WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pacific Online Inc. v. Windtree, Inc.
Case No. D2002-0628
1. The Parties
The Complainant is Pacific Online Inc. of Suite 211-425 Carrall Street, Vancouver, British Columbia, Canada.
The Respondent is Windtree, Inc. ("the Respondent") of 303-1304 gumhobestvill, 808 gumhodong, Seoku, Gwangju, Jeonnam, Republic of Korea.
2. The Domain Name and Register
The Domain Name the subject of the Complaint is <pacificonline.com> (the "Domain Name").
The Registrar with which the Domain Name is registered is Tucows Inc., 96 Mowat Avenue, Toronto, Ontario, Canada.
3. Procedural History
The World Intellectual Property Organisation Arbitration and Mediation Center (the "Center") received an e-mail copy of the Complaint on July 10, 2002, and a hard copy of the Complaint on July 5, 2002. An acknowledgement of Receipt of Complaint was sent by the Center on July 8, 2002.
On July 8, 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.
On July 8, 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, providing 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.
The Registrar also confirmed that the Respondent has submitted in his Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Names.
On July 16, 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 July 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Complaint Notification") and the Complaint (without exhibits) was transmitted by e-mail and by facsimile to the Respondent. The Complaint Notification and the enclosed documentation were also forwarded to the Respondent by courier.
On August 5, 2002, the Center received an e-mail from the Respondent stating:-
"Hi, Iím kimtaeho, respondent of WIPO Case No. D2002-0628. Dead line is Aug 5 2002, as you know that. But Iíve got other problem today, so please postpone the deadline to next Monday. Regards Kimtaeho".
The Center sent an e-mail response to the Respondentís e-mail, on August 5, 2002, informing the Respondent that it is not possible to postpone the deadline.
As no Response was filed within the time specified by paragraph 5 of the Rules (or indeed since), on August 9, 2002, the Center gave the Respondent formal Notification of Respondent Default, which was forwarded by e-mail.
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 August 20, 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.
Following the appointment of the Panelist, further Procedural Orders were made.
On August 26, 2002, the Panel made the following Procedural Order:-
9, 2002." "Section 7 of the Canadian Trade Marks Act relied upon in the Complainant does not seem to support the Complainantís assertion. The Panel directs the Complainant to submit (electronically) a copy of the sections of the said Act relied upon together with at least one supporting authority by September 3, 2002. The decision date is extended until September
No submission or response was received from the Complainant in accordance with the above Procedural Order so, on September 9, 2002, a further Procedural Order was made, as follows:-
"The Panel directs the Complainant to provide, by September 11, 2002, further submissions to support its claim to common law and/or statutory rights as asserted in paragraph 12.1(l) of its submissions. The decision date is extended until September 13, 2002".
On September 10, 2002, the Complainant responded as follows:-
"Would it be possible to get additional direction on the nature of the concern that the Panel has and the kind of "submissions" sought? If there is a specific issue that need clarification then we can address that. Thank you for your assistance".
On September 10, 2002, a further direction was forwarded to the Complainant as follows:-
"I note that the trade marks are not registered and that you have asserted rights in the unregistered trade marks. I would be pleased if you could give a short submission, supported by authority, as to why you believe you have rights in unregistered trade marks. Section 7 of the Canadian Trade Marks Act does not seem to support any of your assertions. Bearing in mind the delay it has taken for you to respond to the Panelís previous order, I draw your attention to the Panelís Procedural Order dated September 9, 2002 - "The panel directs the Complainant to provide, by September 11, 2002, further submissions to support its claim to common law and/or statutory rights as asserted in paragraph 12.1(l) of its submissions. The decision date is extended until September 13, 2002". If you require further time, would you please advise as a matter of urgency".
No response was received from the Complainant by September 11, 2002. However, after the extended time for further submissions and, indeed, on the extended date for handing down the decision, the Panelist received further submissions from the Complainant in response to the Procedural Orders detailed above. The Panelist has taken those submissions into consideration.
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 unless otherwise stated.
The Complainant has used the unregistered trade mark "Pacific Online" ("the Trade Mark") as a trade mark in association with internet-related services including the hosting of websites for others, since at least as early as October 9, 1996.
The Complainant annexed copies of the following in evidence of its use of the Trade Mark to the Complaint:-
1. an announcement that the Complainant posted on October 9, 1996, on the newsgroup van.general which can be accessed on the internet at "www.groups.google.com" "http://www.groups.google.com". The announcement lists the services offered by the Complainant;
2. an advertisement that the Complainant has placed in the last 24 issues of all editions of "Computer Paper", a magazine devoted to computer related issues and which is distributed throughout Canada;
3. an information sheet distributed by the publishers of "Computer Paper" showing the advertising rates and circulation figures for that magazine. Current monthly circulation for all editions of "Computer Paper" is 390,000;
4. an advertisement placed by the Complainant in the last 10 issues of "Cold Fusion Developers Journal", a monthly magazine devoted to computer developers worldwide;
5. an advertisement that the Complainant has placed in the last 12 issues of "Puget Sound Computer User" a monthly magazine devoted to computer users in the Pacific Northwest United States;
6. an information sheet distributed by the publisher of "Puget Sound Computer User" detailing that magazineís distribution. "Puget Sound Computer User" claims a circulation of 230,768 in Washington States and can be accessed on the internet at "www.pscu.com" "http://www.pscu.com", and
7. a printout of the Complainantís website, which can be found at "www.pacificonline.ca" "http://www.pacificonline.ca" and which has received an average of 34,275 visits per month over the last 24 months.
The Complainant hosts websites for approximately 2,500 subscribers in Switzerland, Thailand, Indonesia, Costs Rica, United Kingdom, India, Taiwan (Province of China), Netherlands, Germany, Italy, United States, Hong Kong, SAR of China, Turkey, Belgium, Uruguay, Israel, Russian Federation, Belarus, Brazil, Malawi, Liechtenstein, Sweden, Ireland, Canada, France, Australia, Malaysia and Cameroon.
By virtue of the Complainantís use of the Trade Mark, it has developed goodwill in the Trade Mark internationally and worldwide consumers associate the Trade Mark with the Complainantís services.
By its use of the Trade Mark, the Complainant asserts it has acquired trade mark rights therein in Canada at common law and under section 7 of the Canadian Trade-Marks Act which recognizes that persons may acquire rights in unregistered trade marks through use in Canada. Initially the Complainant did not provide a copy of the relevant sections of the Canadian Trade-Marks Act nor did it provide copies of any supporting authorities relied upon by it in support of its assertion that it has common law rights in Canada, so that procedural orders were made by the Panelist seeking submissions on this issue, as detailed above.
In late 2000, or early 2001, the Respondent sent the Complainant an unsolicited e-mail offering to sell the Domain Name to the Complainant. The Complainant did not respond to that e-mail or save a copy of it.
However on April 25, 2002, the Complainant sent an e-mail to the Respondent inquiring about the possible purchase of the Domain Name and stating "Please let me know how much youíre asking".
The Respondent replied on May 8, 2002, as follows:-
"Hi, Thanks for your email. And very sorry if it made you any inconvenience. Thereís been offered so many times about pacificonline.com. We purchased the domain for our developing website at first. Unfortunately, the domain is NOT for sale..and we are gonna use it. But if you wanna purchase the domain eagerly, weíre willing to consider it over $20,000us. Best wishes Kimtaeho".
Copies of the e-mails of April 25, and May 8, 2002, were annexed to the Complaint.
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 the unregistered trade mark "Pacific Online" in which it has acquired rights as a result of extensive use (See 4 above).
In its submissions, recently received, the Complainant cited a number of authorities in support of its submissions that in Canada trade mark rights can arise as a result of the common law as well as under the Trade-Marks Act, R.S.C (the "Act"). The first of these authorities is Harold G Fox, in "The Canadian Law of Trade Marks and Unfair Competition" (Third Edition) (Toronto: Carswell, 1972) which observes that trade mark rights can still be acquired by use independently of registration and that common law trade marks are capable of existence and protection. That author notes (at 22), "Both the intention of the user and recognition by the public are relevant facts and either may be sufficient to show that there has been trade mark use."
The Complainant then relied upon the authority in Asbjorn Hogard A/S v Gibbs/Nortac Industries Ltd (F.C.A.),  F.C.J. No 245 (QL)(C.A.), in which the Federal Court of Appeal of Canada adopted the earlier decision of Justice Strayer of the Federal Court of Canada - Trial Division in Royal Doulton Tableware Ltd. et al v Cassidy's Ltd - Cassidy's Ltee,  1 F.C. 357,374, (1985), 1 C.P.R. (3d) 214,288 (T.D.) where the court held:-
"Parliament by ss. 1-11 of the Trade Marks Act has prescribed a regime concerning what constitutes a trade mark and the adoption thereof, whether registered or not."
It was noted that the Act is, inter alia, a statutory statement of the common law action of passing off.
The Complainant further relied upon the authority of Guccio Gucci S.p.A. v. Meubles Renel Inc. (F.C.A.),  F.C.J. No. 536 (QL) (C.A.) in which it was stated that a trade mark is a mark that is used for the purpose of distinguishing wares from those sold by others and that the adoption by a trader for the purpose of distinguishing his/her goods is the governing factor. The Court there also cited the words of Fox referred to above.
The statutory provisions relied upon by the Complainant include:-
1. section 2 of the Act which defines a trade mark as meaning "a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by other", and
2. section 4 which provides that "a trade mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services."
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. the Respondent is not using and has not used the Domain Name in association with a legitimate offering of services;
2. neither the Respondent nor its business has ever been known by the Domain Name;
3. The Domain Name is being used to forward traffic to a website operated by the Respondent that is headed "This website is Coming Soon". The website includes a large number of Banner Advertisements for, among other things, escort services, illicit prescription pharmaceuticals, adult personal advertisements and gambling. The Complainant annexed a print out of this website to its Complaint;
4. The Respondent is in the business of registering domain names and selling them. The Complainant annexed to its Complaint a printout of a website found at "www.asiadomainmarket.com" "http://www.asiadomainmarket.com" which lists approximately 50 domain names for sale at a contact address of email@example.com "mailto:firstname.lastname@example.org" which is the contact address for Steve Kim, the administrative and technical contact for the Respondent;
5. Steve Kim is the alias of Kim Taeho, a notorious cybersquater who has been the respondent in a number of WIPO Panel decisions: see Nintendo of America Inc v Enic.net and Kim Taeho, WIPO Case No. D2001-1369 and Mucos Emulsions GmbH and Marlyn Nutraceuticals, Inc. v Esex.org and Kim Taeho, WIPO Case No. D2000-1513. In each of these cases, Mr. Kim registered domain names in an attempt to profit from the trade mark rights of others. In the Nintendo case, Mr. Kim used the same e-mail contact address," email@example.com" as is provided as the e-mail address of the administrative and technical contact of the Respondent.
6. The Respondentís contact e-mail address, "firstname.lastname@example.org" "mailto:email@example.com" is also listed as the contact address for domain names such as <harrypotters.co.kr>, <networksolutionis.com>, <networksolutuons.com> and <networksoluotions.com>. Printouts of the records showing these domain name registrations were annexed to the Complaint.
7. The Respondent is in the business of registering domain names for the purpose of profiting from the trade mark rights of others (see 4, 5 and 6 above). Mr. Kim has registered as domain names, misspellings of well known trade marks with the intention of profiting either by reselling those domain names to their rightful owners or by selling advertising and other services hosted at domain names likely to attract traffic intended for the trade mark ownersí websites. This is also evidenced by the Respondentís offer to sell the Domain Name for in excess of US$20,000.
The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith and relies upon the following assertions:-
1. The Respondent registered the Domain Name for the primary purpose of selling it to the Complainant;
2. The Respondent has engaged in a pattern of bad faith registrations involving a large number of domain names, including domain names that are clearly related to names in which third parties have rights;
3. The Respondent is in the business of registering domain names to profit from the trade mark rights of others;
4. The Respondent has used the Domain Name in bad faith by posting banner advertising on the Domain Name website to take advantage of the traffic generated by the Complainantís goodwill in the Trade Mark. The businesses advertised by the Respondent on the Domain Name website include websites for escort services, illicit prescription pharmaceuticals, adult personal advertisements and gambling.
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 Complainant asserts that it has rights in respect of the unregistered trade mark "Pacific Online". This raises two issues for consideration; the first being whether the Policy applies to unregistered trade marks and the second being whether "Pacific Online" is a trade mark.
The Complainant has provided detailed submissions on the position under Canadian law which the Panel accepts as establishing these rights under that law.
It is also necessary to look at decisions under the Policy.
As to the first issue, it is clear that the Policy is not limited in its application to registered trade marks and that unregistered trade marks are also within its scope. It is possible for an action to be brought under the Policy in relation to an unregistered word, phrase or string of characters, but only so long as that word, phrase or string of characters is a trade mark: Brisbane City Council v Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047.
In determining whether "Pacific Online" is a trade mark, consideration must be given to the fact that the word "Pacific" suggests a geographical origin, being the geographic area(s) in or around the Pacific Ocean. The Panel has taken into consideration a number of decisions under the Policy concerning alleged trade marks that are or include geographical locations: Brisbane City Council v Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047, City of Hamina v Paragon International Projects Ltd, WIPO Case No. D2001-0001 and Port of Helsinki v Paragon International Projects Ltd, WIPO Case No. D2001-0002.
In Brisbane City Council v Warren Bolton Consulting Pty Ltd the Panelist found against the Complainant, stating that "The evidence does not show that the mark distinguishes the goods or services of the Complainant, Brisbane City Council, in trade from the goods or services of any other person in trade."
In City of Hamina v Paragon International Projects Ltd, the Panel noted that while the name of the Port of Hamina indicates the geographical origin of services rendered in that port, the name should not be seen as just the name of a place as it also connotes such services as are possibly rendered to ships, boats etc. The Panel considered that "Thus, the name Port of Hamina may, in itself, be a trade mark for services and protected as such, irrespective of trade mark registration, if fulfilling the conditions required under the Finnish law for the protection of non registered trade marks (service marks). The test applied to distinguish trade marks of this kind from those non-protectible bears reference to whether the mark, by its use, has acquired distinctiveness so as to distinguish the goods and services on one undertaking from those of other undertakings".
The Complainant is situated in Canada. Section 2(a) of the Act defines "trade mark" as meaning "a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others."
The asserted trade mark "Pacific Online" is made up of not only the geographical word "Pacific" but also includes the word "Online". Further, the Complainant has supplied extensive evidence of its promotion and use of "Pacific Online" since 1996. This evidence distinguishes the Complainantís position from that of the complainant in Brisbane City Council v Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047 in which it was considered that the evidence on the record was not sufficient to persuade the Panel that the unregistered mark "Brisbane City" was performing the function of a trade mark.
The Panelist finds that the words "Pacific Online" have been adapted and used by the Complainant in such a way that it has acquired distinctiveness and so as to distinguish the services of the Complainant from the goods and services of other undertakings. The Panel also finds that the Complainant has used the words "Pacific Online" as a trade mark and has acquired rights therein.
The Domain Name in issue is <pacificonline.com>. The relevant part of the Domain Name is "pacificonline". The Domain Name incorporates the relevant portion of the unregistered trade mark "Pacific Online". The Administrative Panel is satisfied that this part of the Domain Name is identical to or confusingly similar to the unregistered trade mark "Pacific Online" in which the Complainant has acquired common law rights.
Respondentís Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii))
The Complainant submitted substantial evidence of its use of the "Pacific Online" trade mark for approximately six years.
The Complainant also submitted substantial evidence in support of its assertion that the Respondent can have no legitimate rights or 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 four grounds in support of its assertion that the Respondent has both registered and used the Domain Name in bad faith. These four grounds are detailed in paragraph 5A above and the facts supporting these grounds are detailed in paragraphs 4 and 5A 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. The Panel requires the Domain Name <pacificonline.com> to be transferred to the Complainant.
Dr Annabelle Bennett SC
Dated: September 13, 2002