WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BC Northern Lights Enterprises Ltd. v. Sunlight Sheds
Case No. D2007-1098
1. The Parties
The Complainant is BC Northern Lights Enterprises Ltd., Michael Wood, Surrey, B.C., Canada, represented by INC Business Lawyers.
The Respondent is Sunlight Sheds, Christopher Casacci, North Tonawanda, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bcnorthernlight.com> (the “Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2007. On July 27, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. Also on July 27, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2007.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 25, 2007. 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
The Complainant is a Canadian producer of indoor growth chambers and cabinet systems for personal and commercial use. These systems use hydroponic technology to facilitate the rapid growth of plants.
The Respondent is a US commercial entity that offers similar products for sale.
The Domain Name was registered by the Respondent on January 1 2005.
5. Parties’ Contentions
The Complainant submits the following:
(1) It is a global leader in the field of indoor growth chambers and cabinet equipment and sells its products to customers throughout the world. It has multi-million dollar sales and spent between $58,000 and $100,000 dollars on advertising and marketing in the years 2004 to 2006.
(2) The Respondent is a competitor of the Complainant. The Respondent is using the Domain Name to resolve to a website at “http://s178454875.onlinehome.us” that advertises the Respondent’s competing products.
(3) The Complainant has applied to register the trademark BC NORTHERN LIGHTS under application number 77200370 in the United States of America.
(4) The name “BC Northern Lights” is currently and was prior to the registration of the Domain a common law trademark of the Complainant. The Complainant has used the mark since at least December 2002.
(5) The Complainant has held the registration of the domain name <bcnorthernlights.com> since January 22, 2003 and has used the same in connection with its principal website at “www.bcnorthernlights.com” since at least May 2003.
(6) The Complainant’s goodwill in the mark “BC Northern Lights” is also evidenced by third-party references to the mark and to widespread recognition of the mark among industry publications and Internet users generally.
(7) The Domain Name is confusingly similar to both the Complainant’s mark and its own domain name both visually and aurally. The removal of the letter “s” does not distinguish it.
(8) The Respondent has no rights or legitimate interest in respect of the Domain Name. It is not an authorized licensee or reseller of services provided by the Complainant. It is not a holder of any similar trademark, nor does it offer its own goods or services under any similar mark. Neither the mark or any variant of “BC Northern Lights” appears on the Respondent’s website. The Respondent is not making a noncommercial or fair use of the Domain Name.
(9) The Respondent’s use of the Domain Name both creates and takes advantage of “initial interest confusion” on the part of Internet users who may enter the name in the expectation of finding the Complainant’s website.
(10) The Respondent’s use of the Domain Name causes actual confusion among Internet users because the Domain Name resolves to the Respondent’s website which competes with that of the Complainant. The Respondent has taken no steps to prevent such confusion.
(11) The Respondent’s registration and use of the Domain Name is in bad faith as it is solely for the purpose of trading on the goodwill of the Complainant’s trademark by baiting consumers in order for the Respondent to offer them products similar to those sold by the Complainant.
(12) The Complainant seeks a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has submitted evidence to support its contention that it has unregistered trademark rights in the name “BC Northern Lights”.
In addition to evidence of substantial sales and advertising expenditure under the mark, such evidence includes excerpts and advertisements from industry publications which reference the Complainant and its products under the mark, and the deployment and use of the mark on the Complainant’s own website at “www.bcnorthernlights.com” since at least May 2003.
Having evaluated such evidence, the Panel finds that the Complainant does have unregistered trademark rights in the mark “BC Northern Lights ” and notes in addition that such rights predate the registration of the Domain Name.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the Complainant’s unregistered mark. The removal of the single letter “s” from the Complainant’s mark does not render the Domain Name sufficiently visually or aurally dissimilar to prevent confusion between the Domain Name and the Complainant’s mark.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s submissions and finds that the Respondent has demonstrated no rights or legitimate interest in the Domain Name. The Respondent has declined to file a Response in which any rights or legitimate interests might have been asserted and none are apparent from the evidence available to the Panel.
In particular, there is no evidence that that Respondent has ever been commonly known by the Domain Name, that its has ever been authorized or licensed by the Complainant to use the Domain Name or that it is making noncommercial or fair use of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant operates a website located at “www.bcnorthernlights.com” and did so for two years prior to the registration of the Domain Name. The Respondent is using the Domain Name to resolve to a URL at “www.bcnorthernlight.com”, which redirects to its own website selling competing products with those of the Complainant.
The Respondent has filed no Response in the case and has not therefore disputed either the Complainant’s rights in the name “BC Northern Lights” or any of the other submissions that the Complainant has advanced.
In the circumstances, the Panel readily infers that the Respondent is using the Domain Name in bad faith. In particular, the Panel finds that Respondent is seeking to take advantage of both “initial interest confusion” and actual confusion on the part of Internet users attempting to find the Complainant’s website and products. This is to take unfair advantage of the Complainant’s goodwill.
The Panel therefore finds that the Domain Name was registered in bad faith in the circumstances contemplated by paragraph 4(b)(iv) of the Policy.
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 <bcnorthernlight.com> be transferred to the Complainant.
Steven A. Maier
Dated: 9 October 2007