The Complainants are Canadian Education Centre Network, British Columbia, Canada; and CEC Turkey-Kanada Egitim Merkezi, Istanbul, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mr. Erinc Mullaoglu, (of Polleo Inc.), British Columbia, Canada; self Represented.
The disputed domain name <kanadaegitimfuari.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2009. On May 29, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 29, 2009, GoDaddy.com, Inc. 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” 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 the Respondent of the Complaint, and the proceedings commenced on June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. The Response was filed with the Center on June 23, 2009.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on June 30, 2009. 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.
The first Complainant is The Canadian Education Centre (CEC) Network a private, independent non-profit company founded in 1995 with support from the Government of Canada to promote and market Canada as a study destination for international students.
Over 245 universities and other educational institutions or communities across Canada are members of the CEC Network. The CEC Network hosts an annual International Education Conference, providing a forum for Canadian education marketing professionals and an annual Agent Fair to bring together international education agents and Canadian schools. It also publishes hard copy guides and magazines promoting Canadian education and provides an international student website providing information to students in 15 languages.
The CEC Network has 13 Canadian Education Centres and four sub-offices in several countries around the world including Turkey. The centres, including the second Complainant, provide international students with materials and application forms for Canadian schools and host Canadian education fairs and other events.
The second Complainant is the Canadian Education Centre located in Turkey, The Centre was established in 2001 and inter alia, hosts Canadian Education fairs.
The Complainants use the domain names <cecnetwork.ca>, <studycanada.ca> and <studycanada.ca/turkey> as their main websites. The first Complainant registered the service mark CEC NETWORK RÉSEAU DES CÉC on September 1, 2004 with the Canadian Trademark and Patent Office, and has filed CEC NETWORK CANADIAN EDUCATION CENTRE, CEC NETWORK KANADA EGITIM MERKEZI and KANADA EGITIM FUARI www.studycanada.ca/turkey, for registration on April 30, 2009 with the Turkish Patent Office (TPO).
The Respondent is an individual who is the co-founder and managing director of Polleo Inc. a Canadian company incorporated in 2006. Polleo provides educational consultancy services to Turkish students around the world through a website “www.kanadam.com, and has assisted over 10,000 students. The Respondent has official partnerships with over 20 educational institutions across Canada and has received the Language Magazine Star New Agency award in 2008.
On September 22, 2008 The Globe and Mail a popular newspaper in Canada, announced an online education fair, Canadian Universities Online Fair, which took place on November, 6. The Respondent decided to create a similar online fair and platform for its partners to target Turkish students. The Respondent therefore chose the disputed domain name that it deemed appropriate and referred to the service the Respondent proposed to provide.
The disputed domain name <kanadaegitimfuari.com> was created on October 1, 2008 by the Respondent.
In accordance with paragraph 4(b)(i) of the Policy, the Complainants request that the domain name <kanadaegitimfuari.com> should be transferred to the Complainants.
The Complainants submit the grounds for these proceedings are listed in paragraph 4(a) of the Policy.
The Complainants contend that the disputed domain name is identical to the service mark in which the first Complainant has rights evidenced at Annex 6 of the Complaint. The Complainants aver that the disputed domain name <kanadaegitimfuari.com> is identical to the service mark KANADA EGITIM FUARI for which a trademark application has been submitted to the Turkish Patent Institute on April 30, 2009. The first Complainant also exhibits the service mark CEC NETWORK RÉSEAU DES CÉC registered on September 1, 2004 with the Canadian Trademark and Patent Office. Furthermore the Complainants state that the service mark has been used in Canada and internationally since September 1, 1997.
The Complainants submit that the trademarks CEC NETWORK, CANADIAN EDUCATION CENTRE and the Turkish equivalent KANADA EGITIM MERKEZI and KANADA EGITIM FUARI are well known through out Turkey and internationally and that they have common law trademark rights in these names as they are marks by which the organisation is known globally. Additionally, the Complainants declare that KANADA EGITIM FUARI has been used in Turkey since 1998.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In addition to ownership rights borne upon registration of the service mark, the Complainants assert that they have established common law rights in the service mark KANADA EGITIM FUARI and exhibit evidence of use of the term in Turkey since 1998 at Annex 7 of the Complaint. The Complainants cite numerous cases where it has been established that exclusive rights in a trademark can be acquired with, or without, registration through common law rights.
The Complainants rely on their right to exercise control over how its trademark is used by third parties on the Internet. It is noted the Respondent has not claimed that the disputed domain name is being used in connection with a bona fide offering of goods and services. The Complainants have never granted the Respondent a licence or permission to use the mark KANADA EGITIM FUARI, the Respondent has no association with the Complainants and the Respondent has never been commonly known by the disputed domain name.
The Complainants aver that the disputed domain name was registered in October, 2008, by which time the Complainants had achieved common law rights in the service mark established through recognition and use. Furthermore, as the Respondent is a Turkish citizen that operates a business in the same field, it is unlikely that he would not have been aware of the Complainants extensive goodwill and reputation of its service mark KANADA EGITIM MERKEZI.
The Complainants submit that the only conceivable interest and reason for registering the disputed domain name was to create a connection to the Complainants and their service mark and/or for commercial benefit by confusing Internet users or by selling the disputed domain name to the Complainants.
It is noted that the Respondent offers consultancy services on a website “www.kanadam.com”, as exhibited at Annex 8 of the Complaint. The Complainants submit that they have exclusive authority and they are the only organisation authorised to conduct marketing activities , such as annual education fairs, is CANADIAN EDUCATION CENTRE, translated in Turkish KANADA EGITIM MERKEZI therefore any other use maybe misleading, in order to demonstrate the exclusive authority the Complainants exhibit a letter from the Embassy of Canada at Annex 9 of the Complaint.
The Complainants protest that they could not register the domain name due to lack of availability caused by the Respondent's registration thereof in October 2008.
The Complainants contend that the Respondent registered the disputed domain name in bad faith in order to prevent the Complainants from reflecting the mark in a corresponding domain name, and is using the disputed domain name in bad faith to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants' service mark.
The Complainants state that the second Complainant is the only institution that has authorisation from the government of Canada to organise fairs in the industry reliant on a letter from the embassy of Canada exhibited in Annex 9 of the Complaint. The Complainants' assert that the Respondent's registration of the disputed domain name is in bad faith as the Respondent must have been aware of the reputation and goodwill of the Complainants' service mark KANADA EGITIM FUARI at the time of registering the disputed domain name. Furthermore, the Complainants state that it would have been impossible for the Respondent to use the disputed domain name as the name of any business or service for which it would be commercially useful without violating the Complainants' rights.
The Complainants aver that the Respondent has registered the domain name for commercial purposes and relies on correspondence between the parties exhibited at Annex 10 and 11 of the Complaint, which contains offers made by the Respondent to enter into joint projects.
The Complainants note that until this Complaint was made the disputed domain name re-directed users to the Respondent's commercial website “www.kanadam.com”. Alternatively, the Complainants state that in the absence of re-direction the website is dormant which also demonstrates bad faith registration and use and cites case law that states passive holding of domain names suggests that the Respondent registered the domain name for the purpose of selling them to the Complainants for profit. The Complainants state this clearly demonstrates the Respondent's intention and bad faith when registering the disputed domain name.
The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain names to the Complainants.
The Respondent submits that the disputed domain name <kanadaegitimfuari.com> consists of 3 generic words and as a term it is a general descriptive term, meaning a fair about education. For that reason the Respondent disputes that the Complainants have any exclusive ownership rights over the term “kanadaegitimfuari,” or that it could be a trademark as it is a generic term that can not be protected.
The Respondent disputes the Complainants' contention that “kanadaegitimfuari” is the equivalent of CEC Network. Furthermore, the Respondent notes that the Complainants did not register their trademark KANADA EGITIM FUARI until April 30, 2009, 6 months after the Respondent, which, if nothing else, demonstrates that at best “Kanada Egitim Fuari” was a common law trademark and that the burden of proof lies with the Complainants to prove that it has achieved common law rights. The Respondent further claims that the Complainants have concealed the fact that it has stopped using “Kanada Egitim Fuari” for the services it offers in 2005 and since 2006 has used “Kanada Egitim Gunleri”. Annex 5 of the Complaint contains evidence of use of “Kanada Egitim Gunleri” in various materials. The Respondent also notes that the Complainants within correspondence exhibited at Annex 10 of the Complaint state that in 2006 they engaged in a re-branding strategy and decided to use “Kanada Egitim Gunleri”. The Respondent also relies on use KANADA EGITIM GUNLERI rather than KANADA EGITIM FUARI on the Complainants' website as evidenced at Annex 5 of the Response.
The Respondent notes, that the Complainants exhibit evidence of use and recognition of the term “Kanada Egitim Fuari” at Annex 4 of the Complaint, however all this material pre-dates 2005 as the Complainants ceased using this name in 2006.
The Respondent refers to the cases cited by the Complainants, United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168, WebTrends Inc. v. Search Engine SEO Software Reviews, Mark Chu, WIPO Case No. D2008-1520 and contends that the Complainants have failed to prove elements required to establish rights in the term “Kanada Egitim Fuari”, namely length and continuity of use, as it has abandoned use of the term since 2005.
The Respondent states that the domain name resolves in a website that provides an online platform for an education fair to promote the Respondent's partners, which constitutes use of the domain name in connection with a bona fide offering of goods and services. The Respondent states that providing an online fair is a long term project and it had planned to have completed development of the site by late 2009.
The Respondent contends that the Complainants have falsely and misleadingly stated that the website had re-directed users to the Respondent's website as upon registration the Respondent put a statement on the page “While we are working on Kanadaegitimfuari.com, you can look at the 30 newest messages at Kanadam.com and provides evidence of this at Annex 8 of the Complaint.
The Respondent submits that at the time of registering the trademark the Complainants had not registered the trademarks they seek to rely on and they had not used the term, “Kanada Egitim Fuari” for 3 years. The Respondent points to the fact that the letter exhibited at Annex 3 of the Complaint states that the second Complainant's CEC office in Turkey is a liaison office and can not make/transfer profit.
Furthermore, the Respondent contends that the issue of permission to use the mark is not in issue as the Complainants have no rights in the mark KANADA EGITIM FUARI. The Respondent claims legitimate and fair use of the disputed domain name as it is being used for bona fide services and the Complainants have failed to prove that the Respondent, knew of should have known about the Complainants' mark.
The Respondent cites, Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, in which it states that the Complainant had not registered the trademark… had the Respondent done a global trademark search it would not have found a registration…there is no basis for determining that the Respondent should have been on constructive notice. The Respondent relies on this notion and states that it registered the domain name 3 years after the Complainants' abandonment of the mark and 6 months before they registered their service mark. Therefore there is no basis to conclude the Respondent knew or should have known of the Complainants' use of the mark.
The Respondent denies any allegation of bad faith and states that the Complainants have failed to prove the elements required under the Policy.
The Respondent asserts that it registered the disputed domain name for the purpose of bona fide offering of goods and services. Not to sell, rent or transfer the domain name to anyone. There is also no evidence of a pattern of registering domain names in order to sell or prevent the owner from reflecting its mark in a corresponding domain name.
The Respondent states that it is not a competitor of the Complainants as the Complainants must not be involved in commercial business as can be seen in the letter at Annex 3 of the Complaint.
The Respondent contends that when registering the disputed domain name, it had no intention of creating a likelihood of confusion with the intention to attract consumers. The domain name was chosen as it contained generic and descriptive terms. The Respondent has not planned to offer or organize a fair in Turkey and has not used any similar material or visual content found in the Complainants webpage.
The Respondent notes that the fact that the Complainants allege the Respondent cannot have ignored the fact that “Kanada Egitim Merkezi” is a protected service mark is an irrelevant statement, as it has no relation to the disputed domain name <kanadaegitimfuari.com>. Furthermore the Complainants rely on exclusive authorization from the government of Canada to organise fairs in the industry, exhibited at Annex 8 of the Complaint, however claims that the quotation cited by the Complainants does not take place within the letter. Furthermore, the Respondent does not intend to organise a physical fair, but if it were, the Office to the Commercial Counsellor, Turkish Embassy in Ottawa, states any Canadian company is free to market its activities in Turkey, as evidenced in Annex 9 of the Response.
The Complainants allege bad faith as the Respondent refused to transfer the domain name and offered to enter into projects with the Complainants. The Respondent relies on this as an indication of good faith. Furthermore upon receipt of the Complaint the Respondent placed a blank web page at the disputed domain.
The Respondent cites the case Chivas USA Enterprises, LLC v. Carbajal, WIPO Case No. D2006-0551 which states “in a close case, the panel should lean toward the Respondent's view of things.”
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain name of the Respondent be transferred to the Complainant:
(a) the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) the domain names have been registered and are being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
At Annex 5 of the Complaint, the Complainants provided evidence of trade and service mark registrations with the Turkish Patent Institute, consisting of the words KANADA EGITIM FUARI and KANADA EGITIM MERKEZI which were applied for registration on April 30, 2009.
The Complainants further contend that they have rights in the trademark, KANADA EGITIM FUARI, on the basis that it has established wide recognition globally and the use of that mark has come to be recognised by the general public as indicating an association with services offered exclusively by the Complainants. Furthermore KANADA EGITIM FUARI has been used in Turkey since 1998. The Respondent notes that the marks the Complainants rely on were not registered until April 30, 2009, 6 months after the Respondent's registration on October 1, 2008. The Panel notes that the Complainants' have merely made an application for registration and such registration is still pending, therefore at present the Complainants' registration application has not been finally accepted yet. Nonetheless, the fact that the Respondent registered the disputed domain name before the Complainants does not prevent a finding of identical and confusingly similarity, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, so the Panel will go on to consider the remaining contentions of both parties.
It has been well established that having rights in a mark, for the purpose of paragraph 4(a) of the Policy, affords protection to common law rights. To successfully demonstrate common law rights, a complainant must submit evidence that demonstrates that the mark has become a distinctive identifier associated with the Complainant or its goods or services, Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112. Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states relevant evidence of such includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The Complainants have exhibited evidence at Annex 4 of the Complaint, which contains various material the majority of which demonstrates the wide use of the term, KANADA EGITIM MERKEZI, nonetheless this mark is not the subject matter of this dispute, there are a few documents containing the term KANADA EGITIM FUARI, furthermore the documents confirm that KANADA EGITIM GUNLERI was being used in early 2006. This evidence, in the Panel's opinion does not constitute evidence of common law rights in KANADA EGITIM FUARI.
The Respondent argues that the Complainants' trademark comprises of a combination of generic or descriptive terms, and that KANADA EGITIM FUARI translated means Canadian Education Fair and is therefore available to be used as a domain name. The Respondent disputes that the Complainants have any ownership rights over KANADA EGITIM FUARI or that it could be registered as a trademark. Moreover, the trademark Complainants applied for in full is “KANADA EGITIM FUARI www.studycanada.ca/turkey”, which supports the Respondent's contention that KANADA EGITIM FUARI is a generic term which may therefore lack distinctiveness as a mark, the addition of “www.studycanada.ca/turkey” arguably providing such distinctiveness. At least in the absence of an approved trademark registration for KANADA EGITIM FUARI, the Panel tends to agree with the Respondent. The Panel considers the term “Kanada Egitim Fuari” to be generic and therefore lacking in distinctiveness to operate as a mark for the goods or services offered.
The Respondent also notes that the Complainants themselves have chosen to cease using the term KANADA EGITIM FUARI since 2005 as evidenced in correspondence at Annex 10 of the Complaint and therefore seem to have abandoned any common law rights they may have established. Further evidence is provided at Annex 5 of the Response and within the material provided at Annex 4 of the Complaint, which demonstrates use of KANADA EGITIM GUNLERI rather than KANADA EGITIM FUARI from 2006.
In American City Business Journals, Inc. v. theideaman.com, WIPO Case No. D2001-0846: “abandonment of a trademark is difficult to show under U.S. law, requiring an intent to abandon (or not to resume use of) the mark”. See McCarthy on Trademarks § 17:11 (2001). Prolonged non-use can give rise to such an inference. Id. The law, however, requires “clear and convincing proof” of abandonment. See id. § 17:12. Because of the forfeiture of rights involved, “the courts are reluctant to find abandonment.” Id. at 17-17.” Even if the relatively high standards of abandonment under U.S. law were applied in the present case (to the Complainant's benefit), the Panel concludes from the available record that it is reasonably clear from correspondence exhibited at Annex 10 of the Complaint that the Complainants have and intended to abandon the use of the term KANADA EGITIM FUARI as a mark.
For all the aforementioned reasons, the Panel finds that the requirements in paragraph 4(a)(i) of the Policy have not been satisfied, consequently, the Panel finds for the Respondent on the first element of the Policy.
The Complainants seek to rely on a letter exhibited at Annex 9 of the Complaint, stating that the Complainants have exclusive authority and they are the only organisation authorised to conduct marketing activities, such as annual education fairs, therefore any other use maybe misleading. Upon examination of such letter the Panel was unable to determine that such exclusivity had been awarded to the Complainants. Furthermore, the Respondent exhibits a letter from Commercial Counsellor of the Turkish Embassy in Ottawa which clearly states there is no bar to the Respondent offering marketing services, including education fairs. Therefore the Panel is of the opinion that the Complainants do not appear to enjoy any exclusivity or exclusive authorisation to provide such services and that they merely have authorisation from the Embassy of Canada to carry out such activities.
The Complainants assert that the Respondent was aware of their reputation and that the service mark KANADA EGITIM FUARI is commonly recognised and associated with the Complainants. The Complainants rely both on common law rights and the applied for registration of the mark KANADA EGITIM FUARI as exhibited at Annex 4 of the Complaint. The Complainants put forward their right to exercise control over how its trademark is used by third parties on the internet and contends that the Respondent has no right or legitimate interest in the domain name. Furthermore, it is submitted that the Respondent has neither association to the Complainants, nor a connection to the domain name, and is not commonly known by the term KANADA EGITIM FUARI.
The Complainants state that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainants have never granted the Respondent a licence or permission to use the mark KANADA EGITIM FUARI. The Complainants assert that as the Respondent must have been aware of the Complainants' reputation at the time of registering the disputed domain name and that the only conceivable interest was to create a connection to the Complainants.
The Respondent contends that he registered the disputed domain name because it consists of a generic term, that is relevant to the services offered and he wanted to use the domain name for that purpose. As the Complainants are a non-profit organisation, offering services and support to companies similar to the Respondent's free of charge, the Respondent can not be deemed a competitor and the website is not being used to provide services competitive to the Complainants' business.
The Complainants allege that the Respondent used the website as a re-direction service, this is denied by the Respondent and it provides the Panel print outs of the website at Annex 8 of the Response, displaying a message that the website is under construction and to visit “www.kanadam.com” for the most recent messages.
The Panel visited the disputed domain name on July 10, 2009, and the website resolved in a blank page. However, the Respondent in the Response explains that the domain name resolves in a blank page, intentionally and in good faith upon receipt of the Complaint but it is understood by the Panel that the Respondent has intention of utilising the domain name once this dispute is resolved, therefore demonstrating that the Respondent has a legitimate interest in the disputed domain name. Furthermore, the Panel understands from the correspondence exhibited at Annex 10 of the Complaint that the Respondent deleted the contents of the webpage, in good faith in order to appease the Complainants' concerns.
The Complainants assert that at the time of registering the domain name the Respondent must have been aware of the reputation and goodwill of the Complainants' trademark. The Respondent states that as there was no trademark registration there is no basis to conclude that the Respondent knew or should have known about the Complainants' mark. Nonetheless, the Respondent contends that he choose the domain name as he believed that it was a generic term and that he had the right to use the term as part of his domain name. The domain name contains the term “kanadaegitimfuari” and therefore the user would expect the domain name to resolve in a website that is connected with the name. It is obvious to the Panel that in this case the domain name does not resolve in a site that provides information about education in Canada, however the Respondent states that it intends to use the domain name for a purpose and to provide an online fair of education in Canada. Prior to the Respondent changing the webpage following a written request by the second Complainant, as evidenced in Annex 10 of the Complaint, it appears that the webpage while under construction re-directed users to the Respondent's original website “www.kanadam.com” which also contained information that was relevant to the descriptive nature of the disputed domain name.
The Respondent claims that the domain name is used to offer bona fide services; however the Respondent has failed to provide any evidence of his business plan or intended use. However he has provided evidence of business relationship or contacts with the enterprises which he intends to work with to provide services of an online education fair at Annex 2. Apart from this there are only his statements regarding the proposed business without any concrete evidence, as the partners evidenced at Annex 2 are also current business partners, the Panel does not accept that this alone provides evidence to draw the conclusion that the domain will in fact be used for a bona fide offering of goods or services as the Respondent claims. The Respondent has failed to establish “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services, Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.
It is well established that once the Complainant makes out a prima facie case under the UDRP, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the Domain Name. The UDRP and the Policy are identical in respect of their requirements for the establishment of lack of rights and legitimate interests, so the Panel is of the opinion that the same line of reasoning should be applied in the present case.
The Complainants make reference to the Respondent's website “www.kanadam.com” however, the comments made in relation to this website have not been regarded by the Panel as determinative as the issues raised in relation to that website are not immediately relevant to resolving the present dispute over the disputed domain name.
Had it been necessary, the Panel would on the present record have found the requirements of 4 (a)(ii) to have been fulfilled, and consequently the Panel would have found in favour of the Complainants on the second element of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Although the domain name was registered before the Complainants registered their trademark KANADA EGITIM FUARI, the Complainants claim they had established rights in the trademark prior to the Respondent's registration of the disputed domain name in October 2008. Therefore the Complainants attempt to rely on common law rights established through recognition and the use of the mark KANADA EGITIM FUARI. The Panel finds the Complainants have in the present case failed to prove bad faith registration. In making this finding the panel follows National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. The panel considers that registration of a common term that is also a trademark requires additional evidence before bad faith can be found; no such evidence, which would likely be in the Complainants' control were it available, has been submitted, due to the lack of any such evidence, the Panel concludes that the domain name was not registered in bad faith.
The Respondent has not offered to sell, rent, or otherwise transfer the registration of either domain name to the Complainants, nor have the Complainants produced any evidence that Respondent has offered to rent, sell, or otherwise transfer the registration to a competitor of Complainants. To the contrary, the evidence exhibited at Annex 10 of the Complaint suggests to the Panel that the Respondent has no such intentions. The Complainants have not established or satisfied the Panel that Respondent registered this particular domain name primarily for the purpose of disrupting the business of a competitor.
Although the Respondent is not using the domain and it remains inactive, the Respondent has demonstrated and relied on evidence at Annex 10 of the Complaint that indicates that the Respondent has the intention of using the website, and whilst the webpage is under construction it had been used to re-direct to the Respondents webpage at “www.kanadam.com” (Annex 8 of the Response). It seems to this Panel that the Respondent's removal of the re-direction was at least in part motivated by an attempt to address concerns raised by the second Complainant. Therefore the fact that the webpage is presently inactive can not be relied upon by the Complainants as demonstrating bad faith registration as they were well aware that the webpage was not being used in response to their concerns conveyed through e-mail correspondence with the Respondent.
There is no dispositive evidence provided by the Complainants that the Respondent registered or acquired the domain name in bad faith. Rather, the preponderance of available evidence suggests to this Panel that the Respondent at least believed he had legitimate rights in using a generic term as his domain name, and there is no evidence of commercial gain, intention to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent clearly states that it has never attempted to sell the domain name to the Complainants' for commercial gain, and there is no provided evidence of a pattern of such conduct. Furthermore, there is (although not dispositively proved under the second element) at least a reasonable suggestion that the Respondent has an intention of legitimate use, and that there is conceivable good faith use for the disputed domain.
In reaching a conclusion, the Panel observed whether or not bad faith existed when the domain name was registered and whether or not the domain name was used in bad faith. After examining all circumstances surrounding the registration and use of the domain names, the Panel finds that the Complainants have not satisfied paragraph 4(a)(iii) of the Policy. Accordingly the Panel finds in favour of the Respondent on the third element of the Policy.
The Complainants have failed in this present proceedings to prove two of the three requirements of paragraph 4(a) of the Policy. Accordingly, the Complaint must be denied.
Dated: July 15, 2009