WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nexxt Development Corp. v. Richard Spence
Case No. D2008-0530
1. The Parties
Complainant is Nexxt Development Corp., Toronto, Ontario, Canada, represented by Bergsteins LLP, Canada.
Respondent is Richard Spence, Toronto, Ontario, Canada.
2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2008. On April 8, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain names at issue. On April 9, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the three disputed domain names 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 Respondent of the Complaint, and the proceedings commenced on April 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2008. The Response was filed with the Center on May 5, 2008.
The Center appointed Ross Carson as the sole panelist in this matter on May 14, 2008. 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 May 6, 2008, Complainant filed a Reply to the Response. The Center advised that the Reply to the Response would be brought to the attention of the Panel after its appointment.
The Reply to the Response incorporated material relating to two distinct matters. The first matter was submissions responding to submissions made by Respondent in the Response. The second matter was a request by Complainant to add three additional domain names registered by Respondent to an amended Complaint.
Considering Complainant’s submissions in reply to Respondent’s submissions in the Response, the Rules contemplate that the case be decided on the basis of the Complaint and Response. Pursuant to paragraph 10 of the Rules the Panel shall ensure that the administrative proceeding takes place with due expedition. The Panel may at the request of a Party or its own motion, extend in exceptional cases, a period of time fixed by these Rules. Pursuant to paragraph 12 of the Rules, the Panel has the power, at its sole discretion, to request further statements or documents from either of the Parties. The material in the Reply relating to the first matter involves statements of the law and Complainant’s interpretation of Respondent’s submissions. The Panel rejects paragraph 1 to paragraph 9 of the Reply to the Response.
The second issue raised in the Reply to the Response is Complainant’s request to file an Amended Complaint adding three additional domain names. The three additional domain names were referred to by Respondent in the Response. Respondent stated that the three other domain names had been registered in February 2007 about the same time that Respondent registered the three domain names in dispute. The three additional domain names, , and owned by Respondent are not in issue in this case. The pleadings in this case are essentially closed. The Panel should only extend the time fixed by the Rules in exceptional circumstances. The dispute relating to the three domain names in dispute should be resolved in a timely fashion consistent with the intention implied by the Rules. Complainant may commence a new proceeding relating to the additional domain names should it desire to do so. See, Department of Management Services, State of Florida v. Digi Real Estate Foundation,WIPO Case No. D2007-0547. The Panel rejects Complainant’s request to add additional domain names to the dispute after the pleadings were essentially closed.
4. Factual Background
Complainant is the registered owner of Canadian trademark Registration No. TMA705,475 for the trademark HANNA’S LANDING registered on January 23 2008 in relation to the services “Residential and commercial subdivision planning and development services; Residential and commercial real estate development services; general contracting services”. The application for the trademark was filed in the Canadian Trade Marks Office on June 5, 2007. The application for the trademark was based on use in Canada since February 22, 2005 on services.
The three domain names in dispute were registered on February 2, 2007.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that it is the owner of both registered and common law trademark rights in the trademark HANNA’S LANDING.
Complainant registered trademark rights in HANNA’S LANDING are submitted to be based on Canadian Trademark Registration Number TMA705475, particulars of which are provided in paragraph 4 immediately above. Complainant’s common law rights in the trademark HANNA’S LANDING in the Province of Ontario, the Muskoka area and the Town of Port Carling are based on use of the trademark in planning and developing a subdivision in or proximate to Port Carling.
Complainant states that it carries on business as a real estate development company. Complainant states that it coined, adopted and used the trademark HANNA’S LANDING since as early as February 22, 2005, in association with “residential and commercial subdivision planning and development services, residential and commercial real estate development services, and general contracting services”. More particularly, Complainant submits it coined, adopted and used the trademark HANNA’S LANDING in association with a real estate development project on Mirror Lake in the town of Port Carling, Township of Muskoka Lakes, Ontario, Canada. Prior to this, there was no place named Hanna’s Landing. Respondent states that the mark HANNA’S LANDING has no meaning separate and apart from Complainant’s real estate development.
Complainant states that the trademark HANNA’S LANDING is known throughout Canada and particularly throughout Ontario and the Port Carling area. In particular, the trademark is almost universally known in the Port Carling area, in large part due to the promotion by Complainant of the HANNA’S LANDING real estate development project and in large part due to the extremely vocal and public opposition to the real estate development project by Respondent.
Complainant further submits that under Canadian law trade-mark rights arise from use. Proof of prior use is required before registration of a trade-mark will be granted by the Canadian Intellectual Property Office (“CIPO”). Accordingly, Complainant submits that it has been the owner of all rights in the trademark HANNA’S LANDING throughout Canada since February 22, 2005.
Complainant further submits that it is the registered owner of the domain name registered with I, Canada’s authorized domain name registration centre on May 11, 2007.
Complainant submits that the domain names in dispute are identical or confusingly similar to Complainant’s trademark HANNA’S LANDING. Each of the domain names in dispute comprise the terms “HANNASLANDING” in association with one of the top level domains “.com”, “.net” or “.info”. These terms differ from Complainant’s trademark HANNA’S LANDING only by the absence of an apostrophe between the second letter “A” and the letter “S”, as well as the lack of a space between the letter “S” and the letter “L”, and the top level domain extensions.
Complainant states that the apostrophe and the space in no way serve to distinguish the domain names in dispute from Complainant’s trademark. The elements referred to do not significantly alter the appearance or pronunciation of the domain names in dispute from Complainant’s trademark. The domain names in dispute contain the essential or virtual identity of Complainant’s trademark, which is sufficient for showing that the domain names in dispute are identical or confusingly similar to the trademark HANNA’S LANDING. Complainant further states that the word “HANNAS” suggests the possessive and implies an apostrophe, which apostrophe cannot be included in the domain names in dispute for technical reasons and are, therefore, not reproduced in domain names.
Complainant further submits that the Tld’s .com, .net and .info contained in the domain names in dispute must be disregarded, because they are merely functional components of the domain names. See, E, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694, paragraph 6A; and Fry’s Electronics Inc. v. N.A. Domain Administrator,WIPO Case No. D2007-0340, paragraph 6A.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that Respondent is a writer and communications consultant on issues related to small business. That Respondent does not carry on business as a real estate developer and has no connection to Complainant. Respondent has never been licensed or permitted by Complainant to use the domain names in dispute.
Complainant states that it notified Respondent of this dispute by letter dated February 6, 2008. Complainant submits that evidence of the non-use of the domain names in dispute by Respondent is found in Respondent’s letter in reply dated February 14, 2008, wherein Respondent makes the following admissions: “The web addresses in question point nowhere.” and “Clearly, they (the domain names in dispute) are not being used in bad faith, as they are not being used at all.”
Complainant states that Respondent has never used the domain names in dispute or a name corresponding to them in connection with a bona fide offering of goods or services. Complainant further submits that Respondent has never been commonly known by the domain names in dispute. Respondent has not made any legitimate non-commercial or fair use of the domain names in dispute. The domain names in dispute have always been “parked” by Respondent. Complainant further submits that Respondent registered the domain names in dispute through Domains by Proxy, Inc., thereby hiding his identity. Any use of the domain names that could have occurred would not have been attributed to the Respondent.
Complainant submits that Respondent did not use, or make demonstrable preparations for the use of the domain names in dispute prior to receiving notice of this dispute on February 7, 2008. Since Respondent has never been commonly known by the domain names in dispute and is not making a legitimate non-commercial or fair use of them, Respondent has no rights or legitimate interests in respect of the domain names in dispute. See, Xnergy v. Advanced Consulting DBA, WIPO Case No. D2007-0012, � 6C
A.3 Registered and Used in Bad Faith
Complainant states that Respondent’s wife, Sandra Tozer Spence, is the owner of the property abutting Complainant’s HANNA’S LANDING real estate development project in Port Carling, Township of Muskoka Lakes, Ontario, Canada. Respondent and Ms. Tozer Spence have a home on this property, located at Port Carling, Township of Muskoka Lakes, Ontario, Canada.
Complainant states that the HANNA’S LANDING real estate development project was the subject of public meetings in the community and before the local government of Port Carling, Township of Muskoka Lakes, Ontario, prior to February of 2007, at which the trademark HANNA’S LANDING was used by Complainant. Respondent was present at and/or had knowledge of the content of such meetings.
Complainant has filed documentation with the local government of Port Carling, Township of Muskoka Lakes, Ontario, containing the use of the trademark in association with the Hanna’s Landing real estate development project. Some of this documentation was filed prior to February of 2007. These filing are of public record, and in fact the purpose of the filing is to give notice to the public of its contents. Additionally, a description of the Hanna’s Landing development was published in the Bracebridge Examiner, a local newspaper, on February 14, 2007.
Complainant further states that Respondent was aware of the Hanna’s Landing real estate development project and the use of the trademark HANNA’S LANDING by Complainant at least as early as February 14, 2007. Respondent registered the domain names in dispute on February 17, 2007. Complainant further states that it is reasonable to infer prior knowledge of the trademark by Respondent, given that Respondent’s property is next-door to the Hanna’s Landing project.
Complainant states that registration of domain names that are confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. There is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademark, actually or constructively. See, State Farm Mutual Automobile Insurance Co. v. Greg Cook, National Arbitration Forum, Claim Number: FA932815, page 7.
Complainant submits that Respondent registered the domain names in dispute to prevent Complainant from reflecting the trademark HANNAH’S LANDING in a corresponding Tld domain names - paragraph 4(b)(ii) of the Policy. Use of the “.com”, “.net” and “.info” top level domain names is an important tool for Complainant to use to promote the Hanna’s Landing development to international clients, the “.ca” domain name being of limited use within Canada. By registering the domain names in dispute, Respondent has prevented Complainant from reflecting its trademark in domain names corresponding to the trademark in the “.com”, “.net” and “.info” top level domains. By registering the domain names in dispute with three different generic top level domains, Respondent has engaged in a pattern of such conduct. See, Electricite de France (EDF) v. Richard Anthony Winter, WIPO Case No. D2007-1183, paragraph 6C.
Complainant further submits that Respondent registered the domain names in dispute for the purpose of disrupting Complainant’s business - Paragraph 4(b)(iii) of the Policy. Respondent’s wife is the owner of a country residence which she acquired from her family which adjoins Complainant’s development. Respondent is opposing Complainant’s plans for the Hanna’s Landing housing project on environmental, zoning, and other grounds. The panel has reviewed the submissions of Complainant concerning Respondents opposition to Complainant’s subdivision. The panel finds that paragraph 4(b)(iii) of the Policy is restricted to “disrupting the business of a Competitor”. Respondent is a cottager and is not a competitor of Complainant. Respondent’s opposition to Complainant’s subdivision are not relevant under paragraph 4 (b)(iii) of the Policy.
Complainant further submits that Respondent is using the web site for commercial gain - Paragraph 4(b)(iv) of the Policy: The print outs of the home pages associated with the domain names in dispute links the domain names to a portal site offering sponsored links. Such websites offer a revenue program which pays Respondent revenues generated in respect of users directed to its website through the domain names in dispute. Respondent is thereby profiting from user’s initial confusion. Such exploitation is use in bad faith. See, Fry’s Electronics Inc. v. N.A. Domain Administrator,WIPO Case No. D2007-0340, paragraph 6C.
Complainant further states that Respondent sought to hide his identity. Respondent has taken deliberate steps to hide his true identity. Respondent used the proxy service of Domains By Proxy, Inc. to register the domain names in an effort to hide his identity. The use of a proxy service to hide your identity is consistent with bad faith registration and use of the domain names. See, Trinity Mirror PLC and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004, paragraph 6C. Complainant further states that it has been advised by I that Respondent attempted to register the domain “” but withdrew his application when he learned that he could not register that domain using a proxy. Complainant submits this illustrates Respondent’s guilty mind and knowledge of Complainant’s prior rights to the domain names in dispute and shows that Respondent has registered and used the domain names in dispute in bad faith.
Complainant further submits that if it is found that Respondent has not used the domain names in dispute, the passive holding of the domain names by Respondent, in the face of all of the circumstances, gives rise to the bad faith registration and use of the domain names. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Complainant submits that the circumstances in which passive holding of a domain name will constitute bad faith use of that domain name must be assessed on a case by case basis. Some of the factors to consider include:
1. whether Respondent has provided evidence of any actual or contemplated good faith use by it of the domain names;
2. whether Respondent has taken any steps to conceal his true identity;
3. whether it is possible for Respondent to make any legitimate use of the domain names without infringing the rights of Complainant.
Complainant submits that these circumstances are not the only factors that may be considered. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, paragraph 7.12; Aventis and Aventis Pharma SA v. Bug Software/Paulo Andrade, WIPO Case No. D2004-0878, page 5.
Complainant submits that the circumstances in this case that constitute the bad faith passive holding of the domain names in dispute by Respondent are:
(a) that Respondent had prior knowledge of the use of the trademark HANNA’S LANDING by Complainant;
(b) that the trademark HANNA’S LANDING is a term coined by Complainant relating specifically and only to Complainant’s real estate development project;
(c) Respondent’s deliberate steps to hide his true identity by using a proxy service to register the domain names in dispute in the face of the prior use of the trademark HANNA’S LANDING by Complainant;
(d) there is no indication of any contemplated use of the domain names in dispute, there being no plausible situation in which Respondent could legitimately use the domain names;
(e) Respondent has registered the domains in the course of his opposition to the Hanna’s Landing development project and the ongoing, unrelated, litigation with Complainant.
Complainant states that citizens have freedom of speech in Canada. Respondent is free to oppose the Hanna’s Landing real estate development project next to his home. However, that freedom does not extend to the hijacking of the domain names in furtherance of such opposition.
B. Respondent
B.1 Identical or Confusingly Similar
Respondent states that he registered the domain names in dispute on February 17, 2007. Complainant did not register the trademark HANNA’S LANDING in Canada until January 23, 2008. Respondent submits that Complainant cannot rely on its Canadian trademark registration as trademark registrations do not include any retroactive rights.
Respondent questions that the phrase “Hanna’s Landing” was coined and used as early as February 21, 2005 as that is more than two years before Complainant actually bought the property on which their proposed development is to be built. Respondent further submits that if the statement were true and Complainant’s were serious about their intention, they had two years to register the URL prior to his registration of these names.
Respondent also question how Complaiant can know that the phrase “Hanna’s Landing” has no meaning “separate and apart from Complainant’s real estate development.” Respondent submits that Complainant’s use of the term “Hanna” presumably derives from that of a famous Port Carling family that had retail, shipping and hotel interests throughout the Muskoka Lakes. Given that Hanna’s dispensary ships traveled extensively throughout the Muskoka Lakes system, delivering groceries and supplies to then-isolated communities, there may be many places known locally by that name.
Respondent challenges Complainant’s statement that the HANNA’S LANDING trademark is known throughout Canada “due to the promotion by Complainant of the Hanna’s Landing real estate development”. Respondent states that he has never seen an example of any such promotion by Complainant. Complainant’s own website has never mentioned the project. Complainant has been in possession of the URL, “www.”, since May 11, 2007, and has yet to post any content on that site. To date, the only mention Respondent has seen of the project have been in newspaper articles, documents issued by the Township of Muskoka Lakes, or on the blog of the Friends of Mirror Lake Association. Complainant’s claim that its ownership of the URL “www.” gives it some right to the trade-mark HANNA’S LANDING is not sustainable as Respondent registered that the name before Complainant did and let it lapse.
B.2. Rights or Legitimate Interests in respect of the Domain Names
Respondent submits that as a property holder whose property lies entirely within the boundaries of the proposed “Hanna’s Landing” property, Respondent has a fair-use claim to the term. He further reiterates his offer to resolve this dispute amicably, should the Complainant agree to change its tone.
Respondent submits that in para viii) of the Complaint, Complainant argues that “Domains by Proxy Inc.” provides meaningful confidentiality, as if Respondent had something to hide. Respondent submits this security feature (which costs just $10 a year) makes no such claim and offers no such service. It is a thin veil easily pushed aside.
Respondent has operated a blog pertaining to Mirror Lake and Hanna’s Landing since April 2007. It is certainly possible that at one point, Respondent considered using one or more of the URLs in question to refer visitors to the blog at “”. The lack of a specific plan for the URLs does not mean that various uses for them were not considered at various times.
B.3 Registered and Used In Bad Faith
Respondent submits that there is no evidence that Respondent registered the domain names in dispute to prevent Complainant from reflecting the trademark in a corresponding domain name. Respondent states it is Complainant’s own lack of foresight that prevented them from registering the domains in the first two years that they claim to have been using the name. Complainant alone is responsible for the nearly one-year delay between the time Respondent registered the domain names in dispute and the time they asked him for it.
Respondent denies that he registered the domain names in dispute in bad faith primarily for the purpose of disrupting Complainant’s business. Respondent is not a competitor of Complainant. Respondent is not a land developer. As stated above, this Panel only has jurisdiction to consider evidence relating to activities of a competitor who registers domain names to disrupt the business of a competitor under paragraph 4(b)(iii) of the Policy.
Respondent states that he does not receive any compensation from ad revenues on the home pages associated with the domain names in dispute. The home pages are a default “service” provided by the hosting company, and has nothing to do with Respondent. Respondent did not set up the home pages and has never received any benefit from that activity, nor does he expect to or wish to.
Respondent submits that Complainant’s allegation that he attempted to hide his identity by italicizing Domain by Proxy Inc. is a weak argument as utilizing Domain by Proxy provides no confidentiality or benefit beyond shielding one’s name from the public “WhoIs” database. Respondent submits that had he truly cared to conceal his identity, he could have used much more effective techniques.
On the issue of alleged passive holding Respondent states that it registered the domain names in dispute long before there was any opposition or litigation unrelated to domain names between the parties.
Respondent states that although he believes that he has a legitimate claim to the domain names in dispute, he has never been unwilling to hand them off to the people who can make better use of them. Respondent states that he has never asked for, and never intended to ask for, any form of compensation, financial or otherwise. Respondent states that his motivation at the outset was to have a chance to catch the attention of Complainant, and enable a neighborly discussion of their plans and our concerns about the subdivision to take place. Respondent states that since then he has met Complainant, and the parties have talked, but have been unable to resolve the domain names issue or the issues relating to the development of a subdivision on the property adjoining Respondent’s cottage and property.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly prove that the domain names in dispute are confusingly similar to the trademark in which Complainant has rights.
Complainant states that it has rights in the trademark HANNA’S LANDING based on its registered trademark and based on its common law rights arising from use of the trademark HANNA’S LANDING in relation to land development since at least as early as February 22, 2005.
Canadian Trademark Registration No. TMA705474 for the trademark HANNA’S LANDING was granted to Complainant on January 23, 2008. Under Canadian trademark law Complainant has the exclusive right to the use of the trademark in Canada from the date of grant of the trademark. Respondent registered the domain names in dispute on February 17, 2007 more than eleven months prior to registration of the trademark HANNA’S LANDING in Canada. Trademark registrations in Canada have no retroactive effect. At the date of registration of the domain names in dispute Complainant had no registration and no registered trademark rights in Canada for the trademark HANNA’S LANDING. However previous panels have found that registration of a domain name before a complainant acquired registered trademarks does not necessarily prevent a finding of identity or confusing similarity under the first element of the Policy. See e.g. paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and decisions cited therein.
In any event, Complainant also relies on common law rights in the trademark HANNA’S LANDING which trademark was used as the name of a subdivision planned for development in or on the edge of the town of Port Carling in the Township of Muskoka Lakes. Respondent admitted in the Response that he was aware that Complainant planned to build a 250-unit subdivision in association with the trademark HANNA’S LANDING on land adjoining his cottage property at least 10 months prior to the registration of the domain names in dispute by Respondent. Respondent stated in the Response: “When I discovered that there was no website for Hanna’s Landing, despite the fact that the developers had been working on the project for at least 10 months, I went ahead and registered the URL’s for “www.”, “www.” and “www.”. I figured that the principals had had lots of time to register the name if they wanted it.” Complainant alleges use of the trademark HANNA’S LANDING in association with subdivision planning and development services since February 22, 2005. Complainant’s evidence discloses that a planning application for an amendment to Official Plan was made in late January or early February 2007 to the planning board responsible for the Muskoka Lakes. The application related to a proposed subdivision of multi-residential units on a 52 acre site named HANNA’S LANDING. The Panel finds that Complainant had established goodwill and a reputation for the trademark HANNA’S LANDING in and around the town of Port Carling in relation to a proposed subdivision bordering on the Town of Port Carling prior to registration of the domain names in dispute by Respondent. See Imperial College v. Chrirtophe Dessimoz,WIPO Case No. D2004-0322, “Indeed, a fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered….the panel notices that common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself,…”.
Complainant has established common law trademark rights in the trademark HANNAH’S LANDING in relation to a proposed subdivision development in the area of Port Carling in Muskoka Lakes Township. The domain names in dispute are comprised of the same letters in the same order in association with one of top level domain indicators “.com”, “.net” or “.info”. The top level domain name indicators are to be disregarded because they are functional components of the domain names in dispute. See, Fry’s Electronics Inc. v. N.A. Domain Administrator,WIPO Case No. D2007-0340.
The Panel finds that each of the domain names in dispute is confusingly similar to Complainant’s common law trademark HANNA’S LANDING.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain names in dispute.
On the material before the Panel, Respondent has not used a trademark for or including HANNA’S LANDING or any variation thereof in association with any bona fide goods or services offered by Respondent.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s common law trademark HANNA’S LANDING or any trademark confusingly similar thereto.
On the material before the Panel, here is no evidence that Respondent has been commonly known by the domain names in dispute. The domain names in dispute are parked and make no reference to Respondent.
The Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in respect of the domain names in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the domain names in dispute have been registered and used in bad faith.
Respondent’s wife is the owner of a cottage and property on Mirror Lake in Port Carling adjoining the property which Complainant intends to develop into a subdivision bearing the name Hanna’s Landing. Respondent was aware of Complainant’s plan to develop the Hanna’s Landing subdivision for at least 10 months prior to registration of the confusingly similar domain names in dispute on February 17, 2007. The trademark HANNA’S LANDING is a created term. Respondent’s submission that at some time in the past a prominent family bearing the name Hanna in Port Carling does not detract from the fact that the combined term is created.
The Panel finds that Respondent registered the domain names in dispute which are confusingly similar to Complainant’s common law trademark with full knowledge inter alia of Complainant’s use of Hanna’s Landing as the name of a proposed subdivision on a property adjoining Respondent’s property.
The WIPO Overview of WIPO Panel Views on Selected UDRP questions was created to maximize the consistency of decisions in UDRP proceedings. One of the issues in the overview is whether their can be use in bad faith when the domain name is not actively used and the domain name holder has taken no steps to sell the domain name. In the Telstra decision, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the panel following an analysis of paragraph 4(b) of the Policy concluded that “paragraph 4(b) recognizes that inaction (eg. Passive holding) in relation to a domain registration can, in certain circumstances, constitute a domain name being used in bad faith.” The circumstances of bad faith activities referred to in paragraph 4(b) of the policy are if proven evidence of the registration and use of a domain name in bad faith. The circumstances of bad faith referred to in paragraph 4(b) are stated to be “without limitation”, so that other circumstances if proven may constitute evidence of bad faith use of a domain name.
Respondent registered the domain names in dispute on February 17, 2007. Respondent states in the Response that Complainant had been working on the Hanna’s Landing subdivision for at least ten months prior to his registration of the domain names in dispute. Respondent states that he figured that Complainant had lots of time to register the name if they wanted to. Respondent also registered three other domain names ; and in February 2007. Respondent started a blog at “” at least as early as April 29, 2007 actively opposing Complainant’s Hanna’s Landing 250-unit subdivision. The opposition of Respondent and some others in the Port Carling area to Complainant’s proposed subdivision is ongoing. Respondent states that if Complainant approaches him in a more respectful way he would convey the domain names in dispute to Complainant.
The Panel has considered whether, in the circumstances of this case, the holding of the domain names in dispute amounts to Respondent’s acting in bad faith. The Panel makes or infers the following findings:
(i) Respondent was aware inter alia of Complainant’s common law trademark HANNA’S LANDING prior to registration of the domain names in dispute.
(ii) Respondent was aware of Complainant’s intent to develop a 250 unit subdivision on a property adjoining his wife’s cottage and property prior to registration of the domain names in dispute.
(iii) Respondent had made a decision to oppose Complainant’s proposed subdivision before the planning board as he was entitled to do, before he registered the domain names in dispute.
(iv) Respondent did not register the domain names in dispute with the intent of selling them for a profit to Complainant’s.
(v) Respondent did not register or use the domain names in dispute to make pay-per- click income therefrom.
(vi) Respondent has apparently made no active use of the domain names in dispute since registering the domain names.
(vii) Respondent registered the domain names in dispute with the intent to use them in possible settlement negotiations with Complainant.
The Panel finds on a balance of probabilities that registering domain names which are confusingly similar with Complainant’s trademark HANNAH’S LANDING and passively holding the domain names for use in possible settlement negotiations of the dispute between the parties constitutes use of the domain names in bad faith.
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 names, , and be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: May 29, 2008
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