Canadian Hockey Association v. Mrs Jello, LLC
1. The Parties
The Complainant is Canadian Hockey Association of Calgary, Alberta, Canada, represented by Macleod Dixon LLP of Canada.
The Respondent is Mrs. Jello, LLC of Livingston, New Jersey, United States of America, represented by WermuthLaw P.A. of United States of America.
2. The Domain Name and Registrar
The disputed domain name <hockeycanada.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2005. On October 5, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 5, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 14, 2005. Per request of the Respondent, the due date for the Response was extended to November 9, 2005. The Response was filed with the Center on November 9, 2005.
The Center appointed Mr. Warwick A. Rothnie, Mr. Daniel R. Bereskin QC and Mr. Wolter Wefers Bettink as panelists in this matter on December 7, 2005. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant is the Canadian Hockey Association which carries on business as Hockey Canada. According to its website (at “www.hockeycanada.ca”), it has been the sole governing body for amateur hockey in Canada since the July 1994 merger of the Canadian Amateur Hockey Association and Hockey Canada. Amongst other things, it is responsible for the National Men’s and Women’s teams (the former of which was the Gold medalist at the 2003 IIHF Men’s World Championship), the Canadian Men’s and Women’s Olympics Hockey teams and a range of junior programs. Like most sports administration bodies, it also operates a range of merchandising activities.
The Complainant has secured protection for HOCKEY CANADA as an Official Mark under the Canadian Trademarks Act paragraph 9(1)(n)(iii), Trademark No. 0906441.
The Respondent appears to operate a business in which it registers descriptive or generic domain names and seeks to resell them for profit.
It has secured the registration of the domain name <hockeycanada.com> via an auction conducted by SnapNames. It would appear to have paid in the order of US$20,000 to purchase the domain name.
After registering the domain name, the Respondent used it to resolve to a website which featured a prominent picture of a scene from an ice hockey game. The picture featured prominently an advertising hoarding for MOLSON CANADIAN with a maple leaf, where the word MOLSON was in much smaller typeface than CANADIAN. The website included links to a list of hockey-related organisations, the first of which is HOCKEY CANADA. According to the Complaint, the website also had links to websites for the purchase of ice hockey-related wares and services. The website also invited persons wishing to advertise on it to click on a link. Unlike the websites linked to <VolleyballCanada.org> and <RugbyCanada.org> (which included the statement, “This domain is for sale”), this website only included the statement, “To contact the registrant of this domain CLICK HERE”.
After being contacted by the Complainant, the Respondent took down this website and replaced it with one that has links to information about Canada. A link from “Canada Hockey” takes one to a page which has links to a range of Canadian and United States ice hockey teams and sponsored links including one for “Maple Leaf Products”. There are also links for “Maple Leaf” and “Team Canada”. The Respondent also offered to sell the domain name to the Complainant for the price it paid for it.
5. Discussion and Findings
Paragraph 15(a) of the Policy directs the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:-
(i) The domain name is identical or confusingly similar to a trademark 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 domain name has been registered and is being used in bad faith.
The Panel considers each of these in turn below.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights?
The domain name consists only of the addition of the “.com” gTLD to HOCKEY CANADA. It is well established that the addition of a gTLD is not sufficient to take a domain name outside the scope of confusing similarity: See e.g. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582. The issue directly raised in this case is whether or not the Complainant in fact has trademark rights on which to found a complaint.
The Complainant relies on the entry of its mark as an Official Mark in the Canadian Trademarks Register. It also refers to its registered domain name, <hockeycanada.ca>, and contends that its trademark is well known.
The Respondent contends that the Complainant does not own a trademark at all. The Respondent contends that the Complainant has merely notified its official name or designation to the Registrar of Trademarks in Canada. The extract from the Register for the Complainant’s trademark “merely” notes that it has been advertised. This is in contrast to the entries for Volleyball Canada and Rugby Canada which are accorded the status of registered trademarks. The Respondent contends that the effect of the inclusion of a Prohibited Mark in the register in this fashion is not to establish trademark rights, but to put the public on notice that it cannot be used as a trademark in Canada. As a result, the Respondent further contends that the Official Mark has not been examined to determine if it is descriptive or generic and the Respondent further questions whether the Complainant in fact qualifies as a public authority. In addition, the Respondent relies on the Department of National Health and Welfare’s registration No 00900468 for HOCKEY CANADA and maple leaf device to contend that the Complainant does not even have exclusive rights in Canada. Finally, the Respondent argues that the Complainant, like anyone else, is prohibited from using the Official Mark for commercial purposes.
The Panel notes that a number of other panels have accepted that Official Marks can qualify as trademark rights for the purposes of the Policy: see e.g.
- Hong Kong Trade Development Council v. Huang Yun, WIPO Case No. D2001-0100;
- Government of Canada v. David Bedford a.k.a. DomainBaron.com, WIPO Case No. D2001-0470;
- The Bruce Trail Association v. Andrew Camp and Bruce Trail Enterprises, WIPO Case No. D2001-1021;
- Toronto Convention & Visitors Association v. This Domain is For Sale /Email Your Offers, WIPO Case No. D2001-1463;
- La Société des Loteries du Québec v. RSA Software Inc., WIPO Case No. D2002-0051;
- Ontario Lottery and Gaming Corporation v. Paul Sweitzer, WIPO Case No. D2002-0602;
- Office québécois de la langue française v. Nancy Orlean, WIPO Case No. D2003-0358;
- Her Majesty the Queen in right of Ontario, Canada v. Venture Labour.Com Inc., WIPO Case No. D2004-0408; and
- The Regional Municipality of Peel v. Gaganjot Dhillon, WIPO Case No. D2004-1003.
In a number of these cases there was no Response. It is also the case that the question raised for decision in this proceeding was not directly raised in these earlier decisions. In the DomainBaron.com case, however, the question was reliance on a number of governmental names rather than Official Marks. The three member panel reviewed the treatment of governmental names in the development of the Policy and concluded:
“It thus appears to the panel that the Policy, as it stands at present, is not intended to afford protection from the abusive registration as domain names of the names of Government Departments, agencies and programs as such… Applying the same approach, the panel is of the view that names of Government Departments, agencies and programs, although not protected as such under the Policy, may nevertheless qualify for protection under the Policy if they are shown to be trade-marks.” (emphasis in original)
After referring to the definition of trade-mark under the Canadian Trade-marks Act and, in particular, s 4 which provides:
“4.(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services”,
the learned Panel concluded that the disputed domain names in that proceeding were in fact trade-marks within the meaning of the Policy.
Having reviewed the manner of use of HOCKEY CANADA by the Complainant as exemplified by its website (both in connection with the international sporting teams it operates and the merchandising it undertakes), this Panel concludes that HOCKEY CANADA is a trademark under Canadian law. The Panel is not dissuaded from this view by the Respondent’s arguments.
There would be little or no point in the Complainant seeking a formal, conventional trademark registration for its mark given the much broader, more effective protection already accorded to its Official Mark. The extract from the Canadian Trademarks Examiner’s Manual at paragraph IV.8.10.1 relied on by the Respondent does not in fact prohibit the Complainant’s use of the market for commercial purposes. Rather, it is directed to whether or not the body applying for the Official Mark is a public authority which it summarises as being a requirement:
“Generally then, a public authority is a body which: 1) has public duties to perform, and 2) performs those duties and carries out the transactions for the benefit of the public and not for private profit.”
This statement does not preclude the body from engaging in commercial activities. It is a common feature of modern society that bodies which seek to benefit the public also engage in some commercial activities to fund, or assist in the funding of, their activities. It is section 9(1)(n)(iii) of the Trade-marks Act itself which prohibits persons acting without the Complainant’s licence from using its Official Mark in connection with a business. Section 9(2) excepts from that general prohibition use in connection with business with the consent of the Official Mark’s owner.
The Panel rejects the Respondent’s invitation to conclude that the Complainant is not properly a public authority under Canadian law. The Panel has already referred to the nature of the Complainant’s activities above. They are not of such a kind as automatically to disentitle the Complainant from that status. Without necessarily precluding a decision in a different case, it is sufficient for our purposes in this case that the Canadian Registrar of Trade-marks was satisfied that the Complainant had the appropriate characteristics.
The Canadian Department of National Health and Welfare’s registration No 00900468 for a similar mark does not detract from the Panel’s conclusion. Trademark systems in common law countries recognise that trademark rights may co-exist with concurrent rights to some limited extent. Generally that does not, and in this particular case it does not, detract from the right owner’s ability to object against other third party users who do so without authorisation.
Finally, for the reasons we discuss below in section 6(b), the Panel rejects the Respondent’s contention that the trademark is descriptive or generic.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark rights.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
The Complainant points out that the Respondent was not, prior to this dispute, known as Hockey Canada. It is not in dispute between the parties that the Complainant has never licensed or authorised the Respondent to use the name. Nor is it in dispute that the Respondent uses the domain name (or at least used it until receipt of the Complainant’s objections) to generate revenues either by way of pay-per-click fees or from the sale of the domain name.
In answer, the Respondent contends that it does not require a licence or authority to use a descriptive or generic term as a domain name, citing Superiority, Inc. d/b/a Just Bulbs v. none/Motherboards.com, WIPO Case No. D2003-0491. That is, the Respondent contends that its use is a bona fide offering of goods or services under the domain name as the domain name consists simply of a descriptive or generic term.
The Panel finds, however, that the domain name is not a descriptive or generic term. As summarised by the Respondent, the respondent in the Superiority case used the term “just bulbs” in connection with display advertisements for bulbs. In such a context, “just bulbs” is obviously directly descriptive of the subject matter. HOCKEY CANADA, however, is allusive or suggestive. The descriptive terminology would be Canadian Hockey or Canadian Ice Hockey. The inversion of the word order in the domain name is significant as, independently of use or context, the term HOCKEY CANADA does not have grammatical meaning in English. The Complainant’s position is only stronger if regard be paid to context and use: it has been using the term since at least 1994 on a significant scale.
Accordingly, the Panel concludes that the Respondent does not have rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“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:
(i) circumstances indicating that you [the Respondent] 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 trademark 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
These are examples of “bad faith” only and not an exhaustive listing, as they are listed “without limitation”.
As already noted, the Respondent does not seriously contest that it registered the domain name to generate revenues from it by resale and through attracting advertising and click-through revenues. Many websites of course are registered precisely for these purposes and it is only where such registration and use can be shown to be in bad faith against the owner of trademark rights that the Policy confers a right to intervene.
Here, the Respondent relies on the alleged descriptive or generic nature of the Complainant’s trademark rights and claims it had no knowledge of the Complainant’s trademark when it registered the domain name. It also points out that it took down its original website (out of an abundance of caution) upon receipt of the Complainant’s initial objection and seeks only to be repaid what it actually paid through the SnapNames auction process for the domain name.
The first difficulty with the Respondent’s position, as the Panel has already held, is that the domain name is not for a descriptive or generic expression. The Respondent’s original website also explicitly linked to the Complainant’s website although the Respondent disclaimed all knowledge of the Complainant. The Respondent’s original website also contained links to merchandise which competes with, or is substitutable for, the merchandise available from the Complainant.
The Respondent invokes a ruling by another Panel in The Vanguard Group, Inc. v. Emilio Sa, WIPO Case No. D2001-1453 which the Respondent reads as establishing that the primary intention of the registrant must be to resell the domain name to the complainant for paragraph 4(a)(iii) to be made out. While this may have been the respondent’s contention in that case, it was not the basis of the decision. In fact, the learned Panelist held that the domain name had been registered and used in bad faith and ordered its transfer to the complainant. In any event, the Respondent’s contention cannot override the express terms of paragraph 4(c) set out above in which an intention to resell to the complainant is only one of four examples.
The respondents in the several rulings on Official Marks referred to in section 5(A) above were found to have registered and used the domain names in bad faith in circumstances similar to the present. See in particular the DomainBaron.com case; see also L.L. Bean, Inc. v. .Mrs. Jello, LLC c/o Domain Admin, National Arbitration Forum Case No. FA449421.
In these circumstances, the Panel finds that the domain name has been registered and used in bad faith within the meaning 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 <hockeycanada.com> be transferred to the Complainant.
Warwick A. Rothnie
Daniel R. Bereskin, QC
Wolter Wefers Bettink
Dated: December 20, 2005