4th Aug 2008
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield
Case No. D2008-0754
1. The Parties
The Complainant is Metro Sportswear Limited (trading as Canada Goose), Toronto, Canada, represented by Bereskin & Parr, of Canada.
The Respondents are Vertical Axis Inc., Barbados, represented by the ESQwire.com Law Firm, United States of America, and Canadagoose.com c/o Whois Identity Shield, Vancouver, Canada.
2. The Domain Name and Registrar
The disputed domain name <canadagoose.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008. On May 15, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On May 20, 2008, Nameview Inc. transmitted by email to the Center its verification response disclosing underlying 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 the Complainant on May 21, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on May 26, 2008. The Center verified that the Complaint together with the amendment to 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 May 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response June 19, 2008. The Response was filed with the Center June 19, 2008.
The Center appointed William R. Towns, Hugues G. Richard and David E. Sorkin as panelists in this matter on July 9, 2008. 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.
On July 9, 2008, the Complainant requested leave of the Panel to submit a supplemental filing in relation to the Response. The Respondent requested an opportunity to prepare and submit a reply to the Complainant’s supplemental filing. The Panel issued a Procedural Order on July 14, 2008, providing the Complainant until July 18, 2008, to file a supplemental submission with respect to the subjects addressed in the Complainant’s request. The Respondent was provided until July 24, 2008, to file a supplemental submission in reply.
In keeping with the Policy, the Rules and relevant panel decisions, the Panel informed the Parties in its Procedural Order of July 14, 2008, that the Parties’ supplemental submissions would be considered only to the extent that the submissions demonstrably were warranted by exceptional circumstances. The Panel specifically invited both Parties to address the issue of exceptional circumstances in their supplemental submissions. Both Parties filed supplemental submissions with the Center.
In view of the foregoing, the time for the Panel to forward its decision was extended under paragraph 15(b) of the Rules until August 4, 2008.
4. Factual Background
The Complainant has been in the business of manufacturing and selling outerwear for some fifty (50) years. In connection with that business, the Complainant is the owner of valid and subsisting trademarks for CANADA GOOSE in the United States of America, Canada, the European Union, and numerous other countries around the world. “Canada goose” also is the common name of a familiar species of waterfowl in North America, and is widely recognized as such in a number of dictionaries and in other references.
The Complainant has continuously used the CANADA GOOSE mark in commerce since as early as 1983 in Canada, and has made substantial use of the mark to promote its products through print advertising, Internet-marketing, sponsorships, merchandizing, catalogues, trade shows, and through retail displays and point-of-sale materials. Since 1991, the Complainant has sold roughly 1,000,000 outerwear products worldwide, generating substantial revenues from such sales.
The Complainant also owns and operations an official website at “www.canada-goose.com”, promoting and providing information about its CANADA GOOSE branded products and where they may be purchased. In addition, the Complainant owns and uses a number of additional domain names incorporating its CANADA GOOSE mark.
The Respondent1 registered the disputed domain name in April 29, 2001.2 At the time of the filing of the original Complaint, the domain name registrant as reflected in the registrar’s Whois database was Canadagoose.com c/o Whois Identity Shield. It is undisputed that Whois Identity Shield is a privacy protection service. The Complainant carried out an investigation prior to the filing of the Complainant, which indicated that Vertical Axis Inc. or an individual closely associated with this entity, Kevin Ham, was the underlying owner of the domain name.3 Subsequently, in response to the Center’s request for registrant verification, the registrar Nameview Inc. disclosed Vertical Axis Inc. as the underlying registrant of the disputed domain name, and the Complaint thereafter was amended to include Vertical Axis Inc. as a Respondent. The Panel notes that co-Respondent Canadagoose.com c/o Whois Identity Shield continues to be listed as the registrant in Nameview Inc.’s Whois database.
The Respondent is using the disputed domain name in connection with a website that features advertising links to a number of third-party websites, which presently include websites offering goose down filled products such as comforters, pillows and featherbeds, and websites offering for sale outerwear made by the Complainant and marketed under the CANADA GOOSE brand. All of the advertising links appear to be contextually related to the terms “Canada”, “goose” or “Canada goose”.4 The Respondent does not dispute that it receives a portion of the advertising revenues generated from the website.
5. Parties’ Contentions
The Complainant maintains that its CANADA GOOSE mark is inherently distinctive and well-known. The Complainant contends that is has a very strong Internet presence in association with its CANADA GOOSE mark, and that its website received more than 1,000,000 page views in the first four months of 2008 alone. As a result of numerous registrations worldwide and the extensive and continuous use and promotion of the CANADA GOOSE mark since as early as 1983, the Complainant argues that it has developed significant reputation and goodwill in the mark. According to the Complainant, its business expanded rapidly in the mid-1990s, with sales revenues increasing from roughly 3 million in 1991 to roughly 17.5 million in 2008.
The Complainant points out that it had long since established rights in the CANADA GOOSE mark when the disputed domain name was registered by the Respondent in 2001. Shortly thereafter, according to the Complainant, the Respondent began using the disputed domain name to drive Internet traffic to a pay-per-click website containing advertising links to the Complainant’s website as well as other third-party websites offering outerwear products for sale.
The Complainant asserts that the disputed domain name is identical to its CANADA GOOSE mark, and states that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark or to register domain names incorporating that mark. The Complainant contends that the Respondent deliberately appropriated the Complainant’s CANADA GOOSE mark as a domain name because of the value of the Complainant’s mark to drive Internet traffic to the Respondent’s pay-per-click website. Because, according to the Complainant, the advertising links historically featured on the Respondent’s website redirect Internet users to the Complainant’s website or to other websites advertising the Complainant’s CANADA GOOSE branded products, it can be inferred that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name.
The Complainant concludes from the foregoing that the Respondent has no rights or legitimate interests in the disputed domain name. To the contrary, according to the Complainant, the Respondent is trading on the reputation and goodwill in the Complainant’s distinctive and well-known mark in a bad faith attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Complainant argues that the Respondent’s has engaged in an abusive pattern of registering domain names consisting of third-party trademarks in order to generate revenue by driving Internet traffic to its pay-per-click websites, as is evidenced by decisions in prior UDRP proceedings adverse to the Respondent.
The Complainant further alleges that the Respondent, after being contacted by the Complainant’s investigator (who did not disclose that he was acting for the Complainant) regarding the possible acquisition of the disputed domain name, told the Complainant’s investigator that anything less than a six figure offer for the domain name would not be considered. According to the Complainant, this constitutes an offer by the Respondent to sell the disputed domain name to the Complainant at an amount greatly in excess of the Respondent’s out-of-pocket expenses in relation to the domain name, made in bad faith within the meaning of the Policy. The Complainant also asserts that the Respondent’s use of a privacy service to cloak its identity and use of a robots.txt file to exclude historical pages of its website from being maintained on “www.archive.org” are evidence of bad faith.
The Respondent maintains it is in the legitimate business of acquiring expiring domain names consisting of generic or descriptive words or phrases, and using the domain names with pay-per-click websites to generate advertising revenue. According to the Respondent, the disputed domain name is comprised of the dictionary term “Canada goose”, and the Respondent acquired the domain name upon the expiration of its prior registration in accordance with the Respondent’s business model.
The Respondent asserts that is has legitimate interests in the disputed domain name because the domain name consists of generic or dictionary words. According to the Respondent, the domain name was registered based on its value as a generic or descriptive term, and not with the Complainant’s trademark in mind. The Respondent states that it had no knowledge of the Complainant’s mark when it registered the disputed domain name. The Respondent further asserts that the Complainant’s mark is unenforceable because it is generic or descriptive, and because the Complainant disclaimed the exclusive right to use “Canada” in its Canadian mark and the exclusive right to use “goose” in its U.S. mark.
The Respondent maintains that the use of a generic or descriptive domain name to generate pay-per-click revenues is a legitimate business model. According to the Respondent, the disputed domain name is used with a website displaying Yahoo sponsored search results, and the advertising links appearing on the website are automatically generated by software based on the contextual meaning of the words contained in the disputed domain name – i.e., the compound term “Canada goose”, as well as the individual words “Canada” and “goose”. The Respondent argues that the descriptive nature of the domain name is underscored by more than 1.4 million third-party webpages containing on or more of these terms, as evidenced by a Google search.
In view of the foregoing, the Respondent argues that there is no evidence of bad faith registration or use. The Respondent claims that it exercises care in registering domain names that became available due to deletion to register domain names that incorporate only common words and descriptive terms. The Respondent opines that the Complainant’s references to other decisions under the Policy which were decided adversely to the Respondent is prejudicial, and the Respondent calls to the attention of the Panel other decisions under the Policy in which panels have found the Respondent’s domain registration practices to be in good faith.
The Respondent denies that its use of a privacy protection service is any indication of bad faith, and asserts that it has legitimate reasons for doing so. Further, the Respondent argues that there it did not register the disputed domain name with the intent to sell it to the Complainant or to one of the Complainant’s competitors. According to the Respondent, it never offered to sell the disputed domain name to the Complainant, and the Respondent’s counsel told the Complainant’s investigator that the Respondent would not entertain any offer less than six-figures as a means of discouraging an offer from being made.
6. Preliminary Matters
A. Identity of the Respondent
The record establishes to the satisfaction of the Panel that Vertical Axis Inc. is the underlying or beneficial owner of the disputed domain name. However, as noted above, the registrar’s Whois database continues to list Canadagoose.com c/o Whois Identity Shield as the domain name registrant. The Rules seem to contemplate that only the holder of the domain name registration should be the respondent in a proceeding under the Policy, but in circumstances involving the use of a privacy protection service where the identity of the underlying or beneficial domain name owner is not disclosed until after the filing of a complaint, paragraph 8(a) arguably prohibits a change in the registrant information in the registrar’s Whois database. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975.
When such circumstances arise, the Panel understands that the Center’s practice typically is to invite the complainant to amend the complaint to name both the privacy protection service and the “true” underlying or beneficial domain name registrant as respondents. This is a sensible practice, given that proceedings under the Policy look to and rely on registrant information maintained by the registrars in their Whois databases. Id. This practice has been followed by a number of UDRP panels, and it is a practice the Panel believes should be followed in this case as well.
B. The Parties’ Supplemental Submissions
No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. The Panel notes that the Rules and relevant panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427.
Panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission, Top Driver, Inc., v. Benefits Benefits, WIPO Case No. D2002-0972; to bring new and highly relevant legal authority not previously available to the attention of the panel, Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105; or to rebut arguments of the opposing party that could not reasonably have been anticipated, Radan Corp. v. Rapazzini Winery, WIPO Case No. D2003-0353. Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions, World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
The Complainant’s asserts in its supplemental submission that exceptional circumstances are present because of “the false and misleading allegations in the Response, and [. . .] the nexus between the Registrar and the “Russian Doll” that is the Respondent”, arguing that the Complainant has been placed at a disadvantage in preparing the Complaint. However, the Panel does not believe that exceptional circumstances sufficient to warrant the Panel’s consideration of the Parties’ supplemental submission have been demonstrated. The Complainant’s supplemental submission does little more than reargue the same issues already presented in the original and amended Complaints, or else postulates variations and shadings of those issues, which are at best cumulative.5 No pertinent evidence that was not previously available to the Complainant has been submitted.6 No relevant legal authority not previously available has been brought to the Panel’s attention. Further, no showing has been made that any of the Respondent’s allegedly “false and misleading” arguments could not have been reasonably anticipated by the Complainant, particularly considering the scope and character of the investigation undertaken by the Complainant prior to the filing of the Complaint.
In view of the foregoing, the Panel has determined that the Parties’ supplemental submissions are not warranted by exceptional circumstances and serve no useful purpose under the Policy. As such the Parties’ supplemental submissions have not been considered by the Panel in reaching its decision.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <canadagoose.com> is identical or confusingly similar to the Complainant’s CANADA GOOSE mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. In this instance the identity or confusing similarity of the domain name to the mark is clearly manifest.
The Panel rejects the Respondent’s argument that the Complainant has not established trademark rights in CANADA GOOSE for purposes of paragraph 4(a)(i) of the Policy. The record is undisputed that the Complainant has made extensive and continuous use of the mark in commerce since as early as 1983. Further, the Complainant holds numerous valid and subsisting registrations for the mark in countries around the world, including the United States of America and Canada. At a minimum the mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
The Panel finds the Complainant’s CANADA GOOSE mark to be distinctive when used as a source indicator for the Complainant’s outerwear products, although the Panel notes that many of the Complainant’s outerwear products are made with down insulation.7 In any event, that the term “Canada goose” may be “generic” or “descriptive” outside the context of the Complainant’s trademark usage is not germane to the Panel’s determination of whether the Complainant has established rights in the mark for purposes of this heading.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). The Panel notes that the disputed domain name is identical to the Complainant’s mark, and it is uncontroverted that the Complainant has not authorized the Respondent to use the CANADA GOOSE mark or to register a domain name that corresponds to the mark. Nevertheless, the Respondent registered the disputed domain name, which is identical to the Complainant’s mark, and is using of the domain name to generate click through advertising revenues. In view of these circumstances, the Panel is persuaded that a prima facie showing under paragraph 4(a)(ii) has been made. See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent maintains that it registered the disputed domain name because of its appeal as a dictionary term or commonly used descriptive phrase, and not because of its value as a trademark, and asserts that it has the right to register and make a descriptive use of the disputed domain name. A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant’s trademark in mind. See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Thus, where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
While paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name once the Complainant has made a prima facie showing, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. Because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not necessary to the Panel’s decision in this case.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.
The primary rule in relation to domain name registrations is “first come, first served”, to which the Policy provides a narrow exception. See Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658. It is well settled that the registration of a domain name in order sell it to a third-party is not a violation per se of the Policy, provided that the respondent is not seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP, supra. Nor is the use of a domain name for third-party advertising per se illegitimate under circumstances where the respondent is not seeking to take advantage of the complainant’s rights. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF Case No. 0285459.
The Panel notes that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, where a registrant is engaged in the wholesale registration of large numbers of domain names. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Nevertheless, a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain was to profit from and exploit the complainant’s trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra.
The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry Preston, supra.
The Panel, after careful consideration of the totality of the circumstances in the record, does not find the evidence sufficient to demonstrate that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s rights in its CANADA GOOSE mark. While the Complainant has demonstrated rights in its CANADA GOOSE when used as a source indicator for the Complainant’s outerwear products, the Complainant’s mark nonetheless is comprised of a common dictionary term, which the record indicates is subject to descriptive use by third-parties. The record reflects third party use of “Canada goose” and similar terms in a descriptive manner with respect to various goods and services, as well as the Respondent’s registration of numerous domain names incorporating the words “Canada” or “goose” for use in what appears to be a descriptive context.
The Panel also notes that many of the outerwear products offered by the Complainant under its CANADA GOOSE mark feature down insulation, which comes from the undercoating that keeps geese, ducks and other waterfowl warm. In addition, there are advertising links displayed on the Respondent’s website that redirect Internet visitors or to other websites offering products such as comforter or pillows filled with down or goose feathers, as well as goose control services.
The Panel does not consider the Respondent’s use of a privacy service in and of itself to constitute bad faith under the Policy,8 although the Panel notes that privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra. In this case, however, there is no substantial indication in the record of the Respondent’s manipulation of the privacy service to conceal a bad faith use of the disputed domain name. Further, notwithstanding the privacy protection service, the Complainant was able to discover and contact the Respondent prior to the filing of the Complaint in this case. Moreover, in contrast to the situation in HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra, there is no clear indication of cyberflight linked to the Respondent’s use of the privacy service.
The Panel notes that the Respondent has been a party to a number of UDRP proceedings. In some of these proceedings, domain name transfers have been ordered. In other such proceedings involving the Respondent complaints have been denied. In the Panel’s view, these decisions on balance do not establish any clear pattern of abusive domain name registration practices by the Respondent that, without more, would permit the Panel to draw an inference of the Respondent’s bad faith in the circumstances of this case. As noted above, neither the registration of a domain name in order to sell it or the use of a domain name to generate pay-per-click advertising revenue is a per se violation of the Policy where the registrant is not seeking to take advantage of the complainant’s rights. Under the circumstances present in the record, the Panel is unable to draw an inference of bad faith from the Respondent’s use of the disputed domain name to generate click through advertising revenue. Nor is the Panel prepared to conclude based solely on the Respondent’s statement that it would not entertain an offer of less than six-figures for the disputed domain name, considering the circumstances in which this statement was made, that the Respondent registered the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant or to one of the Complainant’s competitors.
In the final analysis, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. For the reasons set forth above, the Panel is unable to conclude from the totality of the circumstances as reflected in the record that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark. See CNR Music B.V. v. High Performance Networks, Inc., WIPO Case No. D2005-1116. Accordingly, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In the Panel’s opinion the Respondent has not established reverse domain name hijacking under the circumstances of this case.
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Hugues G. Richard
David E. Sorkin
Date: August 4, 2008
1 For reasons discussed further herein, the Panel concludes that Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield (ostensibly Whois Identity Shield) should be identified as co-Respondents. The Panel considers Vertical Axis Inc., as the underlying domain name owner to be the primary Respondent. Unless otherwise indicated, the term “Respondent” as used herein refers to Vertical Axis Inc.
2 The Complaint so states based on the report of an investigator hired by the Complainant to determine the identity of the underlying owner of the disputed domain name. The Response does not dispute that the Respondent owns the disputed domain name, and acknowledges its use of the privacy protection service Whois Identity Shield. Hence the Panel accepts these facts as being uncontested in the record.
3 Kevin Ham is identified by in the Complaint as an individual who directs or controls the Respondent. According to the Complaint, Mr. Ham also is a founding director or officer of the registrar Nameview Inc., and Whois Identity Shield is affiliated with Nameview Inc. The Panel notes that none of this was disputed in the Response.
4 Such links include “goose down”, “Canada geese flying”, “Snow goose”, “Canada goose figurine”, “Goose control”, “lifestyles of Canadian geese”, and “Canadian geese behavior.”
5 For example, the “nexus” between the registrar Nameview Inc. and the Respondent referred to by the Complainant apparently is a reference to Kevin Ham, who according to the Complainant is both a founding director of the registrar and directs of controls the Respondent. However, the record clearly reflects that such information was known to the Complainant prior to the filing of the original Complaint, as a result of the Complainant’s investigation.
6 As an example, the Complainant in its supplemental submission asserts for the first time, based on the claimed “nexus” between the domain name registrar and the Respondent, that the disputed domain name probably was transferred to the Respondent after the Complainant’s investigator contacted Mr. Ham in September 2007. As noted above, however, the circumstances on which the Complainant makes this assertion was known to the Complainant prior to the filing of the amended Complaint, in which the Complainant also stated: “The Respondent registered the Domain Name in April of 2001, and thereafter began to operate a pay-per-click website in connection with the Domain Name.” amended Complaint, paragraph 26.
7 The Panel notes that the USPTO by law must refuse registration of a mark on its principal register unless the mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.
8 Privacy services generally are recognized to perform a legitimate function by shielding registrants from “spam” as a result of their contact details being made publicly available on the Whois database.