The Complainant is Eden Care Communities Management Inc. of Regina, Saskatchewan, Canada, represented by Miller Thomson, LLP, Canada.
The Respondent is Kevin Klassen of Regina, Saskatchewan, Canada, represented by Carrie Klassen. 2. The Domain Name and Registrar
The disputed domain names and are registered with Promo People, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2017. On December 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on December 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2018. The Response was filed with the Center on December 24, 2017. The Center received a Supplemental Filing from the Complainant on January 12, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 18, 2018. 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 Complainant Eden Care Communities Management Inc. is a charitable corporation incorporated pursuant to The Non-profit Corporations Act, 1995 (Saskatchewan) and registered as a charity pursuant to the Income Tax Act (Canada). The Complainant operates a group of companies and several long term care facilities in Regina, Saskatchewan, namely, the Regina Lutheran Home, Eden Care at Home, Eden Suites, The Community Day and Wellness Center, Milton Heights, Broadway Terrace, and Saplings Early Learning Child Care Centre.
The Complainant claims common law trademark rights in REGINA LUTHERAN HOME (since at least as early as 1963) and EDEN CARE COMMUNITIES (since at least as early as 2011) by virtue of its extensive use of these names prior to the Respondent’s registration of the disputed domain names.
The Complainant also relies on trademark applications made in Canada for REGINA LUTHERAN HOME, REGINA LUTHERAN HOME and DESIGN, and EDEN CARE COMMUNITIES under Canadian Trademark Application Nos. 1861754, 1861748, and 1864243, respectively. These applications were filed in October 2017, after the disputed domain names were registered.
The Respondent Kevin Klassen is a resident of Regina, Saskatchewan and a member of the Regina Lutheran Home’s Family Resident Council (the “Council”). In that role, the Respondent has taken continuing interest in the various activities of the Complainant. He prepared a financial report analyzing the Complainant’s activities and raising various questions about its management on July 13, 2017.
The Respondent registered the disputed domain names and on September 22, 2017. The disputed domain name resolves to a webpage with limited information referencing the Complainant and related parties. The disputed domain name redirects to the disputed domain name . 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant claims common law rights in the trademarks REGINA LUTHERAN HOME and EDEN CARE COMMUNITIES by virtue of longstanding use, which predates the registration of the disputed domain names. The Complainant states it has used the mark REGINA LUTHERAN HOME since at least as early as 1963, in relation to the management and administration of assisted living facilities, skilled nursing and nursing home facilities, and long term care facilities and nursing homes. The Complainant states it has used the mark EDEN CARE COMMUNITIES since at least as early as 2011, in connection with the same services, and has also used the mark since 2016, in providing administrative services to charities and nursing homes.
As a result of the Complainant’s longstanding use of these marks, the Complainant submits it has built up considerable goodwill and reputation. The Complainant submits its marks have acquired distinctiveness and secondary meaning, such that the public identifies the Complainant as the source of the services associated with the REGINA LUTHERAN HOME and EDEN CARE COMMUNITIES marks.
The Complainant provides evidence of multiple examples of its continuous use of the marks, including media recognition in association with events, social media, and the academic community.
The Complainant also relies on pending trademark applications for REGINA LUTHERAN HOME and REGINA LUTHERAN HOME and DESIGN (Canadian Trademark Application Nos. 1861754 and 1861748, respectively), both of which were filed on October 10, 2017. The Complainant also has a pending trademark application for EDEN CARE COMMUNITIES (Canadian Trademark Application No. 1864243) filed on October 24, 2017.
The Complainant contends that the disputed domain name is identical to the Complainant’s REGINA LUTHERAN HOME mark. The disputed domain name is alleged to be confusingly similar to the Complainant’s EDEN CARE COMMUNITIES mark. The Complainant contends that the content on the website associated with the disputed domain names replicates the colour and layout of the Complainant’s website, thereby adding to the likelihood of confusion. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent’s sole purpose of registering the domain names is to misleadingly divert consumers and to tarnish the trademarks at issue. The Complainant submits that the purpose of the redirection from to is to expand the platform which the Respondent uses to tarnish the trademarks at issue. Registered and Used in Bad Faith
The Complainant submits that the disputed domain names were registered and acquired primarily for the following bad faith purposes: to use such domain names as tools to demand money from the Complainant, to disrupt the business of the Complainant, to defame the Complainant’s staff, and to attract commercial gain and Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant states that the Respondent has indicated that he intends to post potentially defamatory information about the Complainant, its board of directors, and its Chief Executive Officer (“CEO”) on the associated websites. B. Respondent Identical or Confusingly Similar
The Respondent submits that the disputed domain names are not confusingly similar with the Complainant’s marks.
Although the disputed domain name and the Complainant’s legal name share the term “Eden”, the Respondent submits that the term “Eden” is a common name that does not support trademark rights in Canada. The Respondent further contends that based on Google searches conducted by the Respondent, it is unlikely that any person searching for the Complainant’s websites would be confused by the existence of the disputed domain name .
The Respondent agrees that the disputed domain name is confusingly similar or identical to the operating name of the Complainant’s senior’s home facility. However, the Respondent submits that he has undertaken adequate measures to ensure that any “errantly arriving 3rd party” can be redirected to the Complainant’s website.
The Respondent states that an “Under Construction” greeting page on the website of the disputed domain names displays a prominent message with the following directive:
“If you would like to visit the Eden Group and their web pages regarding the RLH please visit … ”.
The Respondent submits that his efforts to redirect errant searches will mitigate any possible damage to the Complainant arising from the Respondent’s ownership and use of the disputed domain names. Rights or Legitimate Interests
The Respondent states his legitimate interest in the disputed domain names arises from his good faith intention to provide noncommercial criticism or review of the Complainant’s activities and/or news reporting of issues related to the Complainant in the local media.
In detailed submissions, the Respondent says this interest arises out of concerns about the Complainant’s operations raised by the Regina Lutheran Home’s Family Resident Council, of which he is a volunteer member. The Respondent prepared and delivered a financial report about the Complainant to the Council, the Saskatchewan Provincial Government, the media, and several other third parties.
The Complainant relayed to the Respondent its concerns about the accuracy of the report and allegedly defamatory statements about its CEO, Director of Finance, independent external auditors, and tax lawyers. The Respondent in turn sought to explain or elaborate on the areas of concern.
Discussions between the Respondent and the Complainant over their differences regarding the report led to a criminal complaint made by the Complainant in September 2017. The Respondent states that at that point he felt it was necessary to register the disputed domain names and launch the related websites to keep the questions raised by the financial report in the public eye, so the media and/or government officials would take notice of all the issues.
The Respondent submits a letter from (apparently his spouse), the prior Chairperson of the Council, as further evidence of the Respondent’s continued legitimate interest in the disputed domain names.
The Respondent claims he has created and maintained the disputed domain names in order to shine light on the outstanding issues between the Council and the Complainant. The Respondent submits that his end goal is the betterment of the lives of loved ones living at the Complainant’s facilities. Registered and Used in Bad Faith
The Respondent provides detailed explanations about why he has not registered or used the disputed domain names in bad faith. The Respondent organizes his submissions in three parts. Throughout his submissions, the Respondent reiterates that the sole purpose of his registration and use of the disputed domain names is to keep the unresolved issues between the Council and the Complainant in the public eye. The Respondent contends that the Complainant has filed this Complaint in an attempt to silence him.
The Respondent first addresses the examples of circumstances that will be considered to be evidence of the bad faith registration and use of a domain name under paragraph 4(b) of the Policy and submits that his use of the disputed domain names does not fit these criteria. First, the Respondent contends that he has no intention to sell the disputed domain names. Second, he states that the Complainant already has a registered domain name and has only filed the Complaint to prevent the Council from displaying for the public all of the outstanding issues arising out of the issuance of the financial report. Third, the Respondent states that the disputed domain names are not intended to disrupt the Complainant’s business, since the message displayed on the resolving website allows for visitors to be redirected to the Complainant’s websites. Finally, the Respondent contends that his sole purpose of establishing the disputed domain names and websites is to keep the unresolved issues between the Council and the Complainant in the public eye. He states there is no commercial intention to the Respondent’s registration and use of the disputed domain names. The Respondent further submits that the disputed domain names are not intended to cause confusion with the Complainant’s business, as evidenced by the disclaimer messages directing visitors to the Complainant’s website.
Finally, the Respondent addresses the Complainant’s allegations of confusion and bad faith. The Respondent states that the Complainant appears to be mistaken when it says that the Respondent’s website “replicates the color and motif of the Complainant’s website, adding to the likelihood of confusion”, as he removed the REGINA LUTHERAN HOME and DESIGN mark from his website.
The Respondent also provides a response to the Complainant’s allegations of bad faith related to extorting money from the Complainant. The Respondent submits that the funds requested in the “Extortion Letter” referred to by the Complainant were requested as a form of compensation for the Respondent having to “waste” his personal time writing frequent detailed and time-consuming replies to the Complainant’s generalized complaints regarding the financial report. The Respondent states that the first time he asked for “financial compensation” was in a formal Law Society of Saskatchewan complaint the Respondent filed against the Complainant’s legal counsel.
Finally, the Respondent contends that he has not defamed any parties related to the Complainant and that the Complainant continues to make threats of lawsuits in an attempt to bully and/or intimidate the Respondent. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the 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 the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered and unregistered marks. To establish unregistered or common law trademark rights under the Policy, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. See section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has provided tangible evidence to support its proposition that it has common law rights in REGINA LUTHERAN HOME and EDEN CARE COMMUNITIES, as both marks have been extensively used as identifiers of its services. The Complainant’s evidence shows longstanding and continuous use of the REGINA LUTHERAN HOME mark since 1963, and the EDEN CARE COMMUNITIES mark since 2011, both being prior to the Respondent’s registration of the disputed domain names on September 22, 2017. The Panel is therefore satisfied that the Complainant has established relevant trademark rights.
The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademarks and the disputed domain names. This typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademarks to assess whether the mark is recognizable with the disputed domain name. See section 1.7 of the WIPO Overview 3.0. The content of the website associated with the domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element. See section 1.15 of the WIPO Overview 3.0.
The Respondent agrees that the disputed domain name is identical to the Complainant’s REGINA LUTHERAN HOME mark.
A comparison of the textual components of the EDEN CARE COMMUNITIES mark and the disputed domain name demonstrates confusing similarity as that term is understood. The term “Eden” is the first and dominant part of the Complainant’s mark and the Respondent’s disputed domain name. Upon seeing , an Internet user searching for the Complainant may reasonably assume the disputed domain name is invoking the companies or facilities conducted in Regina and known collectively as the Eden Care Communities, two of which carry the name Eden as part of their names (Eden Suites and Eden Care at Home). The term “groupofcompanies” does not differentiate the disputed domain name from the mark.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
A respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry. See section 2.5 of the WIPO Overview 3.0. Core factors Panels look at in assessing fair use include the nature of the domain name, circumstances beyond the domain name itself, and commercial activity. As stated in section 2.5.1 of the WIPO Overview 3.0, “[g]enerally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”
This assessment requires a contextual inquiry to determine whether the overall facts and circumstances of a particular case support a claim of fair use. While UDRP panels will weigh a range of case-specific factors in this analysis, “judging whether a respondent’s use of a domain name constitutes a legitimate fair use will often hinge on whether the corresponding website content prima facie supports the claimed purpose (e.g., for referential use, commentary, criticism, praise, or parody), is not misleading as to source or sponsorship, and is not a pretext for tarnishment or commercial gain. Notably in this regard, commercial gain may include the respondent gaining or seeking reputational and/or bargaining advantage, even where such advantage may not be readily quantified.” See section 2.5.3 of the WIPO Overview 3.0.
Prior UDRP panels recognize that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy. See section 2.6 of the WIPO Overview 3.0 for further guidance on noncommercial free speech with respect to criticism sites.
In this case, the Respondent repeatedly states that his “sole purpose” in registering the disputed domain names is to keep the unresolved issues between the Council and the Complainant in the public eye. The Respondent contends his interest in the disputed domain names arises from good faith intentions to use these domain names for criticism or review of the Complainant’s activities.
However, as stated under section 2.6.2 of the WIPO Overview 3.0, “even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation.”
Here, is identical to the REGINA LUTHERAN HOME mark and is confusingly similar to the EDEN CARE COMMUNITIES mark. The Respondent has not added an explanatory or critical word in the disputed domain names, thus distinguishing this case from those where Panels have found that the Respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site. See Justice for Children v. R neetso / Robert W. O’Steen,WIPO Case No. D2004-0175 and section 2.6.3 of the WIPO Overview 3.0.
The Respondent’s use of the disputed domain names does not fit entirely within paragraph 4(c)(iii) of the Policy, since the Respondent undeniably intended “to misleadingly divert consumers” by taking advantage of the Complainant’s common law marks. The fact that the domain name redirects Internet users to indicates that the Respondent intended to divert all Internet users who were looking for the Complainant to a domain name that is identical to the Complainant’s REGINA LUTHERAN HOME mark. Rather than legitimately using the disputed domain name as a forum for criticism of the Complainant, the Respondent uses it only to attract, then immediately divert, individuals searching for the Complainant, i.e., a bait-and-switch. By intentionally selecting the Complainant’s REGINA LUTHERAN HOME mark to present his views, the Respondent has not made a legitimate use of the disputed domain names. See Joseph Dello Russo M.D. v. Michelle Guillaumin,WIPO Case No. D2006-1627.
It may be true, as the Respondent says, that it is unlikely that a visitor to the website to which the disputed domain names resolve would ultimately think that it is a website belonging to the Complainant once the content has been read. However, confusion is highly likely to occur in relation to the disputed domain name which consists solely of the Complainant’s trademark. This use of the Complainant’s trademark is not, therefore, a legitimate use.
As noted in a prior line of cases, this reasoning in no way abridges the Respondent’s freedom to criticize the Complainant. See, for example, Joseph Dello Russo M.D. v. Michelle Guillaumin, supra; Justice for Children v. R neetso / Robert W. O’Steen, supra; and The First Baptist Church of Glenarden v. Melvin Jones,WIPO Case No. D2009-0022. As in Justice for Children v. R neetso / Robert W. O’Steen, supra, the Respondent “may continue his social and political commentary and attack against the Complainant’s activities, on the Internet if he wishes, at another website, so long as he does not appropriate the protected mark of another as his web address.”
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
A criticism website or a website that contains derogatory comments or information about a complainant does not in itself constitute bad faith. The circumstances of each case need to be considered. See Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly,WIPO Case No. D2014-0780.
The Policy, paragraph 4(b)’s examples are non-exclusive and merely illustrative. Thus, “even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.” See section 3.1 of the WIPO Overview 3.0.
Additional bad faith consideration factors include the timing and circumstances of the registration, whether the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant’s mark. See section 3.2 of the WIPO Overview 3.0.
In this case, the Respondent was directly affiliated with the Complainant as a volunteer member of the Council. He prepared a detailed financial report on the Complainant and has had many dealings with the Complainant through general correspondence and legal proceedings. The Respondent was undeniably aware of the Complainant’s rights in the REGINA LUTHERAN HOME and EDEN CARE COMMUNITIES marks as identifiers of its services when the disputed domain names were registered.
The Respondent’s motivation for registering the disputed domain names and is clear; they were registered for the purpose of creating a platform for criticizing the Complainant’s business and CEO. The disputed domain names are being used to resolve to a website for which the Respondent admits the sole purpose is to keep the unresolved issues between the Council and the Complainant in the public eye. However, the timing and circumstances of the registration and the Respondent’s targeting of the Complainant’s two marks indicate bad faith use and registration.
In a letter sent to the Complainant dated September 20, 2017, the Respondent clearly indicated that unless the Complainant was willing to “Close this File Right Here” by September 22, 2017, he would be linking a “final complete factual summary to [his] web hosting site” with “any possible/conceivable Google search criteria that any interested party to Mr. Stephen, the Regina Lutheran Home, and/or the Eden Group of Companies would type into their Google search when trying to research Mr. Stephen, RLH, and/or the Eden Group”. When this offer was not accepted by the Respondent’s deadline, the Respondent registered the disputed domain names the same day on September 22, 2017. This, along with the fact that there is no suggestion in the letter that the funds demanded were merely compensatory or some sort of reimbursement of costs or expenses, is a strong indicator of bad faith.
The disputed domain names are identical or confusingly similar to the Complainant’s marks, and they do not incorporate any other words to indicate that they resolve to a criticism website. This supports a presumption that the Respondent registered the disputed domain names and to mislead Internet users into believing that they were endorsed or operated by the Complainants, in order to divert Internet users who were searching for the Complainant. See Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly,supra. This intent is further supported by the fact that the Respondent clearly indicated in his letter to the Complainant dated September 20, 2017, that he intended to make his summary of the Complainant’s activities available to anyone who was trying to conduct a search for the Complainant through the use of “any possible/conceivable Google search criteria that any interested party to Mr. Stephen, the Regina Lutheran Home, and/or the Eden Group of Companies would type into their Google search.”
The circumstances of this case therefore indicate that the disputed domain names and were registered and are being used by the Respondent to disrupt the business of the Complainant by impersonating the Complainant via the disputed domain names.
In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. However, as stated in section 3.7 of the WIPO Overview 3.0, “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” The Panel finds that the use of the Respondent’s disclaimer in this case does not cure his bad faith registrations.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 names and be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: February 8, 2018
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