Her Majesty the Queen in right of
Claim Number: FA1007001333246
PARTIES
Complainant is Her Majesty the Queen in right of Ontario, Canada as represented by the
Minister of Government Services (“Complainant”), represented by Godwin Chan, Ontario, Canada. Respondent is DNA International (“Respondent”), represented by Andrea Tucci, of World Environment,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <serviceontario.mobi>
(“the Domain Name”), registered with Directi
Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com.
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 30, 2010.
On July 4, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum
that the 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 Domain 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 July 9, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of July 29,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to
postmaster@serviceontario.mobi. Also on
July 9, 2010, the Written Notice of the Complaint, notifying Respondent of the
email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons listed
on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July
30, 2010.
Complainant submitted an Additional Submission that was received and
determined to be in compliance with Forum Supplemental Rule 7 on August 3,
2010.
Respondent submitted an Additional Submission that was received and
determined to be in compliance with Forum Supplemental Rule 7 on August 9,
2010.
By email dated August 11, 2010, Complainant objected to some of the
content of Respondent’s Additional Submission.
On August 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
ServiceOntario is the name of part of the Ministry of Government
Services within the Government of the
The Domain Name was registered on October 19, 2006, shortly after domain
names in the dot-mobi domain space became available. On March 17, 2010 it
resolved to a website displaying the notice: “This site is under construction”.
Complainant says that when approached by Complainant to transfer the Domain
Name, Respondent offered to sell it to Complainant for 20,000 Euros.
Complainant says the Domain Name is identical to the SERVICEONTARIO
trademark and that Respondent has no rights or legitimate interest in the
Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Complainant points to the absence of evidence that Respondent is commonly known by
the Domain Name; the lengthy period of non-use since the Domain Name was
registered, indicating no bona fide offering of goods or
services; Respondent’s offer to
sell the Domain Name to Complainant for 20,000 Euros; and Respondent’s failure
to provide evidence of its alleged administration, marketing and development costs.
As to bad faith, Complainant
points to the absence of active use of the Domain Name since its
registration in 2006, given the lack of content on the “under construction” website,
and the payment of 20,000 Euros sought
by Respondent for transfer the Domain Name to Complainant, an amount exceeding
reasonable out-of-pocket costs. Complainant
also says the Domain Name and another Canadian governmental domain name,
bconline.mobi, which was the subject of Her Majesty the Queen in right of
the Province of British Columbia v. DNA Int’l, FA0902001246701(Nat. Arb. Forum
Apr. 3, 2009) were both registered in late October, 2006 when dot-mobi domain
names became available. This leads to the reasonable inference that Respondent
registered the Domain Name in order to prevent the owner of the trademark from
reflecting the mark in a corresponding domain name under the top-level domain,
dot-mobi.
Complainant also points to WHOIS information said to be erroneous as
indicating bad faith.
B. Respondent
Respondent says it does have rights and legitimate
interests in the Domain Name and denies bad faith registration and use. It is actively using the Domain Name for a bona fide offering of goods or services,
in that prior to being contacted by Complainant,
Respondent has been in the process of developing and launching a website. The
effects of the economic downturn have hampered its efforts and delayed the
launch of the website but Respondent has incurred administrative, marketing,
and development costs, including the purchase of a website hosting service
announcing that the website is under construction. This demonstrates Respondent’s rights and
legitimate interests in the Domain Name.
Respondent says it never offered to
sell the Domain Name to Complainant. When
approached by Complainant by email on October 19, 2009 with a request for
transfer of the Domain Name, Respondent replied on October 30, 2009 saying;
“Our firm has incurred administration, marketing, and development costs in the
order of 20,000€ in relation to this domain name and website. If you are interested in acquiring ownership
of the domain name, we are willing to discuss a reasonable compensation for
lost revenue.”
Respondent contends that since it never made any demand for payment to Complainant and received no response from Complainant, Respondent’s efforts at communicating and resolving the situation do not constitute an offer to sell the Domain Name at an excessive price.
Respondent denies any erroneous
WHOIS information.
C. Additional Submissions
Paragraph 12 of the Rules for Uniform
Domain Name Dispute Resolution Policy (the “Rules”) does not contemplate
unsolicited submissions after the Complaint and Response and gives the Panel
the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See Darice, Inc. v.
The Panel has had regard to Complainant’s Additional
Submission only as set out below.
Complainant says Respondent registered the Domain Name two years prior
to the current economic situation and has provided no evidence of any
demonstrable preparations to use it. The
logical inference from Respondent’s statements in its email relating to
incurred expenses and reasonable compensation for transfer is that Respondent
would sell the Domain Name to Complainant only for an amount well above
reasonable out-of-pocket costs.
Respondent’s Additional Submission repeats arguments made in its Response
and raises new arguments which should have been made in its Response. The Panel
has therefore had no regard to Respondent’s Additional Submission.
FINDINGS
Complainant has established all the elements
entitling Her to transfer of the Domain Name.
DISCUSSION
Paragraph 15(a) of 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.
It is clear that Complainant has trademark rights in the Canadian Official Mark SERVICEONTARIO. The suffix “.mobi” is to be ignored when comparing that mark with the Domain Name. See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007).
The Panel finds the Domain Name to be identical to Complianant’s SERVICEONTARIO mark.
The Panel finds that the SERVICEONTARIO mark is distinctive and well known. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO D2000-0624 (Aug. 21, 2000) and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“before any notice to you of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services;”
Even perfunctory
preparations have been held to suffice for this purpose: SHIRMAX
RETAIL LTD. v. CES MKTG. GROUP, INC., AF-0104 (eResolution Mar. 20, 2000); Lumena
s-ka so.o. v. Express Ventures LTD (www. Skarbiec.com), FA 94375 (Nat. Arb. Forum, May 11, 2000) and ROYAL BANK OF
Here, Respondent
has produced no evidence whatsoever to support its assertions that, prior to being
contacted by Complainant, Respondent has been in the process of developing and
launching a website.
Accordingly, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name.
Paragraph 4(b) of the Policy sets
out four illustrative circumstances, which, though not exclusive, shall be
evidence of the registration and use of the domain name in bad faith for
purposes of paragraph 4(a)(iii) of the Policy. The first of these is:
(i) circumstances indicating that
the respondent has registered or acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name registration
to the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of the
respondent’s documented out-of-pocket costs directly related to the domain name.
The Panel finds Respondent’s email of October
30, 2009 to constitute an offer to transfer the Domain Name to Complainant for
an amount in the order of 20,000 Euros and that, in the absence of any evidence
that Respondent has incurred any administrative, marketing, and development costs,
this amount is well in excess of any documented out-of-pocket costs of
Respondent directly related to the Domain Name.
Since that offer was made just over three years after the
Domain Name was registered, it needs to be determined whether such a sale to
Complainant was the primary purpose of the registration in October, 2006. On
balance, the Panel concludes that it was, having regard to the distinctiveness
of Complainant’s mark, indicating that Respondent had Complainant in mind when
registering the Domain Name; registration taking place as soon as dot-mobi
domains became available; the registration by Respondent in bad faith (as was
found by the panel) a few days later of another Canadian domain name, <bconline.mobi>,
the subject of Her Majesty
the Queen in right of the Province of British Columbia v. DNA Int’l, FA 0902001246701(Nat.
Arb. Forum Apr. 3, 2009); the failure to use the Domain Name for other than an
“under construction” website for the ensuing 3 ½ years; the lack of any rights
or legitimate interest in the Domain Name on the part of Respondent; and the
instant willingness of Respondent to sell the Domain Name to Complainant for an
amount of the order of 20,000 Euros, in response to the request for transfer received
by Respondent from Complainant.
Accordingly the Panel finds that the Domain
Name was registered and is being used in bad faith.
DECISION
Complainant having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <serviceontario.mobi>
domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 24, 2010
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