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Ukrainian World Congress v. Daniel Steel [2004] GENDND 1317 (26 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ukrainian World Congress v. Daniel Steel

Case No. D2004-0658

1. The Parties

The Complainant is Ukrainian World Congress, of Toronto, Ontario, Canada, represented by Askold S. Lozynskyj, United States of America.

The Respondent is Daniel Steel, of Colchester United Kingdom of Great Britain and Northern Ireland, of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <ukrainianworldcongress.org> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2004. On August 19, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On August 19, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 31, 2004. The Center verified that the Complaint together with the amendment to the Complaint (hereinafter “Complaint”) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2004.

The Center appointed William R. Towns as the sole panelist in this matter on October 1, 2004. 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.

In the course of the Panel’s preliminary consideration of this case, the Panel concluded that additional submissions from the parties whether “Ukrainian World Congress” serves as the Complainant’s trademark or service mark, as opposed to merely its trade or business name, would materially assist the Panel in reaching a decision, since the Policy does not protect trade names or company names except to the extent they also serve as trademarks or service marks. Administrative Panel Order No. 1 was issued to provide the parties with an opportunity to provide supplemental submissions regarding this issue. Under the Panel’s Administrative Order, the Complainant’s supplemental submission was to be provided by October 12, 2004, and any response provided by the Respondent by October 19, 2004. The Complainant forwarded a Supplemental Statement to the Center on October 12, 2004, to which the Respondent did not reply.

4. Factual Background

The Complainant is a non-profit corporation organized under the laws of Canada. Initially formed in 1967, the Complainant has been known under its current name, Ukrainian World Congress, since 1993. The Complainant serves as an international coordinating body for Ukrainian ethnic communities throughout the world, and since 1993, has provided services and support to such communities, in addition to the dissemination of various publications in such communities, under the name “Ukrainian World Congress”. The Complainant maintains its headquarters in Toronto, Canada, and has 10 international and 60 national member organizations in 26 countries.

The Complainant initially registered the domain name <ukrainianworldcongress.org>, in connection with a website which it owned and operated. Through inadvertence, the Complainant failed to renew its registration of the domain name, and the Respondent thereafter registered the disputed domain name on May 30, 2004. At first, the Respondent used the domain name to direct Internet users to an active website giving the appearance of being the Complainant’s website, or a website affiliated with, endorsed or sponsored by the Complainant. Currently, the domain name resolves to a web page bearing the legend “World Ukrainian Congress” and stating that “the site is temporarily offline”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has used “UKRAINIAN WORLD CONGRESS” as its trade name and as a trademark or service mark exclusively and continuously since 1993, in association with the provision of services and publications to promote the well-being of the Ukrainian people worldwide. In this regard, the Complainant maintains that it uses “UKRAINIAN WORLD CONGRESS” as a mark in connection with the coordination of relief to the needy, organization of educational programs, organization of cultural and sporting events, organization of congresses and conferences, appearances before government bodies and international organizations to raise human rights issues, and the dissemination of press releases, appeals, pamphlets and statements in the media and communities.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use “UKRAINIAN WORLD CONGRESS” in connection with the domain name, which the Complainant alleges the Respondent has used to misleadingly divert Internet users to a website where the Respondent passes himself off as the Complainant and seeks financial contributions under false pretenses.

The Complainant alleges that the foregoing constitutes bad faith registration and use of the domain name by the Respondent. The Complainant further alleges that the Respondent has illegally created a medium that allows him to obtain sensitive information regarding Ukrainians and Ukrainian issues.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.¹

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names.” Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Although the Complainant bears the ultimate burden of establishing all three elements of Paragraph 4(a), a number of panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <ukrainianworldcongress.org> is identical or confusingly similar to “UKRAINIAN WORLD CONGRESS”, the Complainant’s business or trade name. The critical inquiry here, however, is whether the domain name is identical or confusingly similar to any trademark or service mark in which the Complainant has rights. The Policy does not extend to trade names per se. See Final Report of the Second WIPO Internet Domain Name Process, WIPO Publication No. 843, Paragraph 306-320. However, under the national laws of Canada, a trade or business name may be registered as a trademark, or may obtain common law recognition as a trademark or service mark, if the trade name is sufficiently used to identify goods or services.² A complainant that uses its trade name or business name as a trademark or service mark may thus establish trademark or service mark rights for purposes of paragraph 4(a)(i) of the Policy. See G. Bellentani 1821 S.p.A. v. Stanley Filoramo, WIPO Case No. D2003-0783.

The Complainant has provided no evidence of the registration of “UKRAINIAN WORLD CONGRESS” as a trademark or service mark in Canada or elsewhere. However, in its Supplemental Statement, the Complainant points out that it since 1993, it has used “UKRAINIAN WORLD CONGRESS” to identify itself as the source of educational, support and relief services provided to Ukrainian ethnic communities around the world. During that same period, the Complainant has continually used “UKRAINIAN WORLD CONGRESS” as an identifier in connection with various publications, including books, monthly newsletter and quarterly bulletins. To the same effect, “Ukrainian World Congress” is utilized by the Complainant in promotional materials it disseminates regarding the services it provides.

Under Canadian law, common law rights in a trademark or service mark may be established by extensive or continuous use to identify particular goods or services, and a mark may be deemed to be used in connection with services even though it is not used in the normal course of trade. See Government of Canada v. David Bedford a.k.a. DomainBaron.com, WIPO Case No. D2001-0470. Applying these principles to this case, the Panel concludes the Complainant has made a sufficient showing that “UKRAINIAN WORLD CONGRESS” would be recognized as a trademark or service mark under the Canadian Trademarks Act. Accordingly, the Panel finds that the Complainant has established rights in this mark for purposes of Paragraph 4(a)(i) of the Policy.

In view of the foregoing, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The record reflects that the Complainant has not licensed or otherwise authorized the Respondent to use the “UKRAINIAN WORLD CONGRESS” trade name/mark. There is no indication that the Respondent has any connection whatsoever with the Complainant. Nevertheless, the Respondent has incorporated the entirety of the Complainant’s mark in the disputed domain name, and he has used the domain name to divert Internet users to a website that strongly resembles the Complainant’s official website, and at a minimum would create confusion whether the website is affiliated with or sponsored by the Complainant. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the Respondent has not provided a reply to the Complainant’s contentions, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Accordingly, the Panel considers it appropriate to examine the record in its entirety to determine whether any evidence exists supporting a claim by Respondent of rights or legitimate interests in the disputed domain name.

The record provides no evidence of the Respondent’s use, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.³ Similarly, there is no indication that the Respondent has been commonly known by the disputed domain name. Thus, to the extent that the Respondent has used the domain name in connection with a website providing content about the Complainant, its organization, purposes and activities, the pertinent inquiry is whether the Respondent is making a legitimate noncommercial or fair use of the domain name within the contemplation of Paragraph 4(c)(iii).

The Panel notes that disputes involving questions of legitimate noncommercial or fair use generally are context specific. See Pfizer Inc v. Van Robichaux, Case No. D2003-0399. Nevertheless, even if the Respondent intends only a noncommercial⁴ use of the disputed domain name, attracting Internet users to a website by creating initial interest confusion is not legitimate or fair use of the domain name, when no effort is made to dispel this initial confusion and the website does not reflect any “fair use” of the domain name. See Banque Cantonale de Genève v. Primatex Group S.A., WIPO Case No. D2001-0477. In this instance, the Respondent’s domain name incorporates the Complainant’s “UKRAINIAN WORLD CONGRESS” trade name/mark in its entirety. The Respondent has used the domain name to divert Internet users to a website the appearance of which not only creates initial interest confusion regarding the Complainant’s affiliation with or sponsorship of the website, but does nothing to dispel the appearance of such an affiliation or sponsorship. To the contrary, by all appearances the Respondent is passing his website off as an official website of the Complainant. This clearly is not a legitimate or fair use of the domain name, in either a noncommercial or commercial context.

In view of these circumstances, and given that the Respondent has offered no response to the Complaint, the Panel concludes that the Complainant has met its burden of demonstrating that the Respondent lacks rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The circumstances of this case do not bring it squarely within any of these four examples, but the Panel finds from the particular facts of this case that the Respondent registered and is using the disputed domain name in bad faith.⁵ The Respondent registered and has intentionally used the domain name <ukrainianworldcongress.org>, without the Complainant’s consent, to divert Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website. The Respondent clearly has no connection with the Complainant, and the very use of the domain name by the Respondent under the circumstances of this case evinces “opportunistic bad faith.” See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. The fact that the domain name currently does not resolve to an active website -- in other words, that the domain name is being passively held -- does not negate its “use” for purposes of the Policy. The passive holding of a domain name has been found indicative of “bad faith” by a number of other panels. See, e.g., Mondich & American Vintage Wine Biscuits, Inc. v. Shane Brown, WIPO Case No. D2000-0004; See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith for purposes of Paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ukrainianworldcongress.org> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: October 26, 2004

¹ The Panel notes that the Respondent, after receiving notification of the Complaint on September 1, 2004, advised the Center that he was willing to transfer the domain name to the Complainant for the price of registration, which was not specified. Subsequently, after receiving notification of the Complainant’s Supplemental Statement on October 12, 2004, the Respondent notified the Complainant that he would hold open for three days an offer to sell the domain name to the Complainant for registration and hosting expenses alleged to be around US $100.00. The Respondent did not document these claimed expenses.

² See, e.g., Canadian Intellectual Property Office, A Guide to Trade-marks: The Basics.

³ The Respondent’s unauthorized use of the website to pass off services provided by the Complainant as those of his own does not constitute a bona fide offering of goods or services.

⁴ The Complainant asserts that the Respondent has used the website to obtain financial contributions for his own gain from persons wishing to support the Complainant’s activities through an email address, maintained by the Respondent. However, there is no evidence that the Respondent in fact has used the website for this purpose.

⁵ The examples of bad faith registration and use provided in Paragraph 4(b) are not intended to be exhaustive of all circumstances indicative of such bad faith.