Complainant is Golden Gate Bridge, Highway and Transportation District of San Francisco, California, United States of America, represented by the law firm Hanson Bridgett LLP, United States.
Respondent is Whois IDentity Shield / Golden Gate District / Administrator, Domain of Vancouver, British Columbia, Canada.
The disputed domain name <goldengateferry.com> is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2009. On June 30, 2009, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. After several additional requests, on July 9, 2009, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Specifically, the registrar indicated that the registrant name and contact details for the disputed domain name mirrored nearly exactly those of Complainant. The Center sent an email communication to Complainant on July 10, 2009 concerning the registrant and contact information disclosed by the Registrar, and requesting Complainant to confirm whether it in fact controlled the disputed domain name. Complainant replied on the same day confirming that it was not in control of the disputed domain name and urging the Center to proceed with notification of the Complaint.
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 July 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 4, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 13, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding.1 The Panel has submitted his 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 governmental entity, a special district created by the State of California in 1928 in connection with the construction of the Golden Gate Bridge between San Francisco and Marin County, California. Complainant's authority has expanded since then. In 1969 the California Legislature authorized Complainant to develop a transportation facility plan for implementing a program including bus and ferry traffic and all forms of mass transit. Since ferry service between San Francisco and Marin County resumed in 1970 Complainant has been responsible for operating it.
The California authorizing legislation for Complainant includes state-granted rights to protect the trademarks and service marks Complainant uses in providing its services. Complainant has registered GOLDEN GATE FERRY as a service mark with the United States Patent and Trademark Office (USPTO), a registration that issued in December 2002. Complainant has used the mark GOLDEN GATE FERRY extensively in its advertising and otherwise to promote its services, and has generated revenues from ferry services that exceeded USD 10 million last year. Complainant registered the domain name <goldengateferry.org> in 1999.
As noted above, little is known about Respondent. In August 2003, the disputed domain name was registered to an entity named Domain Deluxe. A screenshot of the website maintained at the disputed domain name taken June 26, 2009, includes a picture of the San Francisco skyline and hyperlinks to (among others) Golden Gate Bridge, San Francisco Giants (the local baseball team), San Francisco, California, San Francisco cable cars, ferry schedule, “things to do in San Francisco”, and many other San Francisco-related links.
Complainant contends as follows:
Complainant has rights in its GOLDEN GATE FERRY mark by reason of its USPTO registration of that mark (2002), continuous use in commerce since 1970, and the rights granted to it by the State of California in its enabling legislation (1986). The disputed domain name is identical to Complainant's mark except for the top-level domain.
Complainant has granted Respondent no rights to use its mark, and Respondent has no legitimate interest in it even if he has used it for several years, as registration was made with full knowledge of Complainant and Complainant's trademark rights. Use as a landing page for pay-per-click revenues is not legitimate in these circumstances.
Complainant's mark is famous. When Respondent registered the disputed domain name more than thirty years after Complainant began using its mark, “it is simply inconceivable that Respondent was unaware of [Complainant's] mark, and the manner in which it uses its mark”. In light of that, Respondent's use of the disputed domain name for pay-per-click revenues allows Respondent to derive income by taking advantage of the goodwill attached to Complainant's mark, and Respondent has created a likelihood of confusion with the mark in order to attract Internet users to Respondent's website for commercial gain.
Respondent did not reply to Complainant's contentions.
The first issue the Panel must determine is the identity of Respondent. Like Complainant, the Panel cannot precisely determine which person or entity owns the disputed domain name. That fact does not mean that the Panel may not proceed to the merits and, if appropriate, order a transfer of the disputed domain name to Complainant. The Panel's order is directed to the registrar. In very similar circumstances this Panel held in Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183:
“Here the registrant's identity remains unknown, but the Panel still concludes […] that this actual registrant, even though a cipher, should be considered the respondent in this proceeding. To do otherwise would thwart the purpose if not the literal language of the Policy and Rules, common sense, and the Registrar's express disclaimer of any ownership interest in the disputed domain name. All these factors point to the owner of the disputed domain name, not its agent the privacy service, as the party with which Complainant has a grievance.”
Someone or some entity is or was operating the website with links to San Francisco attractions; it is that person or entity against which Complainant seeks redress. And further, a registrant's concealing himself or skullduggery by a rogue registrar (see below) should not impede a mark owner's pursuit of a cybersquatter under the Policy.
Against this unknown entity Complainant has established a textbook case of cybersquatting. Complainant's mark is indeed famous and the content of the website indicates that Respondent, whoever or whatever he or it may be, had full knowledge of Complainant and its mark. Anyone familiar with San Francisco tourist attractions, the website's subject, may be presumed to be aware of Golden Gate Ferry. Except for the top-level domain, which is not considered for purposes of comparison under paragraph 4(a)(i) of the Policy the disputed domain name is identical to Complainant's mark. Complainant has made its prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name, and Respondent has come forward with no evidence (and the Panel can find none) to the contrary. Using another's mark in a domain name featuring pay-per-click links to goods or services similar to or competitive with those of Complainant is exactly within the example of bad faith in paragraph 4(b)(iv) of the Policy.2 Such use also allows the Panel to infer registration in bad faith when as here the mark at issue is longstanding and well-known. Complainant has met its burden of proof under all three clauses of paragraph 4(a) of the Policy.
One issue remains. Complainant has noted (quite properly) that Nameview Inc., registrar for the disputed domain name, has been cited in many UDRP opinions for conduct inconsistent with the Policy and the Rules. In this case such conduct included repeated failure to reply to the Center's emails regarding contact information and eventual notification of ownership allegedly in the name of an entity with a name identical to Complainant. This is not the first time for this latter offense, see, e.g., FOSS A/S, FOSS NIRSystems INC v. fossnirsystems.com c/o Whois IDentity Shield /Admin, Domain, WIPO Case No. D2008-1256. One panelist has gone so far as to name such conduct the “Nameview practice,” DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty, WIPO Case No. D2007-1431. At a minimum this conduct unnecessarily prolongs a proceeding, and it is not difficult to imagine variations that could actively frustrate prompt implementation of the Policy or implicate certain actors. See, for example, Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886.
This Panel and the Center as provider have scant means to address this behavior. This Panel however believes that if only to add to the statistics it is appropriate to point out this registrar's non-complainant conduct in this proceeding
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 <goldengateferry.com> be transferred to Complainant.
Richard G. Lyon
Dated: August 20, 2009
1 For the reasons given in the Association Robert Mazars case cited in the text below, the Panel has no difficulty determining that it has jurisdiction to decide this matter.
2 “For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”