO”) which were  “advertised” on May 26, 1999, September 22, 1999 and April 23, 1997.  The BC ONLINE Marks are listed as a “Prohibited Mark; Official Mark.” Complainant argues that a “Prohibited mark” under Canadian Trademark law can only be used by the government. The Respondent did not deny these assertions. 

The Panel finds that Complainant has established rights in the Marks pursuant to Policy ¶ 4(a)(i).  See R.S.C. 1985, c. T-13, § 9; see also 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)).

 

Complainant contends, and the Panel finds, that the <bconline.info> Domain Name is identical to the BC ONLINE Marks under Policy  4(a)(i).  See 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); see also PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to the complainant’s PEPSICO mark).

 

 

 

Rights or Legitimate Interests

 

The Panel reiterates that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that 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.”)

 

Complainant asserts that Respondent has no legitimate rights or interests in the Domain Name.  Respondent has no connection or affiliation with Complainant and Complainant has not granted Respondent any license to use its BC ONLINE Marks. Respondent did not deny these assertions. The Panel finds that Respondent has not established rights or legitimate interests in the disputed Domain Name under Policy ¶ 4(c)(ii). The Panel finds that there is no evidence in the record or in the WHOIS registration that Respondent is commonly known by the disputed Domain Names. Thus the Respondent is not commonly known by the <bconline.info> > Domain Name under Policy ¶ 4(c)(ii). See 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).

 

Additionally, Complainant asserts that Respondent is using the <bconline.info> Domain Name to resolve to a parking website that display links to third-party websites which are either unrelated or offer services confusingly similar to services offered by Complainant.  Complainant further asserts that Respondent receives click-through fees for the advertisements listed on the resolving websites. Respondent did not deny these assertions. Thus the Panel finds Complainant’s assertions to be true and is of the opinion that Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also 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 non commercial or fair use under Policy ¶ 4(c)(iii)). 

 

 

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent has registered and used the disputed Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy sets forth a non-exclusive list of factors for determining registration and use of a domain name in bad faith.

 

Respondent asserts that he registered the disputed Domain Name with the intention to develop a network of Canadian sites linked together for information purposes. The evidence shows that Respondent registered the disputed Domain Name almost 6 years ago.  No evidence was presented to show any development of such a network.

 

Complainant asserts that Respondent is using the disputed Domain Name to resolve to a website that contains links for third-party websites, some of which offer services that are confusingly similar to or in direct competition with services offered by Complainant. Respondent does not deny the existence of such links. Complainant alleges that 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. 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. See Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (June 7, 2000).  The Panel finds that Respondent is taking advantage of the inherent confusion between the <bconline.info> Domain Name and Complainant’s Marks for Respondent’s own financial gain.

 

Thus, Respondent registered and used the disputed Domain Name in bad faith under Policy 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).  

 

Finally, Respondent agrees to transfer the disputed Domain Name, which in itself is an indication of the fact that Respondent recognizes that it has no right in the disputed Domain Name and corroborates the Respondent’s bad faith registration and use.   

 

 

 

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.info> Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hugues G. Richard, Panelist
Dated: June 24, 2009

 

 

 

 

 

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