Majesty the Queen in Right of the
Claim Number: FA0905001262219
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”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bconline.info>, registered with GoDaddy.com, Inc., hereafter referred to the Domain Name.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
A timely Response was received on
Complainant requests that the Domain Name be transferred from Respondent to 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
- 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
- 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.
A response was received on
- 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.
(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.
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.
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.
states it has been using the BC ONLINE Marks since 1996. Complainant claims trademark rights in the Marks
as official marks of the
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
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.
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.”)
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
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,
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.
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 (
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.
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.
Dated: June 24, 2009
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