Civic Non-Partisan Association a/k/a the Vancouver Civic Non-Partisan Association and the "NPA" v. Ken Charko
Claim Number: FA1303001489087
Complainant is Civic Non-Partisan Association a/k/a the Vancouver Civic Non-Partisan Association and the "NPA" (“Complainant”), represented by Nicola Collins of Barbeau, Evans & Goldstein, British Columbia, Canada. Respondent is Ken Charko (“Respondent”), represented by Dean P. Davison of Davison Law Group, British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <npavancouver.org>, <npavancouver.net>, <vancouvernpa.org>, <vancouvernpa.net>, and <vancouvernpa.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2013; the National Arbitration Forum received payment on March 8, 2013.
On March 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <npavancouver.org>, <npavancouver.net>, <vancouvernpa.org>, <vancouvernpa.net>, and <vancouvernpa.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2013 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@npavancouver.org, postmaster@npavancouver.net, postmaster@vancouvernpa.org, postmaster@vancouvernpa.net, and postmaster@vancouvernpa.com. Also on March 15, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 4, 2013.
Complainant submitted an Additional Submission that was received and determined to be timely on April 9, 2013.
Respondent submitted an Additional Submission that was received and determined to be timely on April 15, 2013.
On April 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
On April 29, 2013, the Panel entered an Order for Additional Submissions, requesting Complainant to provide evidence and authorities relevant to whether Complainant has rights in a trademark incorporating NPA by virtue of registration with the Canadian Intellectual Property Office, and permitting Respondent to make a responsive submission. Complainant submitted an Additional Submission in response to that order on May 6, 2013; Respondent responded with an Additional Submission on May 13, 2013; and Complainant submitted an objection to Respondent’s submission on May 14, 2013.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a non-profit society registered in British Columbia, Canada. It is a political organization whose mandate is to nominate and organize candidates to run under its slate in municipal elections for the City of Vancouver. Complainant claims statutory and common-law trademark rights in NPA, which it states is a commonly known abbreviation of its name. Complainant states that it holds a registration for the NPA mark with the Canadian Intellectual Property Office (“CIPO”), and submits documentation indicating that Complainant’s trademark application was advertised in 1990, although there is no indication regarding whether a trademark registration was issued. Complainant holds domain name registrations for combinations of its NPA mark and “Vancouver,” including <npavancouver.ca>, <vancouvernpa.ca>, and <npavancouver.com>; these domain names were registered in 2003, 2007, and 2011, respectively.
The disputed domain names, <npavancouver.org>, <npavancouver.net>, <vancouvernpa.org>, <vancouvernpa.net>, and <vancouvernpa.com>, were registered in August and September of 2005. They were initially registered on Complainant’s behalf by Ryan Warawa, who transferred them to Respondent in November 2012. Respondent is a member of Complainant’s organization, and was elected to serve on its board of directors in June 2012. In September 2012, the board of directors agreed to centralize the registration of its domain names to a single designate. Respondent was present at this meeting, but contrary to the board’s decision, he subsequently arranged with Mr. Warawa for the names to be transferred into his own name instead of that of Complainant’s designate, by falsely representing to Mr. Warawa that he was acting with the board’s authority. Respondent subsequently refused to transfer the domain names to Complainant, and in December 2012 was removed from Complainant’s board of directors. Complainant states that Respondent has not used the domain names to operate a website or for a bona fide offering of goods or services, and believes that Respondent may intend to use the names for his own political gain and personal bargaining tool.
B. Respondent
Respondent denies that Complainant has common-law trademark rights, and contends that Complainant’s registered trademark rights subsist only in a logo that includes the letters NPA as part of a design. Respondent denies that this trademark registration gives Complainant any rights in the letters NPA standing alone, noting that other Canadian companies use these same letters as part of their trademarks or trade names.
Respondent further contends that Complainant has no trademark rights in “NPA Vancouver” or “Vancouver NPA,” and that Complainant’s registered name has never contained the abbreviation “NPA.”
Respondent disputes Complainant’s assertion that the disputed domain names registered in the name of Ryan Warawa were held on Complainant’s behalf. To the contrary, Respondent contends that Mr. Warawa was the legal and beneficial owner of the names until he transferred them to Respondent. Respondent denies that he misled Mr. Warawa regarding his authority, and states that Mr. Warawa asked Respondent to take the domain names.
Respondent denies that he lacks rights or legitimate interests in the domain names. He acknowledges that he has not made use of the names, but notes that he may do so in the future for a legal purpose.
Respondent denies Complainant’s allegations of bad faith. Respondent states that he was not the registrant of the disputed domain names (presumably because he acquired them by transfer from the previous registrant), and therefore cannot have registered them in bad faith. While denying the specific allegations made by Complainant regarding the past relationship between the parties, Respondent states that this past relationship should have no bearing on any future use he may make of the domain names, and suggests that Complainant’s fears that he may use the domain names in bad faith are based upon speculation.
Finally, Respondent contends that the Complainant was brought not by Complainant but by an individual, Complainant’s president, and asserts that this individual lacks authority to bring the Complaint under Complainant’s own bylaws.
C. Additional Submissions
The Parties’ Additional Submissions filed on April 9, 2013, and April 15, 2013, reiterate arguments contained in the initial submissions, respond to opposing arguments, and add various additional allegations. But neither party has identified any exceptional circumstances that would necessitate consideration of these Additional Submissions, such as newly discovered evidence not previously available or opposing arguments that could not reasonably have been anticipated, and no such circumstances are apparent to the Panel. The Panel, therefore, declines to exercise its discretion to consider these Additional Submissions. See Nemelka v. SecureWhois, Inc., FA 1370044 (Nat. Arb. Forum Mar. 21, 2011); America Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006).
In its Additional Submission of May 6, 2013, submitted pursuant to the Panel’s order of April 29, 2013, Complainant includes evidence documenting Complainant’s status as a public authority entitled to protection under section 9(1)(n)(iii) of the Trade-marks Act of Canada, along with other unrelated material. Respondent’s Additional Submission of May 13, 2013, reiterates arguments made in Respondent’s prior submissions and responds to claims in Complainant’s submission.
The Panel’s Order for Additional Submissions instructed the parties to submit documentary evidence and legal authorities directly relevant to whether Complainant has rights in a trademark by virtue of registration with the CIPO, with an explanation not exceeding 100 words in length. The Order stated that any submissions made in response thereto shall consist only of the requested material, unaccompanied by argument. Complainant violated the clear terms of the Panel’s order by including material relating to Complainant’s claim of common-law trademark rights. Respondent also violated the order, inter alia, by addressing other issues in its submission, including infringement, confusion, and the scope of Complainant’s trademark rights. The Panel has disregarded all of the material in these submissions that is not directly responsive to the Panel’s request, and admonishes both parties for disregarding the clear terms of the Panel’s order.
The Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain names were registered and are being used in bad faith.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 claims trademark rights both at common law and by virtue of a registration with the CIPO.
Complainant’s unsubstantiated claim that it “has spent a significant amount of time, money and effort over many years promoting the NPA mark” is insufficient to support a claim of common-law rights for purposes of the Policy. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.7, available at <http://www.wipo.int/amc/en/domains/search/overview2.0/#17> (unsubstantiated claims of trademark fame normally are insufficient; relevant evidence may include length and amount of sales under the mark, and the nature and extent of advertising, consumer surveys, and media recognition).
The evidence submitted by Complainant with regard to its claimed registered trademark states only that the mark was advertised. Canadian law protects a mark that has been adopted and used by a “public authority” following public notice (advertising) by the Registrar of Trademarks. At the Panel’s request, Complainant furnished evidence of its qualification as a “public authority” for this purpose. Accordingly, the Panel deems Complainant to have rights in a mark sufficient to satisfy purposes of paragraph 4(a)(1) of the Policy.
Complainant’s mark is comprised of an oblique rectangle with notched corners containing the letters NPA.
NPA is clearly the dominant component of this mark. The relevant question, therefore, is whether the disputed domain names, each containing “npavancouver” or “vancouvernpa” as its distinctive component, are confusingly similar to Complainant’s mark, of which NPA is the dominant component.
The addition of a geographic term generally does not prevent a domain name from being confusingly similar to a corresponding trademark. See, e.g., InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003). This is especially so where the geographic term is one that is also associated with Complainant or its mark. Such is the case here, as Complainant is a political organization in Vancouver, and the disputed domain names merely add the geographic term Vancouver to the dominant component of Complainant’s mark.
For the reasons set forth above, the Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights.
Respondent acknowledges that he has not yet made any use of the disputed domain names, and does not appear to have any particular future use planned. Nor does Respondent claim ever to have been known by the names, nor to be holding the registrations on Complainant’s behalf. A bare claim that one might commence a legitimate use of a domain name at some undetermined future date does not give rise to a right or legitimate interest for purposes of the Policy. The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
With regard to bad faith, Complainant asserts that Respondent acquired the disputed domain names by falsely representing that he was acting under Complainant’s authority, and that he may intend to use the names for his own political gain and personal bargaining tool. Respondent disputes these assertions, alleging that the domain names were never held on Complainant’s behalf, that he did not misrepresent his authority, and that Complainant’s fears regarding his possible future use of the domain names are speculative.
Regardless of whether Respondent acquired the disputed domain names under false pretenses, it is apparent to the Panel that Respondent acquired the names because of their correspondence to Complainant’s name and mark. Respondent’s actions appear to be motivated by an ongoing broader dispute between the parties, and not by an intent to make bona fide use of the domain names. In many respects this case is similar to Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name). The Panel is satisfied that the disputed domain names were registered and are being used in bad faith.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <npavancouver.org>, <npavancouver.net>, <vancouvernpa.org>, <vancouvernpa.net>, and <vancouvernpa.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 20, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page