Complainant is The Niagara Parks Commission of Niagara Falls, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is Whoisprotection.cc / Manila Industries, Domain Admin of Irvine, California, United States of America.
The disputed domain names <niagarparks.com> and <nigaraparks.com> (hereinafter “the Domain Names”) are registered with Web Commerce Communications Limited dba WebNic.cc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2009. On September 11, 2009, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc a request for registrar verification in connection with the Domain Names. On September 14, 2009, Web Commerce Communications Limited dba WebNic.cc transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on September 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 21, 2009. The Center verified that the Complaint together with the amended 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 September 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2009. Respondent corresponded with the Center on September 15, 2009.
The Center appointed Clive L. Elliott as the sole panelist in this matter on October 22, 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.
Complainant is an Ontario Provincial Crown agency incorporated by act of the Provincial legislature on April 23, 1887 and is a self-financed agency of the Ontario Ministry of Tourism and Recreation and governed by The Niagara Parks Act, R.S.O. 1990, Chapter N.3.
Complainant is the owner of the trade mark NIAGARA PARKS together with various Canadian Official marks containing, or comprised of, NIAGARA PARKS (collectively called the “NIAGARA PARKS Official Marks”). Details of such marks were provided in the Complaint.
The Domain Names were registered on May 7, 2005.
Complainant states that it controls, manages and develops 4,250 acres of parkland and 56 kilometers of roadway and recreational trail along the Niagara River from Lake Erie to Lake Ontario. It contends that its mandate is to preserve and enhance the natural beauty of the Niagara Falls Region and Niagara River corridor for the enjoyment of visitors, while maintaining economic sufficiency. Complainant asserts that it is classified as an operational enterprise, characterized as one which sells goods and services to the public in a commercial manner and that it is similar to a private corporation, with all the objects, powers and duties prescribed under the Niagara Parks Act. Complainant also asserts that it is a city within cities, complete with its own police force, road maintenance services, transportation system and snow and garbage removal services and that it employs a staff of over 1,500 people.
Complainant states that it has used, and continues to use, NIAGARA PARKS as a trade mark and contends that by virtue of continuous use in Canada since at least as early as 1887, it is the owner of the trade mark NIAGARA PARKS. It also asserts that it has generated significant revenue in association with the use of the NIAGARA PARKS trade mark as well as incurring significant operating expenses.
Complainant asserts that the NIAGARA PARKS trade mark has been used in association with the promotion and sale of its goods and services, including travel services, booking services, golf services, merchandising, restaurant services and parking lot services and that the NIAGARA PARKS trade mark is prominently featured and promoted on its website located at “www.niagaraparks.com”. Complainant contends that its website has generated significant Internet traffic, making it a popular destination for consumers seeking to plan their vacations to the Niagara region and that as a result of such extensive use and promotion, the NIAGARA PARKS trade mark has achieved significant public recognition and awareness, and an exceptional reputation.
Complainant asserts that the Domain Names registered by Respondent are “pay-per-click” websites which display sponsored links to travel and hospitality-related services that compete with, or rival, the services offered by Complainant, and the websites also provide a means by which end users could search for links to competitor sites of Complainant. Complainant believes that such use of the Domain Names puts Respondent in a position to reap a financial benefit.
Complainant also asserts that the Domain Names are intentional misspellings of the NIAGARA PARKS trade mark. The letter “a” has been deleted before the letter “g” in the domain name <nigaraparks.com> and the letter “a” has been deleted before the letter “p” in the domain name <niagarparks.com>. Complainant asserts that Respondent's typosquatting constitutes prima facie evidence of confusion and is direct evidence of an intent on the part of Respondent to deceive the public. It also asserts that save for the omission of a single letter in each of the disputed domain names, the Domain Names are visually and phonetically identical to the NIAGARA PARKS trade mark and the formative element of the NIAGARA PARKS Official Marks, namely, NIAGARA PARKS, which it submits also supports a finding of confusion.
Complainant believes that there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, the Domain Names, or a name corresponding to same, in connection with a bona fide offering of goods or services. It says that there has never been any relationship between it and Respondent, and that Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the NIAGARA PARKS marks in any manner whatsoever, including in, or as part of, a domain name.
Complainant submits that Respondent has attempted to exploit its reputation and goodwill to promote its own commercial interests by using the Domain Names to drive traffic to its commercial websites, by piggybacking on the goodwill associated with the NIAGARA PARKS marks by capitalizing on typographical errors, in an attempt to exploit, for commercial gain, Internet traffic properly destined for Complainant.
Respondent responded to the Complaint by email dated September 15, 2009. In this email it denied all allegations of wrongdoing but it contended that in an effort to resolve matters amicably it would consent to the transfer of the Domain Names to the Complainant, along with providing the appropriate authorization codes for transfer of registration.
Complainant provides convincing evidence to establish that it is the owner of the NIAGARA PARKS trade mark in Canada, in association with the promotion and sale of its goods and services, including travel services, booking services, golf services, merchandising, restaurant services and parking lot services. It has made extensive use of the NIAGARA PARKS trade mark and is entitled to rely upon its rights and interests by virtue of both registration and use of the said trade mark.
Complainant submits that the Domain Names are intentional misspellings of the NIAGARA PARKS trade mark and are being used to divert Internet traffic to pay-per-click websites. It further asserts that this suggests that Respondent is affiliated with, or has endorsed, the various travel-related businesses on the websites, which Complainant asserts is not the case. There is merit in this submission.
However this may be, the Panel is satisfied that on a direct comparison between the Domain Names and the trade mark, the Domain Names are confusingly similar to the NIAGARA PARKS trade mark.
It is therefore found that Complainant has rights in the NIAGARA PARKS trade mark and that the requirements of paragraph 4(a)(i) of the Policy are met.
Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use the NIAGARA PARKS trade mark or to seek the registration of any domain name incorporating the said trade mark.
The registration and use of the NIAGARA PARKS trade mark clearly preceded the registration of the Domain Names. The Domain Names makes a clear and direct reference to the trade mark.
Complainant asserts that the NIAGARA PARKS trade mark is being used to divert Internet traffic to pay-per-click websites that offers sponsored links to competitor sites of Complainant and that this redirection is harmful to Complainant and is allowing Respondent to reap an improper financial benefit. Again there is good basis for this contention and no real effort has been made to challenge or refute it.
These assertions, accompanied by effectively a failure to deny or explain, is sufficient for the Panel to draw an inference that Respondent has no rights or legitimate interests in respect of the Domain Names. Complainant thus succeeds in meeting the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that respondent has registered and uses the domain names in bad faith.
Given the present record, including the nature of the Domain Names themselves and the lack of evidence to the contrary, the Panel infers that Respondent knew or must have known of Complainant's NIAGARA PARKS trade mark at the time it registered the Domain Names.
Complainant's submission that Respondent has registered the Domain Names for the purpose of providing sponsored links and thereby attracting users to the websites of competitors of Complainant raises an inference of bad faith conduct.
Complainant also alleges that Respondent has a history of unfavorable UDRP decisions and that it can be described as a serial cybersquatter that also engages in typosquatting, as in this case. Respondent does not dispute this but says it would consent to the transfer of the Domain Names along with providing the appropriate authorization codes for transfer of registration. This suggests that there may be some basis for Complainant's allegations and that Respondent wishes to take the line of least resistance and hopefully avoid adverse comment. In the Panel's view the facts and circumstances speak for themselves and no further comment is needed.
Accordingly, the Panel concludes that Respondent both registered and used the Domain Names in bad faith in accordance with 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 names <niagarparks.com> and <nigaraparks.com> be transferred to Complainant.
Clive L. Elliott
Dated: November 2, 2009