WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NAV CANADA v. Robert Mcain
Case No. D2008-1526
1. The Parties
Complainant is NAV CANADA, Ottawa, Ontario, Canada, represented by
Gowling Lafleur Henderson LLP, Canada.
Respondent is Robert Mcain, London, United Kingdom of Great Britain and
Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on October 6, 2008. On October 7, 2008, the Center transmitted by email
to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed
domain name. On October 7, 2008, GoDaddy.com, Inc. transmitted by email to the
Center its verification response, confirming that Respondent is listed as the registrant and
providing the 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 Rules, paragraphs 2(a) and 4(a), the Center formally notified
Respondent of the Complaint, and the proceedings commenced on October 13, 2008.
In accordance with the Rules, paragraph 5(a), the due date for Response was
November 2, 2008. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on November 3, 2008.
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The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on
November 17, 2008. 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.
4. Factual Background
Complainant is a Canadian Federal corporation that owns, manages and operates
Canada’s civil air navigation service. Complainant coordinates the safe and efficient
movement of aircraft in Canadian domestic airspace and international airspace assigned
to Canadian control. It offers services related to air traffic control, flight information,
weather briefings, aeronautical information, airport advisory services, and electronic aids
to navigation.
Complainant has been using the NAV CANADA trademark at least since
November 1996 and currently owns the following United States of America (“U.S.”)
and Canadian trade-mark registrations for NAV CANADA:
Trade-mark . No. Country
NAV CANADA 2889378 U.S.
NAV CANADA 2889379 U.S.
NAV CANADA 2835653 U.S.
NAV CANADA TMA573800 Canada
NAV CANADA & Design TMA573401 Canada
NAV CANADA Design TMA573400 Canada
Complainant also operates a website located at “www.navcanada.ca”. Without the
permission of Complainant, Respondent registered the disputed domain name on
January 13, 2000.
The disputed domain name points to a pay-per-click website hosted by Hitfarm.com.
The website at the disputed domain name displayed the banner “Welcome to
navcanada.com - For ads on Aviation weather and Nav Canada”. The website displayed
sponsored link titles that overlapped directly with Complainant’s field of activity, such
as “Aviation”, “Air Traffic Control Canada” and “Flight Information”.
The website at the disputed domain name also featured a link entitled “Nav Canada”.
The links on the site resolved to sponsored links of businesses that offer goods and
services that compete with, or rival, those services offered by Complainant. These
would include goods and services in the field of aviation, flight information, air traffic
control, and electronic aids to navigation.
Complainant sent a cease and desist letter to Respondent dated May 15, 2008, requiring
the transfer of the disputed domain name. The cease and desist letter was delivered to
Domains By Proxy, Inc., as the identity of Respondent was concealed as he had availed
himself of the Registrar’s privacy service. By way of correspondence dated
May 20, 2008, Domains By Proxy, Inc. indicated that it had forwarded the cease and
desist letter to Respondent with a request that it provide a reply by June 3, 2008, failing
which it would reveal his identity.
By way of correspondence dated June 3, 2008, Domains By Proxy, Inc. advised
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Complainant that Respondent had cancelled the privacy service thereby revealing his
identity. However, no reply was received from Respondent. In order to ensure that he
had the opportunity to respond, Complainant issued its cease and desist letter directly to
Respondent on June 4, 2008. Again, no reply was received.
5. Parties’ Contentions
A. Complainant
Complainant argues that the disputed domain name is confusingly similar to
Complainant’s NAV CANADA trademark, that Respondent has no rights or legitimate
interest in the disputed domain name, and that the domain name was registered and is
being used in bad faith by Respondent.
As a remedy, Complainant asks that the disputed domain name be transferred to it.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove each of the
following:
(i) that the disputed domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which Complainant has
rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed
domain name; and
(iii) that the disputed domain name has been registered and is being used in bad
faith.
A. Identical or Confusingly Similar
Complainant has shown evidence that it owns trademark registrations in the U.S. and in
Canada for NAV CANADA. The disputed domain name is identical to Complainant’s
trademark, as the addition of a generic top level domain, such as “.com”, is without legal
significance in determining the issue of similarity (see J.P. Morgan & Co., Incorporated
and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case
No. D2000-0035).
For the above reasons, the Panel finds that the disputed domain name is identical to
Complainant’s trademark and, thus, the requirement of paragraph 4(a)(i) of the Policy is
met.
B. Rights or Legitimate Interests
Respondent created the disputed domain name on January 13, 2000, therefore, after
Complainant initiated its use of the trademark NAV CANADA, on November, 1996.
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Complainant indicates that it has not authorized or entered into any relationship with
Respondent in relation to use of its NAV CANADA trademark.
Complainant has shown substantial business activity under the NAV CANADA
trademark offering services under such trademark, while Respondent apparently has no
business related thereto other than posting the pay-per-click web page parked under the
disputed domain name.
Complainant’s allegations remain uncontested and, in any case, there is no evidence as to
rights or legitimate interests of Respondent in the disputed domain name pursuant to
paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide
offering of goods or services as a pay-per-click web page targeting a third party
trademark by itself does not qualify as such.
Furthermore, there is no evidentiary support that Respondent, as an individual, business,
or other organization, has been commonly known by the disputed domain name or that it
is making a legitimate noncommercial or fair use of the domain name.
In conclusion, the Panel finds in the circumstances that Respondent has no rights or
legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii)
of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must prove registration and
use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of
circumstances, which shall constitute evidence of registration and use of a domain name
in bad faith.
It has been proven that in the website at the disputed domain name, Respondent hosts a
pay-per-click web page, also called a “link farm”, i.e., Respondent displays a list of
sponsored links, which in the circumstances amounts to unduly taking advantage of the
goodwill in Complainant’s mark to attract Internet users and generate revenue,
presumably to Respondent’s benefit.
In this sense, there is little doubt that Respondent intended to earn profit from the likely
confusion among Internet users, who may be attempting to access Complainant’s
website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case
No. D2002-0177:
“Indeed, by redirecting Internet users looking for the web site of Molmed
S.p.A. to its own pages, Respondent is attempting to attract them for
commercial gain, while creating a likelihood of confusion with Complainant’s
trademark.”
In fact, many UDRP decisions have considered that redirecting users to other sites that
offer goods and services, even if they were unrelated to the complainant’s, in order to
gain profit from the reputation of complainant’s trademark, may be prima facie
indication of bad faith. See AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO
Case No. D2001-1503; Society for Human Resource Management v. Local Services
ICN, WIPO Case No. D2004-0127.
The circumstances surrounding Respondent’s conduct are in this case indicative of
registration and use of the disputed domain name in bad faith. In any case, Respondent is
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seeking to trade off on Complainant’s substantial goodwill associated with
Complainant’s mark and to intentionally deceive the consuming public.
Thus, the Panel finds that Respondent has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s website or other on-line location, by
registering and using a domain name identical to Complainant’s trademark.
For all the aforementioned reasons, the Panel finds that Complainant has proven
Respondent’s bad faith pursuant to paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of
the Rules, the Panel orders that the domain name be transferred to
Complainant.
Gabriel F. Leonardos
Sole Panelist
Dated: December 1, 2008
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