WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toronto Convention & Visitors Association v. This Domain is For Sale /Email Your Offers
Case No. D2001-1463
1. The Parties
The Complainant is Toronto Convention & Visitors Association ("Toronto Tourism"). It is a corporation incorporated under the laws of the Province of Ontario, Canada.
Its principal office and place of business is at 207 Queens Quay West, Toronto, Ontario, Canada M5J 1A7. It is represented by Peter Giddens of Lang Michener, Barristers & Solicitors, BCE Place, Suite 2500, 181 Bay Street, Toronto, Ontario, M5J 2T7, Canada.
The Respondent is identified as This Domain is For Sale/Email Your Offers. That identification comes from the WHOIS database of eNom Inc of Washington, United States. The WHOIS database gives the Respondent's contact details which are as follows; This Domain is For Sale | Email your offers, Web Master, Vytauto Mail Box #60, Radviliskis, LT-5120, Lithuania
The Respondent is not represented in this Complaint.
2. The Domain Name and Registrar
The domain name the subject of the dispute is <tourism-toronto.com>.
The Registrar with which the domain name is registered is eNom Inc. of 16771 NE 80th Street, Suite #100, Redmond, Washington, United States.
The date on which the disputed domain name was registered is June 25, 2001. It was then registered in the name of another registrant Domain For SALE -<offers.NameRegister.com>. It is unclear precisely when it was transferred to the present respondent. It appears it may have been on or about November 29, 2001.
3. Procedural History
On December 18, 2001, the Complaint was received by email.
On December 21, 2001, the Complaint was received in hard copy.
On December 21, 2001, the Registrar Verification was requested.
On December 28, 2001, the Registrar responded to the request.
On January 4, 2002, a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.
On January 25, 2002, a Respondent Default Notification was issued.
On February 11, 2002, a Notification of Appointment of Administrative Panel and projected decision date was notified.
The Panel having accepted the appointment and having considered the papers delivers the following administrative Panel decision.
4. Factual Background
Toronto Tourism is a private not-for-profit corporation acting as the official destinations marketing agent for the city of Toronto.
Its business is promoting, attracting and securing tourism business for the city of Toronto. It serves to promote and market through Canada and the world the City of Toronto as a destination for tourists, convention delegates and business travellers.
It has as an official mark (no. 909095) under the (Canadian) Trade Marks Act the official mark TOURISM TORONTO certified by the Canadian Registrar of Trade Marks and publicly notified on October 22, 1997.
Toronto Tourism is also the owner of all reputation and relevant goodwill in the common law trade marks TOURISM TORONTO as a word mark, in stylised form and logo.
Toronto Tourism also has a number of websites <torontotourism.com>, <toronto-tourism.com>, <tourismtoronto.tv>, and <torontotourism.tv>.
The Respondent is shown in the Registrar WHOIS database simply as This Domain is For Sale/Email Your Offers with an address care of the webmaster, in, apparently Lithuania. Precisely what form of legal entity the Respondent is cannot be established.
Nothing more is known about the Respondent or the entity lying behind the registered registrant of the disputed domain name, nor its business.
The Respondent has defaulted and provided no response to the Complaint. It has sent late emails to the Complainant, to which reference is made later in this decision.
5. The Parties' Contentions
The Complainant is the marketing association for the City of Toronto. Approximately 50% of its budget is funded by the City of Toronto with the balance of 50% being funded by the Complainant's 850 members.
Toronto Tourism exists to promote the City of Toronto as a destination for tourists, convention delegates and business travellers. It has been in operation since incorporation in 1926 and has performed the services it provides under the style "Tourism Toronto" since February 1996. It acquired its present trading style Toronto Convention & Visitors Association in 1998 following the amalgamation of the Municipality of Metropolitan Toronto into the City of Toronto.
Toronto Tourism has an average annual budget exceeding C$2.9 million. The marketing division has an average annual budget exceeding C$1.7 million.
The City of Toronto enjoyed visits by approximately 16.2 million overnight and same day visitors in the years 1999 and 2000 providing revenues of C$3.249 billion for the City.
The majority of the visitors were from Canada followed by the United States. Overseas visitors, whilst accounting for only 8% in number contributed some 26% of total revenues to the City.
The City of Toronto considers the overseas market is of vital importance and a significant source of business for Toronto Tourism.
Toronto Tourism's official mark number 909095, whilst not a trade mark or service mark, is nevertheless designated as an official mark affording it similar protection to the more commonly encountered trade marks or service marks. In particular the Canadian Trade Marks Act prohibits the adoption and use by others of marks closely resembling official marks.
Toronto Tourism claims that its official mark should be treated as analogous in all material respects to a trade mark or a service mark, citing the Bruce Trail Association v Andrew Camp and Bruce Trail Enterprises WIPO Case D2001-1021.
In addition Toronto Tourism relies upon its common law marks TOURISM TORONTO as a word mark, in stylised and logo form (See Annex 7 of the Complaint), and also its websites which use and invert the two words Toronto and Tourism (see page 12 para (xx) of Complaint and Port affidavit exhibits 7 and 8 being annex F to the Complaint).
Its common law trade marks have been used in conjunction with the supply of services by Toronto Tourism since 1996. These various services are provided in Canada and at various international trade shows and conventions (see annex E to the Complaint and Port affidavit exhibits 7 & 8 being Annex F to the Complaint).
Additionally, there is a telephone call center, which in year 2001 answered in excess of 100,000 telephone queries, the majority of which appear to have originated from outside Canada.
Toronto Tourism also produces various publications and maintains its website.
The Respondent has defaulted and provided no response. Its contentions are therefore unknown.
Having regard to the fact that the Respondent is registered as This Domain Is For Sale/Email Your Offers rather than in the name of a commonly accepted and understood legal entity, gives some indication as to who or what the Respondent is.
Letters before action and attempts to communicate with the Respondent by the Complaint have been unsuccessful in drawing any response whatever.
Notwithstanding that the Respondent has defaulted, it still remains at all times incumbent on the Complainant to make out its case.
The Complainant has lodged very full, helpful and persuasive submissions and evidence. To that there has been no response.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has defaulted and placed no evidence nor any submissions before the Panel.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name: and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to the first ground, identical or confusing similarity, Toronto Tourism contends that the disputed domain name <tourism-toronto.com> is confusingly similar with the Complainant's official mark, common law trade marks, trade name and domain names. It asserts that the only differences are the addition of the hyphen and deletion of the space between the words "tourism" and "toronto" and the presence of the generic top level domain extension ".com" to the domain name.
Reliance is placed upon earlier panel decisions that such differences are without legal significance.
This Panel has previously decided in like manner that the addition of descriptors, geographical or generic extensions are differences without substance. Moreover it is clear that of the various trade names used by Toronto Tourism they include the inverted form of the name whether it be Tourism Toronto or Toronto Tourism. That notwithstanding, there would be no reason to distinguish between Tourism Toronto and Toronto Tourism. Both words adequately describe the type of business or service that one would expect to be offered by an organisation that provided services relating to tourism for the City of Toronto. Whilst descriptive and geographic in nature there can be no question in circumstances such as these that Toronto Tourism has rights to the trade marks or service marks or common law marks Tourism Toronto and Toronto Tourism. The disputed domain name is confusingly similar to Toronto Tourism's trade marks or service marks.
Accordingly, ground (i) is made out.
The second ground requires the Complainant to establish that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
Toronto Tourism states that the Respondent is not a licensee of Complainant and has no authority or right to use the disputed domain name or any mark confusingly similar to the marks of Toronto Tourism.
Toronto Tourism alleges that the Respondent appears to be an individual or organisation residing in Radviliskis, Lithuania, operating a pornographic website, which has nothing to do with the tourism industry.
The mere fact that the Respondent appears to be an entity in all ways vastly remote to the City of Toronto and with no apparent connection with the City of Toronto immediately raises an inference that it would have no rights or legitimate interest in a domain name which carries within it a true and accurate description of the services offered by Toronto Tourism for the City of Toronto. That begs the question, what possible legitimate use might a Lithuanian entity have for a domain name such as this.
Toronto Tourism also relies upon the Respondent's website link "click here to buy this domain name" as featured on the Respondent's website as an indication that the Respondent intends to trade the site for valuable consideration to the highest bidder. Such statements on the website would appear to negative any claim based on paragraph 4(c) of the UDRP that the Respondent may be making a legitimate non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Toronto Tourism also relies upon the actions of the former registrant of the disputed domain name to which reference will be made in the following section of this decision.
Toronto Tourism alleges that its widespread use of its marks, including its rights to the official mark as established in the Canadian Trade Marks Office, together with the obligations assumed by a registrant under the registration agreement with the domain name registrar all establish that the Respondent must have known that its website accessible through the domain name would be accessible to internet users.
Toronto Tourism sent a cease and desist letter by email and registered mail to the Respondent but has received no response.
The Respondent's domain name can only be considered as carrying with it the necessary and indeed inevitable representation that it is in some way connected with a service provided by the City of Toronto in connection with tourism. The fact that the site to which the dispute domain name resolves is a pornographic site carries with it two consequences. First, it clearly not being a site in anyway associated with Tourism Toronto the site is making a misleading and deceptive claim to association. Secondly, and arguably more seriously, some persons will clearly be misled into thinking that there may be an association, but an association with which the City of Toronto makes and would prefer to make no claims. The proliferation of pornographic websites on the internet is completely beyond the scope of the UDRP. Nevertheless, Complainants who operate a bona fide business or service are entitled in appropriate circumstances to rely upon the UDRP as protecting their interests if they have been established and to object to their reputation and goodwill being associated with pornographic websites. Where the Respondent in question has contractually committed itself to adherence to the UDRP the Complainant is fully entitled to invoke terms and conditions of registration which include an obligation by the Respondent to adhere to and be bound by the UDRP.
Accordingly it follows that the second ground of the Complaint is made out.
The third ground requires the Complainant to establish that the domain name has been registered and is being used by the Respondent in bad faith. It is well established under a number of previous Panel decisions that both registration and use in bad faith must be made out.
Toronto Tourism relies on the acquisition by the Respondent of the disputed domain from the previous registrant. The disputed domain name was at one time a domain name registered in favour of Toronto Tourism. For reasons, which have been explained in the Complaint, it unfortunately lapsed or expired without the knowledge of the Complainant. At or about the time the registration in favour of Toronto Tourism lapsed or expired it appears to have been acquired, registered or re-registered by another entity styled "domain for SALE-http://offers.NameRegister.com". That entity has been the subject of other domain name disputes (see exhibit 45 to the Li affidavit being annex 5 to Complaint).
The Complainant's registration of the disputed domain name lapsed some time prior to June 2001, although the date of the actual lapsing is not stated. In or about June 2001, Toronto Tourism became aware that its registration had lapsed or expired and been registered or re-registered by a third party only upon inquiries or visitors to the website of the disputed domain notifying Toronto Tourism that the site now featured pornographic material or was linked to such a site (see annexes F and G to the Complaint). The registration details show the disputed domain name was registered by the previous registrant on June 25, 2001.
Toronto Tourism sought to access the dispute domain, then registered in favour of "domain for sale-http://offers.NameRegister.com". It also appears as if Toronto Tourism sought to file a Complaint against the former registrant but the transfer of the disputed domain name to the present Respondent took place before that could be implemented. It is alleged that the transfer was for the purposes of preventing Complaint being made against the former registrant.
It is also of note that an unsolicited email was sent to the Complainant on November 21, 2001, from <offer@NameRegister.com> seeking US$3550 for the domain. The website appears the same as that of the former registrant. (See exhibit 11 to Port affidavit being Annex F to the Complaint).
The Respondent's website, when accessed by Toronto Tourism on December 4, 2001, displayed an icon option "to purchase this domain name - click here". When accessed on that date the inquiry was re-directed to the former registrant's URL, which registrant was apparently the transferor to the present respondent.
Toronto Tourism relies on earlier panel decisions to support the submission that transfer to and acquisition by a Respondent of a domain name in bad faith can be treated as equivalent to registration of the domain name in bad faith. It cites and relies upon a number of previous Panel decisions including Madonna Ciccone v Dan Parisi and "madonna.com" WIPO Case D2000-0847.
Under the UDRP, clause 4(b) provides that for the purposes of paragraph 4(a)(iii) of the Policy certain circumstances, if found to be present, shall be evidence of registration and use of a domain name in bad faith (emphasis added).
Clause 4(b)(i) identifies for the purposes of a Respondent "circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name " (emphasis added).
Clause 4(b)(iv) states that "by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 website or location or of a product or service on your website or location" (emphasis added).
In clause 4(b)(i) the words are disjunctive. Clearly "acquired" is used as connoting some form of acquisition, purchase, transfer or assignment from a third party. Clause 4(b)(iv) talks of use.
The examples given are stated to be "evidence of registration and use" in bad faith. Thus the examples cover both aspects of ground 4(a)(iii), both of which, as earlier indicated, have to be made out.
This Panel would have no hesitation in finding that on a fair and purposive construction the Policy is designed to catch transfers and acquisitions that have as their object a dealing with the domain name to the prejudice of the Complainant. That dealing can be of a commercial nature to the detriment of the Complainant or alternatively it can be by wrongful claim to affiliation, sponsorship or association. It can be for a variety of other reasons as well, all of which may impact detrimentally on the Complainant.
The Policy states that the circumstances indicated (which are by way of examples only and are not exclusive) "if found by the Panel to be present" shall be evidence of registration and use in bad faith.
It appears clear from the wealth of evidence put forward by the Complainant (see specifically the Li and Port affidavits being Annexes E & F to the Complaint) that the Respondent or the previous registrant have offered to sell the disputed domain. The latest attempt was on January 4, 2002, after the commencement of administrative proceedings and notification to the Respondent. (See tab 8 to the WIPO case file). Whether this should be treated as a Respondent reply is not in issue. It is an offer for sale, not a considered reply. That was followed by a further offer of transfer at no cost if the Complaint was withdrawn (see tab 12).
The Panel does not consider the emails just referred to emanating from the Respondent fulfil the requirements of a genuine offer of transfer for no more than documented out of pocket costs. The history of the Respondent, its links with the previous registrant, the late transfer to the Respondent at the end of 2001, the offers for sale and the links to the pornographic websites leave but one conclusion, namely that the Respondent is guilty of abusive domain name registration. Whilst any Panel would be reluctant to find bad faith in a case involving documented evidence only and no oral hearing in the conventional way, the evidence of bad faith in this case is simply overwhelming.
In the present case the Respondent has defaulted. It has provided no formal response. It has received the Complaint. The allegations in the Complaint are fairly and comprehensively set out. It provides a relatively exhaustive factual and legal summary.
There is no concept under the Policy of burden of proof but without doubt a Complainant must make out its case. But where a Complainant provides such detailed allegations and evidence as here and especially where that evidence is supported by affidavits, it is reasonable to expect that a Respondent would come forward with a denial and explanation of its allegations together with supporting evidence if the Complainant's Complaint was disputed in any material way. The Respondent's late emails do not assist it at all.
The allegations in evidence raise an inference of bad faith. They have not been responded to. Given the specific nature of them and absent a proper response this Panel finds that registration and use in bad faith is made out.
Even looking at matters on the most favourable basis for the Respondent, it is difficult to see what could possibly be raised in its defence.
Ground 4(iii) is therefore made out.
For the reasons set out above the Panel finds:
(a) The domain name <tourism-toronto.com> registered by the Respondent is confusingly similar to trade marks to which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
(c) The Respondent's domain name was registered and is being used in bad faith.
Accordingly, pursuant to clause 4(i) of the Policy, the Panel requires that the registration of the domain name <tourism-toronto.com> be transferred to the Complainant.
John Katz QC
Dated: February 25, 2002