The Complainant is Panorama Mountain Village Inc., of British Columbia, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is High Country Properties, of British Columbia, Canada externally represented. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2010. On October 19, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On October 19, 2010, Tucows Inc. 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 October 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2010. The Response was filed with the Center on November 17, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on December 6, 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
Complainant a land owner and developer, manager of residential and commercial real estate, who owns and operates the Panorama Mountain Village resort in British Columbia, a major year around sports complex providing facilities for skiing, golf and other outdoor recreation, which it acquired from Intrawest in February 2010. Provision of facilities for skiing were commenced on a small scale at the Panorama plateau in the 1960’s and have continued to expand in size and scope under the ownership and management of a number of entities over the intervening years. The Panorama Mountain Village resort currently provides over 4000 feet of vertical drop and includes a quad lift which can accommodate over 7,000 skiers per hour. The resort provides ski runs for beginners to expert skiers. The Panorama Mountain Village resort is a destination resort providing accommodation for skiers in close proximity to the ski lifts. The resort is a year round resort providing hiking, bicycling, fishing, swimming, golf and other facilities during the spring summer and fall.
Individuals, partnerships and corporations own condos, town homes, cottages and hotels adjoining Complainant’s facilities. Complainant rents out units it owes, while third parties may rent out their units if they desire to do so. Complainant has condominiums for rent in the newer Upper Village as well as older units in the Lower Village. Only the Complainant rents and manages condominiums in the Upper Village, while the Complainant and third parties, including Respondent, rent and manage units in the Lower Village.
Complainant also owns and operates the GREYWOLF golf course. A substantial interest in the GREYWOLF golf course was acquired from Intrawest in February, 2010. The GREYWOLF golf course opened in 1999. The GREYWOLF golf course has enjoyed success. It is the recipient of numerous awards, including the following: Ranked 2nd best public course in British Columbia - Score Golf 2009; ranked 37th best course in Canada - Score Golf 2008; and ranked Top 10 in Canada - Golf Digest.
Complainant is the registered owner of Canadian Trademark Registration No. TMA268,260 for the trademark PANORAMA registered April 16, 1982. The trademark is registered in relation to (1) Real estate services, development, construction and management of residential and commercial structures based on use in Canada since as early as1962; (2) Operation of a shop specializing in equipment and clothing for skiing, skating, snowmobiling, hiking, camping, fishing, horseback riding, boating, water skiing, swimming, and hand gliding, rental of equipment for skiing, skating, snowmobiling, hiking, camping, fishing, horseback riding, boating, water skiing, swimming, and hand gliding, and servicing of equipment for skiing, skating, snowmobiling, hiking, camping, fishing, horseback riding, boating, water skiing, swimming, and hand gliding; operation of a gift shop based on use in Canada since at least as early as 1967; (3) Provision of facilities for, instructions in, and rental of equipment for skiing, provision of facilities for, and rental of equipment for skating since at least as early as1962; (4) Provision of facilities for, instruction in, and rental of equipment for tennis, boating, riding and swimming since at least as early as February 15, 1982.
The registered trademark PANORAMA was transferred from Panorama Ski Hill Company Limited to Panorama Resort Ltd. on February 2, 1983; Panorama Resort Ltd. transferred the registered trademark to I W Resorts Limited Partnership on March 16, 1993; and I W Resorts Limited Partnership transferred the registered trademark to Complainant on August 4, 2010.
Complainant is also the registered owner of Canadian Trademark Registration No. TMA257, 696 for the trademark PANORAMA and design registered April 10, 1981. The trademark PANORAMA and design is registered in relation to substantially the same services as those for which the trademark PANORAMA is registered.
Complainant is the registered owner of Canadian Trademark Registration No. TMA517,598 for the trademark GREYWOLF registered on October 5, 1999. The registered trademark GREYWOLF is registered in relation to the services of operation of a golf course; the operation of a retail sporting goods store selling golf related products; and the operation of a golf club resort. The registered trademark is also registered in relation to the wares: Golf towels, golf balls, and golf tee markers.
Complainant is also the registered owner of Canadian Trademark Registration No. TMA518,219 for the trademark GREYWOLF and wolf head design registered on October 16, 1999. The trademark GREYWOLF and wolf head design is registered in relation to the same services as the trademark GREYWOLF and in relation to an extended statement of wares.
Complainant is the registrant of the domain name registered on September 26, 1995 and the domain name registered on October 4, 2001.
Respondent is the registrant of the disputed domain names registered October 10, 2001; registered October 18, 2001; registered October 18, 2001; and registered October 18, 2001. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that as found in section 4 above, Complainant is the owner of Canadian Trademark Registrations for the trademarks PANORAMA, registered since April 16, 1982; PANORAMA and design, registered since April 10, 1981; GREYWOLF, registered since October 5, 1999; and GREYWOLF and design, registered since October 19, 1999. Complainant states that the registered trademarks have been in continuous use in Canada by Complainant and it’s predecessors in title.
Complainant further states that is the owner of the common law trademark PANORAMA MOUNTAIN VILLAGE which has been in use over decades by Complainant and its predecessors as shown in print outs from its website at attached as an exhibit. Complainant states that as a result of extensive use and publicity Complainant’s registered and common law trademarks have become very well known.
Complainant states that the disputed domain names , and incorporate the whole of the trademark PANORAMA, which is the subject of trade-mark registrations. Further, the domain name is identical to the PANORAMA MOUNTAIN VILLAGE trademark. Complainant states that Respondent cannot avoid confusion, as it has misappropriated the entirety of Complainant’s trademarks for PANORAMA and PANORAMA MOUNTAIN VILLAGE.
Complainant further submits that the disputed domain name incorporates the whole of the GREYWOLF trademark registration. Under the circumstances, Respondent cannot avoid confusion, as it has misappropriated the entirety of the GREYWOLF trademark.
Complainant states that a finding that a domain name incorporates the whole of a complainant’s mark supports a finding of confusion. A respondent may not avoid confusion by appropriating another’s entire mark in a domain name (Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313).
Complainant further states that the fact that the disputed domain names , and include the non-distinctive elements “ski”, “vacations” and “golf’, respectively, does nothing to diminish confusion. Despite these additions, these domain names remain very similar to the PANORAMA and GREYWOLF trademarks in appearance, sound and in the ideas suggested.
Complainant states that it is a well established principle that the addition of descriptive or non-distinctive terms to a domain name does not militate against a finding of confusion (Sutton Group Financial Services Ltd. v. GeorgeG o/a George Georgopoulos,WIPO Case No. D2004-0335; Research In Motion Limited v. Louis Espinoza,WIPO Case No. D2008-0759; Research In Motion Limited v. J,WIPO Case No. D2008-0758).
Complainant submits that, quite the contrary, confusion is enhanced by the addition of these non-distinctive terms. Complainant offers ski, vacation and golf services, thereby only enhancing the likelihood that consumers would be confused. Therefore, the addition of these terms only further suggests that the domain names resolve to websites operated by, or otherwise connected to Complainant.
Complainant further states that it is a well-established principle that the addition of a generic top level domain, such as dotcom, is without legal significance in determining the issue of similarity (J.P. Morgan v. Resource Marketing,WIPO Case No. D2000-0035). A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that Respondent is a rental management company. Respondent without the permission of the Complainant, registered the disputed domain names , , , and (the disputed domain names). Respondent, hyperlinked the website “www ” to its web site located at “www. ”, which features rental listings for direct competitors of Complainant in addition to listings of Complainant’s PANORAMA MOUNTAIN VILLAGE properties. Respondent’s website also promotes golf courses that compete directly with Complainant’s GREYWOLF golf course. Complainant states that Respondent’s other 3 disputed domain names are inactive.
Complainant further states that in response to Complainant’s requirement that the disputed domain names be transferred to Complainant, Respondent indicated that it would agree to the transfers in exchange for permission to rent out Complainant’s newer properties. Complainant declined Respondent’s demand.
Complainant submits there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, the disputed domain names, or names corresponding to same, in connection with a bona fide offering of goods or services.
Complainant relies on the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001–0903, which found that bona fide use of a trademark occurs under the following circumstances: (i) the respondent must actually be offering the goods or services at issue, (ii) the respondent must use the site to sell only the trademarked goods, (iii) the site must accurately disclose the registrant’s relationship with the trademark owner, and (iv) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Complainant states that based on the facts In this case, Respondent is pointing to a website that not only promotes the rental units of the Complainant, but also rental properties that compete directly with Complainant. The website also promotes golf courses that compete directly with Complainant’s GREYWOLF golf course. Further, the website does not accurately disclose the relationship between the parties. As well, the disputed domain name is identical to Complainant’s trade name and trademark PANORAMA MOUNTAIN VILLAGE, and therefore, Respondent is depriving Complainant of its domain name.
Complainant concludes that in light of the foregoing, Respondent cannot claim it is making a bona fide use of the domain name.
Complainant states that should the three inactive disputed domain names ever be put to use, their unauthorized use would likely mislead or confuse the public into believing that Complainant has authorized or endorsed the use of these domain names. This also supports a finding of no rights.
Complainant states that Respondent registered the disputed domain names with a view to exploiting Complainant’s reputation and goodwill to promote its own commercial interests. Under no circumstances can this intentionally obstructive behaviour be considered bona fide in nature and it completely undermines a claim of legitimate interest. Under the circumstances, the Respondent cannot claim the benefit of paragraph 4(c)(i) of the Policy.
Complainant further states that there is no evidence to suggest that Respondent has been commonly known by the disputed domain names, or that Respondent is making, or intends to make, a legitimate non-commercial or fair use of the disputed domain names.
Complainant respectfully submits that in light of the foregoing Respondent does not have a legitimate interest or rights in the disputed domain names, and is therefore removed from the application of paragraph 4(c) of the Policy. A.3. Registration in Bad Faith
Complainant states that Complainant and its predecessors have used the trademark PANORAMA MOUNTAIN VILLAGE in association with its resort for decades. Respondent registered the domain name without permission of Complainant. Complainant further states that Respondent uses the disputed domain name to link to its website “www ” which features rental listings to direct competitors to Complainant in bad faith. As Respondent was renting properties belonging to Complainant’s predecessor at the time it should have been aware of Complainant’s goodwill in its trademark PANORAMA MOUNTAIN VILLAGE at the time of registration of the disputed domain name .
Complainant further states that given that Respondent rents out the Complainant’s properties, the only plausible conclusion is that Respondent had actual knowledge of the PANORAMA and GREYWOLF trademarks at the time of registration of the disputed domain names, thereby supporting a finding of registration in bad faith. In any event, and at the very least, Respondent had constructive knowledge of the PANORAMA and GREYWOLF trademarks given that they are the subject of trademark registrations in Canada, which is where Respondent is located. This also supports a finding of bad faith.
Complainant submits that a respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration has been found to reinforce a finding of bad faith (Document Technologies v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270).
Complainant further submits that a trademark registration provides constructive knowledge to third parties of a complainant’s rights (The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands,WIPO Case No. D2003-0305). A.4. Use in Bad Faith
Complainant submits that Respondent registered the disputed domain names for the purpose of selling or otherwise transferring them to Complainant for valuable consideration in excess of its registration fees. Further, Respondent has engaged in a pattern of abusive registrations and has prevented Complainant from registering the disputed domain names. As well, Respondent registered the disputed domain names for the purpose of disrupting the business of Complainant, a competitor of Respondent. Respondent has also registered the disputed domain names in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to source or sponsorship.
Complainant submits that the disputed domain names were acquired by Respondent for the purpose of selling them or otherwise transferring them to Complainant for valuable consideration in excess of its out-of-pocket expenses.
Complainant states that Respondent is a rental management company. Respondent without the permission of the Complainant, registered the disputed domain names , , , and (the disputed domain names). Respondent, hyperlinked its website “www.” to its web site located at “www.”, which features rental listings for direct competitors of Complainant in addition to listings of Complainant’s PANORAMA MOUNTAIN VILLAGE properties. Respondent’s website also promotes golf courses that compete directly with Complainant’s GREYWOLF golf course. Complainant states that Respondent’s other three disputed domain names , and are inactive.
Complainant further states that in response to Complainant’s requirement that the disputed domain names be transferred to Complainant, Respondent indicated that it would only agree to transfer the disputed domain names to Complainant in exchange for being granted permission to rent out units in the newer Upper Village of Complainant’s resort. At present, Respondent only has access to the older units in the Lower Village (which are also highly coveted), and the upper Village is exclusively managed by Complainant. This access would of course result in income for the Respondent. Complainant declined Respondent’s demand. Complainant states that Respondent’s counter offer supports a finding of bad faith.
Complainant states that the UDRP Policy does not require that Respondent be seeking a monetary payment in exchange for disputed domain names. A finding of bad faith can be made if it can be shown that Respondent is seeking any type of “valuable consideration” or non-monetary compensation. This is supported by the jurisprudence (BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms,WIPO Case No. D2001-1409; The Vanderbilt University v. U Incorporated, NAF FA893000).
Complainant further submits that three of the four disputed domain names have remained inactive for a number of years. This only further suggests that Respondent is keeping these domain names as leverage in an attempt to secure Complainant’s agreement to allow it to rent out units in the Upper Village.
Complainant submits that as per paragraph 4(b)(ii) of the Policy, Respondent has engaged in a pattern of registering domain names that contain trademarks to which it is not entitled, and has prevented Complainant from registering the disputed domain names. Respondent has registered seven domain names to which it is not entitled: ; ; ; ; ; and .
Complainant states that as few as two (2) domain name registrations, including a disputed domain name, has been sufficient to establish that a respondent has engaged in a pattern of registering domain names that incorporate the trademarks of third parties (New York Life Insurance Company v. Arunesh C. Puthiyoth,WIPO Case No. D2000-0812; Volvo Trademark Holding AB v. Cup International Limited,WIPO Case No. D2000-0338; Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc. v. Salvatore Vetro,WIPO Case No. D2001-0575).
Complainant further states that multiple domain names incorporating the trademark of a single trademark owner constitutes a pattern of intentionally obstructive registrations (Time Warner Entertainment, L.P. v. HarperStephens,WIPO Case No. D2000-1254; Revlon Consumer Products Corporation v. Domain Manager, Page Up Communications,WIPO Case No. D2003-0602). Repeated registrations of trademarks of third parties by a registrant results in a presumption that a disputed domain name registration was performed in bad faith (Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela,WIPO Case No. D2005-0786).
Complainant also relies upon paragraph 4(b)(iii), and submits that Respondent registered the disputed domain names for the purpose of disrupting the business of Complainant, a competitor of Respondent.
Complainant submits that both Complainant and Respondent offer rental services. The parties are therefore direct competitors. Further, Respondent’s website features listings of vacation properties and golf courses that compete directly with Complainant. The unauthorized diversion of Internet traffic by Respondent to its website, which features direct competitors of Complainant, constitutes a disruption to the Complainant. Further, Respondent’s activities disrupt Complainant, as potential consumers are likely to be misled into believing that Respondent’s website is somehow affiliated with, or otherwise connected to Complainant.
Complainant further submits that the valuable goodwill subsisting in the PANORAMA and GREYWOLF trademarks is harmed by Respondent’s activities, thereby constituting a further disruption to Complainant. Under the circumstances, it is reasonable to infer that Respondent not only knew this diversion would be disruptive, but also intended it to be so.
Complainant submits that Respondent deliberately set out to disrupt Complainant and its business by actively undertaking the diversion of Internet traffic to its site. Respondent’s activities constitute prima facie evidence of bad faith falling squarely within paragraph 4(b)(iii) of the Policy.
Complainant relies on paragraph 4(b)(iv), bad faith registration will be found where a respondent is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with a complainant’s mark as to source, sponsorship, affiliation, or endorsement.
Complainant submits that it is not necessary for a disputed domain name to be associated with an active website for a finding to be made under paragraph 4(b)(iv). Panels have held that this bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion (CBS Broadcasting, Inc. v. LA-Twilight-Zone,WIPO Case No. D2000-0397; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Hewlett-Packard Company v Marcel Wieland, NAF, Case No. FA95852).
In Hewlett-Packard Company v. Marcel Wieland, NAF, Case No. FA95852, supra, the panel held that a finding of bad faith as per paragraph 4(b)(iv) could still be made even if the disputed domain name did not resolve to an active site:
... [E]ven where the domain name has not been used to identify a web site, Panels have held that the ICANN Policy ‘use in bad faith’ requirement is met by registering a domain name that will ultimately result in consumer confusion. See e.g. CBS Broadcasting, Inc. v. LA-Twilight-Zone,WIPO Case No. D2000-0397 (June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).
Complainant submits that the domain name is identical to the PANORAMA MOUNTAIN VILLAGE trademark and contains the whole of the PANORAMA trademark. Therefore, this domain name is confusing with the PANORAMA trademark. Further, the Complainant is hyper linking to its web site, which is commercial in nature. Under the circumstances, it is reasonable to conclude that the unauthorized use of puts Respondent in a position to reap a financial benefit.
Complainant further submits that Respondents three inactive domain names incorporate the whole of the PANORAMA or GREYWOLF trademarks. As well, the non-distinctive terms in these domain names reinforce a connection between the domain names and Complainant. Accordingly, the domain names, if ever put to use, would likely result in potential consumers being confused or misled into believing that Respondent is somehow affiliated with, or endorsed by Complainant - particularly if Respondent used these domain names as it uses . B. Respondent
Respondent states that Complainant is estopped from succeeding in this matter by virtue of the actions and consents of the predecessor of Complainant.
Respondent states that it registered the disputed domain names , , and with the permission of the predecessor to Complainant.
Respondent further states that Complainant and the predecessor of Complainant, provide and formerly provided Respondent with wholesale rates for golf packages and lift tickets sales to help promote and sell the GREYWOLF golf course and the Panorama ski resort.
Respondent further states that it registered the domain names , , and with the permission of the predecessor to Complainant.
Respondent states that the predecessor to Complainant knowingly allowed Respondent to use the term PANORAMA MOUNTAIN VILLAGE in Respondent’s advertising, marketing and domain name registrations.
Respondent further states in an Annex to the Response under the heading : “The Respondent: High Country Properties / John Newton” that a number of years after Respondent registered the disputed domain names, Intrawest discovered they were no longer available. After several discussions Intrawest informed Respondent of their interest in these names. Respondent then enlisted the services of counsel to provide it an opinion on the issue. This opinion was offered to Intrawest. As a result of this Intrawest and Respondent were working on a proposed working agreement to resolve the domain name and other issues. The basis was “win win” for both parties. Prior to this being completed the resort was sold to Complainant in February, 2010. In a motion of goodwill the proposal was given to Complainant for discussion and continuing negotiation and to date there has been no formal reply, verbal or written, to Respondent other than this UDRP submission from a third party. Respondent states that it is to be noted that the proposal did not include any properties currently in the Panorama rental pool, so rental income loss was never factor. B.1. Identical or Confusingly Similar
Respondent admits that Complainant is the current owner of the registered trade marks PANORAMA, PANORAMA and design, GREYWOLF and GREYWOLF and design, particulars of which are provided in Section 4 above. Respondent states that the term PANORAMA MOUNTAIN VILLAGE is not registrable as a trademark by either party to this proceeding as the term is: (a) primarily merely descriptive, (b) deceptively mis-descriptive, (c) never been adopted to distinguish the services of a single trader, (d) is a geographical location within the province of B. C. and (e) has been used solely as a trade name.
Respondent did not submit that the disputed domain names are not confusingly similar to Complainant’s registered trademarks and alleged common law trademark. B.2. No Rights or Legitimate Interests in respect of the Domain Names
Respondent states it is a property management company which commenced business in 1986 in Invermere B.C. by purchasing an existing property management company from ReMax Realty in Invermere, B.C. Invermere is located less than 20 kilometers from Panorama Mountain Village.
Respondent states that its initial marketing plan for all areas was to market and advertise the location and then the accommodation it was renting.
Respondent further states that the property management company was acquired with the intention of establishing a rental management company that oversees, manages and rents privately owned homes and condos at Panorama Mountain Village where all condos and town homes are privately owned as fee simple interest. Respondent works with each individual property owner at Panorama who have hired it to manage their rental property just as some individual owners have hired Panorama Central Reservations to manage their individual properties. Some owners have also hired , or to manage their properties, while others have manage their properties.
Complainant does not collectively own the accommodation options available for rent in the Panorama mountain village. Each individual condo development or town home structures are managed by the owners through strata councils.
Respondent states that it developed by managing privately owned vacation homes in Invermere (aka, Invermere on the Lake) and surrounding area Fairmont, (aka, Fairmont Hot Springs), Radium (aka, Radium Hot Springs) and Panorama (aka, Panorama Resorts).
Respondent states that it currently manages approximately 85 privately owned vacation homes, condos, chalets and town homes at Panorama Mountain Village (PMV), Radium Hot Springs, Invermere on the Lake and at Fairmont Hot Springs, BC; all geographic locations dispersed within a 100 km radius of each other in the Kootenay Rockies region. Respondent has a satellite location, office, in place at Panorama Mountain Village to more efficiently handle the 37 privately owned vacation properties it rents that are located throughout Panorama Mountain Village.
Respondent further states that as stated in the press release announcing the sale of Panorama Resort from Intrawest to Complainant in February 2010, the newly formed company, Panorama Mountain Village Inc., purchased Intrawest’s ‘interests’ in Panorama Mountain Village. Interests that include the resort’s on-mountain and Nordic ski operations, a 50% ownership in Greywolf Golf Course, all of Intrawest’ s commercial operations and lodging units in the village and the land available for real estate development. Panorama Mountain Village, in its entirety, was not purchased. A geographical location, as such, cannot be purchased; for instance, the Resort Municipality of Whistler, or the City of Fernie cannot be purchased.
Respondent states that the domain name , was chosen by Respondent prior to Panorama Resort’s interest in the new name designation of Panorama Mountain Village. In essence then Respondent did not feel it necessary to request permission from Complainant’s predecessor, at that time, to register the domain name when the name was available for purchase. The owners of the Resort business did not have any interest at that time because the name of the company was Panorama and their domain name was as it remains today, .
Respondent states that that Respondent’s website “www.” to which is linked does not include listings of “... the Complainant’s PANORAMA MOUNTAIN VILLAGE properties” as alleged in the Complaint. In fact, the website “www.” contains listings of the individual owners of the Panorama Mountain Village properties who have signed agreements with Respondent to manage their Panorama Mountain Village homes. Due to the fact that the Respondent has equal rights to business at Panorama, as the Complainant, and that the Respondent registered and designated the resort location through this registry as , the Respondent has more rights to this name designation than Complainant.
Respondent further submits that with respect to Respondent’s additional registered domain names; , and ; Respondent, in good faith, promotes and sells golf at Greywolf and lift passes for the resort. Due to this fact, Respondent actively promotes golfing at Greywolf and skiing and vacationing at Panorama. Again, these domain names were available for purchase and due to Respondent’s interest in promoting and selling vacations, golf and skiing at the resort, Respondent found it prudent, and in good business practice, to acquire these names with the intention of promoting all aspects of business at Panorama. When successful, Respondent directs tourism dollars to the many businesses at the resort by sending guests to the several independently owned and operated restaurants, convenience store, retail outlets, rental shops, gift stores and to the other multitude of privately organized resort activities such as white water rafting. Respondent’s intentions are not to hinder the business of Greywolf Golf Course, or the new Panorama Mountain Village Inc., it is to assist and promote sales, in good faith.
Respondent states that it is indeed offering the goods and services at issue. The Respondent sells accommodation, lift passes, golf tee times, etc.
Respondent states that during the time that Intrawest, Complainant’s predecessor, owned the resort Intrawest and Respondent developed a good working relationship. For years Respondent has marketed the resort, has managed private homes and condominiums not in Intrawest’s rental pool of private owners, sold lift tickets and tee times to guests at the resort and to guests staying in the valley accommodations at Radium, Invermere and Fairmont.
Respondent further states that Intrawest recognized additional value from Respondent’s guests when they used the general store, ate at the many fine food establishments and shopped at the retail outlets. Respondent and Greywolf have worked together promoting the golf product at consumer trade shows.
Respondent states that to this day, it has wholesale agreements in place with Complainant and actively promotes the services the Complainant offers. Respondent further states that it provides laundry services to the resort. B.3. Registered in Bad Faith
Respondent states that the domain name , was chosen by Respondent prior to Panorama Resort’s interest in the new name designation of Panorama Mountain Village. In essence then Respondent did not feel it necessary to request permission from Complainant’s predecessor, at that time, to register the domain name when the name was available for purchase. The owners of the Resort business did not have any interest at that time because the name of the company was Panorama and their domain name was as it remains today, .
Respondent states that its website “www.highcountryproperties” to which respondent’s disputed domain name is hyperlinked does not include listings of, “... the Complainant’s PANORAMA MOUNTAIN VILLAGE properties.” In fact, the website contains listings of the individual owners of the PMV properties who have signed Agreements with Respondent to manage their Panorama Mountain Village homes. Due to the fact that Respondent has equal rights to business at Panorama, as Complainant, and that Respondent registered and designated the resort location through this registry as , the Respondent has more rights to this name designation than Complainant.
Respondent further submits that with respect to Respondent’s additional registered domain names; , and ; Respondent, in good faith, promotes and sells golf at Greywolf and lift passes for the resort. Due to this fact, Respondent actively promotes golfing at Greywolf and skiing and vacationing at Panorama. Again, these domain names were available for purchase and due to Respondent’s interest in promoting and selling vacations, golf and skiing at the resort, Respondent found it prudent, and in good business practice, to acquire these names with the intention of promoting all aspects of business at Panorama. When successful, Respondent directs tourism dollars to the many businesses at the resort by sending guests to the several independently owned and operated restaurants, convenience store, retail outlets, rental shops, gift stores and to the other multitude of privately organized resort activities such as white water rafting. Respondent’s intentions are not to hinder the business of Greywolf Golf Course, or the new Panorama Mountain Village Inc., it is to assist and promote sales, in good faith. B.4. Used In Bad Faith
Respondent states that it did not register the disputed domain names “...for the purpose of selling or otherwise transferring them to Complainant for valuable consideration in excess of its registration fees.” In actuality, in 2001 it became apparent to Respondent that Panorama Mountain Village would be a good name for the Resort and in recognizing that it would be of benefit with respect to an Internet presence and in keeping with the objective to sell and market all that the resort has to offer for all businesses to benefit.
Respondent states that at no given time was offered to Complainant for “valuable consideration in excess of its registration fees” Respondent was extremely excited about the new acquisition of the Resort business by Complainant believing that an excellent working relationship between the two companies would now ensue. This is evident in the several emails and attempts Respondent made to meet with Complainant to offer its services and have the opportunity to emphasize the great potential of working together to promote the resort and the resort activities. Complainant did not respond to this proposal. Respondent on several occasions contacted Complainant to arrange a meeting. Finally, a meeting was held to discuss the proposal for which again, it was never responded to by Complainant. As was proposed, Respondent outlined several areas where the two companies can work together including the opportunity for Complainant to have a presence in the Respondent’s downtown location at Invermere to help with an increased presence and the benefits associated with this to benefit the Complainant’s business. To date, the Complainant has not responded to Respondent’s proposal.
Respondent states it has always acted in good faith, as is evident in the first correspondence Respondent had with Complainant after the Resort was acquired by Complainant: “We are extremely excited about the ‘new Panorama’ and the bright future this changing of hands presents for the Panorama Management team and High Country Properties in establishing an effective and cohesive working relationship. HCP and Panorama have been spending far too many years working independently to ultimately achieve the very same goals. We feel that the unification of these efforts would work equally well for both entities. Joining forces would only have a positive impact with respect to the following: Reservations, Call Center, Wholesales, Sales & Marketing, Web Development, Housekeeping Services, Laundry, 24 Hour on-call Emergency Services.”
In response to Complainant’s allegation that, Respondent registered the disputed domain names to prevent Complainant from reflecting Complainant’s trademarks in a corresponding domain name, providing that Respondent has engaged in a pattern of such conduct; Respondent denies intent to disrupt Complainant’s business stating that the disputed domain name was chosen by Respondent prior to Panorama Resort’s interest in the new name designation of Panorama Mountain Village. In essence then Respondent did not feel it necessary to request permission from Complainant’s predecessor, at that time, to register the domain name when the name was available for purchase. Respondent submits that the owners of the resort business in 2001 did not have any interest at that time because the name of the company was Panorama and their domain name was as it remains today, .
With respect to the three other disputed domain names :, and ; Respondent submits that the domain names were registered in good faith as Respondent promotes and sells golf at Greywolf and lift passes for the resort. Due to this fact, Respondent actively promotes golfing at Greywolf and skiing and vacationing at Panorama. Again, these domain names were available for purchase and due to Respondent’s interest in promoting and selling vacations, golf and skiing at the resort, Respondent found it prudent, and in good business practice, to acquire these names with the intention of promoting all aspects of business at Panorama. When successful, Respondent directs tourism dollars to the many businesses at the resort by sending guests to the several independently owned and operated restaurants, convenience store, retail outlets, rental shops, gift stores and to the other multitude of privately organized resort activities such as white water rafting. Respondent’s intentions are not to hinder the business of Greywolf Golf Course, or the new Panorama Mountain Village Inc., it is to assist and promote sales, in good faith.
Respondent denies that the registration of the domain names , and are domain names to which it is not entitled. Respondent states it acquired the domain names with the intention of increasing tourism dollars and consumers to these areas. Respondent manages properties in these geographic regions. The two golf courses in Fairmont, Riverside Golf Course and Mountainside Golf Course encourage Respondent to offer guests accommodation and golf options in the area. This is true also for the Radium Springs Golf Course. These business operators recognize the importance of the business of Respondent to assist with sales. Many courses throughout the region provide Respondent with wholesale rates to assist with efforts to sell their product; as does Complainant. Respondent is provided wholesale rates by Complainant for lift ticket sales and to help promote and sell the Greywolf Golf Course and the ski resort, Respondent further states that there are similar instances at regional resort areas where businesses, other than the resort where they are located, use words in their domain names similar to the resort name. Examples include: , this domain name directs traffic to a private accommodation company at the resort. Also, , this domain name takes consumers to a private accommodator.
With respect to the allegation that Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor, Respondent states that it is a rental management company that oversees, manages and rents privately owned homes and condos at Panorama Mountain Village where all condos and town homes are privately owned as fee simple interest. Respondent works with each individual property owner at Panorama who have hired it to manage their rental property just as some individual owners have hired Panorama Central Reservations to manage their individual properties. Some owners have also hired , or to manage their properties, while others have manage their properties. Complainant does not collectively own the accommodation options available for rent in the Panorama mountain village. Each individual condo development or town home structures are managed by the owners through strata councils. Respondent submits that its interest in Panorama Mountain Village is to market and advertise the location and then the accommodation it is renting and not to disrupt the business of Complainant.
With respect to the issue that bad faith registration will be found where a respondent is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with a complainant’s mark as to source, sponsorship, affiliation, or endorsement, Respondent submits that Complainant has no trademark rights in the trademark PANORAMA MOUNTAIN VILLAGE which is generic term for an area incorporating many businesses not owned or operated by Complainant as well as many individually owned cottage, home and condominium properties. Respondent states that in actuality, the Complainant owns and operates a ‘Business’ at Panorama Mountain Village resort. The Complainant does not “own and operate Panorama Mountain Village.” The Village is made up of individual property owners and businesses that together make the business of the lift operations, golf course and other businesses in the Village highly successful.
Respondent further states that its intentions, nine years ago when was registered and still today, are to simply increase traffic to the resort for the benefit of all. An attempt to ‘confuse’ is contrary to the Respondent’s objectives.
Respondent further states that its domain name is indeed similar to the Complainant’s trademark only in that in includes the word Panorama for which the Complainant has rights, however this does not nullify the Respondent’s right to the domain name that it legally registered with good intention prior to any interest from the Complainant’s predecessor.
Respondent states that Complainant owns a business at Panorama Mountain Village, BC; just as the Respondent owns a business at the same geographical location. Both businesses have equal rights to recognize good business potential and act in good faith and all honesty to establish and maintain good businesses practices. Respondent acted in good faith to secure the domain name as a means of generating consumer recognition of the resort and promote a desire for the consumer to want to stay at the resort where they would find excellent skiing, golf, white water rafting, horse back riding, fishing tours, hiking tours, etc.; all operated by individual business owners at Panorama Mountain Village. 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:
(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.
As an initial matter, Respondent asserted that Complainant’s claims are barred by estoppel from proceeding in this matter by virtue of the acts and consents of the predecessor of Complainant. Complainant has not had an opportunity to respond to this defence. Estoppel is an equitable defence recognized in Canadian law. There are a number of forms of estoppel which may be based on actions, conduct, statement, admissions, failure to act or judgement against a person in an identical case. Frequently the person claiming estoppel relied on acts or words of another to his or her detriment. Many UDRP panels have held that the equitable doctrine of estoppels is not recognized in the UDRP Policy as a bar to asserting rights. Other panels have held that forms of estoppel should be recognized as a defence when a particularly compelling set of facts are available. Starbucks Corporation and Starbucks U.S. Brands Corporation v. Duncan Freeman,WIPO Case No. D2003-0262; The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045.
In the Response Respondent stated: “With the permission of the Predecessor of the Complainant, the Respondent Registered the domain names , , , and (the “Domain Names”)“.
In an Annex to the Response under the heading ; “ The Respondent High Country Properties / John Newton”,, Respondent stated that a number of years after Respondent registered the disputed domain names, Intrawest, Complainant’s predecessor discovered the domain names were no longer available and advised Respondent of their interest in these domain names.
Respondent stated that negotiation relating to the disputed domain names and other issues continued between Respondent and Intrawest until Intrawest sold all its interest in the resort to Complainant in February, 2010. Respondent further stated that a proposal was then given to Complainant. A meeting was held between Respondent and Complainant. Respondent states that there has been no formal reply to Respondent‘s proposal other than the commencement of this proceeding.
Complainant states in the Complaint that in response to Complainant’s requirement that the disputed domain names be transferred, Respondent indicated that it would agree to the transfers in exchange for permission to rent out Complainant’s newer properties. Respondent denies that it offered the disputed domain names to Complainant for valuable consideration in excess of their registration fees.
In the Panel’s view, this is not a case in which the equitable principle of estoppel should be considered. There are what appears to be conflicting statements by Respondent that Complainant’s predecessor permitted the Respondent to register the disputed domain names and a further statement by Respondent that a number of years after Respondent registered the disputed domain names Intrawest discovered they were no longer available. Further, Respondent has failed to show any detrimental reliance on it arising in the period between registration of the disputed domain names and the time that the Complainant’s predecessor became aware of the registration of the disputed domain names and expressed interest in them. 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 disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of Canadian Trademark Registrations for the trademarks PANORAMA, registered since April 16, 1982 based on use in Canada in relation to the services: (1) Real estate services, development, construction and management of residential and commercial structures based on use in Canada since as early as 1962; (2) Operation of a shop specializing in equipment and clothing for skiing, skating, snowmobiling, hiking, camping, fishing, horseback riding, boating, water skiing, swimming, and hand gliding, rental of equipment for skiing, skating, snowmobiling, hiking, camping, fishing, horseback riding, boating, water skiing, swimming, and hand gliding, and servicing of equipment for skiing, skating, snowmobiling, hiking, camping, fishing, horseback riding, boating, water skiing, swimming, and hand gliding; operation of a gift shop based on use in Canada since at least as early as 1967; (3) Provision of facilities for, instructions in, and rental of equipment for skiing, provision of facilities for, and rental of equipment for skating since at least as early as1962; (4) Provision of facilities for, instruction in, and rental of equipment for tennis, boating, riding and swimming since at least as early as February 15, 1982 ; PANORAMA and design, registered since April 10, 1981 in relation to substantially the same services as PANORAMA; GREYWOLF, registered since October 5, 1999 in relation to the services of operation of a golf course; the operation of a retail sporting goods store selling golf related products; the operation of a golf club resort; and in relation to the wares : Golf towels, golf balls, and golf tee markers; and GREYWOLF and design, registered since October 19, 1999 in relation to substantially the same wares and services as GREYWOLF. The registered trademarks have been in continuous use in Canada by Complainant and it’s predecessors in title in relation to the services and wares described in detail in paragraph 4 above.
Complainant’s registered trademarks PANORAMA and PANORAMA and design were registered decades prior to the date of registration of Respondent’s disputed domain names registered October 10, 2001; registered October 18, 2001; registered October 18, 2001. Complainant’s registered trademarks GREYWOLF and GREYWOLF and design were registered several years prior to Respondent’s registration of the domain name on October 18, 2001.
The disputed domain names , and incorporate the whole of the trademark PANORAMA, which is the subject of trademark registrations. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark 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. 642141, (finding confusingly similar to complainant’s AUXILIUM name and mark); MasterCard International Incorporated v. ZJ,WIPO Case No. D2007-0687 (finding confusing similarity and ordering the transfer of the domain to complainant).
The disputed domain name incorporates the whole of the GREYWOLF trademark registration. Under the circumstances, Respondent cannot avoid confusing similarity, as it has misappropriated the entirety of the GREYWOLF trademark. Many UDRP panels have found that a finding that a domain name incorporates the whole of a complainant’s mark supports a finding of confusing similarity. A respondent may not avoid confusion by appropriating another’s entire mark in a domain name (Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313).
The fact that the disputed domain names , , and include the non-distinctive elements “mountain”, “village”, “ski”, “vacations” and “golf’, respectively, does nothing to diminish confusing similarity. Despite these additions, these domain names remain very similar to the PANORAMA and GREYWOLF trademarks in appearance, sound and in the ideas suggested. The addition of descriptive or non-distinctive terms to a domain name does not militate against a finding of confusing similarity (Sutton Group Financial Services Ltd. v. GeorgeG o/a George Georgopoulos,WIPO Case No. D2004-0335; Research In Motion Limited v. Louis Espinoza,WIPO Case No. D2008-0759; Research In Motion Limited v. J,WIPO Case No. D2008-0758). Confusing similarity is enhanced by the addition of these non-distinctive terms. Complainant offers real estate, development, management of residential and commercial structures, ski, vacation and golf services, thereby only enhancing the likelihood that consumers would be confused. Therefore, the addition of these terms only further suggests that the disputed domain names resolve to websites operated by, or otherwise connected to Complainant.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. Previous 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 S. Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark 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 disputed domain names , , and are confusingly similar to Complainant’s registered trademarks for or including PANORAMA. The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademarks for or including GREYWOLF.
Noting the Panel’s aforementioned finding under the first element in relation to the registered trademark PANORAMA and the disputed domain names which incorporate PANORAMA, the Panel nonetheless turns to Complainant’s arguments regarding its assertion of common law trademark rights in PANORAMA MOUNTAIN VILLAGE.
Complainant asserts that it is owner of a common law trademark PANORAMA MOUNTAIN VILLAGE based on extensive and continuous use of the trademark by Complainant and its predecessors over decades.
The Policy recognizes that a complainant may successfully assert common law or unregistered trademark rights. Common law rights are reviewed in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The Overview indicates that previous panels have held that in order to establish common law rights a complainant must show that the mark has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” may include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Prior UDRP panels have found that common law trade marks in which a complainant can establish a reputation and goodwill will support rights in the trade mark in question for the purposes of paragraph 4(a) of the Policy. See, First National Telecom Services Limited .v. Richard Gibbs,WIPO Case No. D2004-0363, the panel stated that “[t]he Complainant who can establish that he has a goodwill and reputation in a mark protectable by way of passing off action has ‘rights’ in the trade mark or service mark in question for the purposes of paragraph 4(a) of the Policy”.
Complainants has not filed evidence showing the length of time PANORAMA MOUNTAIN VILLAGE has been in use, advertising figures and samples of advertising, names of publications in which the advertising appeared, or consumer surveys and media recognition to support a finding of secondary meaning. Complainant filed as an exhibit, copies of pages which appears on Complainant’s website “www.” in October, 2010. The pages bear the heading PANORAMA MOUNTAIN VALLEY and describe Complainant’s location, facilities and services relating to destination skiing, golf and other outdoor sports in detail. The relevant date for establishing common law rights in the trademark PANORAMA MOUNTAIN VILLAGE should in the view of this Panel preferably be prior to the Respondent’s registration of the disputed domain name on October 10, 2001.
Respondent contends that neither Complainant nor its predecessors ever used the term ‘”Panorama Mountain Village” as a trademark. Their use of the term was as a geographic location and most recently as a trade name. Respondent states in its Response that the domain name was chosen by Respondent prior to Complainant’s predecessor’s interest in the new name designation of Panorama Mountain Village. Respondent contends that Complainant’s predecessor did not have any interest in the term at that time because the name of the company was Panorama and their URL was “www.” which it is today.
The Panel conducted a limited search on the Internet Archive Wayback Machine for and found achieved results as early as February 19, 1999 showing use of the trademark PANORAMA MOUNTAIN VILLAGE by Complainant’s predecessor including links to: alpine/downhill trail map, nordic trail map, lift rates, package rates and lodging information, ski package deals, winter activities and services, real estate, summer, Greywolf Golf, etc. The words PANORAMA MOUNTAIN VILLAGE appeared against a photo of the top of a mountain with the words MOUNTAIN and VILLAGE appearing in prominent but smaller type below the word PANORAMA.
The Panel finds that Complainant’s predecessor appears to have used PANORAMA MOUNTAIN VILLAGE as a trademark several years prior to the registration of the disputed domain name by Respondent in October 2001.
In any case, it is unnecessary for the Panel to find whether Complainant has adduced sufficient evidence to establish common law trademark rights in the trademark PANORAMA MOUNTAIN VILLAGE prior to Respondent’s registration of the disputed domain name on October 10, 2001 given the Panel’s finding in connection to the registered trademark PANORAMA and the applicable domain names. 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 disputed domain name.
Respondent is a rental management company located in Invermere B.C. 18 km from Complainant’s Panorama destination resort.
Complainant contends that Respondent is using the disputed domain name which Respondent, hyperlinks its to its web site located at “www.”, which features rental listings of direct competitors of Complainant. Respondent’s website also promotes golf courses that compete directly with Complainant’s GREYWOLF golf course. Respondent’s other three disputed domain names are inactive. Complainant further contends that, the website does not accurately disclose the relationship between the parties.
Complainant contends that there is no evidence to suggest that Respondent has been commonly known by the disputed domain names, or that Respondent is making, or intends to make, a legitimate non-commercial or fair use of the disputed domain names.
Complainant contends there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, the disputed domain names, or names corresponding to same, in connection with a bona fide offering of goods or services.
Complainant relies on the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which found that bona fide use of a trademark may occur under the following circumstances: (i) the respondent must actually be offering the goods or services at issue, (ii) the respondent must use the site to sell only the trademarked goods, (iii) the site must accurately disclose the registrant’s relationship with the trademark owner, and (iv) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The Panel finds that on balance Complainant has made at least a prima facie case that Respondent has no rights to and legitimate interests in the disputed domain names.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name.
A respondent is entitled to avail itself of the benefits of paragraph 4(c) of the Policy to demonstrate its rights and interests in the disputed domain name in responding to the Complaint.
Respondent’s position is that it currently manages the 37 privately owned vacation properties it rents that are located throughout Panorama Mountain Village. Respondent has a satellite location, office, in place at Panorama Mountain Village to more efficiently manage the 37 homes. Respondent currently manages approximately 85 privately owned vacation homes, condos, chalets and town homes at Panorama Mountain Village (PMV), Radium Hot Springs, Invermere on the Lake and at Fairmont Hot Springs, BC; all geographic locations dispersed within a 100 km radius of each other in the Kootenay Rockies region.
Respondent contends that its marketing plan is to market and advertise the location and then the accommodation it is renting.
Respondent contends that it is indeed offering the goods and services at issue. The Respondent sells accommodation, lift passes, golf tee times, etc.
Respondent contends that during the time that Intrawest, Complainant’s predecessor, owned the resort Intrawest and Respondent developed a good working relationship. For years Respondent has marketed the resort, has managed private homes and condominiums not in Intrawest’s rental pool of private owners, sold lift tickets and tee times to guests at the resort and to guests staying in the valley accommodations at Radium, Invermere and Fairmont.
Respondent contends that Intrawest recognized additional value from Respondent’s guests when they used the general store, ate at the many fine food establishments and shopped at the retail outlets. Respondent and Greywolf have worked together promoting the golf product at consumer trade shows.
Respondent states that to this day, it has wholesale agreements in place with Complainant and actively promotes the services the Complainant offers. Respondent further states that it provides laundry services to the resort.
Does Respondent have bona fide rights or legitimate interests to use the disputed domain name which is confusingly similar to Complainant’s trademark for or including PANORAMA which is hyperlinked to Respondent’s website “www.” when the latter website includes information about competing ski and golf courses in the Kootenay Rockies region? Respondent’s website also includes information about and access to Respondent’s rental properties at competing resorts?
In Oki Data America, Inc .v. ASD, Inc., WIPO Case No. D2001-0903, the panel found a minimum list of requirements needed to support a finding of “bona fide” use.
One of the requirements is that “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and the switch them to other goods. Nikon, Inc. and Nikon Corporation v. Tecknilab,WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use: Kanao v. J.W.Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).”
Respondent by using the disputed domain name will attract Internet users who are interested in some aspect of the wide variety of services listed in Complainants trademark registration for PANORAMA which are provided by Complainant at Panorama Mountain Village. The Internet user is hyperlinked to Respondents website “www.” where the visitor will be shown vacation rental properties at Fairmont Hot Springs, Fernie, Golden, Invermere/Windermere, Kimberly, Panorama and Radium Hot Springs; ski packages at Panorama, Valley ski and soak, Fernie ski packages, Kicking Horse ski packages: Golf packages; Columbia Valley Golf Guide; Vacation home locations, Fairmont Hot Springs, Fernie Alpine Resort, Golden/ Kicking Horse Resort, Invermere/Windermere, Kimberly Alpine Resort, Panorama Mountain Village, Radium Hot Springs; Valley events calendar, Invermere on the Lake, Panorama Mountain Village, Fairmont Hot Springs, Radium & North, Windermere; Booking Info; etc. The Panel finds that the use of the disputed domain name inter alia to promote Complainants competitors’ resorts facilities and services is not a bona fide use of the disputed domain name.
Respondent contends that the term “Panorama Mountain Village” is a generic and geographical term describing the area in and around the location of Complainant’s facilities which it is entitled to use as a domain name. However the website “www.” shows that the domain name is being used in relation to a broad range of services offered by Complainant and its competitors throughout the Kootenay Rockies region. The website is also used by Respondent to show by location the 85 or so privately owned vacation homes, condos, chalet and town homes which it manages throughout the Kootenak Rockies region. The evidence shows that the disputed domain name is not being restricted to use in a generic or geographical context.
The Panel finds that Respondent has not shown use of the disputed domain name in good faith under paragraph 4(c) of the Policy.
Complainant contends that the disputed domain names , and were not in use when the Complaint was filed. Respondent did not deny this contention. Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the three disputed domain names. Respondent has not demonstrated its rights and legitimate interests in the three disputed domain names , and under paragraph 4(c)(i) (ii) or (iii) of the Policy through use or contemplated use.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has no rights or legitimate interests in respect of the domain names , and . C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and are being used in bad faith. C.1 Registered in Bad Faith
Considering Respondent’s arguments regarding estoppel, and noting again the aforementioned discussion regarding the contradictory and unpersuasive nature thereof, including its failure to establish detrimental reliance and produce satisfactory evidence of the alleged agreement on the part of Complainant’s predecessor regarding Respondent’s registration of the disputed domain names, the Panel proposes to turn to the assessment of where the disputed domain names were registered in bad faith on the basis of the credible and persuasive evidence before it.
The trademark PANORAMA was registered in Canada on April 16, 1982 in relation to a substantial list of services related to building and operating a major destination type ski resort. Complainant and its predecessors have used the trademark in association with its PANORAMA ski resort since 1962. Respondent’s evidence is that one of its officers was an employee of Panorama Resort in 1984. Respondent has also alleged that it registered the disputed domain names with the permission of the predecessor of Complainant. Respondent is located at Invermere B.C. 18 km from Complainant’s PANORAMA resort. Respondent registered the disputed domain names in which PANORAMA is the distinctive element with knowledge of Complainants trademark rights in PANORAMA.
Complainant opened its GREYWOLF golf course in 1999 and registered the trademark GREYWOLF in the same year. Respondent’s evidence is that one of its officers was an original member of the GREYWOLF golf club. Respondent which is located about 18 km. from the GREYWOLF golf course registered the disputed domain name in October 2001 with knowledge of Complainant’s trademark rights in GREYWOLF in association with the services of operation of a golf course.
Respondent has failed to produce persuasive evidence that registration of the disputed domain names were made “ With the permission of” Complainant’s predecessor, including contractual agreements or otherwise. Respondent’s contradictory statement: “A number of years after HCP registered the Domain Names, Intrawest discovered they were no longer available” supports an inference that Respondent registered the disputed domain names without the knowledge or permission of Complainant’s predcessor Intrawest. (Notably, Respondent’s assertion of Intrawests permission to register the disputed domain names only highlights Respondent’s recognition that such agreement with the relevant trademark owner may have been advisable before registering the disputed domain names, had this been bilaterally agreed-to). Respondent and Intrawest and more recently Complainant have continued discussions concerning transfer of the disputed domain names after Intrawest became aware of Respondent’s registration of the disputed domain names. It would appear from a balance of the probability that at the time of registration of the disputed domain names Respondent was intending to trade off the trademark value of the disputed domain names in bad faith to increase its business, which included promoting the business of Complainant’s (or Complainant’s predecessor’s) competitors, as the case may be.
The Panel finds that the disputed domain names were registered in bad faith. C.2. Domain Name Used in Bad Faith
Respondent has registered the disputed domain names , and , in order to prevent Complainant the owner of the registered trademarks PANORAMA AND GREYWOLF from reflecting the trademarks in corresponding domain names. Respondent has engaged in a pattern of registering domain names that contain trademarks to which it is not entitled. Respondent appears to have registered seven domain names to which it is not entitled: , , see Canadian Trademark Registration No.TMA741046 the trademark FAIRMONT registered for the services: operation of a resort hotel; , see, Canadian Trademark Registration No. TMA569583 registered in relation to a long list of wares and services including: operation of a resort, golf club; ; ; see Complainant’s Canadian Trademark Registrations for PANORAMA in Section 4 above; and . See Complainant’s Canadian Trademark Registrations for GREYWOLF in Section 4 above.
Previous UDRP panels have found that multiple domain names incorporating the trademark of a single trademark owner constitutes a pattern of intentionally obstructive registrations (Time Warner Entertainment, L.P. v. HarperStephens,WIPO Case No. D2000-1254; Revlon Consumer Products Corporation v. Domain Manager, Page Up Communications,WIPO Case No. D2003-0602). Repeated registrations of trademarks of third parties by a registrant result in a presumption that a disputed domain name registration was performed in bad faith (Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela,WIPO Case No. D2005-0786).
Respondent has registered multiple domain names incorporating Complainant’s registered trademark PANORAMA which shows a pattern of conduct. Intent may be inferred from a pattern of conduct.
The Panel finds that Complainant has proven that Respondent has acted in bad faith as set out in paragraph 4(b)(ii) of the Policy.
Respondent by using the disputed domain name will attract Internet users who are interested in some aspect of the wide variety of services listed in Complainants trademark registration for PANORAMA which are provided by Complainant at Panorama Mountain Village. The Internet user clicking on the disputed domain name is hyperlinked to Respondent’s website “www.” where the visitor will be shown vacation rental properties at Fairmont Hot Springs, Fernie, Golden, Invermere/Windermere, Kimberly, Panorama and Radium hot Springs; ski packages at Panorama, Valley ski and soak, Fernie ski packages, Kicking Horse ski packages; Golf packages; Columbia Valley Golf Guide; Vacation home locations, Fairmont Hot Springs, Fernie Alpine Resort, Golden/ Kicking Horse Resort, Invermere/Windermere, Kimberly Alpine Resort, Panorama Mountain Village, Radium Hot Springs; Valley events calendar, Invermere on the Lake, Panorama Mountain Village, Fairmont Hot Springs, Radium & North, Windermere; Booking Info; etc. By use of the disputed domain name to promote Complainant’s competitors resorts, facilities and services Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the web site by creating a likelihood of confusion with Complainant’s PANORAMA trademark as to source, sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent’s three inactive disputed domain names incorporate the whole of the PANORAMA or GREYWOLF trademarks. As well, the non-distinctive terms in these domain names reinforce a connection between the domain names and Complainant. The domain names, if ever put to use, would likely result in potential consumers being confused or misled into believing that Respondent is somehow affiliated with, or endorsed by Complainant - particularly if Respondent used these domain names as it uses .
It is not necessary for a disputed domain name to be associated with an active website for a finding to be made under paragraph 4(b)(iv). Panels have held that this bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion (CBS Broadcasting, Inc. v. LA-Twilight-Zone,WIPO Case No. D2000-0397; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Hewlett-Packard Company v Marcel Wieland, NAF, Case No. FA95852).
The Panel finds that Complainant has proven that Respondent is using the disputed domain names in bad faith as set out in paragraphs 4(b)(ii) and (iv) of the Policy. 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:January 7, 2011
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