20th Mar 2014
By Michael Berkens
The government of Quebec just lost its bid to grab the domain name Quebec.com, but the domain owner failed to get a Reverse Domain Name Hijacking Ruling.
If you’re in to extremely long proper names, the complainant in the UDRP is “Ministre des Relations internationales, de la Francophonie et du Commerce extérieur (Minister of International Relations, La Francophonie and External Trade), acting in this proceeding for and on behalf of the Government of Québec, Québec, Canada”
The domain owner is Anything.com, Ltd who was represented by Esqwire.com.
I think in such a case its important for everyone to read including the allegations of the parties and the responses.
While you may dismiss this case as a failed attempt to grab a Geographic domain, the panel gave a lot of consideration to the claim and some pretty good guidance of what is the acceptable use for a Geo domain and what might lose you a Geo domain in a UDRP.
Here are the relevant allegations, defenses, facts and findings by the three member panel:
5. Parties’ Contentions
1. The Disputed Domain Name is identical or confusingly similar to the Canadian trademarks as it is almost identical to the marks.
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as:
(a) The Respondent has never used it to offer goods or services in good faith;
(b) It is used only as a link to a parking page containing links to businesses in Quebec and other links unrelated to Quebec;
(c) Complainant has never authorized Respondent to use its trademarks;
(d) Respondent does not hold a registered trademark for QUEBEC;
(e) Respondent is not commonly known by the Disputed Domain Name; and
(f) Respondent registered the Disputed Domain Name for profit by creating confusion regarding and tarnishing the image of Complainant’s trademarks.
Respondent registered and used the Disputed Domain Name in bad faith as:
(a) It registered and used the Disputed Domain Name with the objective of taking advantage of Internet users attempting to visit Complainant’s website;
(b) Respondent intended to benefit from hits generated by Complainant’s notoriety and official marks;
(c) Respondent intended to make illicit use of Complainant’s trademarks by creating confusion for Internet users, tarnishing Complainant’s official marks and notoriety, preventing Complainant from registering its official marks in a domain name and creating confusion with Complainant’s marks regarding the source, sponsor, affiliation and approval of the products and services offered on the website quebec.com.
Respondent made the following contentions:
1. Complainant does not have trademark protection for QUEBEC because it is a descriptive term not subject to trademark protection as a stand-alone word mark.
2. The Disputed Domain Name solely incorporates the geographically descriptive term “Quebec” which is the common name of a Canadian province.
3. The Government of Quebec has also disclaimed any right to the word “Quebec” in connection with the following United States trademarks:
BONJOUR QUEBEC (Registration No. 2,923,549); and
QUEBEC ORIGINAL (Registration Nos. 4483348 and 4483347).
4. Respondent registered the Disputed Domain Name in good faith on July 10, 1998, when it was available for registration. Respondent selected the Disputed Domain solely because it is a common geographic word and it believed that anyone was entitled to register a geographic word domain name like “Quebec.”
5. The Complaint should be barred by the doctrine of laches because Complainant waited 15 years to initiate this proceeding.
6. The Disputed Domain Name is not confusingly similar to Complainant’s trademarks.
7. Respondent has rights and legitimate interests In the Disputed Domain Name because registration and use of a common geographic word domain name in connection with its descriptive meaning is a legitimate interest.
8. Complainant has not demonstrated that the Disputed Domain Name was registered and is being used in bad faith.
9. Registration of a geographic term or common word domain name is not bad faith.
10. Complainant’s inaction for 15 years supports a finding that Respondent did not act in bad faith.
11. There should be a finding of Reverse Domain Name Hijacking.
Discussion and Findings
Complainant’s case is that there is no right or legitimate interest as Complainant has never authorized Respondent to use its official marks, Respondent has never obtained a registered trademark itself for QUEBEC, Respondent is not known as “Quebec” or by the Disputed Domain
Name and, finally, that: “the Respondent registered the domain name with the intention of diverting, for profit, Web users attempting to visit the website of the Government of Quebec, by creating confusion regarding and tarnishing the image of the Complainant’s official marks. The Respondent has made illicit and unfair use of the domain name ”.
Respondent relies on its submission that it has a right or legitimate interest in the domain name because it consists of a “geographic common word”, namely “Quebec” which is both a province and major city in Canada.
It may be said first of all that there is no evidence that Respondent has a registered trademark for QUEBEC or that it is or has been commonly known by the Disputed Domain Name and it has not been alleged that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Moreover, Respondent is not affiliated with Complainant and has not been authorized by the Complainant to use its trademark in a domain name or anywhere else. Those factors are often factors going to show that a complainant has made out a prima facie case, and they are present in this case.
However, in the present case, it is the geographic indicator which is the determining factor.
On that issue, the Panel accepts the general proposition coming from Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucía.Com Limited, supra although of course each case must be decided on its particular facts.
In the present case, Respondent has adopted a geographic indicator as its domain name and has sought to put it to good use in providing links to various information and commercial sites offering goods and services in or related to Quebec.
Respondent’s current website carried links to information services such as maps, directions and driving instructions and also links to sites offering hotel and flight bookings, other travel related businesses and a few other services such as immigration visas. It is true as Complainant says that some of the links do not relate specifically or exclusively to Quebec, but a fair reading of the website leaves no doubt that it is a site for goods and services offered in Quebec and in Montreal in particular.
The Panel’s overall assessment of the way that Respondent is using the Disputed Domain Name is that it is using the Disputed Domain Name in its geographic sense, i.e. that it deals with goods and services available in and specifically related to the region.
If Respondent were pretending to be Complainant itself, if its website purported to offer governmental services, if it laid some claim to speak on behalf of the region or to be an authoritative voice on governmental or municipal matters, or if it sought to mislead Internet users as to the true nature of the site, the outcome may well have been different. But one can examine Respondent’s website closely and yet not find any such matters. The website is what it presents itself to be, namely a site for people minded to find goods and services in Quebec through commercial links and for businesses in Quebec to advertise and promote their wares. An examination of the record of the website at “www.archive.org” reveals the same use over the years.
Accordingly, the Panel finds that the use to which Respondent is putting the Disputed Domain Name is the legitimate one of using a word for its value as a word, analogous to the use of a generic, descriptive or common dictionary word and not as an attempt to transgress by using it as a trademark.
In particular, the Panel does not accept the argument of Complainant that Respondent registered the Disputed Domain Name with the intention of diverting Internet users looking for the Government of Quebec, by creating confusion regarding and tarnishing the image of Complainant’s official marks.
There is no evidence at all to support that proposition and, given the contents of the website it is unlikely that the proposition reflects Respondent’s intention, although the passage of such a long period of time since Respondent registered the Disputed Domain Name makes it difficult to discern this one way or the other, making it more difficult for Complainant to satisfy its burden proof.
It is far more likely, judging from the contents of the site, that it was established to attract users wanting information on subjects such as travel and accommodation to, from and in Quebec and the other services referred to above, being precisely the use that has been made of it.
For all of those reasons, the Panel finds that Complainant has not made out its case that Respondent does not have a right or legitimate interest in the Disputed Domain Name.
E. Registered and Used in Bad Faith
Complainant submits that the Disputed Domain Name in the present case was registered and used in bad faith and that that is so for several reasons.
The first and principal reason advanced is the argument used with respect to rights and legitimate interests and now renewed under bad faith, the argument that Respondent registered the Disputed Domain Name “with the ultimate objective of taking advantage of Web users attempting to visit the Complainant’s website.”
That is essentially a submission that Respondent formed such an objective or intention. But Complainant also argues that the same conclusion can also be drawn by inference from the fact that Respondent intended to benefit from hits generated by Complainant’s notoriety and official marks and that Respondent intended to make illicit use of Complainant’s trademarks by creating confusion for Internet users, tarnishing Complainant’s official marks and notoriety, preventing Complainant from registering its official marks in a domain name and creating confusion with Complainant’s marks regarding the source, sponsorship, affiliation and approval of the products and services offered on the website “quebec.com”.
Respondent has replied to these allegations to the effect that registration of a geographic term or common word as a domain name is not bad faith and it adds correctly that this is in the absence of evidence to the contrary.
Respondent also submits that Complainant has been inactive in the 15 years since Respondent registered the Disputed Domain Name and that such a delay supports its view that it acted in good faith.
Turning first to paragraph 4(b) of the Policy, the Panel finds that there is no evidence bringing the case within sub-paragraph (i), that relating to an intention to sell or rent the Disputed Domain Name. That is so because acquiring a domain name, holding it for 15 years and using it solely for what appears to be a legitimate purpose and apparently not attempting in 15 years to sell or rent, seems to be to the contrary and to evince an intention at the time of registration to keep the domain name and use it to produce income from advertising rather than an intention to sell or rent it.
It must also be remembered that to rely on sub-paragraph (i), it must be shown that the intention to sell or rent was not just an idea at the back of a registrant’s mind, but that the registrant was “primarily” motivated by that fact and that its intention was to sell the domain name to Complainant or a competitor. There is no evidence that such was the intention of Respondent or that it was its primary intention and the fact that Respondent kept the Disputed Domain Name for 15 years without selling or renting or even attempting to do so, militates against the conclusion that it was ever the intention of Respondent to sell or rent the Disputed Domain Name.
It is also difficult to conclude that there has been a breach of paragraph 4(b)(ii) as Respondent has not prevented Complainant from reflecting its Q UEBEC trademarks in a corresponding domain name; there are numerous domain names available consisting solely of the word “Quebec”, alone and in combination with other words.
Likewise, the facts of the case do not bring it easily within sub-paragraph 4(b)(iii) of the Policy. Again, the fact that Respondent registered and used the Disputed Domain Name for an apparently legitimate purpose and retained it for 15 years, continuing to do the same thing with it during that period does not fit comfortably with the notion of Respondent wanting to disrupt Complainant’s business. Again it must be remembered that this intention must be shown to be the registrant’s primary intention. There is no evidence that Respondent had any such intention or evidence of any facts from which such an inference could be drawn.
Accordingly, the only real chance of Complainant succeeding on bad faith comes from sub-paragraph 4(b)(iv) of the Policy and the general notion of bad faith which of course is available to it as well as the specific criteria in sub-paragraph 4(b)(iv).
The Panel has already indicated in the section of the Decision dealing with rights and legitimate interests that it is difficult to conclude that Respondent had the intention to create confusion with the Canadian marks as to Respondent’s website. If this were its intention it has had 15 years to get up a website to suggest that it was the website of the Government of Quebec, but it has not done so. Its website makes no suggestion that it is the Government of Quebec, that it is modeling itself on the government, that it has any authority in governmental affairs or that it is in any other way trying to induce in a visitor the false notion that it is anything other than the commercial site that it plainly is.
Again, the Panel must also ask whether, if there is no direct evidence, are there nevertheless other matters from which it may be inferred that this was the intention of Respondent. The fact that Respondent appears to have kept strictly to promoting its own interests, namely commercial links, suggests that there are no such matters from which such an inference may be drawn.
The situation in this regard is summed by the remark of the three-member panel in Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc., WIPO Case No. D2004 0242 in which the trademark at issue was MEXICO and the domain name and where the panel observed:
“In this regard, Complainant has not persuaded the Panel that Internet users, typing the word MEXICO into their browsers, expect to find the goods or services of Complainant, as distinct from goods, services or information about the country Mexico.”
Likewise, in the present case, there is nothing either expressly or by inference to suggest that Internet users would think that by typing into their browsers, they would find the governmental services of the Province of Quebec, rather than goods, services or information about Quebec, which was clearly Respondent’s intention, judging from the available evidence.
There are two other considerations in this regard to which the Panel also draws attention.
The first is that bad faith, in general, means there has been a malicious or recklessly indifferent intention to do harm, which is not present on the facts in this case.
Indeed, there are no facts that are inconsistent with the intention of Respondent being solely to promote its own interests in a lawful manner.
Moreover, Respondent’s website seems to be promoting Quebec and enhancing the goods and services available there; if anything, such conduct is more akin to good faith than to bad faith. In that regard the Panel notes that the website under the Disputed Domain Name yields advertisements related to the geographic application of the term such as “Things to do (in) Quebec”, “250 Hotels in Quebec”, “Cheap flights” and “Montreal to Quebec City” as stated by the Respondent in its Response.
There is nothing related to/or capable of being branded as bad faith in such advertisements which in fact promote, in fairness or good faith, the province or City of Quebec.
Secondly, although the argument on laches in UDRP proceedings can be a sterile one, the present case is a classic example of the problems facing complainants who do not pursue their remedies in a timely manner.
The Panel is not prepared to say that laches is available as a defence in all UDRP proceedings, but it is also not prepared to say that the delay in bringing proceedings may never be considered.
In the present case, if it is assumed that Complainant has been performing its governmental duties properly, it must have been aware or should have made itself aware of the Disputed Domain Name and the way it was being used, not briefly, but for 15 years.
Yet is has brought this claim very late in the piece and has not volunteered a reason for the delay or explained it, although Respondent raised the issue of delay in the Response and it is a very live issue in this case.
The long delay means that with the limited forensic tools available to a UDRP panel, it is difficult to ascertain the intention of a registrant 15 years previously and in the time that has elapsed since then.
That state of affairs can only weaken Complainant’s case; if it cannot prove its case on the balance of probabilities because of delay for which it is responsible and for which the registrant is apparently blameless, Complainant fails on one of its most important proofs.
For these reasons, the Panel finds that the Disputed Domain Name was not registered or used in bad faith.
F. Reverse Domain Name Hijacking
The Panel finds that Complainant’s motivation in filing the Complaint was more likely than not to protect its trademarks and to stop for the future what it saw as a violation of its rights, rather than an attempt to intimidate or harass Respondent.
To bring a claim that does not succeed, which has difficulties because of the passage of time or where there turns out to be a lack of conclusive evidence does not amount to Reverse Domain Name Hijacking where it essentially must be shown that the complainant has tried to harass the respondent, which is not so in the present case.
In any event, the Panel has discretion on this matter and after considering all of the evidence and the submissions the Panel declines to make a finding of Reverse Domain Name Hijacking.