WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Bruce Trail Association v. Andrew Camp and Bruce Trail Enterprises
Case No. D2001-1021
1. The Parties
The Complainant in this administrative proceeding is The Bruce Trail Association, a not-for-profit corporation registered in the Province of Ontario and a recognized "public authority" within the meaning of Section 9(1)(n)(iii) of the Canadian Trade-marks Act, whose principal place of business is the Rasberry House on the grounds of the Royal Botanical Gardens' Arboretum, located in Hamilton, Ontario, Canada.
The Respondents in this administrative proceeding are Mr. Andrew Camp and Bruce Trail Enterprises, an individual and a partnership respectively, both of whose principal places of business are located at 139 Finch Avenue East, North York, Ontario, Canada, M2N 4R6.
2. The Domain Names and Registrars
The disputed domain names are <brucetrail.com> and <brucetrail.net>. The Registrars of these domain names are Network Solutions, Inc. of Herndon, Virginia, USA and Tucows, Inc. of Toronto, Ontario, Canada.
By registering the subject domain names with the Registrars, the Respondents agree to the resolution of disputes pursuant to the Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of one member was appointed on October 8, 2001, by WIPO.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 13, 2001, by email and on August 15, 2001, by hardcopy. The Center dispatched to the Registrar two Requests for Registrar Verification on August 16, 2001. On August 22, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Center received the Respondents’ Response on September 17, 2001, by email and on September 21, 2001, by hardcopy.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
It was brought to the attention of the Administrative Panel that the Response was delivered late. The Administrative Panel has exercised its discretion to consider it.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainant’s material.
The Bruce Trail is the oldest marked hiking trail in Canada. It extends over 780 kilometers, with more than 290 kilometers of associated side trails. The Bruce Trail has earned a worldwide reputation comparable to that of the Appalachian Trail in the United States.
The significance of the Bruce Trail extends beyond being Canada's best-known and most heavily used public footpath. The trail and its surrounding environment also serve as a vitally important link between over 100 public parks and natural areas within the Niagara Escarpment region. The Trail is part of a greenway providing an undisturbed habitat and a migratory corridor for a wide range of plants and animals.
The Bruce Trail traces its beginnings to 1960, when a small committee was formed with a vision of creating a public hiking trail that would draw attention to the natural treasures and dramatic scenery along the glacial formed Niagara Escarpment, including its sea stacks, karst formation caves, deep valleys, scenic waterfalls, rugged hills, and spectacular cliffs. The committee made the first plans for what has come to be known as the Bruce Trail, a footpath originating near Niagara Falls, Ontario and terminating at the tip of the Bruce Peninsula in Tobermory, Ontario.
On March 13, 1963, the Complainant was incorporated under Ontario Letters Patent as a not-for-profit corporation and on October 15 of that year, it held its first Annual General Meeting. Volunteers talked with hundreds of landowners along the mapped route, negotiating the necessary trail access agreements. Workers cut trails through the bush and along fence-rows, marking the route, erecting signs, and building stiles and footbridges where needed.
In less than seven years work on the trail was completed and on June 10, 1967, in Tobermory, Ontario, the Bruce Trail was opened officially in a ceremony presided over by the Province of Ontario's Minister of Lands and Forests.
The next decade was one of growth and maturation for the Bruce Trail. Membership grew from 60 to approximately 7,500. Eleven local Bruce Trail Clubs (later reduced to nine) were created. More campsites were added to the growing range of trail resources and more and more people from around the world discovered the joy of exploring the Niagara Escarpment on foot.
In 1985, amid much publicity and after nearly 18 years of study, the Ontario Government approved the Niagara Escarpment Plan, which included a commitment to acquire lands for escarpment parks and to secure and stabilize a route for the Bruce Trail connecting those parks.
In 1990, the Niagara Escarpment was designated by UNESCO as a World Biosphere Reserve, one of only six in Canada. A Biosphere Reserve is an area that has successfully balanced the conservation and preservation of a significant ecosystem with its surrounding development. The presence of the Bruce Trail, with its progressive endeavors in the region, was a critical element to this designation.
The Bruce Trail is perhaps the most diverse region in the Province of Ontario, supporting an incredible ecosystem of flora and fauna, including many threatened and endangered species, all located in the heart of Canada's most densely populated area. As such, the Bruce Trail is an important part of both Canada's and the world's natural and cultural heritage. A few of the other internationally renowned areas that have also been recognized as World Biosphere Reserves include the Florida Everglades, the African Serengeti, and the Galapagos Islands.
On May 25, 1992, the Complainant was awarded the Canadian Environmental Achievement Award, and was presented with a Certificate of Honour for its efforts. More recently, in February of 1995, the Complainant received the Lieutenant Governor's Conservation Award, sponsored by the Conservation Council of Ontario.
Today, about 42% of the Bruce Trail is on Crown land, conservation areas, and land purchased and managed by the Complainant, with the balance following public roads or road allowances, or being located on private land. The Complainant is responsible for the promotion and protection of the wildlife and natural resources along the now famous Bruce Trail and for the appreciation of its natural beauty. To this end, the Complainant actively purchases property, as necessary, to ensure the continuation and protection of the Trail.
The Complainant has an Environment Committee with duties directed to the promotion of environmental awareness in general, including, inter alia, the promotion of the Bruce Trail as an integral component of the Niagara Escarpment World Biosphere Reserve, the education of the general public about the environmental character and potential of the Trail, the promotion of the environmental and preservation values of the Complainant and making presentations to other interested organizations.
The Complainant currently has approximately 8000 members organized into nine clubs across southwestern Ontario (including one in Toronto with approximately 3500 members), of which total 700 are active volunteers. Club members promote the Bruce Trail within their region and are responsible for organizing hikes, social outings and seminars. They also keep in touch with local landowners and participate in Club committees.
Conservative estimates indicate that the Bruce Trail draws approximately 30,000 visits each year from out-of-province visitors, with a significant portion of these people coming from the United States.
The Complainant provides the following information concerning its registered Canadian marks:
|BRUCE TRAIL||904,012||January 10, 1990|
|BRUCE TRAIL ASSOCIATION||904,013||January 10, 1990|
|BRUCE TRAIL & Design||904,014||January 10, 1990|
Each of these marks is registered as an official mark, pursuant to the provisions of the Canadian Trade-marks Act.
While the Complainant uses each of these official marks in association with, inter alia, its activities outlined herein, their registration under Section 9(1)(n)(iii) effectively bars their use by others in association with any wares or services. Accordingly, the Complainant reserves the right to use these official marks with any such wares or services as may yet be determined in the future.
The Complainant is also the registered proprietor of the following domain names: <brucetrail.org>, registered with Network Solutions, Inc., on October 7, 1995; <brucetrail.ca>, registered with Internic.ca Corp., on December 15, 2000.
In February of 1998, the Complainant formed a committee to oversee its existing and future Internet presence. It remains the goal of this committee to provide a site that is informative for current members of the Complainant, that is educational for everyone and that ultimately will attract new members to the association.
Through its <brucetrail.org> website and through other channels of trade, the Complainant presently offers a variety of promotional materials bearing its registered BRUCE TRAIL marks, including, without limitation, videotapes, audio cassettes, calendars, guides and handbooks, maps, sweatshirts, t-shirts, books, bags, first aid kits, hats, hiking staffs, and mugs.
The Respondents operate the <brucetrail.com> and the <brucetrail.net> domain names as promotional and marketing tools for their serial broadcast products and entertainment services involving a fictional character named Bruce Trail that investigates environmentally sensitive cases.
As residents of North York, a part of Metropolitan Toronto in the Province of Ontario, the Respondents would have been aware of the existence of the internationally famous BRUCE TRAIL marks when, on April 24, 1996, Bruce Trail Enterprises was registered as a general partnership.
On learning of the existence of Bruce Trail Enterprises, the Complainant contacted the Respondents’ lawyer on January 13, 1997, specifically to notify them of their infringing use of the Complainant’s marks and to request that the name of the partnership and that of the "Bruce Trail" character, be changed.
The Respondents’ lawyer replied on January 20, 1997, stating that he was preparing a response.
On May 6, 1998, the Respondents’ application for registration of BRUCE TRAIL EVIRO P.I. as a trade-mark in Canada was corrected and re-advertised in the Trade-marks Journal, claiming a date of first use in Canada of May 1, 1995. The Respondents were aware of the Complainant’s BRUCE TRAIL marks on May 1, 1995, their claimed date of first use of the BRUCE TRAIL EVIRO P.I. mark.
On May 22, 1998, the Complainant’s opposition was entered against the Respondents’ Canadian trade-mark application.
In finding for the Complainant and refusing the Respondents’ application, the Trade-marks Opposition Board found, inter alia, as follows:
a) the Complainant’s BRUCE TRAIL official mark has become known and has been in use in Canada since at least as early as 1963;
b) the Complainant’s BRUCE TRAIL mark is identical to the dominant word components of Respondents’ BRUCE TRAIL ENVIRO P.I. mark, such that Respondents’ BRUCE TRAIL ENVIRO P.I. mark so nearly resembles as to be likely to be mistaken for the Complainant’s BRUCE TRAIL official mark.
The Respondent, Bruce Trail Enterprises, is the owner of a registered United States trademark, BRUCE TRAIL ENVIRO P.I., which claims use in commerce in association with a series of radio and television programs featuring a cartoon character since May 1, 1995. The Complainant did not seek to oppose the registration of this trademark for a variety of reasons, including, inter alia, the presence of the additional word elements "ENVIRO P.I.", and the fact that the application was brought in the United States based on use in commerce in that country alone.
On April 28, 2001, the Respondents wrote to the Complainant stating:
"…the Ontario partnership of ‘Bruce Trail Enterprises’ is no longer pursuing the possibility of distribution of any of its products in Canada…the …Ontario partnership…will be resigned….
At no time were products ever sold in Canada…no licenses were issued for commercial broadcast in Canada of any products represented by the Ontario partnership.
The top level domain names, <brucetrail.com> and <brucetrail.net> are being used commercially under authority of ‘Bruce Trail Enterprises’ located in Nashville, Tennessee, USA and are protected under USA Trademark, Copyright and also registered with Network Solutions in the USA…."
The following information is derived from the Respondents’ material.
The Respondents concede that the Complainant has a pending application for a Canadian trademark for BRUCE TRAIL, but note that they registered Bruce Trail Enterprises, as a style name for the corporation, Goldhand Inc., with the State of Tennessee on April 26, 2001, and that they registered Bruce Trail Enterprises as a partnership under the Province of Ontario Business Names Act, on April 21, 2001.
The Respondents applied to register their trademark with the United States Patent and Trademark Office on August 15, 1996. It was registered as of October 14, 1997.
The Respondents created a multimedia comic strip character named Bruce Trail, as his proper name. The idea came from the geographic location, The Bruce Trail, but Respondents’ use is creative and fictional.
The Bruce Trail Enviro P.I. Character has been in development and use since as early as 1996.
The subject domain names were registered on November 12, 1998, and March 8, 2000. They were registered because they were the subject of a fictional character and comic strip for publication primarily within the United States.
The Respondents have invested substantial time and money in the creation of their multimedia cartoon. Every radio episode mentions the subject domain name, <brucetrail.com>. If the domain names were transferred to the Complainant, it would create a significant financial hardship for the Respondents.
5. Parties’ Contentions
The Complainant relies on its long use of the name Bruce Trail and on its registration of its mark. Without distinguishing between the concepts, it contends that the subject domain names "…are identical or confusingly similar…." to its mark.
Relying on Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051, the Complainant says that the Respondents do not have a legitimate interest in the subject domain names because they "…must have been aware of the Complainant’s internationally famous BRUCE TRAIL marks prior to naming both their environmentalist character and their partnership, and prior to registering the contested domain names". In addition, it is asserted that there is an overlap between the audio cassettes and videotapes sold by the Complainant and the serial programs produced by the Respondents. Concern is expressed with the fact that these "…invariably deal with environmental themes in a cavalier and highly superficial manner in an effort to be humorous…with the risk of deleterious effects upon the Complainant’s BRUCE TRAIL marks, which are used, inter alia, to address serious environmental issues of concern to the Bruce Trail, the Niagara Escarpment, and similar ecosystems around the world". A further factor relevant to the Respondents’ lack of a legitimate interest in the subject domain names is said to be the fact that "…the Respondents are intentionally attempting to attract for financial gain environmentally conscious consumers familiar with the Complainant’s marks, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website, and of the goods and services offered by the Respondents…."
Bad faith is said to be apparent because the Respondents clearly knew of the Complainant’s rights and that they are using the subject domain names "…intentionally…to attract for commercial gain Internet users to their website by creating a likelihood of confusion with the Complainant’s BRUCE TRAIL marks as to the source, sponsorship, affiliation, or endorsement of their website and of the products offered thereon".
The Respondents appear to concede that the subject domain names are identical or confusingly similar to the Complainant’s mark. They say:
"…it [is] apparent that Complainant and Respondent share an interest in the same marks, although in different countries, and in respect of different services.
It is submitted that the first issue, i.e. that of identical trademarks or confusing similarity, is not determinative and the two further requirements under Paragraph 4 of the UDRP must be considered".
Relying on the decision in Nutrisystem.com, Inc.v. Easthaven, Ltd. (sweetsuccess.com), CPR Case No. 012, the Respondents note that trademarks do not confer exclusive rights to all commercial activities and the commercial activities of the parties in this case differ. The Respondents also contend that"
"…even if Respondents had a website about the geographic Bruce Trail, located at <brucetrail.com> and <brucetrail.net>, this would be perfectly legitimate, as in <toronto.com> and <newyorkcity.com>. The ".com" and ".net" suffixes specifically relate to commercial and/or network services, and not to non-profit or governmental organizations".
In addition, the Respondents deny that they are attempting to confuse Internet users and state that the Respondents’ use of humour does not support a contention that they do not have a legitimate interest in the subject domain name.
The Respondents deny bad faith. They assert that a visit to their website makes it clear that they are not seeking to attract customers from the Complainant. They state that they are not cybersquatters and are "…artists who are using domain names legitimately and in complete good faith".
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 website or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The parties refer to domain name dispute decisions. While these are neither controlling nor binding on this administrative panel, they can be of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the words "Bruce Trail". It has long use and registered marks. The subject domain names differ only by the addition of ".com" and ".net".
The Complainant’s submission on the point was terse and did not distinguish
between the concepts: identical and confusingly similar. They engage different
considerations. If a domain name were identical, the inquiry would end. A domain
name can be similar, but not be confusing. Whether it is confusing in the context
of a domain name dispute is an objective inquiry.
The Respondents essentially concede that the subject domain names are identical or confusingly similar to the Complainant’s mark, but even if they were not to have done so, it is apparent that they are essentially identical.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents’ Legitimate Interest
It is clear that the Respondents knew about the Bruce Trail. They say that it was a reason for naming their comic character. In the context of this case, the Complainant’s contention that the fact that the Respondents knew about the Complainant’s interests is a basis for concluding that the Respondents do not have a legitimate interest in the subject domain names is rejected. This case differs from the Yahoo decision and other cases in which there is a blatant misuse of a complainant’s intellectual property, because the words at issue here are descriptive of a physical fact. The Bruce Trail is a geographic fact. Its name derives from the Bruce Peninsula in Ontario, Canada.
This opens the door to a legitimate interest in the words "Bruce Trail" and their use by a number of entities for a number of purposes. That is, unlike some cases, the mere fact of using the words does not lead to a conclusion of illegitimacy. The Nutrisystem.com, Inc. decision is apt in the circumstances of this case.
The parties have been doing battle for some time. They appear to have joined issue principally on the question of trademarks. Their early 1997 correspondence was concerned with that, as was the proceeding before the Trade-marks Opposition Board. The Complainant’s opposition to the Respondents’ application was filed before the registration of the subject domain names, although one, <brucetrail.com>, was registered not long after on November 12, 1998.
The Respondents applied to register their trademark with the United States Patent and Trademark Office on August 15, 1996. It was registered as of October 14, 1997. That registration has not been challenged by the Complainant. The evidence is that the Respondents have confined their activities to the United States.
As was stated in the Nutrisystem.com, Inc. case: "The scope of Complainant's trademark rights is insufficient to bar Respondent from acquiring legitimate rights in the same term when used for a different purpose". This is particularly so when those rights are confined to Canada and the center of the Respondents’ activities is elsewhere.
In the circumstances of this case, it cannot be said that the Respondents do not have a legitimate interest in the subject domain names. They operate a commercial enterprise that is legitimate. There is no effort by them to confuse members of the public or to make them think that they are involved with the custodians of the Bruce Trail. Although their connection to the words Bruce Trail does not extend as far back in time as that of the Complainant, the link and use of the words was well established before the first registration of a subject domain name.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The analysis that concludes that the Respondents do have a legitimate interest in the subject domain names militates against a conclusion that they were registered and are being used in bad faith.
In addition, there is no evidence that the Complainant demanded that the Respondents cease using the subject domain names or transfer them to the Complainant, although there may have been communications between the parties to that effect.
The Respondents state frankly why they chose to call their comic character Bruce Trail. The main point of the Complainant’s case on bad faith is the assertion that the Respondents must have know about the Complainant’s interests and rights. Assuming that this was true, it does not establish bad faith in the circumstances of this case. The words designate a physical trail. The commercial activities of the Respondents differ significantly from the main focus of the Complainant. The words were being used before the registration of one of the subject domain names. The focus of the Respondents’ activities has been in the United States.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its findings of fact, the Administrative Panel is not satisfied that the Complainant has established its case. It is dismissed.
Edward C. Chiasson, Q.C.
Dated: October 12, 2001