WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canadian Association of Professional Employees (CAPE) v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Miranda Dyck
Case No. D2017-0877
1. The Parties
Complainant is Canadian Association of Professional Employees (CAPE) of Ottawa, Ontario, Canada, represented by Norton Rose Fulbright LLP, Canada.
Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Miranda Dyck of Gatineau, Quebec, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cape-acep.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2017. On May 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2017 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 May 9, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 11, 2017. On May 31, 2017, Respondent requested an extension of the Response due date. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to June 4, 2017. The Response was filed with the Center on June 5, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 16, 2017. 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.
Due to exceptional circumstances, the Panel extended the due date for rendering its decision until July 7, 2017.
4. Factual Background
Complainant, Canadian Association of Professional Employees (“CAPE”) acts as the bargaining agent for certain professional and technical employees in Canada. Since 2003, Complainant has used the bilingual acronym ACEP-CAPE, reflecting the French and English versions of its name. Complainant asserts common law trademark rights in ACEP-CAPE, CAPE and ACEP, as it does not own any registered marks in Canada or elsewhere.
Respondent, Miranda Dyck, has been a member of Complainant’s organization since 2008, and has been active in the union as a steward of Local 512, and as a director on Complainant’s National Executive Committee. Respondent registered the disputed domain name on November 5, 2016, and created an associated website which serves as a platform for criticism and commentary on the activities and management of Complainant. Respondent’s website is entirely noncommercial.
5. Parties’ Contentions
Complainant asserts common law rights in the acronyms for its business names, and in particular in its combination ACEP-CAPE. Use of the names extends over the past 14 years.
Complainant relies on its website at “www.acep-cape.ca” as a primary identifier for its business since its inception. In terms of advertising and promotion, Complainant spends CAD 140,000 annually to promote its services, again since 2003. Evidence of use of its marks has been provided in the form of a variety of materials and publications, including collective agreements, Annual Reports, newsletters, press releases, and the use of various social media channels including Facebook and Twitter.
Complainant submits that it owns rights in its common law trademarks, and that Respondent has adopted a virtually identical mark, merely inverting the order of the acronyms.
With respect to rights and legitimate interests, Complainant asserts that Respondent is using the disputed domain name to host a website that disparages its business and its employees. Respondent’s right to criticize the Union is alleged not to extend to the use of an identical domain name, on its own, as it is then understood by users as impersonating the trademark owner. Complainant acknowledges Respondent’s right to free speech, and points to her other domain name <thirsty4justice.com> as providing an existing forum for expressing critical commentary.
Finally with respect to bad faith, Complainant alleges that Respondent knowingly adopted a virtually identical domain name, intending to attract Complainant’s members and potential members. Respondent is alleged to have copied the layout and design platform of Complainant’s website, which also leads to the deception of users.
Respondent contests the fact that exclusive trademark rights exist in the common law business name for Complainant’s organization. A number of other users are identified with similar marks, such as Canadian Association of Physicians for the Environment (CAPE); American College of Engineering Physicians (ACEP).
In terms of rights or legitimate interests, Respondent submits that she has a legitimate interest in using the disputed domain name for the purpose of free speech. She relies on the fact that her use has been wholly noncommercial, and that her criticism and commentary ought to be protected under the Canadian Charter of Rights and Freedoms. No one would be deceived by her website, since the content of the site is clearly dedicated to criticism, and it is obviously not Complainant’s website.
With respect to bad faith, Respondent makes similar arguments based on her right to criticize Complainant on a noncommercial basis. Respondent denies any intention to wrongfully divert users to her website, and asserts that her purpose is to inform and engage Complainant’s members.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complaint relies on common law trademark rights established through long term use in Canada of the acronyms ACEP-CAPE, CAPE and ACEP.
Common law trademarks are recognized under the Policy, but complainants face a significant evidentiary burden to establish acquired distinctiveness in those rights. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 notes:
“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complainant claims that it has met its burden of proof in this matter by showing widespread use in Canada of its marks since 2003.
The Panel has reviewed the evidence of use provided by Complainant and concludes that there has been sufficient use, supported by advertising and promotion, to establish acquired distinctiveness and enforceable reputation in Complainant’s specific field of business for the purpose of the Policy. Respondent’s limited evidence of other similar business names is not sufficient to undermine Complainant’s rights in the specific field in which it operates. These conclusions are made in the context of the Policy, based solely on the limited evidentiary record provided by the Parties.
Respondent does not contest the degree of resemblance between the disputed domain name and Complainant’s business name. Accordingly, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s common law marks, as it contains identical elements which are simply reversed in order.
The Panel finds that Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
This case raises the issue of whether a confusingly similar domain name functionally identical to Complainant’s common law trademarks can be viewed as legitimate noncommercial or fair use, under paragraph 4(c) of the Policy.
Certain basic facts are not disputed. Respondent’s website at “www.cape-acep.com” is entirely noncommercial, serving as a platform for criticism and commentary about Complainant’s organization and its management. It is also clear that no additional words beyond the word elements of the trademarks in question (i.e., CAPE and ACEP) have been grafted onto the disputed domain name to describe its purpose, as many criticism sites typically do (e.g., <www.trademarksucks.com>). The mere fact that the word elements appear in reverse order does not communicate any suggestion that the associated website serves as a criticism site. In the Canadian context, it is common for organizations to adopt French and English acronyms, which are displayed together in no particular order. Accordingly, the disputed domain name presents a pure example of Complainant’s trademark being used as the identifier for a criticism website, without the mitigating effect of additional language in the domain name itself. (See WIPO Overview 3.0, section 2.6.3).
As many UDRP panels have observed, “a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark… [as] this creates an impermissible risk of user confusion through impersonation”; in certain limited (“US-US”) cases some panels have however found that genuinely noncommercial websites may attract free speech protection under United States of America First Amendment principles, particularly parties exclusively from the United States, even for domain names which may be identical to the trademark in question (WIPO Overview 3.0, section 2.6.2).
In this Panel’s view, it is also appropriate (to the extent that it is possible in these summary proceedings) to evaluate Respondent’s claim to legitimate and fair use in the context of Canadian law, in light of the fact that both parties to this proceeding are Canadian. Freedom of expression is recognized under the Canadian Charter of Rights and Freedoms s.2(b).
“Everyone has the following fundamental freedoms:
(b) freedom of thought, belief, opinion and expression”
Two cases have directly considered the application and extent of Charter protection in the context of the intersection of intellectual property rights and labour disputes. Cie générale des établissements Michelin – Michelin & Cie v. CAW – Canada  F.C.J. No. 1685  2 F.C. 306, 124 F.T.R. 192, 68 A.C.W.S. (3d) 156, 71 C.P.R. (3d) 348 and British Columbia Automobile Assn. v. O.P.E.I.U., Local 378  B.C.W.L.D. 404,  B.C.J. No. 151, 102 A.C.W.S. (3d) 975, 10 C.P.R. (4th) 423, 85 B.C.L.R. (3d) 302.
As a preliminary matter, the Panel notes that these decisions were based on full evidentiary records, concluding with full hearings before the respective Courts. Under the Policy, by way of contrast, the Panel does not have the benefit of a comprehensive record relating to the conduct of either party. In summary proceedings like this, the factual matrix and the resulting decision are necessarily narrow in scope, and are intended only to represent the analysis mandated by the Policy and its procedure.
Based on the limited evidence available, the Panel is not persuaded that legitimate rights or interests have been established on behalf of Respondent, in spite of Respondent’s reliance on her Charter rights to freedom of expression. Complainant has raised prima facie evidence that Respondent lacks the requisite rights or interests to support her use of a confusingly similar domain name. Respondent carried the burden to establish that her registration and use of the disputed domain name comes within the scope of the freedom of expression guarantee.
In British Columbia Automobile Assn. v. O.P.E.I.U., supra, the Court ruled that in the context of a labour dispute, “a reasonable balance must be struck between the legitimate protection of a party’s intellectual property and a citizen’s or Union’s right of expression”. In that case, the union had adopted domain names that included additional words beyond the trademarks in question, such as “onstrike” and “backtowork”. As a result, the Court was able to conclude that there was no passing-off, as it was clear to users – based on the different domain names – that the union’s website was not the plaintiff’s.
As indicated previously, there are no such mitigating factors in the case before the Panel, as no differentiating language has been added to the disputed domain name.
In the Federal Court of Canada’s decision in Cie générale des établissements Michelin – Michelin & Cie v. CAW, supra,the Court rejected the Charter arguments raised by the defendant CAW Union to justify the use of Michelin’s intellectual property in picketing signs and printed materials. The decision focused on copyright infringement but noted that the conclusions on freedom of expression related to trademark rights as well. Explicit acknowledgement was given to the Union’s rights to freedom of expression and “the entirely socially acceptable and legitimate overreaching good of the Defendant’s unionization activity”. However, Michelin’s property rights ultimately prevailed: “The Charter does not confer the right to use private property – plaintiff’s copyright – in the service of freedom of expression”.
In balancing Complainant’s common law trademark rights against Respondent’s rights of expression, it is important to consider to what extent Respondent’s ability to communicate with members of the CAPE organization over the Internet will be impeded if she is not permitted to use the disputed domain name. It is clear that other suitable domain names are available. In fact, Respondent already actively uses her website at “www.thirsty4justice.com” to disseminate her ideas on labour and social justice issues. Prior UDRP decisions provide guidance about the naming of criticism websites in a manner which includes elements of various trademarks but which does not contravene the Policy. (WIPO Overview 3.0, section 2.6.3, also see Titan Enterprises (Qid) Pty Ltd. v. Dale Cross / Contact Privacy Inc, WIPO Case No. D2015-2062, (<bewareoftitangarages.com>)). Accordingly, in this Panel’s view Respondent is in fact able to exercise her important right to freedom of expression through a variety of lawful means and platforms, including informative domain names for websites functioning as effective platforms to reach members of ACEP-CAPE.
In light of Respondent’s choice to adopt a domain name functionally identical to Complainant’s common law trademarks, Respondent’s Charter arguments on legitimate interest are rejected, as Canadian law does not condone the misappropriation of intellectual property in these circumstances.
Therefore, the Panel finds that Complainant has also satisfied the second element of the Policy, set out in paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The principal evidence tolling against Respondent in connection with bad faith is the adoption of graphic website elements on Respondent’s site which have been copied from corresponding features on Complainant’s website. Given that Respondent’s stated goal for the use of the disputed domain name was to engage members of Complainant’s organization by attracting them to her website, the copying of these features serves as evidence of an intention to deceive those users. This is particularly probative in the context of the home page of Respondent’s website which reproduced Complainant’s logo and navigation bar in all respects.
The copying of these graphic elements along with the identical word elements of Complainant’s trademark is sufficient to establish a finding of bad faith under the Policy. The Panel notes that this finding is not intended to characterize the editorial content of Respondent’s website and its criticism of Complainant’s organization as bad faith conduct per se. Respondent is fully entitled to express her critical views about Complainant in a lawful manner. This decision constitutes a finding that the disputed domain name – her chosen platform at this point – has been registered and used in bad faith.
Accordingly, the Panel finds that Complainant has satisfied the third and final required element under paragraph 4(a)(iii) of the Policy.
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 name, <cape-acep.com>, be transferred to Complainant.
Christopher J. Pibus
Date: July 7, 2017