WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Bank of Nova Scotia v. Working Word Co-operative Ltd. Case No. D2010-0167 1. The Parties
Complainant is The Bank of Nova Scotia of Toronto, Ontario, Canada, internally represented.
Respondent is Working Word Co-operative Ltd. of Brampton, Ontario, Canada, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2010. On February 5, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On February 9, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2010. On March 1, 2010, Respondent requested that the Response due date be extended to March 16, 2010. Complainant did not oppose such request. On March 2, 2010, the Center advised the parties that the new due date for Response was March 16, 2010. The Response was filed with the Center on March 16, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on March 25, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Procedural Ruling
Complainant requested leave to file an unsolicited supplementary submission pursuant to the Panels discretion under paragraphs 10(b) and 12 of the Rules. Respondent requested leave to file an unsolicited rebuttal to Complainant's supplementary submission should the Panel grant Complainant's request to file the unsolicited supplementary submission.
The purpose of the Policy and Rules is to provide an expeditious, summary and relatively inexpensive procedure to resolve domain name disputes based on cybersquatting. The panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. The parties are expected to fully present their grounds and supporting material in their respective complaint and response.
While the panel may, in its sole discretion, in addition to the complaint and response request a party to submit or grant leave to a party to file further statements or documents, the panel should only do so in exceptional cases. The request for or acceptance of additional replies and surreplies conflicts with the purpose of providing an expeditious, summary and relatively inexpensive dispute resolution process.
The principles which a panel should follow in exercising its discretion were stated as follows in Lloyds TSB BANK PLC v. Daniel Carmel- Brown,WIPO Case No. D2008-1889: “that additional evidence or submissions should only be admitted in exceptional circumstances, such as where a party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”
In Complainant's letter requesting leave to file a supplementary submission it states that it wishes to file material to respond to statements made by Respondent with respect to the ownership of the CARIBANA trademark and the factual background and relationship between the Caribbean Cultural Committee, the Caribbean Arts Group, the Festival Management Committee, the City of Toronto, and the Complainant. The Panel accepts the record of past and current ownership of the registered trademark CARIBANA as it appears on the Canadian Register of Trademarks. Respondent has not contested that Complainant entered into a title sponsorship agreement with the Festival Management Committee to use the registered trademark CARIBANA for such purpose.
The Panel finds that Complainant has not established exceptional circumstances warranting leave to file the supplementary submission attached to its letter requesting leave. Complainant's request to file the supplementary submission is refused Respondent's request to file a surrejoinder is likewise refused. 5. Factual Background
In Canada's centennial year of 1967, the Caribbean Cultural Committee developed and produced a festival including a parade celebrating the culture of West Indies immigrant's through music, dance, food and costumes. The festival was advertised and carried out in Toronto in association with the trademark CARIBANA. The Caribana festival has been and continues to be very successful attracting over a million people a year to various events presented as parts of the festival. The Caribana festival is a huge tourist attraction in Toronto and is estimated to currently attract over three hundred million dollars to Toronto each summer by those partaking in or attending the numerous events associated with the Caribana festival. The Caribana festival has been extended over the years to include the music, dance, food and costumes of Jamaica, Guyana, the Bahamas, Brazil and other cultures represented in Toronto.
The Caribbean Cultural Committee filed a Canadian trademark application for the trademark CARIBANA on June 22, 1976 in relation to “entertainment services, namely the arranging, promotion and presentation of a Caribbean cultural festival providing dances, musical entertainment, theatrical entertainment, boat cruises, parades, cultural displays, arts and crafts, and restaurant services to the public.” The application was based on use in Canada since at least as early as August 1967. The trademark application proceeded to registration and was registered as Canadian Trademark Registration No. TMA219611 dated March 25, 1977 in relation to the services recited in the application.
On March 5, 1998 an assignment was recorded in the Canadian Trade Marks Office transferring the registration from the Caribbean Cultural Committee to 1099212 Ontario Ltd. The date of change is December 4, 1997.
On January 19, 1999 an assignment was recorded in the Canadian Trade Marks Office transferring the registration from 1099212 Ontario Ltd. to Caribana Festival International Inc. The date of change is November 16, 1998.
On January 17, 2000 an assignment was recorded in the Canadian Trade Marks Office transferring the registration from Caribana Festival International Inc. to Caribbean Cultural Committee-Caribana. The date of change is October 1, 1999.
On March 24, 2009 an assignment was registered in the Canadian Trade Marks Office transferring the registration from Caribbean Cultural Committee-Caribana to Caribana Arts Group. The date of change is August 21, 2007,
The disputed domain name was registered by Respondent on April 21, 1997. 6. Parties' Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant states that the Caribbean Cultural Committee the original registered owner of Canadian Trade Mark Registration No. TMA219611 for the trademark CARIBANA is now known as Caribana Arts Group, the current registered owner of the trademark CARIBANA.
Complainant further states that Caribana Arts Group has authorized the Festival Management Committee to arrange, promote and present the festival and licensed the Festival Management Committee, to use the trademark CARIBANA in association with the festival and to grant sublicenses to use the trademark CARIBAMA.
Complainant states that it is one of the five largest banks in Canada. Complainant states that it has a significant presence in the Caribbean region, with over 200 branches in more than twenty Caribbean countries. In 2008, Complainant became the title sponsorer of the Caribana festival. Complainant states that as part of its title sponsorship of the Caribana festival, pursuant to the Title Sponsorship Agreement, it has been licensed by the Festival Management Committee to use the CARIBANA trademark. Complainant further states that it has been authorized to bring this proceeding. Complainant states that as a licensee of the trademark CARIBANA, it has rights to bring this proceeding and cites Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624 and Telcel, C.A. v. jerm and Jhonattan Ramírez,WIPO Case No. D2002-0309.
Complainant submits that the disputed domain name is confusingly similar to the CARIBANA trademark in which Complainant has rights. Complainant states that the addition of the top level domain name “.com” to the term “caribana” in the disputed domain name is not sufficient to overcome a finding of confusing similarity with the registered trademark CARIBANA. A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent is not licensed either directly or by sublicense to use the trademark CARIBANA. Respondent does not use the domain name in connection with the bona fide offering of any goods or services. On the contrary, the WhoIs information indicates that the Respondent uses the disputed domain name in association with the name “Working Word Co-operative Ltd”. Respondent does not appear to have been commonly known by the disputed domain name. Respondent does not make any legitimate commercial or fair use of the disputed domain name. The sole purpose of Respondent's use of the disputed domain name is to obtain unfair commercial gain, mislead and divert potential consumers of Complainant and to tarnish Complainant's trademarks.
Complainant states that the website associated with the disputed domain name advertises an event called Irie Music Festival, which is sponsored by TD Canada Trust, a major banking competitor of Complainant. Complainant states that the Irie Music Festival is held at the same time and competes with the Caribana festival. Complainant submits that Respondent's advertisements diverts consumers from the official Caribana event and also diminishes the exclusivity for which Complainant has paid a significant amount of money to the Festival Management Committee upon which the organizers of the festival depend.
Complainant further states that the website associated with the disputed domain name includes a link to a music event called the Toronto Urban Music Festival, an event presented by Respondent which Complainant submits illustrates a further diversion of web traffic away from the Caribana festival towards the Respondent's business.
Complainant further states that the website associated with the disputed domain name includes references to Word, an urban culture music magazine published by Respondent, which is a further diversion of web traffic away from the Caribana festival towards Respondent's business.
Complainant further states that the proprietor of Respondent, Mr. P. Vascell, was at one time associated with the Caribbean Cultural Committee, the predecessor of Caribana Arts Group and has long been aware of the CARIBANA Trademark and the festival, which is further evidence that Respondent had no legitimate rights or interest in the disputed domain name.
Complainant submits that as in the website for Word magazine, the website associated with the disputed domain name is not up to date, which further tarnishes the CARIBANA trademark. For example, the web page associated with the disputed domain name dated January 26, 2010 refers to ticketing information for the year 2006. Consumers fooled into believing that the website is a legitimate or “official” website will attribute such sloppiness to Complainant or the owners of the CARIBANA trademark.
Complainant submits that the above uses by Respondent are not legitimate noncommercial uses or fair use of the disputed domain name, but are uses intended to make Respondent money, to misleadingly divert Internet users and to tarnish the trademark CARIBANA. A.3 Registration in Bad Faith
Complainant states that Respondent was well aware of the famous CARIBANA trademark, with its proprietor having been previously associated with the trademark owner. Complainant submits that this is another indicia of bad faith registration of the disputed domain name. (see, for example, Barney's Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059. A.4 Use in Bad Faith
Complainant submits that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant (paragraph 4(b)(iii) of the Policy). Complainant states that Respondent's website associated with the disputed domain name misleads consumers into believing that Respondent's website is an authorized or official Caribana website as consumers would expect the official Caribana website to be at . Respondent's links on it's website to the Irie festival and Respondent's own Word business which have no association with the Caribana festival disrupt the business of Complainant. (see Microsoft Corporation v. M aka Tarek Ahmed,WIPO Case No. D2000-0548; Mission KwaSizabantu v. Benjamin Rost,WIPO Case No. D2000-0279.
Complainant further submits that Respondent is using the disputed domain name in bad faith to attract Internet users, for commercial gain, by creating a likelihood of confusion with the CARIBANA trademark as to source, sponsorship, affiliation or endorsement of Respondent's website based on the facts recited above (see paragraph 4(b)(iv) of the Policy and International Speedway Corporation v. 24/7, NAF Claim No. FA94444. B. Respondent B.1 Identical or Confusingly Similar
Respondent submits that the current ownership of the CARIBANA trademark is in dispute. More particularly Respondent states that Toronto's Caribbean community is still questioning the ownership of the CARIBANA trademark. Respondent reviews the history of the creation, development, organization, and annual presentation of the Caribana festival for over 40 years by the Caribbean community in Toronto, substantially on a volunteer basis. Respondent states that due to financial problems the Caribbean community lost control of the Caribana festival to others who were to return control of the Caribana festival to a registered non-profit organization once the financial problems were resolved. Respondent states that the financial problems have been resolved and the Caribbean Community is awaiting return of control of the Caribana festival.
Respondent further states that Complainant is one of four banks that have sponsored the Caribana festival in the past ten years. The Royal Bank of Canada, TD Canada Trust and the Bank of Montreal have each sponsored the Caribana festival during this time.
Respondent states that on March 7, 2008, Complainant and the Festival Management Committee (FMC) announced a two-year partnership that would see Complainant become the title sponsor of North America's largest Caribbean festival (Caribana). Respondent states that according to Mr. J. Halstead (Chairman of the FMC), the initial agreement was for a two-year term and Complainant requested the “right of refusal” for another three years if all went well. Respondent states that according to Complainant's Media Relations department the current sponsorship agreement with the FMC ends in 2012.
Respondent states that the use of the CARIBANA mark by Complainant is a temporary one at best and that the disputed domain name should not revert to Complainant because of the short-term nature of their relationship with the Festival Management Committee.
Respondent did not submit that the disputed domain name is not confusingly similar to the CARIBANA trademark. B.2 No Rights or Legitimate Interests in respect of the Domain Name
Respondent states that when it acquired the disputed domain name in 1997 it did so in good faith and with the approval of the Caribbean Cultural Committee, the Caribana festival organizers for 38 years (1967 to 2006).
Respondent further states that the Caribbean Cultural Committee board members and staff were well aware of Respondent's registration of the disputed domain name. Respondent states that the Caribbean Cultural Committee provided Respondent with information to update the website and made specific requests regarding the timelines for the website updates. Respondent states that both Craig Wellington, the Marketing Coordinator and Ivor Picou, the Public Relations Chair communicated with Respondent directly on numerous occasions regarding updates to the website associated with the disputed domain name.
Respondent further submits that when the Festival Management Committee was set up as an independent body by the City of Toronto to manage the festival and use the name Caribana in 2006 the arrangement did not include the disputed domain name . The Festival Management Committee is not only aware of Respondent's ownership of the disputed domain name but they have provided Respondent with information to promote the festival on the website.
Respondent further states that given the importance of the Caribana festival to the Caribbean Community and the Toronto community at large, and the fact that this is largely a free event, Respondent, which publishes Word Magazine, registered as a separate, noncommercial online source of information to the public in 1996 with the full knowledge of the Board of the Caribbean Cultural Committee which owns the festival.
Respondent states that in 1993 Word magazine first published the official Caribana festival guide. Respondent was invited by the Caribbean Cultural Committee to publish the official festival guide once again in 1996 and was also hired by the Festival Management Committee to produce the Official Guide to Caribana in 2006.
Respondent further submits that in Toronto, the Caribana festival is viewed as community asset that is largely built over 41 years by volunteer labor. Community members at an individual level and at an organizational level through various stakeholder organizations take pride in the CARIBANA festival's growth over the years into one of the largest festivals of its kind in North America.
Respondent states that for the past 13 years, its role has and continues to provide noncommercial, public service to Toronto and to out of town visitors, nationally and internationally about the Caribana festival at the website associated with the disputed domain name. Respondent states that it operated this site associated with the disputed domain name in good faith, performing this valuable public service for the benefit of hundreds of thousands of visitors and local residents who have come to trust and rely on this service. Many have come to value this information provided at with resources from Respondent, viewed as credible and unbiased.
Respondent states its good faith use of the site associated with the disputed domain name commencing in 1997 clearly pre-dates Complainants title sponsorship of the CARIBANA festival which commenced in 2008 and was extended a year ago to a relationship ending in 2012. Both Complainant and the Festival Management Committee are well aware that Respondent has been operating the site associated with the disputed domain name since 1997.
Respondent submits that Complainant's claim that Respondent registered the disputed domain name in bad faith is spurious and is an attempt to harass and to engineer a reverse takeover of the disputed domain name. The specific site at has been the most consistent of available sites that provides information on the CARIBANA festival to the public over the past 13 years.
Respondent further states that the website associated with the disputed domain name does not attempt to generate revenue for Respondent, it is simply used to promote a community event. In the more than 12 years that Respondent has owned the disputed domain name it has provided a community service without any compensation and without any means to generate revenue.
Respondent submits that the inclusion of links to the Irie Music Festival, Word Magazine and the Toronto Urban Music Festival were only done to offer community members access to information about two Free events and a Free magazine. There was no intention to generate revenue from these links as there is no way to generate revenue from Free products.
Respondent further submits that there is no direct reference to TD Canada Trust on the web page associated with the disputed domain name and therefore the association with TD Canada Trust does not in any way diminish the value of the Bank of Nova Scotia's brand. The Irie Music Festival is produced by a small non-profit organization and is in no way a threat to Complainant's title sponsorship of Caribana.
Respondent states that it finds the claim that Respondent intends to tarnish the mark CARIBANA misleading. Respondent has spent more than 10 years trying to improve the value of the brand by providing information about an annual event that has changed its name and ownership several times during the past 10 years. Respondent argues that the website “www.” has been the only consistent source of information during this unsettled time. With the question marks raised about the ownership of the festival and the trademark as well as the short-term relationship that the Bank of Nova Scotia has with the current festival it is important that our organization retain the domain name. B.3 Registration in Bad Faith
Respondent states that the Caribbean Cultural Committee was the Caribana festival organizer and the CARIBANA trademark holder when Respondent registered the disputed domain name in 1997. The Caribbean Cultural Community was well aware that Respondent planned to register and registered the disputed domain name in 1997. The Caribbean Cultural Committee provided Respondent with ongoing information relating to the Caribana festival to enable Respondent to update the website associated with the disputed domain name.
Respondent states that when it registered the disputed domain name, in 1997, Complainant had no trade mark rights relating to CARIBANA. There was no relationship between the CARIBANA trademark and Complainant until 2008. B.4 Used In Bad Faith
Respondent further states that it has registered and used the disputed domain name in good faith for over 10 years. The Caribbean Cultural Committee, when it was a functioning organization from 1967 to 2006, was well aware that Respondent planned to register the disputed domain name in 1997. They were also aware that Respondent provided a valuable public service by putting Caribana festival information online. Respondent states that it so committed to providing this public service that it continued to provide the public with festival information even when the festival organizers and the name of the event changed on several occasions.
Respondent states that the public and an estimated 300,000 visitors from the United States of America and other international visitors have relied on the information provided by Respondent on the website associated with the disputed domain name regardless of who was running the festival and there have been many different groups doing so over the years including the Toronto Mas Band Association, yet another group integrally involved and essential to producing the Caribana festival. Respondent states there are several other stakeholders that are also important to making this volunteer driven festival function.
Respondent submits that as a magazine serving the black community in Toronto since 1993, Respondent has a legitimate interest and a history in providing information relating to the Caribana festival to the general public.
Complainant states that in 1993 Respondent's Word magazine first published the official Caribana festival guide. Respondent was invited by the Caribbean Cultural Committee to publish the official festival guide once again in 1996 and was also hired by the Festival Management Committee to produce the Official Guide to Caribana in 2006.
Respondent submits that it had no intention of confusing the public or misleading consumers. All of the contact information provided in association with the disputed domain name directs the site visitors to the Caribana festival phone numbers and offices so that potential visitors, vendors or sponsors were able to speak directly to the festival organizers and enable them to generate ticket revenue, vendor revenue and sponsor revenue. At no time did Respondent attempt to capture any of this potential revenue and at no time did it attempt to mislead consumers. B.5 Reverse Domain Hijacking
Respondent further submits that Complainant's claim to the CARIBANA mark is questionable considering the temporary nature of Complainant to the trademark owner or their licensee the Festival Management Committee as well as the dispute surrounding the ownership of the festival. Respondent submits it appears Complainant is engaging in reverse domain hijacking. 7. 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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trade mark and secondly that the disputed domain name is identical to or confusingly similar to the trade mark in which Complainant has rights.
Complainant has established that it is a sublicensee of the trademark CARIBANA which is currently registered in the name of Caribana Arts Group as Canadian Trademark Registration No. TMA219611 dated March 25, 1977 registered in relation to “ entertainment services, namely the arranging, promotion and presentation of a Caribbean cultural festival providing dances, musical entertainment, theatrical entertainment, boat cruises, parades, cultural displays, arts and crafts, and restaurant services to the public.” Caribana Arts Group the current owner of the registered trademark CARIBANA is the same entity as the Caribbean Cultural Committee the original registrant of the trademark in 1977.
The disputed domain name incorporates the entirety of the trade mark CARIBANA. Many UDRP decisions have found that disputed domain names are confusingly similar to complainant's trade marks where the disputed domain name incorporates the complainant's trade mark in its entirety. See eBay, Inc. v. Progressive Life Awareness Network.,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant's mark in its entirety and holding it to be confusingly similar to complainant's EBAY mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. FA 642141, (finding confusingly similar to complainant's AUXILIUM name and mark).
The inclusion of the top level domain descriptor “. com” in the disputed domain name does not affect a finding of confusingly similar. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trade mark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the domain name in dispute is confusingly similar to the trade mark CARIBANA in which Complainant has had title sponsor rights since 2008. 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 name in dispute.
Many of the facts relevant to the determination of this element are also relevant to the element titled Registered and Used in Bad Faith. In order to avoid repetition the Panel will proceed with consideration of Registration and Used in Bad Faith. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C. 1 Registered in Bad Faith
The disputed domain name was registered by Respondent on April 21, 1997. The relevant time for determining the issue of registration of the disputed domain name in bad faith is April 21, 1997. The Caribbean Cultural Committee began using the trademark CARIBANA in Canada in 1967 and registered the trademark CARIBANA in Canada in relation to services more particularly described in section 4 above. Complainant acquired a legal interest in the trademark CARIBANA in 2008 when Complainant entered into a sublicense with a licensee of the trademark owner and became a title sponsorer of the trademark CARIBANA. Complainant did not file any evidence of any connection between itself and the owners or licensees of the trademark CARIBANA prior to 2008.
Complainant's evidence on the issue of registration in bad faith is a statement that Mr.Vascell, the proprietor of Respondent had a previous association with the Caribbean Cultural Committee the owner of the trademark CARIBANA from 1967 to 1998. There is no evidence that Complainant had any association with the CARIBANA trademark or a licensee of the trademark owner prior to 2008.
Respondent has been the publisher of Word magazine, a magazine serving the black community in Toronto since 1993. The Caribana festival which commenced as a celebration of Caribbean culture and has been expanded to include other cultural groups in Toronto is supported by a large number of volunteer organizations, groups and performers providing their time and services freely to the Caribana festival celebrating their culture and heritage.
In 1993 Respondent's Word magazine first published the official CARIBANA festival guide. In 1996 Respondent was invited by the Caribbean Cultural Committee to publish the official festival guide once again. Respondent was also hired by the Festival Management Committee to produce the Official Guide to the CARIBANA festival in 2006.
Respondent evidence is that it registered the disputed domain name in 1997 in good faith and with the approval of the Caribbean Cultural Committee, the CARIBANA festival organizers since the festivals inception in 1967. Caribbean Cultural Committee members and staff provided Respondent with the information to update the website and made specific requests of Respondent regarding the timeliness for the website updates. Respondent has posted Caribana festival information on the website associated with the disputed domain name continuously since at least 2001.
The current owner of the registered trademark CARIBANA is the Caribana Arts Group which prior to its change of name was the Caribbean Cultural Committee, the original registrant and owner of the trademark CARIBANA during and immediately following the period that Respondent registered the disputed domain name in 1997. It is not up to the Panel to speculate why the Caribbean Cultural Committee or Caribana Art's Group as it is currently known was not a party in this case or did not present evidence on the issue of registration of the disputed domain name in bad faith.
The Panel concludes on the basis of the evidence presented by the parties in this proceeding that on a balance of probabilities Complainant has failed to prove that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Having concluded that Complainant failed to prove that Respondent registered the disputed domain name in bad faith, the Panel need not consider the element of use of the disputed domain name in bad faith. D. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” To succeed on an allegation of reverse domain name hijacking a respondent must show that the complainant knew of respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See, Sydney Opera House Trust v. Trilynx Pty. Ltd.,WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151. Paragraph 15(e) of the Rules provides “[i]f after considering the submissions the Panel finds that the complainant was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
In this case, Respondent's claim of reverse domain name hijacking is based on the Complainant's claim to trademark rights in the CARIBANA trademark considering the temporary nature of Complainant's relationship with the current festival organizers as well as the dispute surrounding the ownership of the festival.
Respondent's claim of reverse domain name hijacking is rejected as the Panel found that Complainant has rights in the trademark CARIBANA as a sublicensee through a chain of title extending directly back to the current registered trademark owner Caribana Arts Group.
The Panel relies on the records in the Canadian Intellectual Property Office which shows Caribana Arts Group is the current owner of the registered trademark CARIBANA. The Canadian Trade Marks Act provides that registration of a trademark in respect of any wares or services, unless shown to be invalid, gives to the owner the exclusive rights to use throughout Canada of such trademark in respect of such wares or services. The Canadian Trade Marks Act also permits licensing and sublicensing of registered trademarks subject to certain conditions. Section 50(1) provides that a person may be “licensed by or with the authority of the owner of the trade mark.” Respondent has not contested Complainant's position that it is a sublicensee of the trademark CARIBANA.
The Panel has no jurisdiction to consider issues concerning the ownership of the festival. 8. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Carson
Sole Panelist
Dated: April 8, 2010
Full & Egal Universal Law Academy