WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ducks Unlimited, Inc. v. Christian Francoeur
Case No. D2002-0227
1. The Parties
The Complainant is Ducks Unlimited, Inc. ("the Complainant") a non-profit organisation with its principal place of business at Memphis, Tennessee, United States of America.
The Respondent is Christian Francoeur ("the Respondent") of Val Dor, QC, Canada.
2. The Domain Name and Registrar
The Domain Name the subject of the Complaint is <ducks-unlimited-va.org> ("the Domain Name").
The Registrar with which the Domain Name is registered is Computer Data Networks.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received an e-mail copy of the Complaint of March 8, 2002 and a hard copy of the Complaint on March 12, 2002. An acknowledgement of Receipt of Complaint was sent by the Center on March 15, 2002.
On March 20, 2002, a Request for Registrar Verification was transmitted to the Registrar requesting it to:
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), Paragraph 4(b);
(2) confirm that the Domain Name is registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the Domain Name;
(4) provide full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in the Registrarís WHOIS database for the Domain Name registrant, technical contact, administrative contact and billing contact, for the Domain Name;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the Domain Name;
(6) indicate the current status of the Domain Name, and
(7) confirm the language of the registration agreement.
Also on March 20, 2002, a copy of the website to which the Domain Name refers, being <tinawebcam.com> was obtained.
On March 27, 2002, the Registrar confirmed by reply e-mail that the Domain Name is registered with it and that the Respondent was the current registrant of the Domain Name. The Registrar also confirmed the Respondentís address and that the Respondent was listed as the Administrative, Technical and Billing Contact, and provided e-mail and telephone details. The Registrar also forwarded the requested WHOIS details and confirmed that the Policy applies to the Domain Name at issue. The Registrar also confirmed that the language of the registration agreement is English.
On March 27, 2002, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.
On March 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Complaint Notification") and the Complaint (without exhibits) was transmitted by e-mail to the Respondent. The Complaint Notification and the enclosed documentation were also forwarded to the Respondent by post.
On April 12, 2002 the Center received an e-mail from Domain Strategy <email@example.com> stating they will transfer the Domain Name upon receiving complete information of the new owner.
On April 18, 2002, the Center forwarded the e-mail of April 12, 2002 from Domain Strategy to the Complainantís authorized representative in the proceedings stating that the e-mail appeared to have been mistakenly sent to the Center rather than to the Complainantís representative. The Center stated that it would continue the proceedings in this case unless advised by the Complainantís representative that they wished to terminate the proceedings or unless both parties agreed to the suspension of the proceedings. A copy of the Centerís e-mail to the Complainantís representative was also sent to Domain Strategy.
No request for the termination or suspension of the proceedings was received by the Center.
As no response was filed within the time specified by paragraph 5 of the Rules, on April 18, 2002, the Center gave the Respondent formal Notification of Respondent Default.
The Complainant elected to have the dispute determined by a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules.
The Administrative Panel appointed consists of Dr. Annabelle Bennett SC ("the Panelist"). On May 1, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist, the Center notified the parties of the appointment of the Panelist.
4. Factual Background
The following facts are asserted by the Complainant in the Complaint and are not disputed. The Panel finds these facts are proved.
The Complainant is an internationally known non-profit organization which is devoted to the conservation and restoration of wetlands and other habitat necessary to sustain North American waterfowl. The Complainant is the proprietor of famous marks that include the words DUCKS UNLIMITED which are registered with the United States Patent and Trademark Office in respect of numerous different goods and services.
The following are some of the Complainantís registered trademarks:
-DUCKS UNLIMITED, reg. nos. 882,285 and 2,042,627, for "indicating membership in a wetlands conservation and organization."
-DUCKS UNLIMITED, reg. nos. 1,794,314 and 1,945,940 for "clothing items, namely pants, shirts, jackets, T-shirts, caps, slacks, jeans and shorts."
-DUCKS UNLIMITED, reg. nos. 1,969,446, for "knives (sport)."
-DUCKS UNLIMITED, reg. nos. 2,042,628, for "figurines, namely collectable decoys and animal sculptures made of wood, wood by-products, bronze, pewter, cold-cast materials, synthetic resin, plastic and foam."
-DUCKS UNLIMITED, reg. nos. 2,042,629, for "art prints, greeting cards, calendars and gift wrap."
-DUCKS UNLIMITED, reg. nos. 2,042,630 for "conservation services, namely promoting the protection, enhancement, preservation, restoration, maintenance and management of wetlands for the benefit and protection of waterfowl and other water-dependent birds."
-DUCKS UNLIMITED, reg. nos. 2,042,631, for "mail order catalogue services in the fields of art work, guns, knives, decoys, sporting equipment, giftware, dinnerware, jewelry and home furnishing."
-DUCKS UNLIMITED, reg. nos. 2,045,307, for "firearms, namely long guns, shotguns and rifles."
-DUCKS UNLIMITED M-A-R-S-H, reg. nos. 1,379,743, for "conservation services, namely a program to assist the states in protecting wildlife habitat."
All of the above trade marks include the words DUCKS UNLIMITED and some also include art works being representations of ducks.
Copies of the registration details from the United States Patent and Trademark Office database were enclosed with the Complaint.
The DUCKS UNLIMITED mark was first registered as a trademark by the Complainant on December 9, 1969 (registration no. 0882285).
The Complainant uses its DUCKS UNLIMITED marks in a wide variety of applications, evidence of which can be ascertained from the Complainantís active website <ducks.org>, which is also accessible through <ducks-unlimited.com>.
Further, the Complainant has entered into licensing agreements with more than fifty prominent manufacturers for the production of DUCKS UNLIMITED merchandise. A listing of those manufacturers was provided with the Complaint as Exhibit E. The Respondent does not however, have any licensing arrangement with the Complainant.
The Complainant has an active chapter in Virginia which, for several years, maintained a website with the domain name <ducksunlimitedva.org>. Other like-minded organizations such as the Chincoteague Natural History Association and the Southern Duck Hunter operate websites that list links to the Complainantís Virginia chapter. Some of those websites are <assateague.org/plover/port.html>, <duckcentral.com> and <poultryconnection.com>. However these websites have mistakenly listed the Domain Name link rather than <ducksunlimitedva.org> so that viewers get taken to: <tinawebcam.com> instead of the Complainantís Virginia Chapter.
The Domain Name was registered by the Respondent on September 7, 2001, in excess of thirty years after the Complainant first registered the DUCKS UNLIMITED mark. Upon typing the Domain Name, the user is immediately forwarded to a peep show: <tinawebcam.com>, a copy of the printout from that website was enclosed with the Complaint. This website includes text and photographs of "Tina" pulling up her shirt to display her body and pulling her shirt down, copies of which have also been enclosed with the Complaint.
Further, until recently the <tinawebcam.com> site automatically forwarded viewers to <westmaster.com>. Once there, viewers were then automatically transferred to a hard-core pornographic website <super-sites.net>. Printouts of these two sites were enclosed with the Complainant.
5. Partiesí Assertions
A. The Complainant
The Complainant asserts that the Domain Name should be transferred to it as it is able to satisfy all three conditions provided in paragraph 4(a) of the Policy.
The Complainant asserts that the Domain Name is identical to or confusingly similar to trade marks in which it has rights. The registration numbers of the Complainantís trademarks and the goods or services in respect of which they are registered, are detailed above.
The Complainant cited a number of United States legal decisions in support of this contention. It also referred to the WIPO Panel decision in Clerical Medical Investment Group Ltd v. Clericalmedical.com, WIPO Case No. D2000-1228 in which it was held that "It is quite clear that the Ď.comí element of the domain name is to be ignored for the purpose of assessing similarity."
The Complainant cited further WIPO Panel Decisions in which this principle was applied: see World Wrestling Federation. Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Football Association Ltd v UKIP (Internet Consultants) Ltd, WIPO Case No. D2000-1359 and Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410.
The Complainant asserts that the addition of "VA.ORG" to the Complainantís DUCKS UNLIMITED trade marks does not lessen any confusion between the Respondent and the Complainant. The Complainant asserts that the opposite occurs, referring to and relying upon the actual confusion between the website of the Complainantís Virginia Chapter and the Domain Name which is listed, apparently by mistake, as a link on the websites of like organizations.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and relies upon the following assertions:
(1) once the Domain Name is typed into a web browser, the user is immediately forwarded to a peep show at <tinawebcam.com>, a site which has no apparent connection to DUCKS UNLIMITED and which, at one stage, then transferred the user to hard-core pornography.
(2) the Respondent has no interest in DUCKS UNLIMITED and is not licensed by the Complainant to used the DUCKS UNLIMITED marks, and
(3) the Respondent does not appear to use the Domain Name for any bona fide offering of goods or services, but simply uses it as an automatic link to his peep show.
The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith and relies upon the following assertions:
(1) the Respondentís use of the Complainantís DUCKS UNLIMITED marks is a deliberate means of luring unsuspecting visitors to the Respondentís website.
(2) the Respondent is trying to benefit from the confusion he has caused by using the Complainantís well known DUCKS UNLIMITED marks to divert users to his peep show.
(3) the Respondent will endanger the goodwill associated with the Complainantís well known marks by linking it to a peep show. The Complainant refers to the WIPO Panel decision in CCA Industries, Inc. v. Bobby R Daily, WIPO Case No. D2000-0148 in which the Panelist stated "I am satisfied that this association with a pornographic website can itself constitute bad faith."
B. The Respondent
No Response was received from the Respondent.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name (paragraph 4(a)(i))
The Domain Name in issue is <ducks-unlimited-va.org>. The relevant part of the Domain Name is <ducks-unlimited>. The Domain Name incorporates the relevant portion of the trade marks DUCKS UNLIMITED. The Administrative Panel is satisfied that this part of the Domain Name is identical to or confusingly similar to the trade marks DUCKS UNLIMITED registered in the name of the Complainant.
Respondentís Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii))
The Complainant submitted substantial evidence of its registration and use of the DUCKS UNLIMITED marks for in excess of thirty years prior to the registration of the Domain Name by the Respondent. The Complainant also licenses the use of the marks by manufacturers of DUCKS UNLIMITED merchandise but has not licensed the Respondent to use any of its marks.
Further, the Complainantís DUCKS UNLIMITED marks have become well known through use over a long period of time. The websites of many like-minded organizations have included links to the website of the Complainantís Virginia chapter. DUCKS UNLIMITED merchandising is manufactured under license from the Complainant, by some fifty manufacturers.
The Complainant also submitted substantial evidence in support of its assertion that the Respondent can have no rights or legitimate interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii))
For the Complainant to satisfy this requirement it must prove bad faith in registration as well as bad faith in use of the Domain Name. Bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant relies upon three grounds in support of its assertion that the Respondent has both registered and used the Domain Name in bad faith. These three grounds are detailed in paragraph 5A above and the facts supporting these grounds are detailed in paragraph 4 above.
The Panel takes all these matters into account and, in the absence of any response from the Respondent, the Panel finds that the Complainant has established that the Domain Name has been registered and is being used in bad faith.
The Panel decides that:
(i) the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy. Pursuant to paragraph 4(i) of the Policy, the Panel requires the Domain Name <ducks-unlimited-va.org> to be transferred to the Complainant.
Dr. Annabelle Bennett S.C.
Dated: May 15, 2002