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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Her Majesty the Queen in right of Ontario, Canada v. Venture Labour.Com Inc.

Case No. D2004-0408

 

1. The Parties

The Complainant is Her Majesty the Queen in right of Ontario, Canada, Toronto, Ontario, of Canada, represented by Allen Doppelt and Godwin Chan, Canada.

The Respondent is Venture Labour.Com Inc., Guelph, Ontario, of Canada.

 

2. The Domain Name and Registrar

The disputed domain name <serviceontario.com> is registered with Tucows (herein the “Domain Name in Dispute”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2004. On June 4, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 4, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2004.

The Center appointed J. Nelson Landry as the sole panelist in this matter on July 13, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant has adopted and used the mark “SERVICEONTARIO” continuously since January 1993, in association with services such as renewal of driver licenses to the general public in the Province of Ontario, Canada (herein the “Trade-mark”) and since 1993, the Trade-mark has been visible in service kiosks that have been set up across the Province of Ontario, including the city of Guelph where the Respondent is located.

On June 16, 1993, at the request of Complainant “SERVICEONTARIO” was published as an Official mark under the Canada Trade-marks Act.

The Complainant’s Trade-mark has been well publicized in the Province of Ontario in Canada where the “SERVICEONTARIO” kiosks have earned a 95% approval rating from its users and received an innovative management award from the national Institute of Public Administration of Canada in 1997. At a public policy forum in 2000, the Government of Ontario’s Chair of the Management Board of Cabinet remarked that about 700,000 people are using the “SERVICEONTARIO” kiosks (60 then) every year to conduct transactions. More recently, the Government of Ontario highlighted such innovative public service for citizens in its Throne Speech (an outline of the Government’s agenda) delivered on April 30, 2003.

In its research report entitled “North American Initiatives in Electronic Delivery of Government Information Services through Kiosks” in 1996, CIRCIT named the Complainant’s “SERVICEONTARIO” as “Canada’s most advanced multimedia kiosk pilot project at the provincial government level”. Furthermore according to the ample evidence annexed to the Complaint, between April 1998 and March 2004, there were a total of 5.4 million transactions conducted by the public in the Province of Ontario at the kiosks (now expanded to 70) under the “SERVICEONTARIO” brand. Finally according to search results on ’the Internet, conducted on December 30, 2003, and again on May 17, 2004, virtually all the twelve (12) web pages that contain “serviceontario” are directly related to the Complainant or provide information about the Complainant’s kiosks using the Trade-mark and not to the Respondent.

The Respondent registered the domain name in dispute on April 22, 1998.

The Complainant commenced a review in 2002, to plan for providing electronic access to services available at the kiosks bearing the Trade-mark as well as other services through the Internet.

The Complainant became aware in 2003, that the domain name in dispute had been registered by the Respondent. Then the Complainant took steps to approach the Respondent with a view to settling the dispute in good faith.

The Complainant first contacted the Respondent on December 15, 2003, to inform it that the Complainant has rights in the Trade-mark prior to the Respondent’s registration of the domain name in dispute, and offered to pay the Respondent the amount of CDN$250 to cover the Respondent’s out-of-pocket expenses in registering and transferring the domain name at dispute. In response, the administrative contact of the Respondent, on December 19, 2003, claimed that Respondent has “invested a considerable amount of time around the business concept and prototype for the website” and stated that it would sell the domain name in dispute for US$ 20,000.

The Complainant, on January 26, 2004, reiterated to the Respondent that the Trade-mark is known throughout the Province of Ontario as a distinctive brand and requested Respondent to re-consider Complainant’s offer for the transfer of the domain name in dispute. The Respondent did not respond to this letter. Subsequently, the Complainant sent a reminder to the Respondent via e-mail on February 6, 2004, and requested the Respondent to provide a response.

’On February 6, 2004, the Respondent did not provide a detailed response to the Complainant, merely implying that the Complainant is interfering with its business offering. The Complainant sent a follow-up letter on March 15, 2004, requesting the Respondent to provide information to substantiate its efforts and investments related to the disputed domain name and indicating its objection of the renewal of the registration of the domain name in dispute which was to expire soon. There was no response from the Respondent.

On April 22, 2004, the expiry date of the Respondent’s registration of the domain name in dispute, the Complainant noted that, despite its correspondence and warning, the Respondent renewed <serviceontario.com> for an additional year.

The Respondent is not commonly known by the domain name or the mark “SERVICEONTARIO”. It is registered in the Province of Ontario to carry out business as a corporation under the name of VentureLabour.com Inc. In the Respondent’s website (“www.venturelabour.com”), there is no information about the domain name in dispute or any indication that the Respondent has adopted and used the trade-mark “SERVICEONTARIO” in connection with the offering of any ware or service by the Respondent and there is no evidence to suggest that the Respondent would use the domain name in dispute at issue for legitimate non-commercial or fair use without intent for commercial gain.

According to its website (“www.venturelabour.com”), the Respondent represents itself as “a leading thought and risk partner focused on technology innovations” and offers to help its clients “to educate, inform and advance the industry” through “e-business consulting, creative branding, website & database development, and online marketing”.

The Complainant has neither licensed nor permitted or authorized in any way at any time the Respondent to use the Complainant’s Trade-mark.

To the knowledge of the Complainant, the Respondent has not used the domain name in dispute to establish a web page and has not demonstrated any preparations to use the domain name in dispute. A search for a website under the domain name in dispute conducted on the Internet on December 30, 2003 and May 10, 2004, shows that no web page at the disputed domain name existed at either time. The Respondent does not in its email dispute its non-use of the domain name in dispute.

The Respondent demands a selling price, US$20,000, that greatly exceeds any reasonable out-of-pocket costs for registering and parking of the domain name in dispute.

 

5. Parties’ Contentions

A. Complainant

The Complainant represents it has continuously used the Trade-mark “SERVICEONTARIO”, since 1993, and that on June 16, 1993, it took steps to have the Trade-mark “SERVICEONTARIO” published as an official mark under the Canada Trade-marks Act and therefore represents it has common law trade-mark rights in “SERVICEONTARIO”, as well as rights arising out of the publication of the official Trade-mark.

The Complainant submits on the basis of UDRP decision, Deanna S.p.A. v. Worldwide Media Inc., WIPO Case No. D2003-0964, that the test for confusion under the Policy involves a simple comparison of the domain name and the relevant trademark and that the addition of the term “.com”, a generic element of the Top Level Domain has “no distinctive value in itself sufficiently to justify legal protection”; see also Ontario Lottery and Gaming Corporation v. Paul Sweitzer, WIPO Case No. D2002-0602. The Complainant further contends that notwithstanding the fact that the domain name in dispute merely contains a descriptive word “service” and a geographic indication of a place known as “Ontario”, the domain name in dispute as a whole creates a likelihood of confusion with the Complainant’s official Trade-mark which has acquired strong recognition and secondary meaning and has been recognized by international bodies such as the Centre for International Research on Communication and Information Technologies (the “CIRCIT”).

According to the Complainant, on the basis of the aforementioned cases, it is evident that the domain name in dispute is identical or confusingly similar to Complainant’s Trade-mark in which the Complainant has absolute and exclusive rights in Canada.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name in dispute in that firstly, the Respondent is not commonly known by the domain name in dispute or the Trade-mark. It is registered in the Province of Ontario to carry out business as a corporation under the name of VentureLabour.com Inc and furthermore in the Respondent’s website (“www.venturelabour.com”), there is no information about the domain name in dispute. Secondly, according to the Complainant, there is no evidence to suggest that the Respondent would use the domain name in dispute for legitimate non-commercial or fair use without intent for commercial gain because the Respondent claimed that it has been developing the business concept and the prototype over the past six years.

The Complainant represents that by registering the domain name in dispute the Respondent does not in itself acquire any rights in the domain name in dispute, relying on decisions of UDRP panels under the Policy, holding also that passive holding or nonuse of the registered domain name for extended time periods is evidence of a lack of rights, legitimate interests or bona fide intent to use. In General Electric Company v. John Bakhit, WIPO Case No. D2000-0386, the panel remarked that “if mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration”; see also Recordati S.P.A. v. Domain Name Clearing Company, WIPO Case No. D2000-0194 and Internet Billing Company Ltd. v. Fundu Technologies, NAF Claim No. FA 95547 (for non use of one and a half year or more); see also Greenigans Lawn Care Inc. v. AAA Graphics, WIPO Case No. D2004-0247 (“a site under construction or which does not show preparation to be used “considered as “an evidence of a lack of legitimate interest”.

The Complainant submits that, as shown in its correspondence, it made several attempts at settling the dispute in good faith to inform the Respondent that it has rights in the Trade-mark prior to the Respondent’s registration of the domain name in dispute, and offered to pay the Respondent the amount of CDN$250 to cover the Respondent’s out-of-pocket expenses in registering and transferring the domain name in dispute. The Respondent replied that it has “invested a considerable amount of time around the business concept and prototype for the website” and stated that it would sell the domain name in dispute for US$20,000. The Complainant’s reiterated rights and request to reconsider its offer remained without a response. Despite several requests by the Complainant, the Respondent declined to provide information to substantiate its efforts and investments related to the domain name in dispute and the amount demanded for its transfer.

The Complainant contends that the Respondent, duly informed of the Complainant’s rights in its distinctive Trade-mark, proceeded on April 22, 2004, the expiry date of the Respondent’s registration of the domain name in dispute, to renew <serviceontario.com> for an additional year.

According to the Complainant while the Respondent presents itself in its website (“www.venturelabour.com”), as “a leading thought and risk partner focused on technology innovations” offering to help its clients “to educate, inform and advance the industry” through “e-business” consulting, creative branding, website & database development, and online marketing and claims that it has been developing the prototype of the “www.serviceontario.com” website over such a long period of time, this is simply not credible, reiterating that the Respondent has been given the opportunity to provide demonstrable use of the domain name in respect of its preparation over the time period between 1998 and 2003, but it has failed to do so.

The Complainant represents that on the basis of public awareness, as reported by the CIRCIT in 1996, the Complainant’s Trade-mark has been known and used in the Province of Ontario, where the Respondent is located, in the years preceding the Respondent’s registration of the domain name in dispute and that the Trade-mark has first been given public notice, the Respondent should have known or ought to have known in 1998, that the domain name in dispute contains a mark identical or confusingly similar to the Complainant’s Trade-mark and that its registration of such domain name would deprive or prevent the Complainant from registering the domain name in dispute.

The Complainant represents that Respondent purports to justify its demand for US$20,000 by disclosing to the Complainant that it has previously sold a domain name <londonjobs.com> for the same amount. However, the Respondent does not provide any additional information to support its claim, despite request to give same

The Complainant further alleges that the domain name in dispute has not been used by the Respondent to set up an active website, which fact is not disputed by Respondent in its correspondence with the Complainant. The Complainant relies on earlier UDRP decision under the Policy which have shown that extensive non-use and mere passive holding of a registered domain name could be viewed as evidence of bad faith use; see Internet Billing Company Ltd. v. Fundu Technologies, NAF Claim No. FA 95547 (passive holding for 28 months); Ceyx Technologies v. Ceyx.Com, WIPO Case No. D2001-0681; Deutsche Telecom AG v. Ronan Balread, WIPO Case No. D2003-0893 (non-use for over two years); and The Body Shop International plc v. David Sweeton, WIPO Case No. D2003-0991.

According to the Complainant, given that the Respondent has still not set up an active website more than six years after its registration in April 1998, it is reasonable to infer that the Respondent will not be using the domain name in dispute as a bona fide channel or medium to offer its business products or services.

In the circumstances set out above, the Complainant submits that the Respondent has demonstrated in an abundantly clear and unambiguous manner that its registration and use of an inactive domain name was for the purpose of selling the domain name in dispute for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The Complainant further submits that Respondent fails to respond to the Complainant’s good-faith attempt to settle the dispute, renews the domain name in dispute with actual notice of the Complainant’s established rights in the Trade-mark and provides no demonstrable preparations to use the domain name in dispute.

Finally the Complainant submits that the Respondent registered the domain name in dispute in order to prevent the Complainant from reflecting the Trade-mark in a corresponding domain name to offer the Complainant’s delivery of services at the “SERVICEONTARIO” kiosks through the electronic channels and that i“”f the Respondent ’were to establish a “www.serviceontario.com” website and moreover, such website, if established, would divert traffic on the Internet in the event that the Complainant set up a website containing its Trade-mark under another domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and

(ii) The respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As correctly represented by the Complainant, the latter enjoys common law rights in the Trade-mark by reason of its long and continuous use since 1993, as well as statutory rights arising out of its publication under Canada Trade-marks Act as an official mark, a special form of protection for the marks of a public authority, which enjoys exclusive and strong protection under the Act and benefits from the prohibition of the use of such trade-marks by other persons.

Notwithstanding the fact that at the time of its adoption in 1993, the Trade-mark was comprised of the generic term “service” associated with the geographical term “Ontario”, by reason of its continuous and extensive use, as amply demonstrated by the Complainant in its evidence, it has achieved distinctiveness, secondary meaning, trade-mark status and the Complainant enjoys substantial goodwill associated therewith.

There is no doubt in the mind of this Panel that the Complainant has common law rights as well as statutory protection rights in its Trade-mark and that the domain name in dispute is either identical to or confusingly similar with the Trade-mark. The addition of the suffix “.com” does not depart from this as represented by the Complainant and held on numerous occasions by panels in earlier UDRP decisions.

The first criteria under paragraph 4(a)(i) has been met.

B. Rights or Legitimate Interests

Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name “ServiceOntario” or the domain name in dispute and is not making legitimate non-commercial or fair use of the domain name in dispute. Furthermore, the Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s Trade-mark.

There is no evidence that Respondent has ever engaged is any legitimate business under the domain name in dispute. It is important to this Panel to observe that Respondent had the domain name in dispute available to it for a period of at least five years and has not put its website in operation, and that Respondent having claimed to have invested a considerable amount of time around the business concept and prototype for the website. Not having provided additional information about its project and the purported US$20,000 spent thereon, this Panel has no hesitation in finding an adverse inference from these facts and holding that, in this case, the Respondent has no rights or legitimate interest in the domain name in dispute. Even prior to the Complaint, Respondent was provided with at least two opportunities by the Complainant to explain its contentions and plans. Respondent’s silence simply means that there is no such justification, rights or legitimate interests.

The criteria under paragraph 4(a)(ii) has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

The Complainant contends that the domain name in dispute was registered and used in bad faith and the Panel, as explained hereinafter, so finds.

The services provided by the Complainant in association with its Trade-mark were available in at least all medium range or large cities in the province of Ontario, including the city of Guelph in which the Respondent and its administrative contact, are located. Considering not only the publication as an official mark but also and most importantly the widespread availability of the services under the Trade-mark and its significant public acknowledgement, it is inconceivable to this Panel that the Respondent was not aware of the existence of the Trade-mark and services of Complainant when it registered the domain name in dispute in 1998. It has been held by many panels in earlier UDRP decisions that the registration of a domain name which is confusingly similar to a well-known trade-mark had been registered in bad faith and this Panel so finds in this case.

The absence of any preparation for or use of a website, alone or in association with the unjustified demand of a sum of US$20,000 for the transfer of the domain name in dispute clearly indicates to this Panel that the registration was made with the object of eventually selling the domain name in dispute with a profit as well as to the deprive the Complainant of registering this top level domain name incorporating its Trade-mark.

The Complainant has advanced other grounds such as failures to respond to the Complainant’s good-faith reiterated attempts to settle the dispute, extensive non use and mere passive holding of the domain name in dispute, all grounds well supported by evidence and references to other UDRP panel decisions under the Policy as summarized hereinabove and the Panel does adopt them.

Under these above circumstances, this Panel finds that the domain name in dispute has been registered in bad faith and used in bad faith.

The third criteria under paragraph 4(a)(iii) has been met.

 

7. Decision

The Panel concludes that:

(a) the domain name <serviceontario.com> is confusingly similar to the Complainant’s Trade-mark;

(b) the Respondent has no rights or legitimate interest in the domain name in dispute;

(c) the domain name in dispute has been registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <serviceontario.com> be transferred to the Complainant.

 


 

J. Nelson Landry
Sole Panelist

Dated: July 23, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0408.html

 

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