Complainant is Richard Rowe o/a Ontario Seed Bank of Dunnville, Canada, represented by Gilbertson Davis LLP, Canada.
Respondent is N PrivateWHOIS of Richmond, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with TLDS L.L.C. d/b/a SRSPlus (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2016. On December 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Center received email communications from Respondent on the following dates: December 17, 2016; December 26, 2016; December 27, 2016; December 28, 2016 (two email communications); January 3, 2017; and January 4, 2017.
At Respondent's request, the due date for Response was extended to January 4, 2017. The Response was filed with the Center on January 5, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 19, 2017. 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.
The Panel issued Procedural Order No. 1 on February 15, 2017, asking for supplementary evidence relating to use of Complainant's common law trademarks. Submissions were received from Complainant on February 2, 2017, and the Panel then issued Procedural Order No. 2, requesting a response from Respondent. Submissions were received from Respondent on February 25, 2017. 4. Factual Background
Complainant is an individual who has operated a retail business for the sale of marijuana seeds in Ontario, Canada since 2004. Complainant's business name has been Ontario Seed Bank over that period. No trademark registration has ever been obtained for the name, and Complainant relies entirely on his common law rights. For more than 10 years, Complainant's retail location in Oakville, Ontario has displayed store signage prominently displaying the trademark ONTARIO SEED BANK.
With respect to the disputed domain name, Complainant was actually a prior owner from 2004 to 2006, when he used it for an associated website. The domain name registration expired in 2006. Subsequently, from 2008 to the present, Complainant has used the domain name in association with his website for online sales.
Although a Response has been filed in this matter, the identity of Respondent remains undisclosed, as Respondent is uncomfortable with revealing its identity.
The disputed domain name has been used to redirect Internet users to the competing website "". 5. Parties' Contentions A. Complainant
As set out above, Complainant claims common law rights in the business name Ontario Seed Bank, which has been used in association with the sale of marijuana seeds in Ontario for more than 10 years. On the basis of claimed use and reputation, Complainant asserts trademark rights in the combination, and argues that Respondent has adopted a domain name that is identical to the common law mark.
Complainant submits that Respondent holds no legitimate rights or interests in the disputed domain name, because the associated websites have reverted to competitive vendors of marijuana seeds. Bad faith is alleged on the basis of the redirection of customers to competitive websites, and alleged copying of certain logos and colours. B. Respondent
Respondent has failed to identify itself for these proceedings, but it does claim that it was unaware of Complainant's business, and notes that the claimed trademark is simply a combination of generic or descriptive words. Respondent otherwise denies the allegations of bad faith, and claims a legitimate interest in the disputed domain name, as part of its "business developing website portal sites". 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(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
As a threshold issue, the Panel notes that Respondent's failure to identify itself renders its evidence in this proceeding of virtually no probative value. In any event, much of the purported evidence in the Response appears to be unfounded and otherwise unworthy of the Panel's attention.
Never-the-less, the burden of proof lies on Complainant to establish all the elements of his claims. Having carefully reviewed Complainant's evidence that he holds an interest in the unregistered trademark ONTARIO SEED BANK, the Panel accepts that such rights have properly been established, in terms of the evidentiary record in this proceeding. Given the descriptive nature of the words which comprise the business name in issue, it was necessary for Complainant to provide tangible proof that an enforceable reputation and at least some degree of secondary meaning had been achieved. The existence of a longstanding associated website, sample advertisements, proof of annual sales, and tangible proof of a retail location displaying the ONTARIO SEED BANK name for many years, does constitute an appropriate level of proof for trademark rights in these circumstances. Complainant has provided facts and materials to establish the basic foundation for a commercial reputation. The evidentiary record as it stands is sufficient for the Panel to conclude that Complainant actually holds the necessary common law trademark rights to support this complaint. As the disputed domain name is identical to Complainant's trademark and trade name, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent has no legitimate rights or interest in the disputed domain name. Respondent has claimed – without any tangible evidence – that it operates a business developing "website portal sites". In fact, it appears that the disputed domain name and its associated website actually divert traffic to competitive websites for marijuana related products. In any event, the failure of Respondent to identify itself casts a cloud of doubt over all of its submissions. As a result, the Panel finds that Respondent has failed to answer the prima facie case against it on this issue.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(b) of the Policy. C. Registered and Used in Bad Faith
Complainant's arguments on bad faith are based on two key submissions: (1) that Respondent must have known about Complainant's rights in the Ontario Seed Bank name, because of his long-established business and attendant reputation in the same area of Southern Ontario where Respondent appears to live; and (2) that Respondent is actively trading on that reputation by using an associated website that mimics Complainant's website and diverts traffic to other competitive websites.
The Panel accepts these submissions, in spite of the fact that Respondent denies knowing anything about Complainant's business. This type of outright denial of knowledge is often an important factor in favour of a respondent, and it is relatively rare in summary proceedings under the Policy that evidence to this effect is rejected. However, in this Panel's view, it is inappropriate for Respondent to deliberately cloak itself in anonymity when making this sort of averment. Respondent has effectively prevented the Panel from being in a position to fairly evaluate the truth of its statement. No weight will therefore be attached to Respondent's submissions in this regard.
In these circumstances, and based on the record available in this proceeding, the Panel is prepared to find that Respondent has acted in bad faith contrary to the Policy.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(c) of the Policy. 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 Complainant.
Christopher J. Pibus
Sole Panelist
Date: March 5, 2017
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