Live at Squamish Limited Partnership v. Douglas R Day
Claim Number: FA1604001670649
Complainant is Live at Squamish Limited Partnership (“Complainant”), Canada. Respondent is Douglas R Day (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <squamishvalleymusicfestival.com>, registered with Webnames.ca Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2016; the Forum received payment on April 18, 2016.
On April 15, 2016, Webnames.ca Inc. confirmed by e-mail to the Forum that the <squamishvalleymusicfestival.com> domain name is registered with Webnames.ca Inc. and that Respondent is the current registrant of the name. Webnames.ca Inc. has verified that Respondent is bound by the Webnames.ca Inc. 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 April 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2016 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@squamishvalleymusicfestival.com. Also on April 19, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Live at Squamish Limited Partnership (“LSLP”), is a limited partnership that works with a general partner to produce and operate a contemporary music festival in Squamish, British Columbia. Complainant’s uses the SQUAMISH VALLEY MUSIC FESTIVAL mark in connection with this festival. Complainant has rights in the mark based on registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA930275, registered March, 1, 2016). Complainant also has common law rights in the mark based on Complainant’s adoption and extensive use of the mark in association with its business. Respondent’s domain <squamishvalleymusicfestival.com> is confusingly similar to the SQUAMISH VALLEY MUSIC FESTIVAL mark as the domain includes the entire mark, less the spaces, and merely differs through the addition of the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant or the festival and has never been authorized by Complainant to use the SQUAMISH VALLEY MUSIC FESTIVAL mark. Further, emails between Complainant and Respondent show Respondent admitting to not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent registered and is using the domain name in bad faith. Respondent registered the domain with the intent of preventing the Complainant from reflecting its mark in a domain name. Respondent also is competing and disrupting Complainant’s business through threatening to host a competing music festival. Finally, Respondent, as a resident of British Columbia, knew of Complainant’s rights in the mark based on extensive media coverage and publicity of the mark.
B. Respondent
The Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain was created on November 13, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to have rights in the SQUAMISH VALLEY MUSIC FESTIVAL based on registration of the mark with the CIPO (Reg. No. TMA930275, registered March, 1, 2016). Panels have found that registration of a mark with the CIPO is sufficient to demonstrate rights in a mark. See X-SCREAM VIDEO PRODUCTIONS INC. v. IT Manager, FA 1619522 (Forum June 25, 2015) (finding that that Complainant’s registration with the CIPO appropriately confers rights in the VIDEOPAGES mark under Policy ¶ 4(a)(i)). The Panel finds that registration of the mark with the CIPO demonstrates rights in a mark.
Complainant claims common law rights in the mark based on extensive use and promotion of the mark. Complainant contends that it began using the SQUAMISH VALLEY MUSIC FESTIVAL mark in November of 2012 by submitting relevant evidence. Complainant further claims that it began using the mark in general advertising on or about March 1, 2013 and the mark has since been routinely featured in newspaper articles discussing the festival and the tens of thousands of attendees that have attended the event. Complainant states that it has continuously used the SQUAMISH VALLEY MUSIC FESTIVAL mark since that date in affiliation with its festival. As the Panel finds Complainant’s contentions to be sufficient, the Panel concludes that Complainant has established common law rights by showing the SQUAMISH VALLEY MUSIC FESTIVAL mark has taken on a secondary meaning in association with Complainant’s business. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Traditionally, a secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel thus concludes that Complainant has common law rights in the SQUAMISH VALLEY MUSIC FESTIVAL under Policy ¶ 4(a)(i).
Complainant also argues that the <squamishvalleymusicfestival.com> is confusingly similar to the SQUAMISH VALLEY MUSIC FESTIVAL mark as the domain includes the entire mark, less the spaces, and merely differs through the addition of the gTLD “.com.” Panels have not considered elimination of spacing or the addition of the “.com” gTLD to a fully incorporated mark as distinguishing features. See, e.g., Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015). Therefore, this Panel agrees that the disputed domain is confusingly similar to the SQUAMISH VALLEY MUSIC FESTIVAL mark under Policy ¶ 4(a)(i).
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), and then 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not affiliated with Complainant or the SQUAMISH VALLEY MUSIC FESTIVAL and has never been authorized by Complainant to use the mark. WHOIS information indicates that Respondent’s WHOIS information identifies Respondent as “Douglas R Day” which does not appear to resemble the disputed domain. Panels have held that a respondent is not commonly known by the disputed domain name based on a lack of authorization from complainant and WHOIS information. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). This Panel concludes that Respondent is not commonly known by the disputed domain.
Complainant further asserts that emails between Complainant and Respondent show Respondent admitting to not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In emails between the parties sent November 6, 2013, Respondent states, “As you know, for some time I have personally owned the Domain Name <squamishvalleymusicfestival.com> as well as the .ca version of the domain. I have not promoted the use of this web name nor has it ever been activated for public viewing… I also might be interested in running a smaller version of Squamish Valley Music Festival as a temporary use on my Garibaldi Springs Golf Course lands.” Panels have held that a respondent using a domain reflecting a third party’s mark to sell products or services unrelated to the mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”). Panels have also held that inactive use of a domain is not a bona fide or legitimate noncommercial use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)) This Panel finds that Respondent’s stated use would not be a permitted use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent registered and is using the domain name in bad faith. Complainant supports this argument through asserting that Respondent registered the domain with the intent of preventing the Complainant from reflecting its mark in a domain name. Respondent has claimed in emails that it has registered the other domains <squamishvalleymusicfestivalcamping.com> and <squamishvalleymusicfestivalcamping.ca>, which include the SQUAMISH VALLEY MUSIC FESTIVAL mark, for the purposes of establishing camping grounds that would be used by patrons of Complainant’s festival. Panels have found bad faith where a respondent registered multiple domains reflecting a complainant’s mark. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Therefore, the Panel agrees that a pattern of bad faith domain registrations is evident under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent is competing and disrupting Complainant’s business through threatening to host a competing music festival. As shown previously, Respondent raised the possibility of running a “smaller version of the Squamish Valley Music Festival…” Panels have found bad faith where a respondent registered a domain with an intent to offer services or products similar to a complainant’s. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad faith where the respondent has connections with a competitor of the complainant’s digital security business and the respondent indicated that she intended to enter the same business). The Panel thus finds that Respondent has shown bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent had knowledge of Complainant's rights in the SQUAMISH VALLEY MUSIC FESTIVAL mark. Complainant argues that the extensive advertising and promotion of Complainant’s mark and the fact that Respondent lives in the area where the festival is held indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers due to the timing of registration of the disputed domain name and the planned manner of use of the disputed domain name as indicated in emails exchanged between the parties that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <squamishvalleymusicfestival.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 23, 2016
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