Complainant is NAV CANADA, Ottawa, Ontario, Canada, represented by Gowling Lafleur Henderson LLP, Canada.
Respondent is Robert Mcain, London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <navcanada.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2008. On October 7, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 7, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 3, 2008.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on November 17, 2008. 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.
Complainant is a Canadian Federal corporation that owns, manages and operates Canada's civil air navigation service. Complainant coordinates the safe and efficient movement of aircraft in Canadian domestic airspace and international airspace assigned to Canadian control. It offers services related to air traffic control, flight information, weather briefings, aeronautical information, airport advisory services, and electronic aids to navigation.
Complainant has been using the NAV CANADA trademark at least since November 1996 and currently owns the following United States of America (“U.S.”) and Canadian trade-mark registrations for NAV CANADA:
NAV CANADA 2889378 U.S.
NAV CANADA 2889379 U.S.
NAV CANADA 2835653 U.S.
NAV CANADA TMA573800 Canada
NAV CANADA & Design TMA573401 Canada
NAV CANADA Design TMA573400 Canada
Complainant also operates a website located at “www.navcanada.ca”. Without the permission of Complainant, Respondent registered the disputed domain name on January 13, 2000.
The disputed domain name points to a pay-per-click website hosted by Hitfarm.com. The website at the disputed domain name displayed the banner “Welcome to navcanada.com - For ads on Aviation weather and Nav Canada”. The website displayed sponsored link titles that overlapped directly with Complainant's field of activity, such as “Aviation”, “Air Traffic Control Canada” and “Flight Information”.
The website at the disputed domain name also featured a link entitled “Nav Canada”. The links on the site resolved to sponsored links of businesses that offer goods and services that compete with, or rival, those services offered by Complainant. These would include goods and services in the field of aviation, flight information, air traffic control, and electronic aids to navigation.
Complainant sent a cease and desist letter to Respondent dated May 15, 2008, requiring the transfer of the disputed domain name. The cease and desist letter was delivered to Domains By Proxy, Inc., as the identity of Respondent was concealed as he had availed himself of the Registrar's privacy service. By way of correspondence dated May 20, 2008, Domains By Proxy, Inc. indicated that it had forwarded the cease and desist letter to Respondent with a request that it provide a reply by June 3, 2008, failing which it would reveal his identity.
By way of correspondence dated June 3, 2008, Domains By Proxy, Inc. advised Complainant that Respondent had cancelled the privacy service thereby revealing his identity. However, no reply was received from Respondent. In order to ensure that he had the opportunity to respond, Complainant issued its cease and desist letter directly to Respondent on June 4, 2008. Again, no reply was received.
Complainant argues that the disputed domain name is confusingly similar to Complainant's NAV CANADA trademark, that Respondent has no rights or legitimate interest in the disputed domain name, and that the domain name was registered and is being used in bad faith by Respondent.
As a remedy, Complainant asks that the disputed domain name be transferred to it.
Respondent did not reply to Complainant's contentions.
According to paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Complainant has shown evidence that it owns trademark registrations in the U.S. and in Canada for NAV CANADA. The disputed domain name is identical to Complainant's trademark, as the addition of a generic top level domain, such as “.com”, is without legal significance in determining the issue of similarity (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035).
For the above reasons, the Panel finds that the disputed domain name is identical to Complainant's trademark and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.
Respondent created the disputed domain name on January 13, 2000, therefore, after Complainant initiated its use of the trademark NAV CANADA, on November, 1996. Complainant indicates that it has not authorized or entered into any relationship with Respondent in relation to use of its NAV CANADA trademark.
Complainant has shown substantial business activity under the NAV CANADA trademark offering services under such trademark, while Respondent apparently has no business related thereto other than posting the pay-per-click web page parked under the disputed domain name.
Complainant's allegations remain uncontested and, in any case, there is no evidence as to rights or legitimate interests of Respondent in the disputed domain name pursuant to paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services as a pay-per-click web page targeting a third party trademark by itself does not qualify as such.
Furthermore, there is no evidentiary support that Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name or that it is making a legitimate noncommercial or fair use of the domain name.
In conclusion, the Panel finds in the circumstances that Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.
It has been proven that in the website at the disputed domain name, Respondent hosts a pay-per-click web page, also called a “link farm”, i.e., Respondent displays a list of sponsored links, which in the circumstances amounts to unduly taking advantage of the goodwill in Complainant's mark to attract Internet users and generate revenue, presumably to Respondent's benefit.
In this sense, there is little doubt that Respondent intended to earn profit from the likely confusion among Internet users, who may be attempting to access Complainant's website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177:
“Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant's trademark.”
In fact, many UDRP decisions have considered that redirecting users to other sites that offer goods and services, even if they were unrelated to the complainant's, in order to gain profit from the reputation of complainant's trademark, may be prima facie indication of bad faith. See AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503; Society for Human Resource Management v. Local Services ICN, WIPO Case No. D2004-0127.
The circumstances surrounding Respondent's conduct are in this case indicative of registration and use of the disputed domain name in bad faith. In any case, Respondent is seeking to trade off on Complainant's substantial goodwill associated with Complainant's mark and to intentionally deceive the consuming public.
Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by registering and using a domain name identical to Complainant's trademark.
For all the aforementioned reasons, the Panel finds that Complainant has proven Respondent's bad faith pursuant to paragraph 4(a)(iii) 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 <navcanada.com> be transferred to Complainant.
Gabriel F. Leonardos
Dated: December 1, 2008