Vancouver Port Authority v. Vancouver Port Authority c/o Domain Administrator
Claim Number: FA0604000679463
Complainant is Vancouver Port Authority (“Complainant”), represented by James H. McBeath, of Owen Bird Law Corporation, 2900-595 Burrard Street, Vancouver, BC V7X 1J5, Canada. Respondent is Vancouver Port Authority c/o Domain Administrator (“Respondent”), 100 The Pointe, 999 Canada Place, Vancouver, BC, V6C 3T4, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vancouverportauthority.com>, registered with Nameview, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 19, 2006.
On April 13, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <vancouverportauthority.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 April 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 16, 2006 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@vancouverportauthority.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <vancouverportauthority.com> domain name is confusingly similar to Complainant’s PORT VANCOUVER mark.
2. Respondent does not have any rights or legitimate interests in the <vancouverportauthority.com> domain name.
3. Respondent registered and used the <vancouverportauthority.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vancouver Port Authority, is a corporation that was established by the Government of Canada on March 1, 1999. Prior to that date, Complainant was known as the Vancouver Port Corporation, which the Government of Canada established in 1983. Complainant is responsible for the management, operation, and development of the Port of Vancouver, Canada’s largest port. Complainant has registered the PORT VANCOUVER mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA542075 issued March 8, 2001).
Respondent registered the <vancouverportauthority.com> domain name on June 23, 2005. Internet users who access this domain name are directed to a website featuring links to products and services unrelated to Complainant. Respondent’s website also subjects Internet users to pop-up advertisements.
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."
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(e), 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.”).
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 has established rights in the PORT VANCOUVER
mark through its registration with the CIPO.
See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction); see also KCTS Television Inc. v.
Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does
not matter for the purpose of paragraph 4(a)(i) of the Policy whether the
complainant’s mark is registered in a country other than that of the
respondent’s place of business).
Respondent’s <vancouverportauthority.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because it merely rearranges the terms in Complainant’s PORT VANCOUVER mark and adds the generic term “authority.” Thus, Respondent has registered a domain name that is identical to Complainant’s name. Neither changing the order of the terms in Complainant’s mark, nor adding a generic term to the mark, negates the fact that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <vancouverportauthority.com> domain name. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent is using the <vancouverportauthority.com>
domain name, which is confusingly similar to Complainant’s PORT VANCOUVER mark,
to divert consumers to a website with links to products and services unrelated
to Complainant. In addition,
Respondent’s website subjects Internet users to pop-up advertisements. The Panel presumes that Respondent receives
payment in return for diverting Internet users to other websites and exposing
them to pop-up advertisements. Such use
of the disputed domain name for commercial gain does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June
12, 2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Geoffrey,
Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that
the respondent’s use of the <toyrus.com> domain name, a simple
misspelling of the complainant’s mark, to divert Internet users to a website
that featured pop-up advertisements and an Internet directory, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name).
Complainant asserts that it has not authorized or granted a
license to Respondent to use its mark, and that Respondent is not commonly
known by the <vancouverportauthority.com> domain name. Respondent has not answered the Complaint
with any information indicating that it is commonly known by the disputed
domain name or that it has any rights to use Complainant’s mark in its domain
name. While the WHOIS database lists
Respondent as “VANCOUVERPORTAUTHORITY.COM,” Respondent has not provided any
affirmative evidence that it was known by that name before it registered the <vancouverportauthority.com>
domain name. Therefore, Respondent has
not established rights or legitimate interests in the <vancouverportauthority.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat.
Arb. Forum June 17, 2003) (finding that the
respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <vancouverportauthority.com> domain name, which is confusingly similar to Complainant’s PORT VANCOUVER mark, to operate a website that presents Internet users with links to unrelated products and services, as well as pop-up advertisements. The Panel infers that Respondent receives click-through fees and other payments in return for presenting pop-up advertisements to Internet users and diverting them to other websites. Because Respondent’s domain name incorporates Complainant’s mark in its entirety, the Panel finds that Respondent, for its own commercial gain, is taking advantage of Internet users who might type Respondent’s domain name in an attempt to access Complainant’s website. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel also
determines that Respondent had constructive notice of Complainant’s rights in
the PORT VANCOUVER mark by
virtue of Complainant’s registration of the mark with the CIPO, since both
parties are located in Vancouver, BC, Canada.
See Victoria’s Cyber Secret Ltd. v. V Secret
Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent registered the <vancouverportauthority.com>
domain name despite having
constructive notice of Complainant’s rights in the PORT VANCOUVER mark.
Therefore, Respondent’s registration of the disputed domain name
with knowledge of Complainant’s rights
is further evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vancouverportauthority.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 31, 2006
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