The Complainant is Northwestel Inc of Whitehorse, Yukon, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is John Steins of Dawson City, Yukon, 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 March 12, 2015. On March 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2015, 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 March 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2015. On April 7, 2015, the Respondent requested an extension of the Response due date. On April 7, 2015, the Complainant objected to the Respondent's request. On April 8, 2015 the Center granted the extension of time until April 12, 2015. The Response dated April 12, 2015, was timely submitted on said date.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 17, 2015. 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
The facts relevant to the decision in this case are that:
- the Complainant, a telecommunications company has been in operation in providing amongst other services, voice, video and data solutions to residential and business customers in western provinces, namely British Columbia and Alberta, as well as the Northwest Territories, Nunavut and Yukon of Canada;
- the design trademark N NORTHWESTEL, was registered in 1983, showing first use in association with telephone and telecommunications since 1977;
- the unregistered trademark NORTHWESTEL was used since at least the past 25 years in the same territories (herein the “NORTHWESTELTrademarks”);
- the disputed domain name was registered on March 28, 2000, by the Respondent;
- the Respondent, residing in Yukon, is a client of the Complainant which has no other business relationship with the Complainant and the latter has not authorized nor licensed the Respondent to use any of its NORTHWESTEL Trademarks nor to register the disputed domain name;
- the disputed domain name is directing Internet visitors to a pay-per-click website on which the said visitors will see sponsored links to competitors of the Complainant along with link titles within the same field of activities of the latter, such as Verizon VS Comcast and Xfinity Comcast amongst others;
- the disputed domain name as well as about 300 other domain names are offered for sale by the Respondent in a partnership arrangement with a domain name broker on the latter’s website at S where visitors are invited to make an offer;
- the Complainant, according to the Respondent in his Response, would have made to the Respondent in 2005 an offer to purchase the disputed domain name at an undisclosed price which offer was refused by the Respondent;
- the Respondent, who describes himself as a political activist both online and elsewhere, states that he registered the disputed domain name in 2000 in the hope and expectation of setting up a website on which clients of the Complainant may discuss concerns and issues relevant to the services provided by the Complainant’s business and the fact that it is a regulated and subsidized monopoly for most of its corporate life. 5. Parties’ Contentions A. Complainant
The Complainant represents that it has been operating its telecommunication company under the design N NORTHWESTEL registered Trademark and used it in the North West Territories and provinces of Canada as well as the NORTHWESTEL Trademark, although unregistered, extensively and continuously used over, at least, 25 years in association with the same wares and services.
The Complainant further represents that the disputed domain name incorporates the distinctive term “northwestel” of its NORTHWESTEL Trademarks and that the addition of the generic Top-Level Domain (“gTLD”) suffix .com does not diminish the likelihood of confusion of the disputed domain name with the NORTHWESTEL Trademarks. See Research in Motion Limited v. International Domain Names Inc. / Moniker Privacy Services,WIPO Case No. D2008-0780.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since it has not found any evidence to suggest that the Respondent has been commonly known by the disputed domain name and furthermore it has not licensed nor authorized the Respondent to use its NORTHWESTEL Trademarks to register the disputed domain name.
According to the Complainant, there is no evidence showing that the Respondent has ever used or undertaken any preparation to use the disputed domain name in connection with a bona fide offering of goods or services nor that he is making or intends to make a legitimate noncommercial use thereof.
The Complainant contends that, by reason of potential consumers Internet visitors being likely mislead and confused in believing that they had arrived at the Complainant’s website while arriving at the Respondent’s website where there are link titles that overlap with the Complainant’s services constitute an exact match for the Complainant’s NORTHWESTEL Trademark and thereby cannot be considered a proper right to the disputed domain name nor a bona fide offering of goods and services.
According to the Complainant, this absence of the Respondent’s rights, i.e., bad faith, is further confirmed by the use of the disputed domain name to divert Internet traffic to a pay-per-click website that displays sponsored links to competitors of the Complainant and be in a position to reap a financial benefit, on the whole being prima facie evidence of absence of rights.
The Complainant represents that the Respondent being in partnership with the owner of S and offering to sell the disputed domain name generates further a factor against a bona fide interest and such solicitation of an offer to purchase the disputed domain name even without a specific price being demanded can constitute bad faith by the Respondent.
The Complainant contends that the Respondent has engaged in a pattern of registering domain names which incorporate a trademark to which he is not entitled and thus, prevented the Complainant from registering the disputed domain name and that as few as two such domain name registrations are sufficient to establish a pattern by the Respondent since the latter, according to the evidence has engaged in such a pattern of registering domain names incorporating the trademark of third parties namely , and .
The Complainant further contends that bad faith registration and use of the disputed domain name by the Respondent shows first the Respondent’s awareness of the Complainant’s NORTHWESTEL Trademarks and second the use of the disputed domain name to intentionally attempt to attract for commercial gains Internet users to a website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement and as held by numerous panels in UDRP decisions, directing a domain name that is confusing with a trademark of a third party to a pay-per-click website constitutes bad faith. B. Respondent
The Respondent represents that the Complainant fails in its Complaint “to reveal that their telecommunication company has operated in Canada’s far north as a regulated and subsidized monopoly for most of their corporate life”. The Respondent further states that “[t]his fact forms the bases on which the Respondent registered the disputed domain name in 2000”. As the social and political activist that he declares to be, desiring to provide the population an opportunity to comment thereon, he registered the disputed domain name.
The Respondent disagrees with the Complainant about requiring a permission to register the disputed domain name since that, according to him, there were no conditions that would have prevented the registration of said domain name.
The Respondent disagrees with the Complainant about being involved in a pattern of trademark violation in respect of the three above named domain names registered by him, representing that bookguild is not a registered trademark in the United Kingdom of Great Britain and Northern Ireland, Canada or the United States of America, these names relate to professional activities and are held in reserve for future activities.
The Respondent represents himself as “a respected community leader […] mayor of Dawson City from 2006 to 2009 and helped build the town into becoming today’s vibrant community”. Finally, he represents that he is an educator, working for the Yukon Visual Art, also being an accomplish visual artist and now, expanding his horizon into film making and that “his work can be viewed at ”, said site being quoted by the Complainant which shows various activities of the Respondent.
The Respondent represents that the word “northwestel” as such does not appear as a registered trademark in Canada while he admits that “the design including a logo and textual component appear to be trademarked” in reference to the registered design N NORTHWESTEL Trademark of the Complainant. The Respondent submits that there cannot be confusing similarity of the disputed domain name to the Complainant’s Trademark since “there must be a risk that Internet users may actually believe there to be a real connection between the Domain Name of the Complainant” since, as the Respondent admits, “the disputed domain name resolves to a pay-per-click website” and that most Internet users are able to distinguish a pay-per-click landing page and a website offering robust services and information relating to the Complainant’s business. According to the Respondent, pay-per-click landing page often generates long list of links to services and products unrelated to the actual domain name.
The Respondent further submits that he has rights or legitimate interests in respect of the disputed domain name “since he registered same for the sole purpose establishing an online forum where the Complainant’s customers could discuss concerns and issues relevant to the services provided by the Complainant without interference by the latter”. The Respondent states that he has been unable to follow through those objectives by reason of the alleged the Complainant’s subsidized monopoly in the Northwest Territories and further challenges the Complainant’s allegations that the disputed domain name is being used to divert traffic and direct users to competitors.
The Respondent represents that he has not acted in bad faith since he did not acquire the disputed domain name or other domain names for profit through their sale. While many domain names have been listed for sale amongst the 300 domain names the Respondent collected since 1999, only one was sold. On that basis, the Respondent represents that “any allegation of bad faith based on in intention to profit monetarily on the disputed domain name falls short”. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) the disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. Having considered the Complaint and the available evidence and the Response and its statements without documentary evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trademark. Said paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.
The Panel accepts that the Complainant has these trademark rights.
The Complainant has clearly established that it has rights in the design N NORTHWESTEL Trademark registered in 1983 more than 15 years prior to the registration of the disputed domain name. While it is a design trademark with the presence of the letter “N” in a particular script and the term NorthwesTel with two capital letters, it remains that the distinctive element of this Trademark remains the term “northwestel” which term is totally incorporated in the disputed domain name. Is this sufficient to find that the disputed domain name is confusingly similar to the N NORTHWESTEL Trademark of the Complainant? The Panel is of this view and conclusion.
The Panel finds further comfort in the allegation and evidence of the Complainant that it has common law rights in the trademark NORTHWESTEL which it has used since at least 1990, some 25 years ago. It has adduced documentary evidence showing this Trademark use and furthermore evidence of the importance of the Complainant’s business under the said Trademark where an exhibit providing a view of the financial results of the Complainant from 1993 to 1999 reveals revenues from USD105 million to USD 139 million which is a significant amount of money to justify such use of the Trademarks both as the design Trademark and the NORTHWESTEL Trademark per se. This protection as a common law trademark is a well established principle under the Policy as advanced by the Complainant. See Joe Cole v. Dave Skipper,WIPO Case No. D2003-0843 and Seek America Networks Inc. v. Tariq Masood,WIPO Case No. D2000-0131.
The Panel, therefore, acknowledges the presence of common law trademark rights in the term “northwestel” in addition to its registered trademark rights in the design N NORTHWESTEL Trademark. It is well established in UDRP decisions that, as represented by the Complainant, the presence of the gTLD suffix .com does not in any way diminish the likelihood of confusion with the two Trademarks of the Complainant and the disputed domain name.
The Panel finds a likelihood of confusion between the disputed domain name and the two Trademarks of the Complainant in the presence case.
The first criterion of the Policy has been established. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
The Complainant has presented its prima facie evidence, first that the Respondent is not known under the term “northwestel” and second, other than being a client of the Complainant, as admitted by the Respondent, the Complainant has no other business relationship with the Respondent and finally, has not authorized or licensed the Respondent to use any of its NORTHWESTEL Trademarks nor to register the disputed domain name.
The Respondent bases the support for his claimed rights and legitimate interests in the disputed domain name on his representation and statement that he registered the said disputed domain name for the purpose of establishing an online forum where the Complainant’s customers could discuss concerns and issues relevant to the services provided by the Complainant without interference by the latter, but regretfully this has not yet materialized in an active website at the address of the disputed domain name. The Respondent has admitted in his Response that he had reverted to use the disputed domain name in building and use of a pay-per-click website at the address of the disputed domain name that furthermore displays sponsored links to competitors of the Complainant. The Panel finds that the Respondent is thereby generating revenues for himself as a result of this commercial activity contrary to making a legitimate noncommercial or fair use of the domain name.
Under this use of the disputed domain name, the Panel finds that the Respondent is using the domain name for a commercial activity and thereby cannot contend to be making a legitimate and noncommercial use of the disputed domain nor using the disputed domain name in connection with a bona fide offering of services as found by the presence of links competitors of the Complainants as held under the third criterion.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The second criterion of the Policy has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy says:
“ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;…”
iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent has admitted in its Response being a customer of the Complainant for at least 20-25 years but does not have any other business relationship with the latter and has further admitted that he has registered the disputed domain name with the goal of setting a website independent of the Complainant but where persons or customers of the Complainant could comment and express their views about the business activities and status of the Complainant in the territories covered by the Complainant. It is therefore clear to this Panel that the Respondent was well aware of the existence of the Complainant and at least of its registered Trademark.
Notwithstanding a period of 15 years since the registration of the disputed domain name, the Respondent did not put into place his projected discussion and comment website in respect of the Complainant activities. It is interesting to observe that the Respondent was already using his other website at the address (Exhibit 9) to provide comments about matters of public interest, i.e., he did not provide demonstrable preparations showing a bona fide or good faith use.
As clearly shown by the Complainant in its documentary evidence, namely pages from the website at the address of the disputed domain name reproduced within the Complaint in paragraphs 22 and 23 (Exhibits 6 and 7), the said website features sponsored links to competitors of the Complainant, Verizon VS Comcast and Xfinity Comcast and other links which overlap directly with the Complainant and its services, namely Northwestel Webmail Login, which facts have not been denied by the Respondent; in other words, the Respondent’s claims seem pretextual and lacking any basis in fact. While the links, as acknowledged and stated by the Complainant in the Complaint, were inactive only in respect of a recent incarnation of the Respondent’s website in December 2014, there remains a fact that Internets visitors upon seeing the disputed domain name and the corresponding website would nevertheless be confused.
The disputed domain name was offered for sale under a partnership arrangement with Sedo Domain’s market place and the fact that according the Respondent the Complainant has made an offer to purchase same in 2005, offer that has been refused by the Respondent who preferred to keep the disputed domain name in the hope and expectation of achieving it goal of a criticism website in respect of the Complainant’s activities and consumer perception and the opportunity of expressing their views about the latter, does not in this Panel view indicate a bona fide behavior nor one of good faith where no evidence whatsoever has been provided to show such intentions. While the price offered by the Complainant was not disclosed by the Respondent who reports the offer in his Response, this silence is certainly not suggesting that it was as low as the costs in compensation for registering the disputed domain name.
The Panel sees in these facts many circumstances and elements justifying the conclusion and finds that the disputed domain name was registered and used in bad faith.
The third criterion of the Policy has been met. 7. Decision
For 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 the Complainant.
J. Nelson Landry
Sole Panelist
Date: April 29, 2015
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