Complainant is Doug Gilmour of Toronto, Ontario, Canada represented by Neufeld Legal P.C., Canada.
Respondent is Matt Parsa of Toronto, Ontario, Canada represented by Law Office of Rocco Achampong, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 10, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 10, 2011, GoD, Inc. 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 October 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2011. The Response was filed with the Center on November 2, 2011.
The Center appointed Ross Carson as the sole panelist in this matter on November 23, 2011. 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 has been involved in ice hockey in Canada and the United States of America (“U.S.”) as a hockey player, coach and executive since the 1970’s. Ice hockey games are an important part of the entertainment industry in Canada whether offered live or broadcast over television or radio. Complainant was an outstanding entertainer in the ice hockey field for over thirty years and has made his name Doug Gilmour well known throughout Canada in association with ice hockey.
As an amateur ice hockey player, Complainant was one of the top players on a team which won the Memorial Cup awarded to the Junior (composed of players of 20 years of age and younger) team which was victorious following a national playoff of Junior teams representing the Junior Leagues from across Canada. Complainant played professional ice hockey primarily in the National Hockey League (the “NHL”) from 1983 to 2003 with teams in St. Louis, Calgary, Toronto, New Jersey, Chicago, Buffalo and Montreal. Complainant served as Captain of Calgary, Toronto and Chicago. While Complainant was a top player for the Calgary team, the team won the Stanley Cup, which is awarded annually to the ice hockey team which wins the NHL playoffs. Complainant was inducted into the Hockey Hall of Fame in 2011, an honor reserved for a very select and limited number of individuals who have made outstanding contributions to the game of ice hockey.
As a result of his outstanding and long career in the field of ice hockey Complainant’s name Doug Gilmour is well known throughout Canada as representing excellence in the realm of sports entertainment.
Complainant does not have a registered trademark for the name DOUG GILMOUR in relation to any goods or services but claims common law rights in the name DOUG GILMOUR in relation to entertainment services.
The disputed domain name was registered on May 29, 2002. 5. Parties’ Contentions A. Complainant
A.1. Identical or Confusingly Similar
Complainant submits that he has common law trademark rights in his name, as he is a well-known professional hockey player, having had an illustrious professional hockey career: having played for 7 National Hockey League (NHL) clubs: St. Louis Blues, Calgary Flames, Toronto Maple Leafs, New Jersey Devils, Chicago Blackhawks, Buffalo Sabers and Montreal Canadiens; serving as captain for Calgary, Toronto and Chicago; winning the Stanley Cup with the Calgary Flames in 1989 and the Frank J. Selke Trophy as the NHL's best defensive forward while with the Toronto Maple Leafs in 1993 and being elected to NHL’s Hockey Hall of Fame. See, Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210, (finding that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also Mick Jagger v. Denny Hammerton, NAF Claim No. 95261 (Complainant held common law trademark rights in his famous name “Mick Jagger”); and Michael Andretti v. Alberta Hot Rods, NAF Claim No. 99084 (Complainant held common law trademark in his famous professional sports name “Michael Andretti”).
Complainant further submits that as the disputed domain name uses Complainant’s name in its entirety; the disputed domain name is identical to Complainant’s name. See Dr. Karl Albrecht v. |Eric Natale, NAF Claim No. 95465 (finding respondent’s domain name, , identical to complainant’s common law mark); see also Victoria’s Secret et al v. Sherry Hardin, NAF Claim No. 96694 (finding that the domain name is identical to complainant’s BODY BY VICTORIA mark) and John Tesh v. Payphone Search LLC,WIPO Case No. D2005-0894 (finding that domain name is identical to complainant’s common law mark and that his fame could be easily adduced).
A.2. No Rights or Legitimate Interests in respect of the Disputed Domain Name
Complainant states that providing that it makes a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, Respondent must come forward with evidence tending to show a right or legitimate interest in the disputed domain name. See H.J.M. De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan,WIPO Case No. D2004-0174; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Complainant further states that Respondent has no rights or legitimate interests in the disputed domain name . The disputed domain name is being utilized for purposes of a website that only provides information and images of Complainant without any permission or rights having been granted by Complainant or third parties who have legitimate interests in the subject images (i.e., the images on the website are the copyright property of the NHL and have been presumably utilized without the permission or licensing of the NHL). Respondent cannot demonstrate that he is commonly known by the name Doug Gilmour or the disputed domain name to satisfy paragraph 4(c)(ii) of the Policy, and does not justify use of Complainant’s name DOUG GILMOUR. See, Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020 (finding no rights or legitimate interest where respondent was not commonly known by the mark or never applied for a license or permission from complainant to use the trademarked name). Respondent’s own website specifically states that he has no authority, endorsement or affiliation with Doug Gilmour.
Complainant submits that the disputed domain name and website is being utilized as a web portal for a commercial enterprise between Respondent and his business partner S. Fanous, who are generating revenue via their portaled website “”. As such, Respondent’s use of the disputed domain name and its portal process is being operated for purposes that do not offer any bona fide authorized goods or services. See, Big Dog Holdings, Inc. dba Big Dog Sportswear v. Red River Farms, Inc., NAF Claim No. 93554 (finding no legitimate use when respondent was diverting consumers to its own website by using complainant’s trademarks); see also Vapor Blast Mfg. Co. v. R & S Technologies, Inc., NAF Claim No. 96577 (finding that respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Complainant further submits that Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name pursuant to Policy 4(c)(iii). Respondent uses the disputed domain name as a way to confuse Internet users into believing that they are accessing a site that is either sponsored or affiliated with Complainant (with a cursory disclaimer at the bottom of Respondent’s web pages, which cannot relieve Respondent of the impact of the preponderance of the web page and the choice of domain name). Thereupon, the domain name is used as a portal to the commercial website “”, which is owned by S. Fanous). See, S.M.S.I., Inc. v. American Computer Company, NAF Claim No. 94644 (finding no legitimate interests when respondent used complainant’s name as a portal to a web site which, without permission, associated the complainant as an endorser of respondent’s causes); see also AltaVista Company v. Andrew Krotov,WIPO Case No. D2000-0109 (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name). As was the situation in the above referenced ruling of John Tesh v. Payphone Search LLC, discussed supra.
Complainant further submits that Respondent seeks to attract Complainant’s fans, and consumers who are seeking information about Complainant, and then refer them to “sponsored” links from which Respondent collects a fee. Such a parasitic use of Complainant’s name, while undoubtedly commercial, is not bona fide under the Policy. See Helen Folsade Adu known as SADE v. Quantum Computer Services Inc,WIPO Case No. D2000-0794.
A.3. Registration in Bad Faith
Complainant submits that Respondent registered the disputed domain name with full knowledge of Complainant’s name and reputation to attract Internet viewers to the website associated with the disputed domain name for Respondent’s profit without Complainant’s knowledge or permission. See, Dr. Karl Albrecht v. Eric Natale NAF Claim No. 95465 (The respondent intentionally registered a domain name that uses the complainant’s name. “There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith.”).
A.4. Use in Bad Faith
Complainant states that Respondent is using the disputed domain name in bad faith as set forth in paragraph 4(b)(i) and 4(b)(iv) of the Policy.
Complainant submits that, as set forth in paragraph 4(b)(i) of the Policy, Respondent has demanded substantial money for the transfer of the disputed domain name , even though Respondent claims to be a “fan” of the Complainant and refused to accept the more reasonable offers of the Complainant and his representatives.
Complainant further submits that as set forth in paragraph 4(b)(iv) of the Policy Respondent uses the disputed domain name as a way to confuse Internet users into believing that they are accessing a site that is either sponsored or affiliated with Complainant (with a cursory disclaimer at the bottom of Respondent’s web pages, which cannot relieve Respondent of the impact of the preponderance of the web page and the choice of the disputed domain name). Complainant further states that, the disputed domain name is used as a portal to the commercial website “”, which is owned by Complainant’s partner S. Fanous). See, S.M.S.I., Inc. v. American Computer Company, NAF Claim No. 94644 (finding no legitimate interests when respondent used complainant’s name as a portal to a web site which, without permission, associated the complainant as an endorser of respondent’s causes); see also AltaVista Company v. Andrew Krotov,WIPO Case No. D2000-1091 (finding that use of the domain name to direct Internet users to other unconnected websites does not constitute a legitimate interest in the domain name). As was the situation in the above referenced ruling of John Tesh v. Payphone Search LLC; see also Vapor Blast Mfg. Co. v. R & S Technologies, Inc., NAF Claim No. 96577 (finding that respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Furthermore, Respondent’s inclusion of copyrighted images on the website of the disputed domain name, portrays a negative image of Complainant with respect to copyright law, as the perception is created that Complainant is a party to this illegality. Complainant respects copyright laws and has an excellent reputation with the NHL, and does not wish to be connected or otherwise associated with the form of copyright infringement that is being undertaken by Respondent. As such, Respondent is hurting Complainant’s good name which Complainant has invested a lifetime of hard work to establish and from which he has been precluded from protecting in light of Respondent’s retention of the disputed domain name, with which he is presently impugning the reputation and good name of Complainant and through which Respondent can further utilize as a medium to continue to tarnish the reputation and good name of Complainant, and in ways that have yet to be discerned. B. Respondent
B.1. Identical or Confusingly Similar
Respondent states that as a foundational submission, issue is taken with Complainant’s assertion of trademark rights in his name and affiliation to various profession hockey clubs that form a part of a league of teams collectively known as the NHL. At all points in time, since the registration of the disputed domain name in May 2002, Complainant’s image and likeness have always been as a member of a team or in the play of the hockey sport as a member of those teams. It is the Respondent’s respectful submission that the right so complained of and said to be infringed is rightly those of the NHL, if any, and that can be said to be infringed.
Respondent states in the alternative that should the Panel find as a threshold property law question whether or not a trademark is properly attributable to Complainant as a former hockey player and player property of various NHL teams over the years, it is our respectful submission that Respondent’s service mark does not infringe the common law rights of Complainant.
On the strict issue of identical and/or confusingly similar, appreciating the very low threshold to satisfy this prong of the discernible test from various decisions, it is Respondent’s submission that it can be so construed, save and except the technical fact of the top suffix “.com” as distinct from “.ca.” Furthermore, to the extent that a fan appreciation website must necessarily incorporate the name of the adored personality and a common law trademark is found, it is conceded that an identical or confusingly similar claim can be made.
B.2. No Rights or Legitimate Interests in respect of the Domain Name
Respondent states that he was a child of Iranian immigrants when they arrived in Canada in 1989. At that time, Complainant was a member of the Calgary Flames organization, a team in the NHL. Respondent maintains that after watching Complainant score the winning goal in a deciding championship game in 1989, he became his “biggest fan”. Since 1989, Respondent has amassed a collection of memorabilia, paraphernalia, and other items that would reasonably establish his bona fide and genuine appreciation of Complainant as his favorite hockey player. Respondent states he has a bona fide and genuine appreciation for the sport of hockey and for his favorite former NHL player, Complainant. As such, Respondent has a legitimate interest in his favorite player and has sought to disseminate information about Complainant through a fan appreciation site “www.”.
Respondent further states that the fan page was registered in May 2002. It would appear Complainant, or his agent, registered his official website “” on February 16, 2010. Thus, for eight (8) years, Respondent was continuously and clearly using his website as a fan appreciation page, long before Complainant thought to register an “official website”, and long before any dispute or assertion of trademark infringement, common law or otherwise.
Respondent states that he has not registered any other domain names using Complainant’s name, and has not “cybersquatted” on Complainant’s name using any other top suffix. Respondent submits that Complainant has registered a commercially exploitative domain name , no longer plays hockey, and is said to be involved in the financial services as an ongoing career.
Respondent further submits that the NHL encourages and Canada permits, nay, guarantees the rights and freedoms to lawful activities that can be said to express one’s interests. Respondent’s interest has only been as a fan to Complainant and his career as a hockey player, and not in Complainant himself as an individual, or in his ongoing career in financial services. Again, and based on the above submissions, it is respectfully submitted that Respondent has the right to be a fan and to appreciate Complainant in any non-commercially exploitative way, and to lawfully register his appreciation to the world. Respondent states he has a right and a legitimate interest in the disputed domain name .
B.3. Registration in Bad Faith
Respondent admits that he knew of Complainant’s name and career before registration of the disputed domain name but submits that registration of the disputed domain name was in good faith for the reasons stated in Sections 2.B.1 and 2.B.2 immediately above.
B.4. Used In Bad Faith
Respondent submits that his May 2002 registration of the disputed domain name was in good faith. Respondent states that he continues to bear the costs of registration, design, and content maintenance on the website and provides only the service of disseminating information about Complainant in respect of his role as a former hockey player on a no fee basis.
Respondent further submits that the website “www.” has been in clear and continuous use for nine (9) years, and is sometimes referred to by persons close to him as the “biggest fan” of Complainant during his career post-1989. At no point in time, during the nine years of continuous use of the disputed domain name , has Respondent attempted to sell, transfer, or otherwise gain from his registration of the disputed domain name.
Respondent further states that he does not have rights and is not the registrant of any other domain name using Complainant’s name, and has not obstructed Complainant in acquiring any other domain name with other top suffixes. In fact, Complainant seems to have an interest in “”, and exclaims it as the “official” website. On the other hand, Respondent has continued to maintain since his fan page inception in May 2002 that his site is for fan appreciation only and is not official, authorized, or endorsed by the Complainant.
Respondent repeats that he has borne all out of pocket expenses in respect of his fan appreciation page on a no fee basis, and provides no good or service for a fee. Respondent concludes that, based on the foregoing, that bad faith cannot be found and that Respondent registered the disputed domain name in good faith.
B.5. Reverse Domain Hijacking
Respondent alleges that Complainant registered his own domain name in February 2010 with a commercially exploitative component. Respondent submits that there may exist a reverse hijacking motive for Complainant commencing this proceeding. 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 and 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 the disputed domain name should be cancelled or transferred:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant does not own a registered trademark for his personal name Doug Gilmour. Complainant contends that he is the owner of a common law trademark for his personal name DOUG GILMOUR which has been extensively used by Complainant and the media in North America to distinguish ice hockey entertainment involving Complainant for thirty years. A summary of Complainant’s involvement in ice hockey entertainment is described in Section 4 above.
The WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) at paragraph 1.6 includes the following:
“While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required […] A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.
See Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235. See also Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598, (where the panel found: “Complainant has evidence that he has spent 17 years as the quarterback for the Miami Dolphins, has been a sports commentator, has acted in movies and has been recognized for community service. Complainant’s evidence is sufficient for the Sole Panelist to conclude that the name ‘Dan Marino’ has acquired sufficient secondary meaning within the American sports, entertainment and public service communities to constitute a valid common law trademark.”
The consensus view of the proof that a complainant must advance to establish common law or unregistered trademark rights is summarized in paragraph 1.7 of the WIPO Overview, 2.0 as follows: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”
Complainant’s personal name DOUG GILMOUR and images of Complainant, in his various capacities associated with sports entertainment, have appeared in media interviews and hockey performances widely shown for several decades on television, in videos and reported in the print media throughout North America and other countries where ice hockey is followed.
Respondent contends that rights in Complainant’s personal name are the property of the hockey teams that employed Complainant in his various capacities over the years. Respondent did not submit any evidence or authorities to support this contention and in the absence of evidence and authorities the Panel rejects this contention.
The Panel finds that Complainant has established secondary meaning in his personal name DOUG GILMOUR in relation to ice hockey entertainment.
The disputed domain name uses Complainant’s personal name in its entirety and is confusingly similar thereto. See Dr. Karl Albrecht v. Eric Natale, NAF Claim No. 95465 (finding respondent’s domain name, , identical to complainant’s common law mark); see also John Tesh v. Payphone Search LLC,WIPO Case No. D2005-0894 (finding that domain name is identical to complainant’s common law mark and that his fame could be easily adduced).
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. 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 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 the disputed domain name is identical to Complainant’s trademark DOUG GILMOUR in which Complainant has established secondary meaning in relation to ice hockey entertainment services. 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 not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademark DOUG GILMOUR.
Respondent has not demonstrated that he is commonly known by the name Doug Gilmour or the disputed domain name to satisfy paragraph 4(c)(ii) of the Policy, and does not justify use of Complainant’s name DOUG GILMOUR. See, Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020 (finding no rights or legitimate interest where respondent was not commonly known by the mark or never applied for a license or permission from complainant to use the trademarked name).
Respondent contends that he has been a fan of Complainant since 1989 and registered the disputed domain name for use as a fan site to share his appreciation of Complainant’s talents in a non-commercially exploitive way and to lawfully register his appreciation to the world.
The disputed domain name and website is being utilized as a web portal for a commercial enterprise between Respondent and his business partner S. Fanous, both of whom are generating revenue via their portaled website “”. As such, Respondent’s use of the disputed domain name and its portal process is being operated for purposes that do not offer any bona fide authorized goods or services. See, Big Dog Holdings, Inc. d/b/a Big Dog Sportswear v Red River Farms, Inc., NAF Claim No. 93554 (finding no legitimate use when respondent was diverting consumers to its own website by using complainant’s trademarks); see also Vapor Blast Mfg. Co. v. R & S Technologies, Inc., NAF Claim No. 96577 (finding that respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
When the disputed domain name is searched on Google, the heading “Doug Gilmour/Toronto Maple Leafs/Video and Pictures” appears on GOOGLE. Clicking on the website links the viewer to a webpage featuring a banner with the disputed domain name in the middle with a photograph of Complainant in a Toronto Maple Leafs’ sweater on the left and a headshot of Complainant wearing a hockey helmet on the right. Below the ribbon are a series of headings such as “VIDEOS” in dark print with “Gilmour Videos” below. Clicking on the video link brings up the webpage “” which includes links which lead to hundreds of commercial links. Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name pursuant to Policy 4(c)(iii). Respondent uses the disputed domain name as a way to confuse Internet users into believing that they are accessing a site that is either sponsored or affiliated with Complainant (with a cursory disclaimer at the bottom of Respondent’s web pages, which cannot relieve Respondent of the impact of the preponderance of the web page and the choice of the disputed domain name). See, S.M.S.I., Inc. v. American Computer Company, NAF Claim No. 94644 (finding no legitimate interests when respondent used complainant’s name as a portal to a website which, without permission, associated the complainant as an endorser of respondent’s causes); see also AltaVista Company v. Andrew Krotov,WIPO Case No. D2000-1091 (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name). As was the situation in the above referenced ruling of John Tesh v. Payphone Search LLC, supra.
The Panel viewed the Internet Archive Wayback Machine site to determine if any previous webpages associated with the disputed domain name were located on the site. The Internet Archive Wayback machine disclosed many webpages associated with the disputed domain name . The Internet page for “www.” for September 27, 2003, as did other web pages disclose the heading “Buy Sports Merchandise at Doug G”. Below the heading was a list of goods. Other headings featured additional goods for sale at the website associated with the disputed domain name.
The Panel finds that the website associated with the disputed domain name has been used to sell goods and to divert Internet users familiar with Complainant’s trademarks to other websites for pay-per-click income for Respondent.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. 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 used in bad faith. C. 1. Registered in Bad Faith
Respondent has been aware of Complainant’s reputation as one of the leading ice hockey players in North America since 1989. Respondent registered the disputed domain name which incorporates Complainant’s name and used the disputed domain name as early as 2003 to derive income from the disputed domain name.
The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that the following circumstances, in particular but without limitation shall be evidence of the registration and use of the domain name in bad faith: “you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name[.]”
Complainant alleged that Respondent offered to sell the disputed domain name to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket expenses directly related to the disputed domain name. Respondent denies that he attempted to sell, transfer, or otherwise gain from his registration of the disputed domain name. Complainant did not submit any correspondence or affidavit evidence showing facts supporting the allegation under paragraph 4(b)(i) of the Policy.
The Panel finds that Complainant has failed to establish that Respondent is using the disputed domain name in bad faith under paragraph 4(b)(i) of the Policy.
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpage associated with the disputed domain name includes links to entities providing products and services for sale either by Respondent or third parties as set out in Section 6.B. above. Respondent’s use of the disputed domain name enables Respondent to draw Internet users to its website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers that Respondent is receiving profit on sales of goods by Respondent and click-through-profits from third party links found on the webpages associated with the disputed domain name. Respondent is acting in bad faith when Respondent intentionally attempts to attract visitors to “www.doudg” for commerce when Doug Gilmour has no connection with the vendors or Respondent. See, Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598. Further, “If the links are based on the trade mark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cyber squatting”. W. K. Kellogg Foundation v. Domain Admin / Trade Out Investments Ltd,WIPO Case No. D2011-1613. See also Champagne Lanson v. Development Services / MailP, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name).
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. 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. Limited,WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151.
In view of the Panel’s finding that Complainant has proven each of the three elements set forth in paragraph 4(a) of the Policy the allegation of Reverse Domain Name Hijacking is dismissed. E. Additional Matters
Reference is made in the Complaint and in the Response to copyright in material appearing on the webpages associated with the disputed domain name. The Panel finds that there was insufficient evidence to decide the alleged tarnishment issue, and to the extent relevant, any issues related to copyrights as such would generally be beyond the jurisdiction of a panel appointed under the Policy. F. Delay
Respondent contends that: “The domain name has been in clear and continuous use by Respondent for over eight (8) years, and at no point during those 8 years has the intention formed or an act committed that could possibly be said to be unlawful.” Respondent represented and maintains that the fan site is for the lawful purpose of fan appreciation and for no other purpose.
The Policy is silent on delay and UDRP panels have not recognized delay as a defense; but some panels have found that delay may in some cases make it more difficult for a complainant to establish its case on the merits, particularly with respect to the second and third elements, paragraph 4(a)(ii) and 4(a)(iii) of the Policy. See, Alimak Hek, Inc. v. Richard Wheat,WIPO Case No. D2011-1344. In the facts of this case the delay has no effect on the findings under paragraph 4(a)(ii) as Respondent is and has been using the disputed domain name for commercial purposes throughout the eight year period. Likewise on the facts of this case the delay had no effect on the findings under paragraph 4(a)(iii) of the Policy as Respondent throughout the 8 year period attracted Internet users to the website associated with the disputed domain name because of the goodwill associated with Complainant’s name. Once attracted to the website by Complainant’s goodwill, Respondent used the website for commercial gain. 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 disputed domain name be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: December 7, 2011
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