The Complainant is Celilo Group Media, Inc. of Oregon, United States of America, represented by Schwabe, Williamson & Wyatt, P C. of United States of America.
The Respondent is Domain Adminis trator of Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010. On July 7, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 14, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” 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 the Respondent of the Complaint, and the proceedings commenced on July 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 11, 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. Factual Background
On the evidence, which the Complainant has put before the Panel (none of which has been challenged by the Respondent), the Panel accepts the following as fact:
1. The Domain Name was originally registered on January 23, 1998 in the name of The Chinook Bookshop of Colorado and connected to a website promoting the services of a Colorado bookshop named The Chinook Bookshop.
2. The Complainant is a publishing and marketing consultancy firm based in Portland, Oregon, United States of America.
3. In 2000/2001 the Complainant launched its Chinook Book product, a coupon book offering incentives to shoppers in the North West United States to buy “green” products and services. The Complainant has won various awards in respect of the product and has made substantial sales of it. The earliest of the awards was in 2001 in the books category of the International Technical Publications Competition.
4. The Chinook Bookshop closed down on June 15, 2004 and at some stage prior to that date the original registrant ceased use of the Domain Name.
5. On a date unknown (but prior to May 12, 2006) the Respondent commenced use of the Domain Name to connect to a pay-per-click site featuring sponsored listings to sites offering goods and services (most prominently coupons and discounts) and mainly in the Portland area, the Complainant’s home territory. That use continues today.
6. The Complainant is the registered proprietor of United States trade mark registration no. 3372075 CHINOOK BOOK (words) in class 16 for coupon books. The mark was applied for on May 11, 2007 and the registration came through on January 22, 2008. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its CHINOOK BOOK registered trade mark. It also claims common law trade mark rights in the mark derived from its use of the mark since 2000/2001.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally the Complainant contends that the Domain Name was registered/acquired by the Respondent in bad faith and has been used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent has not replied to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Complainant is the registered proprietor of the CHINOOK BOOK trade mark (details of which are set out in section 4 above) in respect of which the Complainant claimed September 1, 2000 as the date of first use in commerce.
The Complainant has also made a claim to common law trade mark rights stemming from its use of the mark since 2000. The Panel is aware that first use claims of this kind are to be treated with a certain amount of circumspection, but here the Complainant has produced substantial evidence in support of its claim. The Panel is satisfied on the basis of that evidence that at least by 2004 the Complainant’s sales of its Chinook Book and its substantial investment in marketing the product were sufficient to have given rise to such rights, certainly in the North West United States of America (including Portland).
The Domain Name comprises the Complainant’s trade mark (absent the space) and the generic ‘.com’ domain suffix.
It being well-established than in assessing identity and confusing similarity for this purpose spaces and domain suffixes may be ignored, the Panel finds that the Domain Name is identical to the Complainant’s CHINOOK BOOK trade mark. C. Rights or Legitimate Interests
Paragraph 4(c)(i) of the Policy provides that a respondent may demonstrate his rights to and/or interests in a domain name by showing that he has used or is proposing to use the domain name in connection with a bona fide offering of goods and services.
Here there is no question but that the Respondent has used the Domain Name to connect to a commercial pay-per-click website offering services both to advertisers (to whose sites the Respondent’s site provides links) and to Internet users looking for information and goods/services.
The issue is as to whether the Respondent’s provision of those services can be said to be bona fide. There is no reason in principle why a pay-per-click site cannot represent a bona fide offering for this purpose, but much depends upon the nature of the Domain Name, the Respondent’s reason for adopting it and the use being made of it.
Here the Domain Name is the Complainant’s trade mark, which the Panel has already found to have established for the Complainant a substantial reputation and goodwill in the Portland area. One cannot be certain as to the Respondent’s reason for adopting the Domain Name, but the fact that it is using it to feature pay-per-click links to websites offering goods and services (including coupons and discounts competing with those offered by the Complainant) inevitably leads to the inference that the Respondent selected the Domain Name to take advantage of the Complainant’s reputation and goodwill.
The Panel finds that the Respondent has a case to answer. In the absence of any answer, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
By the same reasoning, the Panel concludes that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark and with the intention of attracting to its website Internet users looking for the goods and services of the Complainant. Instead, visitors to the Respondent’s website are presented with a wide variety of choices including goods and services competing with those offered by the Complainant.
If the Respondent had an answer to the Complainant’s allegations, it would have provided it.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In so finding, the Panel is aware that there is an uncertainty as to precisely when and in what manner the Respondent acquired the Domain Name. The Panel is also aware that the Complainant’s registered trade mark rights post-date the Respondent’s acquisition of the Domain Name. However, for this purpose it makes no difference whether the Domain Name was acquired from the previous registrant by way of an assignment or whether it was a new registration on expiry of the original registration. Either way, in the view of the Panel, there has been a change of control amounting to a new registration for the purposes of this element of the Policy. What is significant is that the Domain Name was acquired on a date post-dating the coming into existence of the Complainant’s unregistered trade mark rights and, as indicated above, the Panel has concluded that the Respondent’s intentions at the material time were abusive. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: August 19, 2010
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