WIPO Arbitraton and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toronto Organizing Committee for the 2015 Pan American and Parapan American Games v. Peter E. Evanetz, Evancom
Case No. D2014-0515
1. The Parties
The Complainant is Toronto Organizing Committee for the 2015 Pan American and Parapan American Games of Toronto, Ontario, Canada, represented by Davis LLP Law Firm, Canada.
The Respondent is Peter E. Evanetz, Evancom of Hamilton, Ontario, Canada, self-represented.
2. The Domain Names and Registrar
The disputed domain names <thetoronto2015.com>, <toronto2015.biz>, <toronto2015.com>, <toronto2015.info> and <toronto2015.net> are registered with TLDS L.L.C. d/b/a SRSPlus (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 4, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 30, 2014. The Response was timely filed.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 15, 2014. 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 paragraph 7 of the Rules.
On May 22, 2014 the Panel received from the Center a Supplemental filing made by the Respondent on May 21, 2014, and the Respondent was informed that it had been communicated to the Panel for consideration in its discretion.
4. Factual Background
The following facts are a selection made by the Panel from the Complaint and the Response respectively accompanied with 46 and 53 annexes, totaling 752 pages.
Since 2007, various persons and groups from the Toronto city and the Golden Horseshoe area along with the assistance and interest of the Canadian Olympic Committee and the Complainant were interested in applying to have the Pan American and Parapan American Games taking place in Toronto and near cities, in July and August of 2015 (herein the “2015 Games”).
Over the period of July 24, 2007 until April 2, 2008, there were numerous newspaper reports about the interest of the PanAm Games Promoters in obtaining the 2015 Games, and in particular, there were reports and comments in The Hamilton Spectator, a local newspaper in Hamilton, where the Respondent is located, on July 24 and November 8, 2007 and January 31, 2008, in addition to numerous other newspapers of the Golden Horseshoe during the same period. These reports mentioned that the Canadian Olympic Committee officially endorsed the Toronto bid in April 2008 and also mentioned the Ontario Provincial Government support and the Federal Government keen interest and eventual financial support.
On April 2, 2008, there were impressive reports in four different newspapers, The Globe and Mail, The Toronto Star, The Hamilton Spectator and The Spec.com, commenting on the likelihood of the Toronto organization obtaining the 2015 Games. The reporter in The Hamilton Spectator first mentioned that Province of Ontario Premier Dalton McGuinty is game for a proposed local bid for the 2015 Pan American Games and further wrote: “Hamilton’s David Adames noted the initiative took a big step forward recently when the Canadian Olympic Committee, which is responsible for Pan American Games matters in Canada, decided to pass on a domestic bidding process and award rights for southern Ontario.”
On April 2, 2008, the same day, the Respondent registered four of the disputed domain names, <toronto2015.com>, <toronto2015.biz>, <toronto2015.net> and <toronto2015.info> and registered the fifth disputed domain name <thetoronto2015.com> on November 6, 2009, on the date that it was confirmed that the 2015 Games were attributed to Toronto and the Golden Horseshoe area which includes, in addition to Toronto, the cities of Barrie, Calendon, Hamilton, Markham, Minden, Mississauga, Oshawa, Pickering, St-Catharines and Welland.
On October 9, 2008, the Canadian Olympic Committee filed with the Registrar of Trademark an application for an official mark consisting of “TORONTO 2015 and design” which was accepted and advertised by a public notice on December 23, 2009. Such a procedure, as explained herein, results in the creation of an Official Trademark adopted by a public authority under the Canadian Trademark Act.
In September 2009, the Respondent registered the domain names <torontogames2015.com> and <2015torontogames.com>.
On November 18, 2009, the Respondent applied to register “toronto2015.com” as a trademark. Pursuant to a first report from an examiner of the Trademark Office raising objections in respect of the Complainant’s Official Trademark “TORONTO 2015 and design”, the Respondent’s application was abandoned on April 20, 2011 for reasons of default in the proceeding.
On January 21, 2010, the letters patent of incorporation of the Complainant were issued by the Federal authorities. The Complainant’s objects are to organize the 2015 Pan/Parapan American Games and to promote Toronto as the host city and the surrounding municipalities and regions as the host area, Ontario as the host province and Canada as the host country.
On March 23, 2011, the Complainant filed with the Registrar of Trademark of Canada, an application for “TORONTO 2015” as an Official Trademark”, which was given Public Notice on August 10, 2011.
On May 31, 2011, the Respondent sent to the Complainant a letter objecting to the Complainant’s use of TORONTO 2015TM as a trademark when, as it represents, the term is not one and claiming that the Complainant “does not have ‘TM’ rights to the terms TORONTO 2015 or THE TORONTO 2015 and further claiming that the Complainant’s use of TORONTO 2015 is increasingly mismarked with the legal TM symbol under your governance and it is now undermining, causing confusion and interference with our EVANCOMR Toronto 2015 business ventures and commercial activities to our detriment.” The letter’s representations conclude that the use of the terms TORONTO 2015 and the TM symbol “has serious implications and meanings which are seen to be misleading, misguiding, creating confusion, creating or conveying a false sense of entitlement, and constitute a detrimental act to our EvancomR Toronto ventures.” The letter concludes with a cease and desist request in respect of the term TORONTO 2015 and the TM symbol.
On July 21, 2011, the Respondent reiterated its cease and desist request in another registered letter of similar content and representations to the Complainant.
On October 4, 2011, the Complainant replied to the two letters of May 11 and July 21, 2011 from the Respondent. The Complainant stated that the Complainant will not comply with the request to stop using the terms TORONTO 2015 and the TM symbol and informed the Respondent of the Complainant’s rights in TORONTO 2015 and numerous other listed 2015 trademarks protected as Official Trademarks by the Canadian Intellectual Property Office (“CIPO”) and also common law rights resulting from their extensive use in Canada, attaching a copy of the Official Trademark certificate showing the August 10, 2011 public notice date, along with a list of 16 other Official Trademarks comprising terms such as TORONTO, 2015, PAN AM and others. The Complainant related the newspaper sequence of reports from January 31, 2008 to April 1, 2008, the Respondent’s registrations of the disputed domain names on April 2, 2008 and the application to register TORONTO2015.com as a trademark claiming June 25, 2008 as the date of first use of the trademark. The Complainant claimed that the Respondent’s activities are extensive and well known to the public and such use violates the Complainant’s trademarks rights, that such activities constitute cybersquatting and then listed the various domain name registrations to conclude that this is clear evidence of bad faith. The letter concludes with a cease and desist claim, requests transfer to the Complainant the domain names incorporating TORONTO 2015 and an offer to reimburse the reasonable registration costs in connection with the disputed domain names.
On October 4, 2011, December 8, 2011, January 4, 2012 and January 30, 2012, the Complainant and the Respondent exchanged further letters reiterating their respective positions and arguments, in particular the Respondent noting the absence of evidence of common law usage of the trademark by the Complainant. Thereafter three letters were sent by the Respondent on May 28, June 26 of 2012 and March 19, 2013.
5. Parties’ Contentions
The Complainant represents that it has protected TORONTO 2015 as an Official Trademark, a special form of protection adopted by a public authority under the Canadian Trademark Act, which has been recognized before as conveying rights to a complainant in a UDRP proceeding. See Province of Alberta v. RolloverNow, Inc., WIPO Case No. D2006-0163. The Complainant further represents that it has used and continued to use TORONTO 2015 as its trademark in association with the organization and promotion of the 2015 Games.
The Complainant submits that it has rights under the TORONTO 2015 “official mark” which arose after the registration of the disputed domain names but that this factual situation is irrelevant because such sequence of events does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy. See Madrid 2011, S.A. v. Scott Martin-MadridMand Website, WIPO Case No. D2003-0598; Stoneygate 48 Limited and Wayne Mark Rooney v. Huw-Marshall, WIPO Case No. D2006-0916; Province of Alberta v. RolloverNow, Inc., WIPO Case No. D2006-0163.
The Complainant further submits that each of the five disputed domain names is confusingly similar to the Complainant’s TORONTO 2015 Official Trademark, in that the absence of a space between Toronto and 2015 in the disputed domain name is a customary practice and does not convey a significant difference and the same observation applies to the presence of the prefix “the” in <thetoronto2015.com> as this prefix as well as the suffix “.com”, “.biz”, “.net” and “.info” generic Top-Level Domain (“gTLD”) elements are irrelevant to the determination of likelihood of confusion.
The Complainant claims that the Respondent has no rights or legitimate interests in any of the disputed domain names and that the relevant facts and observations are significant. The Pan American Games and Parapan American Games are major international multi-sports events involving participants from 41 nations in North America, Central America, South America and the Caribbean, which games are held every four years before the summer Olympic games; the most recent games were in Guadalajara, Mexico, in 2011 and the 2015 games will be held in Toronto and near cities of Toronto, in Ontario, in July and August 2015. The preparations for the Toronto bid and designation started in 2007 with the Canadian Olympic Committee endorsement in April 2008, and all these submissions and promotion to the governing Pan American Sports Organization were the subject of extensive local media coverage of Toronto’s potential bid for the 2015 Games. As already noted in the facts, during the preparation period the Complainant acquired trademark protection for its Official Trademark TORONTO 2015 as well as for additional 16 Official Trademarks incorporating TORONTO 2015 as well as other.
According to the Complainant, the Respondent operates a computer consulting business based in Hamilton, one of the cities within the Golden Horseshoe. On the websites associated with the disputed domain names, in particular for <toronto2015.com>, one may have read in 2012, that various information and services are offered including (1) the “Toronto2015.com Media Center” and (4) “advertising space” presumably to commercial advertisers. The website related to each of the three other <toronto2015.biz>, <toronto2015.net> and <toronto2015.info> disputed domain names offering similar support services for people visiting Toronto in 2015, businesses and professionals currently preparing for 2015 and event services amongst others.
These active websites also refer to many other “2015 websites” of the Respondent within the Golden Horseshoe which will host venues or events for the 2015 games such as “www.mississauga2015.com”, “www.stoneycreek2015.com”, “www.stcatharines2015.com”, “www.welland2015.com”, “www.hamilton2015.com” and “www.grimsby2015.com”.
The Complainant observes that there is now a trend to refer to international sporting events with the name of the city and the year the event will take place, and mentions by way of illustration, Beijing 2008, Van Couver 2010, London 2012 and Sochi 2014 for Olympic games and Guadalajara 2011, for the Pan Am Games and Glasgow 2014 for the Commonwealth Games.
The Complainant is not aware of any reason other than the PanAm Games taking place in 2015 for the Respondent to register all the cities of the Golden Horseshoe in association with 2015 as domain names and states that there is nothing on the websites of the Respondent to explain the relevance of 2015 and the Respondent has not offered any explanations in its letters to the Complainant between May 2011 and June 2012.
The Complainant further represents that the Respondent is not commonly known by TORONTO2015, since he is rather known under the business name “Evancom Enterprises” and always clearly in association with the EVANCOM brand. The Respondent attempted to register TORONTO2015 as a trademark in Canada in November 2009 but later abandoned this application pursuant to an objection from the Canada in Trademark Office. According to the Complainant, the various disputed domain names bear no relationship to the Respondent’s computer consulting and support services business and finally that there is no reason for the Respondent to register all these disputed domain names amongst several other 2015 domain names except to suggest an affiliation with the 2015 Games and the Complainant.
The Complainant asserts that there is no business relationship with the Respondent and that it has not granted any license or permission to the Respondent to register, own and use the disputed domain names and other 2015 domain names incorporating a city name and 2015.
The Complainant further represents that the Respondent is not making a legitimate non-business use of the disputed domain names but rather, as it appears upon visiting the websites associated therewith, that there is a commercial purpose, namely advertising the Respondent’s business and offering advertising space to other commercial advertisers. In its correspondence with the Complainant, the Respondent refers to its EvancomR Toronto business and commercial ventures (Annex 1Y, letter July 21, 2011 sent by the Respondent to the Complainant). The Complainant states that the Respondent cannot claim to have had rights or legitimate interests in the disputed domain names when the Respondent registered and used same in bad faith. See N.C.P. Marketing Group, Inc. v. Entredomaine, WIPO Case No. D2000-0387.
The Complainant represents that pursuant to the extensive local media coverage, it was obvious that the Complainant had a good chance that the 2015 Pan American Games would come to Toronto with the benefit of the public endorsement of the Canadian Olympic Committee and particularly abundant news coverage on April 2, 2008, on which date the Respondent registered the first four disputed domain names. Furthermore, the Respondent acquired the disputed domain name <thetoronto2015.com> on November 6, 2009, the date on which the 2015 games were officially awarded to Toronto. The Respondent was clearly aware of the first high probability and later certainty that the Pan Am games would come to Toronto and that TORONTO 2015 would be an important brand relating to those games and therefore, registered the disputed domain names with the 2015 Games specifically in mind.
According to the Complainant, the disputed domain names have no value apart from the Complainant’s TORONTO 2015 Official Trademarks, and this is evident from the fact that the Respondent did not register <toronto 2014.com> or <toronto2016.com>. The registration by the Respondent of <torontogames2015.com> and <2015torontogames.com> in September 2009 demonstrates that the Respondent intended to suggest a connection between the disputed domain names and the 2015 Games in Toronto. The Complainant relies on earlier UDRP decisions to claim registration of the disputed domain names in bad faith. See AB SvenskaSpel v. Andrey Zacharov, WIPO Case No. D2003-0527; Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916; J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054.
The Complainant further suggests that the registration of another group of 14 domain names incorporating goldenhorseshoe2015 and some with the additional terms “central” or “Ontario”, the Canadian province where Toronto is with gTLD suffix “.com”, “.biz”, “.info”, “.net” further corroborate the Respondent’s plan to create confusion and suggest a connection to the 2015 games in Toronto and the Golden Horseshoe region.
In respect of registration and use of the disputed domain names, the Complainant intends to demonstrate that the Respondent is a cybersquatter.
With the same idea of confusion and connection to sports games, the Respondent registered <glasgow2014.net>, <glasgow2014.biz>, <2014commonwealthgames.info> and <commonwealth2014.info> while the XX Commonwealth Games are being held in Glasgow, Scotland, United Kingdom of Great Britain and Northern Ireland in the summer of 2014.
Before the current events, the Respondent had attempted to benefit from news reports in respect of possible or likely change of locations of professional sports teams in the National Hockey League. Changes of hosting cities for three such hockey teams were mentioned in the newspapers reports; first in early 2007, the Nashville Predators franchise might be relocated to Hamilton, the Respondent registered <thehamiltonpredators.info> in June 2007, second, in June 2008 when the Atlanta Trashers team was likely to be relocated in Hamilton, the Respondent registered <thehamiltontrashers.com> and third, the Respondent registered <thehamiltoncoyotes.info> and <thehamiltoncoyotes.net> in April 2009 and when the news were that the Coyotes were instead going to be relocated in Winnipeg, the Respondent then registered <winnipegcoyotes.com>, <winnipegcoyotes.info> and <winnipegcoyotes.net>. The Complainant submits that the Respondent, as early as 2007, had a pattern of registering names of the sports team in association with the new city proposed for/or elected by the team or the organization.
The Complainant submits that these numerous registrations of domain names demonstrate a pattern of “ambush” registration of domain names relating to events for which there was a reasonable expectation of occurring and incorporate related professional hockey brands namely, Coyotes, Thrashers and Predators in which the Respondent has no rights, notwithstanding the fact that those team names were registered trademarks of others as verified by the Panel. According to the Complainant, these registrations constitute cybersquatting activities of the Respondent.
The Complainant claims that use in bad faith of the disputed domain names is demonstrated by the Respondent’s attempts in deriving economic benefit from the disputed domain names since they generally were associated with websites that offer or purport to offer commercial services or commercial advertising and benefit from the resulting increased Internet traffic from these disputed domain names and others mentioned.
The Complainant concludes the demonstration of the bad faith of the Respondent in commenting on the elaborate disclaimers by the Respondent on its websites associated with the disputed domain names since these disclaimers demonstrate that the Respondent was aware that Internet users would be interested in the 2015 games, will visit the Respondent’s websites in the mistaken belief that those sites are associated with the Complainant and the 2015 Games. An association that does not exist, according to the Respondent’s disclaimers, but this is clearly negated by the Respondent in its correspondence with the Complainant objecting that the latter is using TORONTO2015TM.
The Respondent represents that in its correspondence with the Complainant, in the period of May 2011 to October 4, 2011, the Complainant had stated and alleged that it had common law trademarks for the term TORONTO 2015 when, in his view, the Complainant did not have such rights at the time that the disputed domain names were registered. See Steven Saltman d/b/a DearDiary v. Dreamissary,NAF Claim No. 99701. According to the Respondent, it is only on August 10, 2011 that the Complainant was granted by CIPO the TORONTO 2015 Official Trademark, and it is on this basis that the Respondent gave the Complainant notice of trademark violation and improprieties prior to the granting of the said Official Trademark.
The Respondent, instead of making representations about the likelihood of confusion, reiterates in different representations the same argument of the absence of evidence of common law rights held by the Complainant in respect of its TORONTO 2015 Official Trademark.
The Respondent claims that the registration of its pending trademark application was not necessary, as it had established its trademark rights through common law use and inalienable rights thereto sufficient to prove its common law rights under the UDRP
The Respondent contends that on December 14, 2011, CIPO issued an unexpected public statement on the matter of prohibited trademarks and when they come into effect, that not only this CIPO public statement was not disclosed by the Complainant, the latter did not disclose the Respondent’s Response and rebuttal to the December 14 letter which is an element of recognized bad faith filing. The Respondent did not disclose in its evidence the said public statement and its letter of rebuttal.1
The Respondent, in a single comment, represents that it has rights or legitimate interests in respect of the disputed domain names since the term Toronto and the year 2015 are generic terms and therefore, the disputed domain names are registered on a first come, first serve basis and that they are being used for a bona fide offering of services.
In respect of the registration of the disputed domain names and their use in bad faith, the Respondent simply stated that they did not create a likelihood of confusion with the Complainant’s trademark since at the time of the registration of the disputed domain names, the Complainant did not own any common law trademark rights either by registration or from use over a period of time. See Rolh, LLC v. ROLH SA, WIPO Case No. D2006-0645. In respect of the Complainant’s representations of cybersquatting in respect of the three hockey teams relocations, the Respondent claims to have had associations with them as previous clients with whom he cannot disclose details of their associations and furthermore noting that being from Hamilton, Respondent’s experience and expertise would make him an ultimate consultant and support to work on a team acquisition to bring a new franchise to Hamilton.
The Respondent claims that one cannot subsequently register a trademark and file a Complaint to unseat another’s domain name through the UDRP process since such filing was done in bad faith in this case, constitutes an abuse of the UDRP procedure and that the present proceeding and Complaint give rise to reverse domain hijacking and reverse cybersquatting through the use of the UDRP procedure to interfere with the management and control of domain names and websites reference.
The Respondent further claims that the Complainant has provided an inaccurate and misleading representation of the correspondence exchanged between the parties from May 31, 2011 and December 8, 2011, in the signed affidavit of K. Hacker and that the concealment and failure to disclose the letters of correspondence by the affiant is evidence of misleading, reckless, careless, irresponsible filing with a severe lack of required due diligence in preparation and submission of a claim to an arbitrator.
On May 21, 2014, the Respondent forwarded to the Center a new submission giving notice to the Complainant of an unauthorized communication and activity of a paralegal within the firm representing the Complainant, claiming that pursuant to this unauthorized communication, the Respondent observed that it could not find the server for the websites at the address of the disputed domain names <toronto2015.net>, <toronto2015.info> and <toronto2015.biz>, and therefore notified the Complainant that the Respondent was holding the former responsible for damages resulting from the self-initiated, unauthorized domain name management communications with unknown and undisclosed third parties providing untruthful, misleading and wrong information related to domain name renewals for the record, the arbitrator’s review and judgment.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel having considered the voluminous evidence filed by the Complainant, excerpts from the numerous newspaper reports in 2007 and 2008 prior to the registration of the disputed domain names on April 2, 2008 and September 2009, does not find therein sufficient evidence of use of TORONTO 2015 by the Complainant to justify a finding of common law rights in its favor at the time that the Respondent registered the disputed domain names on April 2, 2008. This does not prevent a finding of confusing similarity of the disputed domain names with the TORONTO 2015 Official Trademark in which the Complainant has rights.
In the case Government of the Province of Alberta v. RolloverNow, Inc., supra, the domain name <albertacanada.com> was registered by the respondent in November 1998 and the complainant registered the domain name <alberta-canada.com> in April 1999. On February 4, 2004, the complainant filed for the official mark ALBERTA-CANADA and was given public notice on April 14, 2004, after the disputed domain name was registered. The panel of three members stated that it “accepts Complainant’s contention that it can rely on statutory rights in the words ‘Canada Alberta’ and ‘Alberta Canada’ arising out of its publication as official marks under the Canada Trademarks Act, a special form of protection for the marks of public authorities”.
In respect of the sequence of events, namely the registration of the domain name, first, the panel stated:
“The fact that Complainant’s official mark No. 0915638 was registered after the registration of the disputed domain name is of no relevance under paragraph 4(a)(i) of the Policy. A similar situation was considered in AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527, wherein a panel of three members had to consider the situation of two parties respectively of Sweden and Lavia, both engaged in gaming activities and the disputed domain name was registered on August 9, 1998, and the trademark of the complainant was applied for on July 18, 2000 and registered on August 23, 2002. The panel found support in Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, from which case it adopted the statement “paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii)”.
The issue under paragraph 4(a)(i) of the Policy is whether the Complainant has trademark rights when it filed its Complaint. The Respondent’s lack of knowledge of the Complainant’s trademark rights at the time of the registration of the disputed domain name may, in appropriate cases, be relevant to the second and third criteria. The Panel, in agreement with these abovementioned statements and interpretation of the Canadian Trademark Act in respect of the protection granted by an Official Trademark, a unique protection provided to Canadian public authorities upon the Registrar of Trademark’s public notice, and finds the Complainant has trademark rights for the purposes of the Policy, paragraph 4(a)(i).
In respect of the confusing similarity between the five disputed domain names and the TORONTO 2015 Official Trademark of the Complainant, this issue is not seriously challenged by the Respondent since in the exchange correspondence between the Complainant and the Respondent from May 11 to October 4, 2011, the Respondent was claiming to have prior common law rights in the disputed domain name <toronto2015.com> arising out of its registration and subsequent use of the disputed domain names, alleging inter alia that one is confusingly similar to those of the Complainant. It is long established in UDRP decisions that the additions of word such as “the” and gTLD suffix “.com”, “.net” or others does not in any way diminish the confusing similarity between a domain name and a trademark.
The Panel finds that each of the five disputed domain names is confusingly similar to the TORONTO 2015 Official Trademark in which the Complainant has rights. The first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant established a prima facie representation of absence of rights and legitimate interests of the Respondent when it registered the five disputed domain names. The Complainant stated that the Respondent was not commonly known by TORONTO 2015 but rather under the business name Evancom Enterprises in association with the EVANCOM brand. The Complainant further stated that actually there was no business relationship with the Respondent, nor had the Complainant given the Respondent any license, permission or authorization to register and use the disputed domain names or any of the other 2015 domain names. Furthermore, by its elaborate evidence showing various excerpts of the websites associated with the disputed domain names of the Respondent, the Complainant states that there were clear mentions and references to diversified offers of business and services, hence commercial activities by the Respondent.
Considering paragraph 4(c)(iii) of the Policy, which states: “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”, the Panel finds that the Respondent is making a commercial use of the disputed domain names in bad faith in attempting to benefit from the significant increase of Internet visitors to its EVANCOM and TORONTO2015 websites, increase resulting from the confusing similarities between the TORONTO2015 website and the Official Trademark of the Complainant on the other side and this as early as 2011 until the present time despite the clear notice by the Canadian Trademark examiner in the Respondent’s application informing the Respondent of the greater protection of official marks and their predominance over earlier unregistered trademark or domain name as the Respondent claims.
The Panel finds that the Respondent has no rights or legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith
It is clear from the evidence that the Respondent was well aware of the interests of the first PanAm Games promoters and of the Complainant to apply to host the games in Toronto and the cities of the Golden Horseshoe and the fact that the Respondent registered the first four disputed domain names on April 2, 2008 and the fifth one on November 6, 2009, dates of highly positive newspaper reports of a likelihood of obtaining the games and then the date in 2009 on which the games were awarded to the City of Toronto. The persisting and inflexible attitude and representations of the Respondent in respect of its alleged rights in the disputed domain names, even after having been informed on July 22, 2010 by the examiner of the CIPO that the Official Trademarks of the Complainant were prevailing over his alleged “toronto2015.com” trademark rights based on its earlier registration of the disputed domain names are indicative of the little or absence of respect of rights of third parties.
The Panel finds useful information and guidance in the decision AB Svenska Spel v. Andrey Zacharov, supra, where the panel considered the good or bad faith situation of the respondent, a competitor of the complainant in the betting activities, and the panel finds that “it likely that Mr. Brathen registered the Domain Name with the Complainant specifically in mind, with the intention to sell it to the Complainant for a large sum of money and/or with a view to blocking the Complainant from registering it itself….Mr. Brathen must have been aware of the fact that the Complainant was a serious competitor to him, and that SVENSKA SPEL could develop to be a well-known trademark in the same field of business. The fact that the trademark SVENSKA SPEL was not registered until August 2002 can therefore not be taken as an indication of Respondent’s good faith registration of the Domain Name”.
While the Complainant and the Respondent are not competitors, they apparently could use and benefit from the registration of the disputed domain names, the Complainant for its promotion of the games and the Respondent for the opportunities of its commercial business activities, said promotion as present on its websites at the address of the disputed domain names. In the present situation, in the Panel’s view, telling evidence resides in the facts that the Respondent’s business is located in Hamilton city, one within the Golden Horseshoe, and more significantly, the two dates on which the disputed domain names were registered clearly indicate the awareness of the Respondent for first, the substantial likelihood of the games coming to Toronto and second, the confirmation of the choice of Toronto as the accepted locality and how the Respondent rushed to register the disputed domain names. The likely confusion between the Official Trademarks and the disputed domain names was furthermore acknowledged by the Respondent in its correspondence with the Complainant.
Further indication of the Respondent’s ongoing determination in objecting to the Complainant’s continued use of TORONTO 2015TM resides in the correspondence exchanged in 2011, subsequent to the clear information by the examiner of the Canadian Trademarks Office of the predominant rights of the Complainant’s Official Trademarks and the abandonment by the Respondent of its application to register “toronto2015.com”.
These facts are not to this Panel evidence of good faith behavior of the Respondent but rather its bad faith, initially rushing in April 2008 and November 2009 to register the disputed domain names and then in its ongoing challenge and attempt to have the Complainant accept the Respondent’s unjustified and unwarranted claims of abandonment of the use of TORONTO 2015TM.
To this Panel, it is clear that the disputed domain names were registered to take advantage of the likelihood of confusion with the Official Trademarks of the Complainant and develop benefit from increased commercial business activities of the Respondent, not only in 2015, but from the date of their registration in particular November 2009 when it was clear that the PanAm Games were coming to Toronto and the Golden Horseshoe cities.
Furthermore, the registration of the disputed domain names prevents the Complainant from the opportunity of registering similar domain names and limiting itself to <toronto2015.org> and the other different domain names mentioned hereinabove.
This Respondent’s eagerness or rush to register the disputed domain names is not an isolated incident. The Complainant has demonstrated how the Respondent was engaged in a pattern of “ambush” registration of domain names as the Respondent did with the domain names incorporating Coyotes, Thrashers and Predators. These three hockey team names were and still are registered trademarks of third parties, Coyotes registered in 1998, Trashers in 1999 and Predators in 1999, as verified by the Panel on the official website of the Canadian Intellectual Property Office. This did not seem to concern the Respondent in registering these domain names thereafter. The Respondent attempts to justify its interest in alleging confidential associations, terms of which were not to be disclosed. The Panel does not see any confidential character in an authorization of these teams permitting the Respondent to register a domain name incorporating the team trademark. This absence of authorization to incorporate the team trademark in the three domain names is in the Panel’s view, a major flaw in the explanation of the Respondent’s alleged justification in registering these three domain names. This demonstrates to the Panel that the Respondent gives little consideration, if any, for the rights of these hockey teams and those of the Complainant in the present proceeding.
The Panel finds that the disputed domain names have been registered and used in bad faith by the Respondent and that such bad faith further confirms the finding of lack of rights or legitimate interests in respect of the disputed domain names.
The Respondent represented that by reason of the bad faith of the Complainant in these proceedings, a finding of reverse domain name hijacking is justified. On the basis of the evidence and findings in favor of the Complainant herein, the Panel considers that there is no need to further explain and justify a negative finding of reverse domain name hijacking and therefore finds that there is no basis to support and come to such finding.
In respect of the Supplemental filing by the Respondent, the Panel, considering the finding in favor of the Complainant under the three criteria and the order to transfer the five disputed domain names to the Complainant, determines that no further consideration is necessary in respect of the Respondent’s supplemental filing. A representative of the Complainant simply ascertained that the disputed domain names which were to expire during the present period were renewed and blocked until the present decision is rendered and notified.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <thetoronto2015.com>, <toronto2015.biz>, <toronto2015.com>, <toronto2015.info> and <toronto2015.net> be transferred to the Complainant.
J. Nelson Landry
Date: May 29, 2014
Prohibited marks on the Canadian Trade-marks Database
Publication Date: 2011-12-14
Effective immediately, prohibited marks that require public notice of their grant, recording or approval, or of their adoption and use, will appear on the Canadian Trade-marks database upon filing. Files will also be open for public inspection.
Public notice is considered to be given by the Registrar when the particulars relative to the protected matter are advertised in the Trade-marks Journal. Once public notice of the official marks has been given, they become prohibited marks and may not be adopted as trade-marks.
NOTE: This notice is intended to provide guidance on current Trade–marks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.
1 The Panel located the said CIPO statement and did not see any information therein detrimental to the rights of the Complainant (the December 14, 2011 CIPO Public Notice has been located by the Panel and is appended hereto as Annex A).