WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Government of Canada v. David Bedford a.k.a. DomainB
Case No. D2001-0470
1. The Parties
The Complainant is Government of Canada, represented by Cal Becker, Esq., Coordinator and Senior Counsel, Intellectual Property Secretariat, Department of Justice, Room 166C � 235 Queen Street, Ottawa, Ontario, Canada K1H 0H5.
The Respondent is David Bedford a.k.a. DomainB of 5317 Barker Avenue, Burnaby, British Columbia, Canada V5H 2N6, representing himself.
2. The Domain Names and Registrar
The disputed domain names are:
The Registrar is Network Solutions, Inc., of Herndon, Virginia, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on March 30, 2001, and in hard copy on April 2, 2001. The Center acknowledged receipt on April 3, 2001, and next day sought registration details from the Registrar. On April 10, 2001, the Registrar confirmed that the Respondent is the registrant of all 32 disputed domain names; the Registrar�s 5.0 Service Agreement (which incorporates the Policy) is in effect and that the status of all disputed domain names is "active."
On April 10, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On April 11, 2001, the Center formally notified the Respondent (by registered mail and courier with enclosures and by fax and email without enclosures) of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly April 10, 2001. The last day specified in the notice for a response was April 30, 2001. On April 20, 2001, the Center, pursuant to Rule 5(d) and with the consent of the Complainant, acceded to a request from the Respondent for an extension of time for the Response until May 7, 2001. On May 7, 2001, the Respondent filed a Response by email and on May 10, 2001, in hardcopy. Its receipt was acknowledged by the Center on May 8, 2001.
By email on May 1, 2001, and in hardcopy on May 3, 2001, the Complainant sought leave of the panel to amend the remedies requested in relation to the domain name to correct a mistake in the Complaint. The panel has allowed the amendment.
Through the Complaint, the Complainant sought a three-member Administrative panel. In accordance with Rule 6 and Supplemental Rule 7, on May 16, 2001, the Center notified the parties of the appointment of the undersigned three panelists as the administrative panel, each panelist having submitted to the Center a Statement of Acceptance and Declaration of Impartiality. The Center nominated June 20, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center. The panel extended the time for its decision until July 6, 2001.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center�s assessment concerning the Complaint�s compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the extended time specified by the Center in accordance with the Rules and the three-member administrative panel was properly constituted.
4. Factual Background (uncontested facts)
The Complainant, the Government of Canada, is commonly known as Government of Canada (English) and Gouvernement du Canada (French). From 1867 to 1982, it was known as Dominion of Canada.
The complainant engages (through its departments, agencies and programs) in a wide range of activities, of which the following are relevant:
The Canada Council is an agency of the Government of Canada, created by the Canada Council Act. Its official names are the "Canada Council" (in English) and le "Conseil des arts du Canada" (in French). It awards prizes to professional artists, creators and arts institutions and administers highly- prestigious annual awards which contribute to its high public profile. It commonly styles itself the Canada Council for the Arts but is also known as Canada Council, The Canada Council, Canada Council for the Arts, The Canada Council for the Arts, Conseil du Canada, le Conseil du Canada, Conseil des arts du Canada and le Conseil des arts du Canada.
The Canada Customs and Revenue Agency (CCRA) was established by legislation on November 1, 1999. Its predecessor, the Department of National Revenue, was most commonly known as Revenue Canada (on the taxation side) and Customs Canada or Canada Customs (on the customs side). The Department of National Revenue Act 1985, provided that both expressions "Revenue Canada" or "Revenu Canada" could be used to refer to the Department. Names by which the Department is and has been commonly known, both before and subsequent to the CCRA, are Canada Customs, Customs Canada, Revenue Canada, RevCanada, Department of National Revenue, National Revenue and Revenue.
The Department of National Defence, established in 1923, is responsible for all matters relating to national defence, including construction and maintenance of defence establishments and works for the defence of Canada; research relating to the defence of Canada and the development of and improvements in materiel. Under the National Defence Act, the "Canadian Forces" are "the armed forces of Her Majesty raised by Canada and consist of one Service called the Canadian Armed Forces." The Department of National Defence Act makes it a criminal offence to use the name CANADIAN FORCES in any advertising or in any trade or service, having been requested in writing by the Minister to cease that usage.
The Canadian Grain Commission maintains and enhances the quality of Canadian grain by regulating the grain handling system in Canada, through the establishment of a grain grading system, the official inspection and weighing of grain, the licensing of grain elevators and grain dealers, and conducting scientific research related to grain quality. It is known as Canadian Grain Commission, Grain Commission and CGC.
Contracts Canada (in French, "Contrats Canada") is a program created in 1996, and administered by the Department of Public Works and Government Services. One of the main goals of the program is to make information about doing business with the federal Government more accessible and easier to understand for small and medium-sized businesses. The Contracts Canada mark (as well as the Contrats Canada mark) appear on all literature relating to the Contracts Canada Program and are shown on all pages of its Internet site, which receives more than 124,000 hits per month, mostly from the business community. The marks have been used continuously since the founding of the Program.
The Department of the Environment, established by the Department of the Environment Act, is responsible for all matters relating to the preservation and enhancement of the quality of the natural environment, including water, air and soil quality; renewable resources, including migratory birds and other non-domestic flora and fauna; water and meteorology. Its applied or operating name is Environment Canada.
The Department of Human Resources Development was created in 1996. It is the largest single department of the Complainant, measured by expenditures on programs and services. In Fiscal Year 2000-2001 more than $58 billion goes directly to individual Canadians through the Employment Insurance, Canada Pension Plan and Old Age Security programs and other statutory transfer payments. HRDC's programs and services reach more than 9 million Canadians each year.
The legislation which created the department indicates that the term "Human Resources Development Canada" is deemed to refer to the department. It uses that name and "HRDC" as its acronym or abbreviation for purposes of publicly identifying its programs and services. Human Resources Development Canada applies its name to all relevant correspondence and publications. Names by which the Department is known are Human Resources Development Canada, HRDC and Human Resources Canada.
The Department of Natural Resources was established by legislation in 1995. Its mission is to provide knowledge and expertise for the sustainable development and use of Canada's natural resources and the global competitiveness of the resource and related sectors for the well-being of present and future generations. For this purpose, the Department provides policy and scientific information and services in earth sciences, energy, forestry and mines and minerals. Products and services include the National Atlas of Canada, the Energuide website and publications, digital and paper maps from the Centre for Topographical Information, minerals and mining information and statistics, the Forestry Information Network, forest fire monitoring, mapping and modelling systems and climate change information. Names by which the Department is commonly known are NRCan, RNCan, NRCanada, RN Canada, Natural Resources Canada, Ressources naturelles Canada, Canadian Natural Resources, Ressources naturelles canadiennes, Natural Resources, Ressources naturelles, NR and RN.
The function of the Receiver General for Canada pre-dates Confederation (1867). In 1879 the Minister of Finance became ex officio Receiver-General. Since 1996, the function has been performed by the Minister of Public Works and Government Services. The Receiver General is responsible for receiving and paying sums to the credit / debit of the Government of Canada's accounts. The Receiver General provides banking and cash management services to the federal Government and produces the Public Accounts of Canada, which are summary reports and financial statements of the Government that are laid before Parliament and are published and distributed to the Canadian public.
Departmental Internet links refer to "the Receiver General" and "the Receiver General for Canada" interchangeably. Both terms are also used in the Public Accounts of Canada. Cheques are issued to the public by "the Receiver General for Canada". General Income Tax and Benefit Guides instruct taxpayers to make cheques for balances owing payable to the "Receiver General". A Google search for RECEIVER-GENERAL conducted in March 2001, indicated some 11,100 references to Receiver General, the majority of which appear to relate to the Receiver General for Canada. The first four references were references to the Receiver General for Canada as were eight of the first ten references. However, there were also references to the office of Receiver General in the State of Massachusetts and in the United Kingdom.
The Receiver General for Canada is known as Receiver General for Canada, Receiver General of Canada, Receiver General Canada, Receiver General (Canada) and Receiver General.
Statistics Canada was established by statute (as the Census and Statistics Office) in 1906. It has been known as the Dominion Bureau of Statistics but since 1971, it has been known as Statistics Canada. Its principal activities or programs are the Census of Population and the Census of Agriculture; collection of criminal statistics and a variety of mandatory national surveys regarding health and welfare, the economy, labour and employment, commercial and industrial activity and transportation. Names by which the agency is commonly known are Statistics Canada, Stats Canada, StatsCan and StatCan.
The Bank of Canada is the country's central bank. Its role is to promote the economic and financial well-being of Canada. Founded in 1934, as a privately owned corporation, in 1938, it became a Crown corporation belonging to the federal government, the Minister of Finance holding the entire issued share capital. Created to be the sole issuer of bank notes and to facilitate management of the country's financial system, the Bank of Canada is responsible for policy (influencing the economy by regulating the amount of money in circulation); central banking services (supporting the implementation of monetary policy and providing services to government, banks, other central banks, certain other financial institutions and the general public); bank notes (issuing them and ensuring their authenticity and a supply equal to public demand) and administering public debt (advising the government, issuing debt, maintaining bondholder records and making payments on behalf of the government for interest and debt redemption). Names by which the Bank of Canada is commonly known are the Bank of Canada and La Banque du Canada.
The Department of Transport was established by statute in 1936. It is responsible for ensuring that all parts of the transportation system work effectively together to provide a system which is safe, efficient and sustainable. In the past five years, it has moved out of the operation of the system and established agencies to do so. The department focuses on providing the policy and regulatory framework within which the system operates. Since 1985, the legal name of the Department has been (in English/French): the Department of Transport/le ministère des Transports. Since 1998, the names by which the Department is commonly known are Transport Canada and Transports Canada.
The respondent is in the business of selling domain names.
The disputed domain names were registered on the following dates, all in the name " (domain names for sale)", the billing contact in each case being the Respondent Mr. Bedford, "Owner@domainb":
February 17,1999
February 17, 1999
February 17, 1999
February 17, 1999
June 3, 1999
February 20, 1999
June 4, 1999
August 14, 1999
February 3, 1999
February 17, 1999
April 26, 2000
January 21, 2000
February 3, 1999
February 19, 1999
March 15, 1999
March 8, 1999
February 12, 1999
March 15, 1999
March 15, 1999
March 15, 1999
January 29, 1999
February 15, 1999
January 19, 1999
March 15, 1999
February 18, 1999
April 26, 2000
January 7, 1999
January 23, 1999
May 1, 2000
October 5, 1999
October 1, 1999
February 17, 1999
Respondent is making use of the domain names by redirection of the domains to his site where he is
∙ selling the domain names and many others;
∙ promoting his persona of Darwin Bedford, Spiritual Reality Therapist, and Atheist Messiah; and
∙ earning income from displaying advertisements and engaging in affiliate programs.
5. Parties� Contentions
A. Complainant
Rights
The Complainant has common law trade-mark rights in the names of its various departments, agencies and programs. In some cases, those trade-mark rights are reinforced through legislative or administrative provisions, e.g., ENVIRONMENT CANADA is protected as an official mark, which is a special form of protection for the marks of public authorities in Canada; the National Defence Act prohibits the unauthorised use of the term CANADIAN ARMED FORCES; etc. Generally, however, the names of federal departments, agencies and programs are protected only by a generic prohibition in the Trademarks Act, RSC c. T-13, s. 9(1)(d) against the commercial use of:
...any word or symbol likely to lead to the belief that the wares or services in association with which it is used have received, or are produced, sold or performed under royal, vice-regal or governmental patronage, approval or authority.
Although other remedies, e.g., civil proceedings in Canadian courts, may be available to the Complainant in respect of certain of the disputed domain names, the Complainant has elected to pursue its remedies via the ICANN arbitration in the interests of securing a comprehensive solution on behalf of all the Government of Canada departments, agencies and programs affected by the Respondent's registrations in the domain.
In the earlier days of the Internet, it was the policy of the Government of Canada that the domain names of all federal departments, agencies and programs would be registered in the domain. This was intended to promote federal identity on the Internet. Although well-intended, this policy did not protect the Government of Canada from cybersquatters, i.e., those who registered the names of federal departments, agencies and programs in other domains, such as and .
Identity and confusing similarity
The Respondent has deliberately registered a series of some 32 and names that are identical or confusingly similar to the names of the Government of Canada and its various departments, agencies and programs.
Illegitimacy
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent does not carry on business as or on behalf of, for example, the Government of Canada, Transport Canada, or the Canadian Grain Commission.
For some months, the Respondent has been using the government-related Internet addresses solely as hyperlinks to his primary Internet address , where these names were priced and advertised for sale. was advertised as carrying a price of $30,000 USD, a price of $8,000 USD, etc. (See Annex 5 for a copy of the site, as it appeared on January 30, 2001, complete with an inventory of Canadian government-related domain names and their respective selling prices in US dollars.)
The Respondent has used the disputed domain names as hyperlinks to other sites operated by him. In July 1999, the Respondent operated what he described as a "Government of Canada Link Through Service by ", where Internet users who looked for Environment Canada via the domain would be referred to the genuine Environment Canada site in the domain. Most of the Canadian government-related disputed domain names were listed on this site as being available for sale or lease. The website itself was represented as "A public service provided by ." along with a disclaimer that "This is NOT an official website of The Government of Canada". Near the end of the "link through service" was what was described as a "Service Disclaimer", in the following terms:
"Service Disclaimer: Starting in January 1999, registered the domain names listed in the left column. We invite individuals and organizations to buy or lease them � including federal departments of Canada or their employees. We may transfer or lease any of the above domain names to another party at any time. We may also redirect them to another URL without notice. We are not affiliated with Her Majesty the Queen in Right of Canada and we have not sought Her permission to provide links into Her sites. If you notice a broken link we would greatly appreciate you telling us.
To buy or lease a domain name listed above or to advertise on this page, contact�David Bedford."
On this site, the Respondent explicitly offered Canadian government-related names for sale or lease, along with an implicit threat to interfere with access to Government of Canada websites by transferring or leasing any of his identical or confusingly similar domain names to other parties at any time or by redirecting users to another URL without notice.
Shortly thereafter, that is precisely what he did, i.e., he began to redirect users seeking Canadian government-related websites to other URLs. For example, for several months in 1999, users were directed to a site promoting atheism, also owned by the Respondent. Subsequently, the Respondent began to direct users to a site promoting smokers' rights for children, ostensibly sponsored by the Canadian Union of Nicotine and Tobacco Sellers (the acronym for which was explicitly set out) and complete with displays of young children smoking or purporting to smoke cigarettes; this site was also owned and operated by the Respondent. More recently, the Respondent's hyperlinks take Internet users directly to , which, in addition to its inventory of government-related names, contains a vaguely anti-religious tract under the title "The Pope is Humpty Dumpty".
Predictably, these links to offensive sites prompted public complaints and queries from persons who were incredulous that the Complainant would sponsor or countenance such links. It may reasonably be inferred from the Respondent's hyperlinking practices that he hoped to make the purchase of his government-related Internet names a more attractive proposition to the Government of Canada.
Bad Faith
The Respondent deliberately registered domain names that were identical or confusingly similar to the names of the Government of Canada and various of its departments, agencies and programs. The Respondent's intentions are manifest, inter alia, from the website, which in July 1999, purported to be a public service provided by . On that site, the Respondent provided "link-through" links from his inventory of domain names to the genuine Government of Canada domain names, indicating that he was very well aware that the domain names in his inventory were identical to or confusingly similar to the names of the Government of Canada and various of its departments, agencies and programs. The Respondent did so without having any rights or legitimate interests in those names and he has used and continues to use them to link to his home site where Canadian government-related names are priced and offered for sale.
The Respondent's practice of hyperlinking government-related names to offensive websites owned by him, that promoted atheism and childrens' smoking rights, was designed to generate public complaints and thereby enhance the complainant�s interest in purchasing the disputed domain names.
By letter dated November 9, 1999, the complainant asked the Respondent to cease and desist using Internet domain names related to the departments, agencies and programs of the complainant and said that the Complainant was prepared to consider compensating the Respondent for his registration and transfer costs, up to the value of $300 CDN per domain name. In his response, dated November 20, 1999, the Respondent offered to reconfigure his websites to reduce the risk of confusion on the part of those trying to access websites of the Government of Canada, but declined to cease offering the domain names for sale. The essence of his response was:
"I am not interested in transferring any of my domain names to the federal government for the amount of $300 (CDN) each. My expected price for is $10,000 (CDN). It is my position that the federal government will not be able to gain legal title to any of the domain names that I have registered without my willingness to transfer them. If I have registered domain names that the federal government would now like full control of, then perhaps we can negotiate a group price for them."
The Respondent later indicated that he was prepared to consider permitting the Government of Canada to "steal" the disputed domain names for $1200 CDN each. When this was rejected, the Respondent informed the Complainant:
"My position is that the federal government has no right to appropriate these names and I intend to receive, through the sale of these names, much more than the amount I suggested".
These circumstances demonstrate that the Respondent has registered the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to the complainant or, alternatively, to another entity that could be expected to use the name in a manner that would interfere with the Complainant's electronic delivery of information, services and programs; further that the Respondent is offering his registered domain names for valuable consideration in excess of his out-of-pocket costs directly related to the domain names. For example, although the original price that the Respondent attached to was $10,000 USD (or CDN, depending upon the source), the current price is $30,000 USD.
These circumstances also demonstrate a pattern of conduct typical of cybersquatting. In the and domains alone, the Respondent has registered some 32 domain names identical to or confusingly similar to the names by which the Government of Canada and its various departments, agencies and programs are known. He has also registered and offered for sale at least three government-related domain names in the domain, e.g., GovernmentOfC, StatsC and TransportC . In his website presentation and in his communications with Mr. Becker (on behalf of the Complainant), the Respondent has been explicit and unambiguous in declaring his intention of offering his inventory of government-related domain names for sale.
Since there is no prospect of such domain names being used legitimately by parties other than the government departments, agencies and programs to which they relate, it is reasonable to infer that the Respondent expected the complainant to be his primary market for the purchase of the domain names in dispute. Alternatively, should a domain name such as or be sold to an entity other than the Government of Canada or the Canada Council, it would be reasonable to infer that the purchaser intended to use the domain name for illegitimate purposes.
The Respondent's method of operation suggests that he intended to attract unsophisticated Internet users (e.g., those unaware that the official Government of Canada websites were registered solely in the domain) to his websites in order to shock them into complaining to the federal government about its apparent support for, variously, atheism, children's smoking rights and a vaguely-antireligious tract carrying the title "The Pope is Humpty Dumpty". This practice, the Complainant asserts, was deliberately calculated to put pressure on the Complainant to purchase the Respondent's government-related domain names and/or to increase the price that the Complainant would pay for the domain names in dispute.
Remedies Requested
The Complainant requests the administrative panel to issue a decision that the contested domain names be dealt with as follows:
Domain Name
Remedy Requested
transfer to Canada Council
transfer to Canada Customs and Revenue Agency
transfer to Department of National Defence
transfer to Canadian Grain Commission
transfer to Treasury Board of Canada on behalf of the Government of Canada
transfer to Public Works and Government Services Canada
transfer to Canada Customs and Revenue Agency
transfer to Treasury Board of Canada on behalf of the Government of Canada
transfer to Environment Canada
transfer to Environment Canada
transfer to Environment Canada
transfer to Treasury Board of Canada on behalf of the Government of Canada
transfer to Treasury Board of Canada on behalf of the Government of Canada
transfer to Treasury Board of Canada on behalf of the Government of Canada
transfer to Human Resources Development Canada
transfer to Human Resources Development Canada
transfer to Natural Resources Canada
transfer to Natural Resources Canada
transfer to Public Works and Government Services Canada
transfer to Natural Resources Canada
transfer to Canada Customs and Revenue Agency
transfer to Canada Customs and Revenue Agency
transfer to Statistics Canada
transfer to Statistics Canada
transfer to Statistics Canada
transfer to Statistics Canada
transfer to Statistics Canada
transfer to Statistics Canada
transfer to Statistics Canada
transfer to the Bank of Canada
transfer to Treasury Board of Canada on behalf of the Government of Canada
transfer to Transport Canada
B. Respondent
Identity or confusing similarity
The names are not covered by the Policy because they are not registered trademarks or service marks in which Complainant has established rights. The Complainant has no legitimate interest in the domain names because most of the names are comprised solely of generic or common words and places that are excluded from protection by trademark laws. See City Utilities of Springfield, Missouri, aka City Utilities v. Ed Davidson (WIPO Case D2000-0407), where the panel found that City Utilities has no rights in the term "city utilities" as such a term is generic and does not function as a mark and is therefore not protectable.
Respondent is in the business of selling descriptive domain names and the disputed domain names are comprised of descriptive terms. Of the names that include acronyms or abbreviations of words, Complainant has not registered the names, nor are they sufficiently famous or distinctive to be considered common law names. See General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), (NAF Case FA0001000092531) and Car Toys, Inc. v. Informa Unlimited, Inc., (NAF Case FA0002000093682), where the panels accepted that the domain names and were descriptive, and were not fanciful or arbitrary enough for the Complainants to enjoy rights to them-- thus the Respondents have legitimate interests in respect of the domain names.
For example, many company names in Canada end with the word "Canada" and people in Canada or abroad may associate the domain name with a web site of a company selling transport equipment rather than the federal government's Department of Transport.
Respondent does not contest that certain of the names are confusingly similar to the names of the Complainant's various departments, agencies, and programs, however, Respondent does contest that the names are confusingly similar to the domain names used by the said departments, agencies, and programs. See ANNEX 4 for refutation on a per name basis of the arguments made by Complainant concerning the manner in which the domain names are allegedly identical or confusingly similar to a trade-mark or service mark in which the Complainant claims it has rights.
Only three of the disputed names exactly match the names of Canadian Federal Government departments, agencies and programs ahead of the dot-com appendage--namely , and , of which only the name "Contracts Canada" has the Complainant protected as an official mark (and this was done more than a year after the Respondent registered the domain name). Complainant appears to be submitting that it enjoys common law trade-mark rights to the names of all of its departments, agencies and programs, past and present (and future presumably)--and to any and all "know as" names respective to the said names, and to any and all names comprised of combinations of terms and/or abbreviations of the said names. Respondent submits that if every country's federal government were to assume same then there would be numerous conflicts of legitimate interest. Then imagine if every governmental entity of any level of every country were to assume same. Respondent has registered the domain names , , , ", and . Is it first UDRP complaint takes all?
Complainant has protected "ENVIRONMENT CANADA" as an official mark of Canada, which means it is prohibited from use "in connection with a business". Respondent claims that Complainant is interpreting the clause out of context. Simply using the term as a domain name and not a bona fide business or service named by that name may not constitute a violation of the Trademarks Act. Respondent also contends that the name is sufficiently generic to be interpreted as anything concerning the environment of Canada. See Bruce Springsteen v. Jeff Burger and Bruce Springsteen Club (WIPO Case D2000-1532), where the panel contends that the users of the Internet do not expect all sites bearing unregistered names to be authorized or in some way connected with a party seemingly named in the domain name.
Legitimacy
Respondent is making fair use of the domain names by redirection of the domains to his site where he is selling the domain names and many other domain names; and where he is promoting his persona of Darwin Bedford, Spiritual Reality Therapist, and Atheist Messiah; and where he is earning income from displaying advertisements and engaging in affiliate programs. The names in dispute are not being treated any differently from the other names that Respondent has registered and listed for sale at the site. Respondent is doing so without intent misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
A consumer looking for a federal government department, agency, or program is simply not going to be misled into thinking that a site where domains names such as and (which are two of the domain names listed for sale at the site) is a Canadian Federal Government approved site. Nor is a consumer looking for a federal government department, agency, or program going to be misled into thinking that a site where someone is purporting to be "Domain Baron" or an "Atheist Messiah" is an official site of any country's government. In a news article Canada Disputes Doppelganger Dot-Com Domain, by Steven Bonisteel, Newsbytes, April 6, 2001, the reporter concurs that the site is "unlikely to be confused for the official line from the nation's capital in Ottawa".
The Policy is not a ban of the re-selling of domain names and nor do domain names necessarily have to be used for bona fide web sites of businesses to constitute a legitimate use. Domain names may be acquired simply for the purpose for using them as an e-mail address or as other Internet uses such as ftp--however, this last point is on the topic of the legitimate use that a purchaser may ultimately make of a domain name.
Bad faith
Respondent has not registered the names in bad faith and is not using the names in bad faith.
In January 1999, Respondent registered the name for an associate who mentioned his intention of writing software that would serve as a statistical scanner search engine--i.e. that would search the Internet and ferret out statistics concerning a target subject. Shortly after activating the name it was discovered that there were an above average number of direct hits to the name. After examining the logs Respondent determined the hits were from people looking for Statistics Canada's website. Respondent then researched the availability of other U.S.A. and Canadian government related names. Respondent found that many of the names (such as , , ) were already registered by other individuals. Then Respondent looked up the Canadian federal government's policy pertaining to domain names for their departments. The HTML page describing their policy was last updated in July of 1998, and is still there. The Government of Canada Internet Guide states that Complainants' departments and agencies must apply for a domain name in order to conform to its Federal Identity Program. So Respondent knew right from the start that any domains that he registered that were similar to Canadian federal government departments, agencies and programs, that he could not expect to sell them to Complainant because it was its policy not to use dot com names that were of such free form and natural style. Complainant has admitted to this policy in the Complaint.
The prospect of using the names to bring attention to the domain names for sale at the web site, and of providing a service to the public (Canada and abroad) by aiding them in locating the wares and services of Complainant, and of earning advertising revenue from the traffic generated to the website, seemed attractive to Respondent so he proceeded with his plans. See United States Postal Service v. P, Inc., (NAF Case FA0012000096313), regarding the domain name
, where the panel found: "The Respondent is making a fair legitimate use of the domain name offering an international service to Internet users with a disclaimer of any connection to Complainant. In fact, the Respondent's web-site directs users to Complainant's web-site for the purchase of goods and services offered by Complainant."
And of course there was always the prospect of selling the domain names to someone other than the Complainant. Respondent believed at the time of registration that the most probable party seeking possession of such domain names would be a media baron such as CanWest Global Communications Corp., owner and operator of the Internet network and portal (and which is also providing links to Government of Canada web pages). Other expected buyers of the said domain names include venture capitalists and the parties that had already acquired similar such domain names. In the case of the Statistics Canada related domain names, pollsters were considered to be the most likely buyers.
During the first few months of operation it became apparent to Respondent that perhaps the Complainant should be considered as a possible buyer of certain names. People known and unknown to Respondent were approaching Respondent to suggest that the Canadian Federal Government should acquire certain names. Respondent also noticed that certain governmental departments had in fact made use of descriptive domain names. One such department was the Department of Fisheries and Oceans who were using the domain name for their Internet site. At this point in time Respondent stated on his site (to let the public know) that Complainant was not being prevented from acquiring any of the domain names listed at the site--i.e. that they were available for the Complainant to purchase or rent. However, this should not be construed to mean that Respondent considered the Complainant to be the primary or most likely party to come forward seeking possession of the said domain names.
Some months later, after the Respondent had received congratulatory e-mail messages from the public and earned advertising revenue from a major Canadian book store, Complainant responded with a cease and desist letter accompanied with the choice of either a promise of "recommendation" of compensation of $300 CDN per name transferred to Complainant, or (threat) of initiation of legal proceedings against Respondent. Not knowing which of the 100 or so names that Complainant was interested in, Respondent asked Complainant to identify the names and suggested the idea of a "group price" as a means of mediation to avoid litigation. Respondent also complied fully with the letter and spirit of Complainant's request except for the actual transferring of the unidentified domain names.
Respondent denies the allegation worded "implicit threat to interfere with access to Government of Canada websites by transferring or leasing any of his identical or confusingly similar domain names to other parties at any time or by redirecting users to another URL without notice". This allegation has been fabricated by Complainant by combining and interweaving Respondent's offer of service with the phrases "implicit threat", " interfere with access" and "identical or confusingly similar" and is an incorrect and misleading interpretation of the Respondent's offer of service.
Respondent has been promoting his persona as Darwin Bedford, Spiritual Reality Therapist and Atheist Messiah since 1996. Respondent has also served on the board of directors of AIRSPACE Action on Smoking and Health, an anti-tobacco lobby organization, since June 1997. Respondent admits that the underlying subject matter of these two initiatives is controversial, but claims that it is his right to participate in democracy. Respondent objects to the following statement in the Complaint: "It may reasonably be inferred from the Respondent's hyperlinking practices that he hoped to make the purchase of his government-related Internet names a more attractive proposition to the Government of Canada." This is incorrect conjecture on behalf of Complainant. The majority of the non-disputed domain names that are listed at the site also point to the same page. This accusation touches upon the Complainant trying to curb the Respondent's free speech.
Respondent has not ever initiated any communications to Complainant nor any of its departments or agencies. Respondent has only responded to the letters and e-mail messages initiated by Complainant.
Respondent has not approached Complainant with a selection of domain names. Complainant has selected the domain names comprising the dispute from the site list.
Respondent took the view that since Complainant offered $300 CDN per name then it thereby set a precedent that the names were negotiable. If Respondent had simply refused the offer then it may have been construed that Respondent was preventing Complainant from reflecting the marks in corresponding domain names--as described in Policy paragraph 4(b)(ii)�a "damned if I do, damned if I don�t" situation.
With reference to Policy, paragraph 4(b)(i), especially the clause "for valuable consideration in excess of your document out-of-pocket costs directly related to the domain name", Respondent does not consider the counteroffer of $1200 CDN to be excessive. $1200 CDN is approximately $782 USD, which is less than the WIPO fee of $1,000 USD for filing a complaint over a single domain name with the single panelist option. If the definition of out-of-pocket costs includes labour then the $1200 CDN amount is not in excess of Respondent�s costs. Complainant has rejected an amount of $37.200 CDN for all of the remaining 31 domain names. Ironically in this case, if Respondent were to receive $37.200 for the names Respondent would jump to a higher income tax bracket and would have to pay approximately half of the amount back to Complainant. The net revenue of Complainant for its past fiscal year (according to the Vancouver Public Library) was 165,708 Millions of Canadian dollars. A spokesperson for Complainant reported to the press that Complainant is "not prepared to reward" Respondent beyond what Complainant determines to be his out-of-pocket costs.
Complainant is claiming that sale of the names to a third party could only result in websites that pass off as a Canadian federal government sites. Respondent's position is that this is narrow minded and displays a lack of knowledge of the Internet and a lack of imagination. One of the names, has sold (for an amount greater than the amount offered by Complainant) to a History Professor of a university. Also note that the registrant of is The Dominion of Canada General Insurance Company. Respondent has also received offers for some of the disputed names that would seemingly result in legitimate use of the name. One such offer was from a publisher of a Canadian magazine dealing with human resources who wanted the domain name "HRCANADA.COM".
Respondent concludes that Complainant is acting in bad faith by trying to set a precedent with this case so that it can more easily obtain the countless domain names, that it has been remiss to register, from the numerous individuals that have registered them. Respondent also concludes that Complainant is acting in bad faith by including in its wish list, names that are vaguely or remotely similar to the names of its departments, agencies and programs.
Reverse Domain Hijacking
The Respondent respectfully requests the Administrative Panel to make a finding of reverse domain name hijacking.
6. Discussion and Findings
Elements to be proved
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
∙ the disputed domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights; and
∙ the Respondent has no rights or legitimate interests in respect of the domain name; and
∙ the disputed domain name has been registered and is being used in bad faith.
Basis of panel decision
Rule 15(a) requires the panel to decide this complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In this case, since both parties reside in Canada, the rules and principles of law of that country are applicable and particularly federal trade-mark law and those of the province of British Columbia, where the Respondent resides and to the jurisdiction of the Supreme Court of which the Complainant has submitted with respect to any challenge which may be made to any decision of this panel to cancel or transfer the contested domain names.
Does the Policy apply to the names of Government Departments, agencies and programs?
In delineating the proposed scope of what has now become the Policy, the Final Report of the first WIPO Process (April 1999) (Footnote 1), said:
"The second limitation would define abusive registration by reference only to trademarks and service marks. Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure".�paragraph 167.
"[�]It is in the interests of all.... that the practice of deliberate abusive registrations of domain names be suppressed. There is evidence that this practice extends to the abuse of intellectual property rights other than trademarks and service marks [134], but we consider that it is premature to extend the notion of abusive registration beyond the violation of trademarks and service marks at this stage. After experience has been gained with the operation of the administrative procedure and time has allowed for an assessment of its efficacy and of the problems, if any, which remain outstanding, the question of extending the notion of abusive registration to other intellectual property rights can always be re-visited".�paragraph 168.
The Interim Report of the Second WIPO Internet Domain Name Process (April 12, 2001) (Footnote 2), distinguishes between trade-marks and "other real world identifiers" for example the names of "government departments" - paragraph 8.
It thus appears to the panel that the Policy, as it stands at present, is not intended to afford protection from the abusive registration as domain names of the names of Government Departments, agencies and programs as such.
In the field of geographical indications, cases under the Policy have established that they are likewise not protected as such but may still be shown by evidence of their use to have become distinctive of the goods or services of a particular trader and thus may be protected as trade-marks in the same way as descriptive (generic) words shown to have become distinctive. (Footnote 3)
Applying the same approach, the panel is of the view that names of Government Departments, agencies and programs, although not protected as such under the Policy, may nevertheless qualify for protection under the Policy if they are shown to be trade-marks.
Are the names of the Complainant�s Departments, agencies and programs trademarks?
The names which the Complainant seeks to protect in this Administrative Proceeding are not registered as trademarks and they need not be registered to come within the scope of 4(a) of the Policy. (Footnote 4)
One feature of all the names which the Complainant seeks to protect in this Administrative Proceeding is that, to a greater or lesser extent, they are used in association with the provision of Government services of an essentially non-trading character and hence indicate a connection with the Complainant as the source of these services. For example, the function of the Canadian Grain Commission, already described, is a regulatory function. It is clearly a service provided by Government to the people of Canada and it has direct impact on the trading of grain in Canada. Whether or not some revenue is generated by way of fees paid eg. for licensing or inspection activities, the connection between the name Canadian Grain Commission and its activities is overwhelmingly a governmental, rather than a trading connection.
The Canadian Trademarks Act (Footnote 5) defines "trade-mark" as including
"a mark that is used by a person (Footnote 6) for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others" (s.2).
Section 4 provides:
4.(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
In commenting on the contrast between the requirements of these two sub-sections, the Federal Court of Appeal of Canada in Sim & McBurney v. Gesco Industries, Inc. and The Registrar of Trade-Marks (FC A-866-97) (October 26, 2000) (Footnote 7), held as a matter of statutory interpretation that a trade-mark may be deemed to be used in connection with services even though it is not used in the normal course of trade.
Accordingly, the panel concludes that the marks on which the complaint is based are trademarks recognised under the Canadian Trademarks Act.
In Federal Court of Canada v. federalcourtofc (eResolution Case AF-0563) a three-member panel found the Complainant to have common law rights to the name Federal Court of Canada based on extensive and continuous use, that name having been conferred by statute and the court being the only one by that name in Canada.
Does the Complainant have rights in the trademarks?
Since this panel is of the view that the trademarks of the Complainant are recognised under the Canadian Trademarks Act, the question arises whether in fact the Complainant has rights in them, since the Policy requires proof of rights in a trademark.
The panel finds, based on the evidence on the record that the Complainant has rights in all except one of the alleged trademarks. The exception is Dominion of Canada, which has not been used by the Complainant since 1982.
Identity or confusing similarity
It has been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO Case D2000-0113) and Nokia Corporation v. N (WIPO Case D2000-0102). The suffix ".com" is of no significance. See The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491).
The Panel is of the opinion that the following domain names are essentially identical to the following trademarks of the Complainant:
Domain Name
Trade-mark
Canada Council
The Canada Council
Customs Canada
Canadian Forces
Government of Canada
Government of Canada
Gouvernement du Canada
Contracts Canada
Contrats Canada
Environment Canada
Environment Canada
Human Resources Canada
NRCan
NRCanada
Receiver General
Statistics Canada
Statistics Canada
Stats Canada
Stats Canada
StatCan
StatsCan
Stats Can
StatCan
Stats Can
StatCan
The Bank of Canada
Bank of Canada
Transport Canada
The test of confusing similarity under the Policy, unlike trade-mark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trade-mark: AltaVista Company v. S.M.A., Inc., (WIPO Case D2000-0927); Gateway, Inc. v. P, Inc. (formerly Gateway Media Productions, Inc.) (WIPO Case D2000-0109).
The Panel is of the opinion that the following domain names are confusingly similar to the following trademarks of the Complainant:
Domain Name
Trade-mark
Canada Customs
RevCanada
Revenue Canada
RevCanada
Canadian Grain Commission
Government of Canada
Government of Canada
Environment Canada
Human Resources Canada
Natural Resources Canada
Resources Naturelles Canada
Accordingly the Complainant has established that these 31 disputed domain names are identical or confusingly similar to trademarks in which it has rights.
Illegitimacy
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant�s rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.
Based on the allegations made in the complaint which for the most part have not been contradicted by the Respondent and which have been summarized herein above in the "Parties' Contentions", the panel finds that the Complainant has met its burden of proof and holds that the Respondent has no right or legitimate interest in respect of the domain names complained of.
More precisely, the Complainant has not authorized the Respondent to use any of its trademarks nor to include those marks in any domain name. The Respondent has not asserted that he is commonly known by any of the disputed domain names.
Furthermore, by registering the disputed domain names and offering those names in the course of his business for sale in Canada on his website, the Respondent, being subject to the personal jurisdiction of the laws of Canada, has most likely contravened the prohibition in section 9(1)(d) of the Canadian Trade-marks Act. Accordingly, he can hardly claim to have a legitimate interest in the disputed domain names within paragraph 4(c) of the Policy
The panel finds that (leaving aside , which need not be considered further) the Complainant has proved that the Respondent does not have any rights or legitimate interests in the disputed domain names.
Bad faith
The Respondent registered the disputed domain names in the name " (domain names for sale)". This fact alone points to their sale as being the Respondent�s primary purpose at the time of registration. Registering domain names that are not identical or confusingly similar to the trademarks of others for the purpose of sale is, of course, unobjectionable. However, if those domain names are identical or confusingly similar to the trademarks of others, such registration may be taken to be evidence of bad faith for the purposes of the Policy. This is a risk taken by those whose business involves registering domain names for sale.
Within 6 months of the registration of the first of the disputed domain names, the Respondent was offering on his website to sell or lease them to anyone prepared to pay his asking price, including the Complainant. Although the Respondent says he could not have expected to sell the names to the Complainant because its policy was not to use dot com names, he well knew that names similar to those of the Complainant in the dot com domain attracted above average direct hits from people searching for the Complainant. The Panel concludes that he set about to embarrass the Complainant into paying his asking price for the disputed domain names by placing on the site to which the disputed domain names were directed objectionable content that was likely to prompt complaints to the Complainant from outraged members of the public.
The Panel concludes on all the material before it that the Respondent registered the disputed domain names primarily for the purpose of selling, renting or otherwise transferring them to the Complainant for valuable consideration exceeding his out-of-pocket expenses directly related to the domain names. This is evidence of both bad faith registration and bad faith use: Policy, paragraph 4(b)(i).
Further, the Panel is satisfied that the Respondent also registered the disputed domain names in order to prevent the Complainant from reflecting its trade-marks in corresponding domain names, should it ever wish to do so, and that the large number of domain names so registered (including some dot ca ccTLDs) evidence a pattern of such conduct. This is evidence of both bad faith registration and bad faith use: Policy, paragraph 4(b)(ii).
Accordingly, the Complainant has proved that the disputed domain names (other than which need not be considered further) were registered and are being used in bad faith.
Reverse domain name hijacking
Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Respondent must show that Complainant knew of Respondent�s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., (D2000-1224) and Goldline International, Inc. v. Gold Line (D2000-1151). In Smart Design LLC v. Hughes, (D2000-0993) bad faith was found to encompass both malicious intent and recklessness or knowing disregard of the likelihood that the Respondent possessed legitimate interests.
The complaint having been upheld as to 31 of the 32 disputed domain names, the Respondent cannot succeed on this point with respect to those names. As to the domain name , the panel is not satisfied the requirements for such a finding have been established.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the following 31 domain names to be transferred to the following transferees:
Domain Name
Transferee
Canada Council
Canada Customs and Revenue Agency
Department of National Defence
Canadian Grain Commission
Treasury Board of Canada on behalf of the Government of Canada
Public Works and Government Services Canada
Canada Customs and Revenue Agency
Environment Canada
Environment Canada
Environment Canada
Treasury Board of Canada on behalf of the Government of Canada
Treasury Board of Canada on behalf of the Government of Canada
Treasury Board of Canada on behalf of the Government of Canada
Human Resources and Development Canada
Human Resources Development Canada
Natural Resources Canada
Natural Resources Canada
Public Works and Government Services Canada
Natural Resources Canada
Canada Customs and Revenue Agency
Canada Customs and Revenue Agency
Statistics Canada
Statistics Canada
Statistics Canada
Statistics Canada
Statistics Canada
Statistics Canada
Statistics Canada
the Bank of Canada
Treasury Board of Canada on behalf of the Government of Canada
Transport Canada
The Panel has found that, through non-use since 1982, the Complainant does not have trademark rights in the name Dominion of Canada. Pursuant to Rule 15(e), the panel therefore states that the dispute, insofar as it concerns the domain name , is not within the scope of paragraph 4(a) of the Policy.
Alan L. Limbury
Presiding Panelist
Hugues G. Richard
Panelist
G. Gervaise Davis III
Panelist
Dated: June 30, 2001
Footnotes:
1. "The Management of Internet Names and Addresses: Intellectual Property Issues", available at . (back to text)
2. Available at . (back to text)
3. See Brisbane City Council v. Warren Bolton Consulting Pty Ltd. (WIPO Case D2001-0047); City of Hamina v, Paragon International Projects Ltd. (WIPO Case D2001-0001); Port of Helsinki v. Paragon International Projects Ltd. (WIPO Case D2001-0002); Wembley National Stadium v. Tim Gordon (WIPO Case D2000-1218); Skipton Building Society v. Peter Colman (WIPO Case D2000-1217); City of Salinas v. Brian Baughn (NAF Case FA104000097076) and the discussion at paragraphs 276 �286 of the Interim Report of the Second WIPO Internet Domain Name Process. (back to text)
4. Cedar Trade Associates, Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (WIPO Case D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (WIPO Case D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250). (back to text)
5. R.S., c. T-10, available at . (back to text)
6. "Person" includes "the administrative authority of any country, state, province, municipality or other organized administrative area" (s.2). (back to text)
7. Available at . (back to text)
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