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Easecredit v. Barnas, Jeff [2005] GENDND 340 (6 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Regional Municipality of Peel v. Gaganjot Dhillon

Case No. D2004-1003

1. The Parties

The Complainant is The Regional Municipality of Peel, Brampton, Ontario, of Canada, represented by Mary C. Rae, Canada.

The Respondent is Gaganjot Dhillon, Mississauga, Ontario, of Canada, represented by Rupi S. Badwal, Canada.

2. The Domain Name and Registrar

The disputed domain name <peelregion.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2004. On November 30, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 1, 2004, Network Solutions, LLC 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. The Center verified that the 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 December 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2004. The Response was filed with the Center on December 31, 2004.

The Center appointed Jacques A. Léger, Q.C. as the sole panelist in this matter on January 11, 2005. 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

Respondent is Gaganjot Dhillon, an individual working for an organization (A.G. Works) in Mississauga, Ontario. On or about January 30, 1999, Respondent registered the domain name <peelregion.com> (hereinafter the “disputed Domain Name”) and started using it for advertising purposes in December 2000. In the summer of 2002, Respondent stopped using the disputed Domain Name for these purposes, and the website is currently being used to redirect traffic to another website, namely the one hosted at “www.apexcomputer.com”. Respondent has not registered the trademarks “PEELREGION” or “PEELREGION.COM”.

Complainant is a regional municipality which has been incorporated as “The Region of Peel” since 1974, pursuant to the Regional Municipality of Peel Act, and as such, it is responsible for providing various public services to taxpayers locating in the adjacent municipalities which constitute the Region of Peel. It maintains a website at www.peelregion.ca, for which it offers various services and information of particular interest to those living in the region of Peel. On May 26, 2004, Complainant gave public notice, as provided under paragraph 9(1)(n)(iii) of the Canadian Trade-Marks Act of the adoption and use by the Region of Peel, as a public authority, of the mark “PEELREGION” as an official mark for services. The Region of Peel has also registered a number of domain names, including <regionofpeel.ca>, <peelregion.ca>, <peelregion.info>, <peelregion.org>, and <regionofpeel.com>.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed Domain Name is confusingly similar to marks for which Complainant has acquired rights, namely “The Regional Municipality of Peel”, “The Region of Peel”, “Peel Region” and “peelregion”. Complainant alleges that it has used these marks in connection with various public services since the incorporation of the Region of Peel in 1974, and has submitted examples of such use in Annex 3 of the Complaint. Complainant also maintains a website at “www.peelregion.ca”, for the purposes of making information available to residents on the programs and services it provides.

The Complainant also contends that the disputed domain name closely resembles the trade names under which the Region of Peel conducts municipal business, since it is “distinctly” similar in appearance, sound and in the ideas inherent in and suggested by said Complainant’s trade names. It alleges that the use of the disputed domain name by Respondent constitutes representation that Respondent and its services are somehow connected to the Region of Peel.

Furthermore, Complainant argues that the disputed Domain Name is identical to the website operated by Complainant at the domain name < peelregion.ca>. It adds that any website operated by Respondent at the domain name < peelregion.com> will create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Region of Peel’s website. Moreover, Complainant adds that the mark “PEELREGION” was advertised in the Trade-marks journal dated May 26, 2004, giving public notice under paragraph 9(1)(n)(iii) of the Trade-marks Act of the adoption and use by the Region of Peel, as a public authority, of this mark as an official mark for services.

Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name since there is no active site operated at “www.peelregion.com”. It contends that the Respondent’s only use of the disputed domain name is for redirection to another of the Respondent’s sites, namely the one hosted at “www.apaxcomputers.com. Moreover, Complainant adds that the disputed Domain Name is not the name by which Respondent is associated, nor is it its legal name, surname or other reference by which Respondent is or was commonly identified.

For these reasons, Complainant contends that Respondent is using the disputed domain name neither in connection with a bona fide offering of goods and services, nor in manner that would constitute a legitimate non-commercial or fair use.

Complainant argues that the disputed domain name was registered and is being used in bad faith because Respondent re-registered the disputed domain name after it had learned that Complainant allegedly had rights in the marks described in paragraph 11 of the Complaint. Complainant also argues that use in bad faith is not limited to positive action, and that the fact that the disputed domain name has been inactive for over two years warrants a finding of use in bad faith in the present case.

B. Respondent

In its Response, Respondent concedes that the disputed Domain Name is similar to Complainant’s registered official mark PEELREGION, but notes that this mark was not registered until May 26, 2004, while its use of the disputed Domain Name goes back to January 1999. It adds that Complainant made no attempts to curb the use until February 2003. Furthermore, Respondent argues that there is no confusion arising from its use of the disputed Domain Name, since Complainant’s and Respondent’s services are very different. Respondent also argues that the Complainant has not adduced evidence of actual confusion, but has merely made an allegation that Respondent’s use of the disputed Domain Name may lead to confusion.

Respondent contends that it has legitimate interests in the disputed Domain Name, because it registered and used it at least 3 ½ years before Complainant allegedly claimed any rights in it. Moreover, it adds that the disputed Domain Name is merely descriptive of a geographical location, and that therefore Complainant cannot have any exclusive right to it. In addition, Respondent argues that its main business is offering a bona fide business directory, and that Complainant’s trade-marks are related to public services such as water treatment, wastewater collection, public health, etc. As such, it considers that Respondent’s website appeals to a different audience, and the Complainant has not discharged its burden to show that Respondent does not have rights or legitimate interests in the disputed Domain Name.

Respondent also argues that it has not registered or used the disputed Domain Name in bad faith. In its Response, it alleges that its interest in the disputed Domain Name has always been solely for the purpose of providing a business directory for businesses in Brampton, Mississauga and Caledon. It adds that it is not a competitor of the Complainant’s, and that its counter-offer to Complainant to transfer the disputed Domain Name does not amount to bad faith. Respondent claims that although Complainant alleges inactivity for two years, it has provided evidence of development efforts, copies of sample pages from the updates website, and an explanation as to why it suspended development over the past 10 months.

6. Discussion and Findings

Pursuant to Paragraph 4(a) of the Policy the Complainant must convince the Panel of three elements. In order to have the Domain Name transferred, it is incumbent upon the Complainant to cumulatively show that:

(i) the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and

(ii) the Respondent has no legitimate rights or interests in the Domain Name; and

(iii) the Domain Name was registered and used in bad faith.

These three elements are considered below. However, before addressing them, the Panel deems it appropriate to reiterate the fact that all the allegations, arguments and documents in support thereof submitted by the parties were examined and considered prior to the Panel deciding the case on the merits.

(i) the Domain Name is identical or confusingly similar to a trademark in which it holds rights;

Complainant’s Rights in the marks

The Panel has reviewed the documentary evidence provided by the Complainant regarding its alleged rights in the trademark “PEELREGION”. The Panel notes that, even if trademark rights accruing to Complainant by virtue of registration, were obtained three years after Respondent registered <peelregion.com> that finding does not change the fact that the Complainant has rights in the trademark “PEELREGION”. In any event, it is true that trademark rights can also be acquired through use, or common law.

Complainant claims to have developed common law rights in the marks “PEELREGION”, “THE REGION OF PEEL”, “PEEL REGION”, “THE REGIONAL MUNICIPALITY OF PEEL” and other marks (hereinafter “the marks”). As the evidence filed by Complainant in support of its Complaint shows, it has made extensive use of these marks and they have become known in the region. See, in this respect, InterTrade Systems Corporation v. Donna Lawhorn (National Arbitration Forum, July 15, 2002), Jeanette Winterson v. Mark Hogarth, (WIPO Case No. D2000-0235), and Cedar Trade Associates Inc .v. Greg Ricks [National Arbitration Forum Case No. FA 0002 000093633] of February 25, 2000, where the Panel found that the Complainant (Cedar) had invested considerable time and effort in establishing an association between “BuyPC.com” and its goods and services over approximately 4 years, and thus that “BuyPC.com” qualified as a trademark for the purposes of the Policy. In the present case, use of the marks has been made since the incorporation of the municipality in 1974, and in conjunction with a wide cross-section of public services. Moreover, it has registered many of these trademarks, namely in conjunction with police and ambulance services, dating back to 1986. Therefore, the Panel is satisfied that Complainant has met the test for trademark rights acquired at common law through use, and finds that such use confers upon Complainant exclusive rights of the marks “PEEL REGION” and “PEELREGION”, quite distinct from the rights it has subsequently gained, as a result of the public notice of use and adoption as an official mark it gave on May 26, 2004.

Identical or Confusingly similar

With respect to the confusing similarity between Complainant’s common law trademarks and the disputed Domain Name, the second-level part of the disputed Domain Name, <peelregion.com>, is phonetically and visually identical to the Complainant’s “PEELREGION” trademark. Thus, an average Internet user who has knowledge or recollection of the name “Peel Region”, might easily mistake the Respondent’s website associated with the Domain Name as being somehow affiliated, sponsored or owned by the Complainant. It is therefore likely to induce the general public into believing that the disputed Domain Name and the web site operated from the domain name are associated with the Complainant. See Société des Bains de Mer Et Du Cercle Des Étrangers À Monaco v. Global Productions-Domain For Sale, (WIPO Case No. D2000-1332). The Panel is of the opinion that this fact alone is sufficient to conclude that the disputed Domain Name is confusingly similar to marks in which this Panel finds Complainant has rights.

The mere addition of the suffix “.com” is obviously not sufficient to avoid a finding that the disputed Domain Name is “identical or confusingly similar” in the present case. See Toronto Star Newspapers Limited v. Virtual Dates Inc. (WIPO Case No. D2000-1612). The Panel finds it reasonable to apply the same reasoning as in Pomelatto S.p.A. v. Tonetti, WIPO Case No. D2000-0493, where the panel found <pomelatto.com> to be identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELATTO is not relevant. Moreover, the disputed Domain Name being identical or confusingly similar to many of the Complainant’s registered domain names, including the domain on which it hosts its main website “www.peelregion.ca”, and, for example, <regionofpeel.ca>, <peelregion.info>, <peelregion.org>, and <regionofpeel.com>, makes it perfectly plausible that the public in general, and internet users in and around the Region of Peel in particular, will be mistakenly led to believe that the disputed Domain Name and the web site operated from the disputed Domain Name are somehow associated with or sponsored by the Complainant.

For these reasons, the Panel finds that Complainant has discharged its burden under Paragraph 4(a)(i) of the Policy to prove that the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights.

(ii) the Respondent has no legitimate rights or interests in the Domain Name

According to the Policy, the Panel can rely on any of the following circumstances, but without limitation, to find that a Respondent has rights or legitimate interests in the domain name if:

(i) Before any notice to Respondent of the dispute, 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 and services; or

(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.

(iii) 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.

(See the Policy, Paragraph. 4(c) (i) - (iii)).

In this regard, the Panel refers to its decision in Pivotal Corporation v. Discovery Street Trading Co. Ltd. (WIPO Case No. D2000-0648) where it was decided that once a lack of legitimate interests or rights has been sufficiently demonstrated by a complainant, the failure of respondent to adequately address this issue may allow the Panel to draw, in certain circumstances, an adverse inference therefrom, since the respondent is the sole party able to provide satisfactory evidence concerning any one of the above-mentioned circumstances. The Respondent having failed, in the present case, to provide such satisfactory evidence, the Panel hereby draws an adverse inference and finds that Respondent has no rights of legitimate interests in the disputed Domain Name.

The Respondent has submitted to this Panel that it has made “development efforts” and drafted pages for the new website. However, those elements per se are insufficient to sustain an allegation of “demonstrable preparations to use”, especially after a period of “non-use” of over two years (See American Online Inc. v. Rao Tella d/b/a Arbor Online Box (National Arbitration Forum, December 28, 2001). It is even admitted in the Affidavit of Gaganjot Kaur Dhillon, filed in support of the Response, that the development of the “new” website has been slow and that the time commitment given to it was limited. These factors, taken together, make it compelling for the Panel to find in favor of Complainant under Paragraph 4(c)(i) of the Policy.

Moreover, it is the Panel’s opinion that, in the current state of affairs, the Respondent cannot claim to “use” the disputed Domain Name in connection with a bona fide offering of goods and services, as it is merely attempting to attract and divert online traffic to its other web site unconnected with the domain name¹ and this cannot as such constitute a bona fide offering of goods and services. In addition Respondent has not submitted any evidence demonstrating that it has been commonly known by the disputed Domain Name², and therefore cannot benefit from Paragraph 4(c)(ii) of the Policy. In its Response, Respondent argues that its main business “is offering a bona fide business directory”. The Panel does not dispute this fact, but it is the current use of the disputed Domain Name which is the object of these proceedings, not the Respondent’s main business. Finally, Respondent does not argue – and the Panel does not believe - that Respondent is making a legitimate noncommercial or fair use of the disputed Domain Name, so it is moot for this Panel to inspect the possible application of Paragraph 4 (c)(iii) of the Policy.

For all these reasons, the Panel finds that Complainant has met its burden to show that Respondent has no rights or legitimate interests in the disputed Domain Name. Consequently, the Panel finds in favor of Complainant pursuant to Paragraph 4(a)(ii) of the Policy.

(iii) the Domain Name was registered and used in bad faith.

Most of the time, it is quite difficult, if not impossible, to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; as rule, one should not expect to find the “smoking gun”. At the same time, good faith is to be presumed. The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration and the use of the disputed domain name lies squarely on the shoulders of Complainant, once a case of bad faith has been made by Complainant, as the Panel finds in the present case, it is up to Respondent to either justify its business conduct, explain it, or demonstrate satisfactorily the contrary. See, to this effect: The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez (WIPO Case No: D2002-0823); AT&T Corp. v. Linux Security Systems (WIPO Case No. DRO2002-0002).

Respondent has admitted, in the Affidavit of Amritpal Singh Dhillon, that it initially launched its web-based advertising portal to appeal to the markets of Mississauga and Brampton, which are both integrally a part of the greater Region of Peel. Due to the geographical proximity of Respondent’s business activities with the Region of Peel, the Panel has difficulty believing, as it has been stated in the Affidavit of Amritpal Singh Dhillon, that Respondent had never heard of the phrase “peelregion” or “Peel Region” anywhere.

Moreover, Respondent has admitted to have had knowledge of Complainant’s rights in the trademarks “THE REGIONAL MUNICIPALITY OF PEEL”, “THE REGION OF PEEL”, “PEEL REGION” and “PEELREGION”, after having been contacted and informed to this effect by Ms. Henry to this effect on or about January 2001 – as it more fully appears in Annex 7 of the Complaint. In January 2002, however, Respondent re-registered the disputed Domain Name. The Complainant argues, and the Panel agrees, that when a Respondent has notice of a Complainant’s rights in trademarks, the Respondent’s re-registration can be an indication of bad faith use (The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038).

It is also rightly noted in the Complaint that the concept of a domain name “being used in bad faith” is not limited to positive action. In certain cases, such as the present one, inactivity by the Respondent, particularly when it is made aware of a third party’s rights in a mark identical to its registered domain name, and when it nonetheless maintains such a domain name without actively using it, can amount to use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In its Response, Respondent disputes Complainant’s use of Telstra, citing the Autoshop 2 decision³, which characterized Telstra as “a fact intensive case” and arguing that its conclusions rested on the fact that “the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name”. While the Panel has doubts as to whether Respondent has provided such evidence, this criterion is merely one part of the analysis made in Autoshop 2. In fact, the decision also turned on the fact that the Complainant’s mark had a strong reputation, as evidenced through wide use, in a given geographical area, which is the case here.

Having said that, if there would have been a doubt in the Panel’s mind – which is not the case – the Panel is mindful that Complainant is a public authority within the meaning of the Canadian Trade-Marks Act. As such, the Panel takes notice that the Regional Municipality of Peel is a creation of the Ontario legislature, and in this connection it is mindful of section 9(1)(d) of the Trade-Marks Act,

“No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely mistaken for:

(…)

(d) any word or symbol likely to lead to the belief that the wares or services in association with which it is used have received, or are produced, sold or performed under, royal, vice-regal, or governmental patronage, approval or authority.”

Since it is not a sufficient defense to claim ignorance of the law or to willfully blind itself of it, the Panel takes judicial notice that Respondent had, at the very least, constructive knowledge that its use of the disputed Domain Name might contravene these provisions. As mentioned above and based on the case file, this Panel finds it likely that the Respondent also had actual knowledge of the Complainant’s unregistered trademark rights when Respondent registered the disputed domain name. The Panel makes the further inference that its current bad faith use of the domain name, i.e. linking it to an external website selling computers for either two years or 10 months (there are some factual discrepancies between the parties on this matter), indicates that the original registration of the disputed domain name was also made in bad faith.

In sum, the Panel finds that since Respondent could not have ignored the common law rights of Complainant in the marks at the time it registered the disputed Domain Name, as it had started doing business in the Region of Peel, in addition to re-registering the disputed Domain Name despite the notice of Complainant’s rights in the marks, and nonetheless deciding to maintain the disputed Domain Name, it has not satisfactorily justified its business conduct. Therefore, the Panel finds that Complainant has satisfactorily satisfied its burden under 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 < peelregion.com> be transferred to the Complainant.

Jacques A. Léger, Q.C.
Sole Panelist

Date: February 16, 2005

² See Guardian Industries Corp. V. Siam Plate Glass Industry Ltd. (Nat. Arb. Forum, March 25 2002).

³ Autoshop 2 Di Battaglia Ferrucio C.S.N.C. v. Williamette RF Inc., WIPO Case No. D2004-0250.