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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tourism PEI v. Private Registration

Case No. D2007-0469

1. The Parties

The Complainant is Tourism PEI, Charlottetown, Canada, represented by Carol Horne, Canada.

The Respondent is Private Registration, Markham, Ontario, Canada; alternative address provided by Complaint: Edmonton, Alberta, Canada.

2. The Domain Name and Registrar

The disputed domain name <tourismpei.com> (herein the “domain name in dispute”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2007. On March 29, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name in dispute. On April 17, 2007, Go Daddy Software 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. On April 24, 2007, in response to a Notification that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint. The Center verified that the Complaint together with the Amendment 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 April 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2007.

The Center appointed J. Nelson Landry as the sole panelist in this matter on June 8, 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, paragraph 7.

On June 13, 2007 the Panel issued an n Administrative Procedural order No. 1 requesting the Complainant to provide better evidence demonstrating that it has rights in the unregistered service trademark. The Complainant had until June 19, 2007 to file a Supplemental Filing to the Complaint, the Respondent has until June 22, 2007 to respond or provide comments and the date to render a decision was set back to June 28, 2007.

On June 19, 2007, Complainant provided a reply with documentary evidence as to the use of TOURISM PEI as a service mark and sworn evidence as to the telephone conference of representatives of the Complainant and the Respondent. On June 21, 2007, Respondent provided comments to both the Complaint and the Response to Administrative Panel Procedural Order No. 1.

4. Factual Background

The Complainant was incorporated as Tourism PEI Inc., by letters patent dated December 23, 1998 and by amendments in 1999 is continued as a Crown corporation to be called Tourism PEI.

Since its inception, the Complainant has used “Tourism PEI” as trade name and unregistered trademark. It has expended in excess of $600,000 annually to promote “Tourism PEI” in Canada and North America and provided examples of documentation showing the use of Tourism PEI associated with services in the heading of at least five categories of documents (herein the “Trademark”).

The domain name in dispute was registered on March 8, 1999.

On March 6, 2007 a telephone conversation initiated by the Advertising and Publications Manager of the Complainant with the Respondent with the view of exploring the conditions for transfer of the domain name in dispute to the Complainant. As there was no agreement as to the price for the transfer, notwithstanding an offer of $1,500 made by the Complainant, the Respondent was informed that the Complainant was not prepared to pay the higher price demanded by the Respondent and that UDRP proceeding would be initiated.

During the telephone conversation, in response to an inquiry as his plans for the website, the Respondent indicated that he was working on a complete over-haul and was preparing to release the site. (Sworn statement of Carol Horne).

Contradictory evidence.

The Complainant states in its Complaint and sworn statement of Carol Horne that to its offer of $1,500 to the Respondent to transfer the domain name in dispute, the latter asked for a sum of $5-10 million.

The Respondent in its uncertified evidence states that he simply mentioned this amount to reflect what the potential future value of the website would be worth. He states that not once has he indicated to the Complainant for any monetary value, service product or item that could benefit him financially or economically, during the entire history through which he has owned and operated the domain <tourismpei.com>. He further states that never during the conversation did he indicate a desire to sell the domain name in dispute.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has rights and interest in an unregistered service mark which has become recognized by reason of its use since early 1999. It further submits that the domain name in dispute is identical or confusingly similar with the unregistered service mark TOURISM PEI.

The Complainant further represents that the Respondent has no rights or legitimate interest in respect of the domain name in that there is no evidence that the Respondent is using the domain name in dispute in connection with a bona fide offering of goods and services and that there is no evidence that the Respondent has been commonly known by the domain name in dispute and further more that there is no evidence that the Respondent is making legitimate non-commercial or fair use of the domain name in dispute.

In respect of the third criteria, the Complainant contends that the Respondent in registering the domain in dispute, such registration prevents the Complainant as owner of the TOURISM PEI service trademark from reflecting its Trademark in a corresponding domain name. Furthermore, according to the Complainant’s submission, the Respondent is apparently willing to sell the domain name for an amount of at least $5 million which acts constitute a clear case of cybersquatting. These acts according to the Complainant demonstrate that the domain name in dispute was registered and used in bad faith.

B. Respondent

The Respondent did not reply nor adduced any evidence to the Complaint of the Complainant. However, the Respondent provided a Response to the Complainant’s Reply as invited in the Administrative Procedural Order No. 1. This Response does not contain any certification.

The Respondent contends that over the period from 2000 to 2007 he had not been aware that the Complainant desired to own the domain name in dispute and raises this long delay and further outlines that the domain name <tourismpei.com> was registered 11 months after the domain name in dispute.

The Respondent represents that there are numerous precedents and prior cases pertaining to thousands of registered domain names involved in disputes over their use and that there are no firm and fast laws regarding domain names infringement. A case pertaining to <whitehouse.com> is mentioned by the Respondent without any further explanation.

In respect of trademark rights the Respondent states that a search in the Canadian Intellectual Property Office (CIPO) “Trade-marks Database” discloses no result for the terms “tourism” and “pei”. He, therefore, submits that his owning and operating the domain name in dispute does not infringe any trademark law.

In respect of the amount of $5 to $10 million for the domain name, he represents that while this amount was mentioned as a potential value of the website and services provided, he contends that he had no desire to sell the domain name at the time of the telephone conversation. Not denying the telephone conversation having occurred, he nevertheless states that, to his knowledge, the conversation was not recorded nor did he give his consent thereto.

Finally, considering the time that elapsed between the registration of the Domain Name and the Complaint initiated contact between the parties, and also the lack of any presence of the trademark at the CIPO, the case should be dismissed

6. Discussion and Findings

Comments on the evidence provided and the timing of that of the Respondent.

Prior to making its findings, the Panel considers it appropriate to comment on the quality of the evidence in this case.

The Panel has noted above that the Response of Complainant as well as that of the Respondent are not certified. Furthermore, the Respondent raises at this late time, in its Response to the Complainant’s Reply, points and evidence that should have been more properly provided upon receiving the Complaint. This Panel, exceptionally in the present circumstances, does not wish to disadvantage either party and has decided to consider the evidence of both parties as if it was certified and filed at the appropriate time.

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

From the evidence further adduced by the Complainant, which evidence is not challenged by the Respondent except as to its legal basis pertaining to an unregistered trademark, the Complainant has shown that it has used TOURISM PEI not only as a trade name on its letterhead and envelopes but also as a service mark in its promotional literature and other documentation.

It is well accepted under the Policy that in order to prevail under the first criteria of the Rules, a complainant does not necessarily need to have rights in a registered trademark, rights acknowledged in an unregistered trademark are sufficient. See Imperial College v. Christophe Dessimoz, WIPO Case No. D 2004-0322. The panel in this case wherein the unregistered status of the trademark was raised, acknowledged the “undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. Further, the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Address: Intellectual Property Issues, April 1999) from which the Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Policy is applicable to unregistered trademarks and service marks.

In the present case, in respect of the statement of the Complainant that it has rights in a recognized (unregistered) service mark, the Respondent challenges and comments only the unregistered character of the Trademark.

Furthermore, it is equally established in Canada and has been the case for numerous years under the Canadian Trademark Act R.S.C. 1985, c. T-13, that rights are created in a trademark by its use in association with wares or services, in the latter instance if it is used or displayed in the performance or advertising of those services. Section 4.(2). The doctrine and jurisprudence in Canada have acknowledged this legislative basis in the creation of rights in a trademark by use thereof. Registration is not mandatory. See Hughes on Trade Marks, LexisNexis, Butterworths Chapter 17 at page 371. The section starts with the statement “It is not essential to register in order to acquire rights in a trade-mark so as to preclude others from using the same or confusing trade-mark”.

The Panel finds that the Complainant has rights in the unregistered Trademark in respect of which it has acquired some goodwill.

In the present case it is clear that the domain name in dispute incorporates in its totality the service trademark TOURISM PEI to which is added the top level domain name “.com” which as acknowledged in numerous UDRP decisions, does not alter the fact that the whole of the Trademark has been incorporated and as a result, the domain name in dispute, as this Panel finds, is identical or confusingly similar with the Trademark.

The first criterion has been met.

B. Rights or Legitimate Interest

Respondent has not filed any response and did not explicitly address this element in his response to Complainant’s Response to the Administrative Procedural Order No. 1. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true in respect of the unchallenged evidence.

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 “Tourism PEI” or the domain name in dispute, and is not making any legitimate non-commercial or fair use of the domain name in dispute. Although the Respondent filed comments pursuant to the Procedural Order, he did take advantage of this opportunity to explain how he may have ever engaged is any legitimate business under the Complainant’s Trademark.

The Panel finds that the registration of the domain name in dispute by the Respondent denies the Complainant access to the use of the domain name corresponding to its Trademark and that the Respondent does not have any rights or legitimate interests in respect of the domain name in dispute.

The second criterion 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.

According to the evidence it does not appear that the domain name in dispute is presently in use or was ever significantly in use. This may be simply that evidence is lacking in that respect or that the website is being redesigned as mentioned by the Respondent.

Considering that Respondent’s comments are silent on whether he has rights or legitimate interests in the domain name in dispute and therefore unrebutted the presumption raised by the Complainant, it is proper for the Panel at this point to deliberate and consider for what likely reason the Respondent registered the domain name in dispute. The Complainant initiated a telephone conference with the Respondent, which fact is not denied by the Respondent, and sought to have the domain name in dispute transferred to it for the payment of a consideration more than the costs of registering the domain name, namely the sum of $ 1500. According to the Complainant’s affidavit evidence, the Respondent stated “that this amount was far to low for the effort they had put into redesigning the site and suggested a price $ 5 - 10 million.”

In the present circumstances and on the basis of the evidence before the Panel, it appears much more plausible that the Respondent registered the domain name in order to make a substantial amount of money, having already refused an offer higher that the costs of registering the domain name.

In light of a sworn statement of both officers of the Complainant regarding a telephone conference with the Respondent, which is not contradicted by another sworn declaration, this Panel finds that these facts cannot be set aside and ignored.

According to the Respondent, there is apparently a long period between the registration of the domain name in dispute in 1999 and the telephone conversation between the Complainant and the Respondent on March 6, 2007 and the subsequent Complaint filed on March 27, 2007. Such delay has been considered by panels in earlier UDRP decisions. See McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078. The panel in this case commented on two points analogous to those raised in the present case, first, the effect of the delay, and second, the fact that it was the Complainant who first approached the Respondent.

In the McMullenBros, Limited case, supra, the panel had to consider the relevance of a delay of six years and six months between registration and the complaint. In the absence of any prejudice suffered by the respondent as a result of the complainant’s delay, the panel stated that this aspect of delay should not have any bearing on the outcome of the Complaint. None of the evidence indicates that the Respondent was disadvantaged by the Complainant’s delay in bringing the Complaint.

Furthermore, in respect of the Complainant who has approached the Respondent, it appears from the evidence regarding a telephone conversation, an event which is not contradicted as having occurred, that there was a discussion of the Complainant wanting to buy the domain name in dispute and offering to pay the Respondent the sum of $1,500. According to a sworn declaration given by a person which attended the conversation, the Respondent estimated the value of the domain name at a price of $5-$10 millions considering the efforts put by the latter into redesigning the site. In his comments the Respondent does not deny the amount stated as being mentioned by him as the value of the domain name with corresponding webpage and services, but denies having requested the payment of this sum. The fact that it is the Complainant who made the first offer to recover and buy the domain name in dispute does not preclude the Panel from making a finding of bad faith registration and use. McMullan Bros et al, supra.

In the present case, the Panel finds that the registration of the domain name in dispute furthermore prevents the Complainant from registering a domain name reflecting its service mark. Such action has been acknowledged in URDP decision as registration of a domain name in bad faith.

The Panel therefore finds that the registration of the domain name in dispute was made in bad faith and its use was also in bad faith under the criteria of the Policy.

The third criterion has been met

7. Decision

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 <tourismpei.com> be transferred to the Complainant.

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J. Nelson Landry
Sole Panelist

Dated: June 28, 2007