Complainant is Spa Logic Inc of Alberta, Canada, represented internally.
Respondent is Arctic Numacorp / Numa Technologies Corporation aka Numacorp of Saskatoon, Saskatchewan, 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 September 5, 2012. On September 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2012. The Response was filed with the Center on September 28, 2012.
The Center appointed Ross Carson as the sole panelist in this matter on October 23, 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. 4. Factual Background
Complainant is the owner of the following trademarks registered on the Principal Register in the United States of America:
Registration Number 2951457
Registration Date May 17, 2005
Word Mark ARCTIC SPAS
Goods and Services IC 035. US 100 101 102. G & S: Operation of a retail outlet featuring spas, whirlpool baths, and showers; and distributorships in the field of spas, personal steam chambers and showers; business consulting services namely the offering of technical assistance in the establishment and / or operation of business featuring spas and personal steam chambers. First use: 19970219. First use in commerce: 19980521.
Registration Number 2426045
Registration Date February 6, 2001
Word Mark ARCTIC SPAS
Goods and Services IC 011. US 013 021 023 031 034. G & S: spas in the nature of heated pools; fitted spa covers; baths; showers and shower enclosures. First use: 19971112. First use in commerce: 19971112.
Registration Number 2426046
Registration Date February 6, 2001
Word Mark ARCTIC SPAS
Goods and Services IC 011. US 013 021 023 031 034. G & S: spas in the nature of heated pools; fitted spa covers; baths; showers and shower enclosures. First use: 19971112. First use in commerce: 19971112.
Registration Number 2943675
Registration Date April 26, 2005
Word Mark ARCTIC SPAS
Goods and Services IC 035. US 100 101 102. G & S: Operation of a retail outlet featuring the sale of spas, whirlpool baths, and showers; and distributorships in the field of spas, personal steam chambers and showers; business consulting services namely the offering of technical assistance in the establishment and/or operation of business featuring spas and personal steam chambers. First use: 19970219. First use in commerce: 19971112.
According to the data contained in the GoDaddy. com ,LLC’s WhoIs database the Registrant of the disputed domain name is: arctic, numacorp, Saskatoon, Saskatchewan: S7N 2X8, Canada. The disputed domain name was created on March 8, 2004. 5. Parties’ Contentions A. Complainant A. 1. Identical or Confusingly Similar
Complainant states that the disputed domain name owned by Respondent is confusingly similar to Complainant’s trademark ARCTIC SPAS. The trademark relates to domestic hot tub and spa products, services, and retail trade. Complainant plans to use the use the disputed domain name to promote our authorized representative in Saskatoon, Saskatchewan, Canada. A. 2. No Rights or Legitimate Interests in respect of the disputed domain name
Complainant states that Respondent has never been commonly known or attempted to become known by the disputed domain name. Respondent is known as Numacorp, a web services company, at “”. Respondent has never attempted to use the disputed domain name in connection with any offer of goods or services.
Complainant states that Respondent formerly allowed the disputed domain name to be used by a client, presumably for compensation. That client no longer uses the domain, partly due to a resolution of a legal demand to cease use of the trademark in question. A copy of the agreement between Complainant and Numacorp’s client (Saskatoon Outdoor Living Ltd) is attached as Annex 5 to the Complaint. The settlement includes mention of the disputed domain name in question but as it turns out the ownership and control of the disputed domain name is not with the Respondent’s client as it was presumed.
Complainant further states that Complainant and Respondent, have communicated via email prior to this Complaint regarding the disputed domain name. A copy of the email thread is attached in Annex 4 to the Complaint. Complainant submits that the significant part of that exchange was an offer from Complainant to Respondent to purchase the disputed domain name for CAD 2000, an amount that reasonably exceeds the out of pocket costs related to the domain ownership. Complainant states that Respondent refused that offer. A. 3. Registration in Bad Faith
Complainant combined its allegations of registration in bad faith with its allegation of use in bad faith immediately below A. 4. Use in Bad Faith
Complainant states that Respondent has never used the disputed domain name itself. Respondent has in the past allowed their clients to use it but that use has ceased permanently. Respondent shows or expresses no intention to use the disputed domain name itself at any point in the future. Respondent has refused a reasonable offer to purchase it, even though we believe their current ownership contradicts the UDRP.
Complainant further submits that Respondent clearly states in e-mail correspondence that they wish to be compensated for transfer of the domain ownership. This contradicts the UDRP Rules (para 3(b)(ix)(3) and para 4(b)).
Complainant submits that Respondent is clearly squatting on the disputed domain name in order to extort an unreasonable fee from Complainant, or to potentially sell the domain or its use to a competitor of Complainant.
These are the only potential uses for the disputed domain name due to the current and specific trademark of the term ARCTIC SPAS. Any public use of this term on a website or other commercial media is clearly an infringement on that trademark. B. Respondent B. 1. Identical or Confusingly Similar
Respondent did not make any submission on this issue. B. 2. No Rights or Legitimate Interests in respect of the Disputed Domain Name
Respondent states that at the request of its client Arctic Spas Saskatoon, it registered the disputed domain name on March 8 2004. The client pays us a fee to manage his website including web hosting, emails, and domain renewal. And as long as the client continues to pay us, the client has control over the website, hosting, emails and domain. On March 28 2012, the client notified us that he would no longer be paying for the disputed domain name . Since the client stopped paying for it, the client gave up any rights or controls over the disputed domain name.
Respondent further states that on July 9, 2012, Complainant e-mailed Respondent instructing it to transfer the disputed domain name to his GoDaddy account. As he was not our client, we did not respond to his request. On July 19, 2012, Darcy Amendt of Complainant sent us an email demanding that we transfer the disputed domain name to him or Complainant would sue Respondent. Respondent replied by telling Complainant that we own and control the disputed domain name since Arctic Spas Saskatoon is no longer a client of ours and has stopped paying for the disputed domain name. Since, Complainant is not our client, we saw no reason to comply with its demands or threats of a lawsuit.
Respondent further states that on July 23, 2012, Complainant offered Respondent CAD 2000. 00 for the disputed domain name and threatened to sue us again if Respondent doesn’t comply with its demands.
On July 23, 2012, A principal of Complainant sent Respondent another e-mail threatening to tell his friends and family in Saskatoon that Respondent operates an unscrupulous business if it doesn’t comply with Complainant’s demands. At this point, Respondent felt that it couldn't deal with someone who is basically threatening us and bullying it into giving up our property. So Respondent decided to let Complainant proceed with a W1PO claim.
Respondent further submits that the point is not that it wants to own or continue owning the disputed domain name. Respondent states that it has no use for the disputed domain name and is simply holding it until Arctic Spas Saskatoon has a chance to clear up a few issues with Complainant regarding the ownership and use of and Arctic Spas Saskatoon which was their registered business name with which they have invested hundreds of thousands of dollars in developing brand equity in Saskatoon.
Respondent, referring to W1PO Case No. D2011-2196, states that it knows that Arctic Spas Oakville Inc. are currently in court with Complainant to retain the use of . Arctic Spas Saskatoon would like that same opportunity regarding . B. 3. Registration in Bad Faith
Respondent states that at the request of its client Arctic Spas Saskatoon, it registered the disputed domain name on March 8, 2004. The client pays it a fee to manage its website including web hosting, emails, and domain renewal. And as long as the client continues to pay us, the client has control over the website, hosting, emails and domain. On March 28, 2012, the client notified us that he would no longer be paying for the disputed domain name . Since the client stopped paying for it, the client gave up any rights or controls over the disputed domain name. B. 4. Used In Bad Faith
Respondent states that the point is not that it wants to own or continue owning the disputed domain name. Respondent states that it has no use for the disputed domain name and is simply holding it until Arctic Spas Saskatoon has a chance to clear up a few issues with Complainant regarding the ownership and use of and Arctic Spas Saskatoon which was their registered business name with which they have invested hundreds of thousands of dollars in developing brand equity in Saskatoon. 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 is the registered owner of numerous Trademark Registrations for the trademark ARCTIC SPAS registered in relation to goods and services in International Classes 11 and 35 relating to heated pools, spas in the nature of heated pools and operation of retail outlets featuring spas, whirlpool baths etc. all as set out in more detail in Section 4 above. Two of the registered trademarks for ARCTIC SPAS were registered in 2001 several years before the disputed domain name was created on March 8, 2004.
The disputed domain name incorporates the entirety of Complainant’s trademark ARCTIC SPAS. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the 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). See also, Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (finding confusingly similar to complainant’s AUXILIUM name and mark).
The disputed domain name also includes the geographical word “Saskattoon” the name of the second largest city in the Province of Saskatchewan, Canada. Numerous UDRP panels have found that domain names comprised of a well-known trademark as the distinctive element in conjunction with descriptive, generic or geographical terms are confusingly similar to a registered trademark. See, Swarovski Aktiengesellschaft v. Swarovsk. AG,WIPO Case No. D2010-2139 (“Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SWAROVSKI despite the additional word “line” followed by the generic top-level domain “. com”. The distinctive feature of the disputed domain name is “Swarovski”, being the sole and distinctive feature of the Complainant’s trademark. The generic word “line” is indistinctive. The fact that understandably a line or range of goods is sold by the Complainant and marketed under their mark SWAROVSKI will make actual confusion among consumers likely”).
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 generally 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 established that the disputed domain name is confusingly similar to Complainant’s registered trademark ARCTIC SPAS.. 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 states in the Response that it is a provider of Internet services who registered the disputed domain name on behalf of its client Arctic Spas Saskatoon. Respondent states that it provided web managing services, including web hosting, e-mails, and domain renewals for Arctic Spas Saskatoon until March 29, 2012 when it was informed by its client that that it would no longer be paying Respondent for services relating to the disputed domain name.
Respondent contends that Arctic Spas Saskatoon gave up any rights or controls over the disputed domain name when it notified Respondent that it would no longer use Respondent’s services with respect to the disputed domain name. Respondent did not state that it relies on a contract and breach of contract provisions as the basis for transfer of ownership of rights in the disputed domain name. Respondent did not advance any legal argument to support its claim to ownership of the disputed domain name. Complainant contends that Respondent’s claim to ownership contradicts the UDRP without any legal support.
The Court of Appeal for Ontario in Tucows. Com v. Lojas Renner S. A. , 2011 ONCA 548, after a lengthly review of the concept of property law and a review of the case law in the United States of America, the United Kingdom and Sweden relating to the nature of rights in domain names concluded that a domain name was intangible property for purposes of Ontario law. While a decision of the Court of Appeal in Ontario is not binding in other Provinces, Courts in other Provinces pay great deference to decisions of Superior Courts in other Provinces. In a UDRP case, such as the present, in which both parties are from Canada, such court decisions may also be paid respectful deference. This UDRP Panel is not aware of any law in Canada whereby property rights in Canada are lost by a notice to an entity previously providing services that future services will not be requested. A former supplier may have a lien for money owed etc., but such rights amount to a charge on property as opposed change of ownership. In MAP Supply Inc. v. On-line Colour Graphics, FA Claim No. 0096332 the respondent had provided site work for a contractor retained by Complainant. The Complainant paid its contractor for the services but the contractor did not pay the respondent. The respondent removed the domain name to another service provider and registered the domain name. The panel in that case concluded: ”I know of no factual or legal basis for the claim of the respondent that, when its account was not paid, the respondent” became the owner of the domain name” by default”. In this case, Respondent has not alleged that its former client Arctic Spas Saskatoon owed it any money. See also, Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823.
Respondent informed Complainant in an e-mail dated July 23, 2012, “we own arcticspassaskatoon. com. Not Arctic Spas or Chuck Walker.” In the Response the Respondent stated:”… the point here is not that we want to own or continue owning the domain. We have no use for it and we are simply holding it until Arctic Spas Saskatoon has a chance to clear up a few issues with Spa Logic Inc.”
The Panel finds that Complainant has established that Respondent has no rights or legal 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
The disputed domain name was apparently registered by Respondent on behalf of its client Arctic Spas Saskatoon Inc. on or around March 8, 2004. At the time of registration of the disputed domain name and for many years thereafter Arctic Spas Saskatoon Inc. was a recognized Arctic Spa dealer of Complainant. Complainant has not alleged that Arctic Spas Saskatoon Inc. was not entitled to register and use the disputed domain name commencing in March of 2004.
Previous UDRP panels have considered situations in which a person or entity other than a named registrant in the WhoIs details may be treated as the holder of the disputed domain name in fact. In PHE, Inc. v. Aisha Haider, WIPO Case No. D2007-0992 the panel found: “A threshold issue arises as to who is the Respondent in fact. Paragraph 1 of the Rules defines the “Respondent” as the holder of the domain name registration against which a complaint is initiated”. Neither this definition, nor other provisions of the Policy and Rules, prevents a finding that a person or entity, other than the named registrant in the Whois details for the domain name, may be treated as the holder of the domain name registration in fact. This is particularly the case where it appears to the Panel that the named registrant may not exist in fact and that there may in fact be a beneficial or underlying owner of the disputed domain name. This is also supported by the findings of previous panels, in which another person or entity is treated as a respondent in fact, or the beneficial owner of the disputed domain name. (See e.g. British Broadcasting Corporation v. Data Art Corporation / Stoneybrook,WIPO Case No. D2000-0683). ”
Based on the record before it in these UDRP proceedings, this Panel finds that Arctic Spa Saskatoon Inc. was in fact the underlying or beneficial owner of the disputed domain name at the date of registration of the disputed domain name. The Panel infers from the available evidence of record here that Respondent is an Internet specialist who registered the disputed domain name on behalf of Arctic Spas Saskatoon Inc. on March 8, 2004.
In all of the circumstances of this case, the Panel finds that Complainant has not succeeded in showing that the disputed domain name was registered in bad faith. C. 2. Domain Name Used in Bad Faith
Having regard to Complainant’s failure on the present record to show registration of the disputed domain name in bad faith, the Panel does not propose to consider in detail the issue of whether there has been use of the disputed domain name in bad faith.
The Policy is directed to resolving disputes concerning allegations of abusive domain name registration and use. See, Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774.
Complainant filed a copy of a Settlement Agreement between itself and the successor of Arctic Spas Saskatoon Inc. as an Annex to the Complaint. The Settlement Agreement related to the termination of the dealership arrangement between Complainant and the successor of Arctic Spas Inc. in July 2012. One of the terms of the Settlement Agreement required the successor of Arctic Spas Inc. to take any and all steps reasonably required to transfer the disputed domain name to Complainant. As noted in Section 5. B above, Respondent is the Registrant of the disputed domain name and claims to be the owner thereof. Respondent refuses to transfer the disputed domain name to Complainant. A string of e-mails between Complainant and Respondent were filed as an Annex to the Complaint. The e-mails disclose that when Respondent refused to sign a transfer of the disputed domain name, Complainant threatened to commence a suit against the parties to the Settlement Agreement as well as Respondent and the officer of the Respondent carrying on the negotiations for refusal to transfer the disputed domain name, stating: “The suit has been prepared – you will be named personally and corporately along with Chuck”. Instead of proceeding with the civil action as foreshadowed Complainant appears to have instituted this proceeding under the UDRP. In its UDRP Complaint, Complainant alleged that Respondent: ”…refused a reasonable offer to purchase it, even though we believe their current ownership contradicts the UDRP”.
Prior UDRP panels have rejected complaints where the dispute is primarily contractual in nature. See, Clinomics Biosciences, Inc v. Simplicity Software, Inc.,WIPO Case No. D2001-0823, where the panel found: “Prior decisions have rejected complaints where the dispute is primarily contractual and therefore outside the scope of the policy. See Adaptive Molecular Technologies, Inc. v. Pricilla Woodward and Charles R. Thornton,WIPO Case No. D2000-0006 (February 28, 2000). That appears to be the appropriate course here, where the dispute turns on the resolution of legal matters outside the scope of the Policy. In declining relief, I take no position on the merits of the fee or lien dispute that exists between the parties.”
This Panel agrees with and respectfully adopts that earlier panels finding to the circumstances of the present case.1 Naturally, the present decision under the Policy in no way precludes party pursuit of their dispute before a court of competent jurisdiction. 7. Decision
For the foregoing reasons, the Complaint is denied.
Ross Carson
Sole Panelist
Dated: November 6, 2012
1 There are in addition procedural and evidentiary issues arising from the Complaint. Arctic Spas Saskatoon Inc. or its successor have not been made a party to the Complaint even though the available record indicates they are or were the underlying or beneficial owner of the disputed domain name at relevant times. In addition the Settlement Agreement attached as an Annex to the Complaint was not signed by Complainant and was undated. The Panel further observes that pursuant to section 7 of the Settlement Agreement it may be executed and delivered in counterpart. If the Settlement Agreement was signed in Counterpart, the Complainant’s executed counterpart does not appear to have attached as an Annex.
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