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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maritime-Ontario Freight Lines Limited v. Magic Domain
Case No. D2007-0202
1. The Parties
The Complainant is Maritime-Ontario Freight Lines Limited, of Brampton, Ontario, Canada, represented by Fasken Martineau DuMoulin, LLP, Canada.
The Respondent is Magic Domain, of Lutz, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <maritimeontario.com> is registered with Intercosmos
Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2007. On February 14, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On the same date, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 February 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2007. The Respondent did not submit any response. Accordingly, on March 19, 2007 the Center notified the Respondent’s default.
The Center appointed David Perkins as the sole panelist
in this matter on April 3, 2007. 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,
4. Factual Background
4.A. The Complainant
4.A.1 The Complainant’s Business
The Complainant, Maritime-Ontario Freight Lines Limited is based in Brampton, Ontario, Canada. The Company has traded since 1963. From its 21 operating locations across Canada the Complainant operates a transportation business. It has six distinct operating divisions. They are
a general freight transportation service throughout Canada, servicing over 5,000 customers
Provides parcel delivery for Canada Post Corporation, covering local deliveries in Toronto and contract services in both Canada and the Untied States
Provides home delivery of newspapers and magazines in the Toronto area
Provides contract tank carrier services throughout Ontario
Provides temperature verified shipping between major cities in Canada, in particular for the pharmaceutical and food industries
Provides trans-border, international and specialty move shipments, as well as warehousing
4.A.2 The Complainant’s website and domain names
The Complainant’s website “www.m-o.com”
has provided on-line services since its creation on July 31, 2002. All the Complainant’s
domain names link to that website. Those domain names are:
<m-o.com> registered April 9, 1996
<m-o.ca> registered February 28, 2001
<maritime-ontario.ca> registered August 14, 2006
<maritimeontario.ca> registered August 14, 2006
4.A.3 The MARITIME-ONTARIO trademark
4.A.3.1 The Complainant asserts common law trademark rights in MARITIME-ONTARIO. It does not have a registered trademark in Canada for MARITIME-ONTARIO. However, from the corporate literature annexed to the Complaint the ® symbol appears against M-O: FreightWORKS: Parcel WORKS: Paper XPRESS: BULK Services: COLDchain and Logistic WORKS (as noted in paragraph 4.A.1 above).
4.A.3.2 From the Panel’s own searches, it appears that the Complainant applied to registered MARITIME-ONTARIO in Canada on February 19, 2007, claiming use of that mark since 1962. FreightWORKS was applied for in 1997 and registered in Canada in 1999. Applications for M-O COLDchain and COLDchain were filed in Canada respectively in 2005 and 2006 and both were registered in March 2007. The Panel was unable to find Canadian trademark applications or registrations for any of M-O; ParcelWORKS; Paper XPRESS; BULK Services; or Logistic WORKS.
4.A.3.3 The Complainant asserts that the MARITIME-ONTARIO
name has become distinctive through the acquisition of a secondary meaning.
Factors supporting such secondary meaning include (1) advertising expenditure;
(2) consumer linking of the mark to the source; (3) unsolicited media coverage;
(4) sales success; and (5) length and exclusivity of the use of the mark. Those
five factors were advanced in Universal City Studios, Inc. v. David Burns
and Adam-12 Dot Com, WIPO Case No. D2001-0784.
4.A.3.4 As evidence of the acquisition of secondary meaning by the MARITIME-ONTARIO mark the Complainant exhibits sales literature covering the period 2005 to 2007. This comprises 14 pages, 13 of which are headed “M-O Freight WORKS” and the remaining page simply “M-O”. Each page carries at the foot the corporate name “Maritime-Ontario Freight Lines Limited” and reference to the website “www.m-o.com”. Generally, the corporate name is abbreviated to “M-O”.
4.A.3.5 The Complainant says that it has “… invested a substantial amount of money and significant effort in advertising and promoting the M-O websites and trade name and common law mark incorporating the name MARITIME-ONTARIO in association with freight transportation services.”
No figures for such expenditure are provided.
4.A.3.6 However, the Complainant does provide the number of hits at the “www.m-o.com” website between July 31, 2002 (its date of creation – see, paragraph 4.A.2 above) and January 15, 2007. These appear to total some 300,000 hits and 6.5 million page views.
4.A.3.7. The Complainant says that it has received “… a significant amount of unsolicited media coverage and recognition”. In this respect, the evidence annexed to the Complaint consists of extracts from the publication CT&L (Canadian Transportation and Logistics) for April 2004 (page 51) and August 2004 (pages 24-36, even numbers only), which appear to relate to the Complainant’s inclusion in the “50 Best Managed Companies List” and its M-O Freight WORKS operating division being a repeat winner of the LTL (less-than-truckload) Motor Carrier Award.
4.B. The Respondent
4.B.1 In the absence of a Response, all that is known of the Respondent is contained in the Complaint. From this two facts emerge.
4.B.2 First, the domain name in issue <maritimeontario.com> was registered on June 21, 2005.
4.B.3 Second, that domain name resolves to the website, “www.maritimeontario.com”. That website includes links to trucking companies and shipping services in the same field of business as the Complainant. These include the following websites:
5. Parties’ Contentions
5.A.1 The Complainant says that it has rights in the common law trademark MARITIME-ONTARIO and that, but for the hyphen, the domain name in issue <martimeontario.com> is identical to that trademark.
5.A.2 The Complainant says that the Respondent has no rights or legitimate interests in respect of that domain name. Specifically, none of the circumstances set out in paragraph 4(c) of the Policy apply to the facts of this case.
5.A.3 In particular, there has been no use of the domain name in issue in connection with the bona fide offering of goods or services, nor has there been legitimate or fair use of that domain name. The Complainant refers to the Respondent’s “www.maritimeontario.com” website. This depicts the Canadian flag and the CN Tower in Toronto, it includes the subject headings “Trucking Companies” and “Shipping Services”, and it links to other websites offering competitor freight transportation services in North American. It is clearly, the Complainant says, designed to give the impression that the site has a connection with freight services in Canada.
5.A.4 The term MARITIME-ONTARIO has no meaning or significance other than as the corporate name and trademark of the Complainant, which distinguishes the Complainant’s services from those of its competitors.
5.A.5 There is no evidence of the Respondent being commonly known by the domain name in issue, nor has the Complainant licensed or otherwise authorized use by the Respondent of the MARITIME-ONTARIO trademark.
5.A.6 In the circumstances, the Complainant says that the Respondent’s registration and use of the domain name in issue is a blatant bad faith attempt to misleadingly divert customers and potential customers to its website, which carries links to other competitor transportation companies.
5.A.7 As to registration and use in bad faith, the Complainant puts its case under paragraphs 4(b)(iii) and (iv) of the Policy.
5.A.8 First, the Complainant relies upon cases decided under the Policy where
bad faith registration has been found in circumstances where the domain name
in issue is identical to a well-known trademark. For example, Stella D’oro
Biscuit Co Inc .v. Patron Group Inc, WIPO
Case No. D2000-0012, STELLA D’ORO being a mark which had been registered
for biscuits; cookies; crackers; toast and bread sticks since 1939.
5.A.9 Second, the Complainant points to the Respondent’s website to which
the domain name in issue resolves linking to sites for freight transportation
companies in the United States which compete with those offered by the Complainant.
This, the Complainant says, is designed to disrupt its Internet business and
obstruct customers using the Internet. The Complainant cites Sports Holdings
Inc .v. WhoisGuard Protection, WIPO Case
No. D2006-1360, where the Complainant’s trademarks were HIBBETT and
HIBBETT SPORTS (registered in the United States) and the domain name in issue,
<hibbettsportinggoods.com> linked to websites offering the sports equipment
goods of competitors,
5.A.10 Third, the Complainant says that when the Respondent registered the domain name in issue in June 2005 it had constructive knowledge of the MARITIME-ONTARIO mark under which the Complainant had been trading since 1962. Despite that, the Complainant says the Respondent adopted a domain name confusingly similar to <maritimeontario.ca> and <maritime-ontario.ca> both of which were subsequently registered in August 2006.
5.A.11 Finally, the Complainant refers to the “cease and desist” letter from its lawyers to the Respondent dated December 15, 2006. That letter drew the Respondent’s notice to its impermissible use of the MARITIME-ONTARIO mark, requested transfer of the domain name in issue to the Complainant and offered $200.00 to cover the Respondent’s out of pocket costs likely to be incurred in making such transfer. The Respondent’s failure to answer that letter and its continued use of the domain name thereafter is, the Complainant says, another indication of bad faith use.
As stated, no Response has been filed.
6. Discussion and Findings
6.1 the Policy paragraph 4.(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
i that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
i that the Respondent has no rights or legitimate interests in respect of the domain name; and
i that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4.(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4.(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
6.4.1 Here there is no doubt that, if – as pleaded – the Complainant has rights in MARITIME-ONTARIO as a trademark, the domain name is confusingly similar. The issue is whether MARITIME-ONTARIO is a trademark in which, through use since 1962, secondary meaning has been acquired.
6.4.2 The trading identity used by the Complainant appears to be the abbreviation “M-O” and that abbreviation coupled with other (apparently) registered trademarks for its operating divisions, such as “FreightWORKS” (see, paragraph 4.A.1 above). The full corporate name does appear in the sales literature annexed to the Complaint but the main identifier is the more prominent use of the “M-O” abbreviation.
6.4.3 That M-O is the trademark by which the Complainant is known is, in the Panel’s opinion, reinforced by the fact that its website is www.m-o.com and that its earliest registered domain names are both for the “M-O” mark, namely <m-o.com> registered in April 1996 and <m-o.ca> registered in February 2001.
6.4.4 By contrast, its domain names including the corporate name, <maritime-ontario.ca> and <maritimeontario.ca>, were not registered until August 2006. This is over 12 months after the Respondent’s domain name in issue was registered in June 2005. Such subsequent registration is not, however, fatal to the Complainant’s case, provided it can show that it has trademark rights in MARITIME-ONTARIO by virtue of acquired secondary meaning over the 45 years since the Complainant commenced trading under that name.
6.4.5 But, the evidence proffered to support such asserted secondary meaning is sparse. The sales literature annexed to the Complaint – which covers only the period 2005 to 2007 - predominantly features the M-O mark and the marks identifying the Operating Divisions, for example: M-O FreightWORKS. See, in this respect, paragraph 4.A.3.4 above.
6.4.6 As to expenditure in promoting the MARITIME-ONTARIO mark, no figures are given: see, paragraph 4.A.3.5 above.
6.4.7 As to the number of hits on the “www.m-o.com” website, these cover the period July 2002 to January 2007. In that respect, any hits linked to that website prior to August 2006 (when the <maritimeontario.ca> and <maritime-ontonario.ca> domain names were registered) could have come only through the <m-o.com> and <m-o.ca> domain names.
6.4.8 As to unsolicited media coverage, the Complainant relies on its M-O FreightWORKS division being a repeat winner of the LTL Motor Carriers Award.
6.4.9 Accordingly, evidence of long time use and acquired distinctiveness of MARITIME-ONTARIO as a trademark is somewhat flimsy. However, the extracts from the Complainant’s website do depict one of the Complainant’s trucks on which the words “MARITIME-ONTARIO” are very prominently displayed, the addresses of the Complainant’s 21 terminals appear to be the corporate name, the Toronto Office at Brampton, Ontario even having the mark as its street address, namely “1 Maritime-Ontario Blvd”. Furthermore, the words “MARITIME ONTARIO” in combination have no readily apparent meaning or significance other than as a trademark identifying the Complainant’s services to distinguish them from those of its competitors.
6.4.10 In the Panel’s view, this is a case where the issue of the existence of trademark rights in MARITIME-ONTARIO could arguably be decided either way. The Panel cannot believe that the Complainant could not have provided more adequate evidence to support the Complainant’s case that it has acquired secondary meaning in MARITIME-ONTARIO. Nevertheless, the fact that the corporate name has been used in commerce – predominantly, in Canada – for 45 years indicates a likelihood that the main components of that name “MARITIME-ONTARIO” will have become associated in the minds of the relevant public exclusively with the Complainant and the various transportation services it offers. This, coupled with the fact that the Respondent has not responded to the Complaint, tips the balance sufficiently in favour of the Complainant for the Panel to accept that for present purposes it does have trademark rights in MARITIME-ONTARIO. Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
The Panel feels it should, nevertheless, reiterate its concern that where Complainants
rely on establishing common law trademark rights, the onus is fair and square
on the Complainant to provide adequate evidence to support such a finding. The
factors identified in WIPO Case D2001-0784
(see, paragraph 4.A.3.2 above) provide a good guideline in that respect to Complainants
and their legal advisers.
6.5 Rights or Legitimate Interests
6.5.1 There is nothing in the available record to suggest that, had a Response been filed, the Respondent could have established any of the circumstances set out in paragraph 4(c) as evidencing rights or legitimate interests in the domain name in issue. Certainly, use of that domain name to resolve to a website, which then provides links to the websites of transportation companies offering competing services to those of the Complainant, cannot amount either to a bona fide offering of such services, nor to a legitimate or fair use of the domain name.
6.5.2 Accordingly, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
6.6 Registered and Used in Bad Faith
6.6.1 As to bad faith registration, the cited Stella D’oro case is not on point. There the Complainant’s mark had been registered for over 60 years and was widely-known for the products sold under that mark. In the present case, by comparison, the Complainant has no relevant registered trademark, nor can it be said that the MARITIME-ONTARIO mark is a widely-known mark. Indeed, on existence of trademark rights in MARITIME-ONTARIO, on the evidence offered in the Complaint, in the Panel’s opinion the Complainant only “scrapes home”.
6.6.2 However, the other grounds proffered by the Complainant as establishing
bad faith registration and use are, in the Panel’s view, adequate to meet
the twin requirements of paragraph 4(a)(iii) of the Policy. In particular, the
principle ground establishing lack of rights or legitimate interests in the
domain name in issue, applies also in relation to bad faith. This is use of
that domain name to resolve to a website, which provides links to competitor
websites. That, coupled with the fact that the Respondent continued so using
the domain name after being put on notice of the Complainant’s rights
and the Respondent’s failure to file a Response, are sufficient in the
present case to indicate bad faith registration and use.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <maritimeontario.com> be transferred to the Complainant.
Dated: April 17, 2007
Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0202.html
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