The Complainant is Spa Logic Inc of Thorsby, Alberta, Canada, represented by Jody Gamracy, Canada.
The Respondent is Arctic Spas Oakville Inc / Group of Burlington, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2011. On December 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent a request for clarification regarding the Complainant’s submissions contained in the Complaint. The Complainant filed an amended Complaint on December 28, 2011. The Center verified that the Complaint amended 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 January 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2012. The Response was filed with the Center on February 7, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 15, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On March 1, 2012, Administrative Panel Procedural Order No. 1 was issued, requesting that the Respondent provide copies of the Statement of Claim and the Statement of Defense that were stated in the Response to have been filed in the Ontario Canada Superior Court of Justice, referenced in the Response at page 2, para. 5. The Respondent provided copies of the Statement of Claim and the Reply to Defence and Counterclaim on March 8, 2012.
On March 9, 2012, Administrative Panel Procedural Order No. 2 was issued, requesting that the Respondent provide a copy of the Statement of Defence and Counterclaim that was filed in Ontario Superior Court of Justice. The Respondent did not provide a copy of the Statement of Defence and Counterclaim as requested by March 16, 2012. 4. Factual Background
The Complainant owns several trademark registrations for the trademark ARCTIC SPAS and ARCTIC SPAS & Design, including Canadian Trademark Registration No. TMA 518,638 for the word mark ARCTIC SPAS dated October 26, 1999. The trademark ARCTIC SPAS is registered in association with the following wares and services:
Wares: (1) Spas in the nature of heated pools; spa covers; spa power and control modules; product catalogues; and owner's manuals. (2) Floating and non-floating beverage holders; personal steam chambers and ozone mixing chambers.
Services: (1) Operation of a retail outlet featuring the sale of spas, whirlpool baths, and showers; custom design of spas; and distributorships in the field of spas, personal steam chambers and showers. (2) Business consulting services namely the offering of technical assistance in the establishment and / or operation of business featuring the sale and custom design of spas and personal steam chambers.
The Complainant’s Canadian Trademark Registration claims a date of first use in commerce on the wares as February 19, 1997, and a date of first use in commerce in association with the services on October 1, 1999.
The Complainant also owns a Canadian Trademark Registration for the ARCTIC SPAS & Design trademark, under Registration No. TMA 518,635 dated October 26, 1999, for identical wares and services.
The Complainant owns two United States (“U.S.”) Trademark Registrations for ARCTIC SPAS and ARCTIC SPAS & Design under Registration Nos. 2,951,457 and 2,943,675 registered May 17, 2005, and April 26, 2005, respectively.
The Complainant owns a Community Trademark Mark Registration for ARCTIC SPAS & Design under Registration No. 1776897 filed on July 26, 2000.
The disputed domain name was registered on May 19, 2004 and the Registrant is listed by the Registrar as Arctic Spas Oakville Group, with a principal address in Ontario, Canada. The Administrative Contact listed for the domain name is Trevor Wasney, with the same address as the Registrant
Although the Complaint makes no reference to the existence of other legal proceedings, an action was commenced in the Ontario Superior Court of Justice under Court File No. CV-11-437362. The Complainant and the Respondent are parties to that litigation. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns two Canadian trademark registrations for the trademarks ARCTIC SPAS and ARCTIC SPAS & Design (Reg. Nos. TMA 518,638 and TMA 518,635). The Respondent has registered the disputed domain name , which is identical to the Complainant’s trademark, except for the addition of the word “online” and the “.com” designation. Rights or Legitimate Interests
Complainant argues that the Respondent cannot have any rights or legitimate interest in the disputed domain name, because the Complainant has exclusive rights to the trademark ARCTIC SPAS trademark in Canada. The Respondent is not now licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website that offers for sale exactly the same products and services as named in the Complainant’s trademark registrations. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent registered and is using a confusingly similar domain name to the Complainant’s well-known ARCTIC SPAS trademark; (ii) the Respondent is using a confusingly similar domain name in association with a website that offers identical products and services as the Complainant; and (iii) the Complainant has repeatedly placed the Respondent on notice of the Complainant’s rights in the ARCTIC SPAS trademark, and the Respondent has continually refused to acknowledge the Complainant’s rights in the ARCTIC SPAS trademark. B. Respondent
The Respondent contends that it did not register and has never owned the disputed domain name . The Respondent denies any violation of the Complainant’s ARCTIC SPAS trademarks. The Respondent has initiated a claim before the Ontario Superior Court of Justice under File No. CV-11-437362, relating to a variety of matters in dispute between the parties, and seeking damages in the amount of CAD10,000,000.
The Respondent contends that the disputed domain name is simply an extension of the legal company name Arctic Spas Oakville Inc., which was incorporated in 2001. The Respondent states that it was a non-exclusive dealer for Complainant over a period of 8 years, and had never received a complaint from the Complainant during this time period. Over the years, the disputed domain name has been directly linked to the Respondent’s retail business. The Respondent submits that it has a legitimate interest in the dispute domain name since the Respondent’s company’s incorporation in 2001.
The Respondent further submits that its contract with the Complainant was terminated for undisclosed reasons. The Respondent states that it continues to sell ARCTIC SPAS branded products as of the date of the filing of the Response, and the Complainant specifically agreed to permit the Respondent to sell through its ARCTIC SPAS branded inventory. 6. Discussion and Findings
Paragraph 18 of the Rules states:
“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
For the reasons set out below, the Panel exercises its discretion to terminate this proceeding.
The Panel notes that the parties have been engaged in a long term business relationship, which involved the use of the trademarks in question by the Respondent over a period of at least 10 years. The business arrangement linking the parties together has evidently now unravelled, resulting in complex commercial litigation involving multiple claims and counterclaims, which are beyond the scope of this proceeding.
The Complainant failed to disclose the existence of legal proceedings in the Complaint, and failed to disclose the existence of the significant business relationship between the parties, which had been in place for more than 10 years. The proper functioning of the UDRP process is not well-served by the failure to disclose such obviously relevant facts.
The Panel received copies of some of the pleadings in the Ontario Superior Court litigation. These pleadings, even in an incomplete form, make it clear that there is ongoing litigation between the parties, which includes disputes over the Respondent’s use of the Complainant’s trademarks, and the use and ownership of domain names related to the trademarks in question. The Panel considers that the domain name dispute in this case is ancilliary to the commercial litigation between the parties (see Family Watchdog LLC V. Lester Schweiss,WIPO Case No. D2008-0183).
In light of the existence of the parallel litigation, and the complex factual matrix which underlies the dispute and which has not been fully disclosed, the Panel finds that this Complaint is beyond the scope of the Policy at the present time. 7. Order
For all the foregoing reasons, pursuant to UDRP Rule 18, the Panel hereby orders these Administrative Proceedings under the policy terminated.
Christopher J. Pibus
Sole Panelist
Dated: March 23, 2012
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