Royal Canadian Legion, Dominion Command v. Host Master / HostPapa
Claim Number: FA1610001696906
Complainant is Royal Canadian Legion, Dominion Command (“Complainant”), represented by Timothy Bourne of Ridout & Maybee LLP, Canada. Respondent is Host Master / HostPapa (“Respondent”), represented by Catherine Lovrics of Bereskin & Parr, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <poppypins.com>, registered with Tucows Domains Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2016; the Forum received payment on October 6, 2016.
On October 6, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <poppypins.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@poppypins.com. Also on October 7, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 27, 2016.
A timely Additional Submission from Complainant was received and determined to be complete on November 1, 2016.
On November 3, 2016, an Additional Submission was received and the Additional Submission was timely and complied with Supplemental Rule 7.
On November November 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A Diaz (ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the POPPY mark through its registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. 331,130, registered on August 21, 1987) and such POPPY mark is a “Protected Mark,” a legally protected mark such that others in Canada are not allowed to use symbols that are likely to be mistaken for the mark. Respondent’s <poppypins.com> domain name is confusingly similar to the POPPY mark because it contains the mark along with the generic top-level domain (“gTLD”) “.com” and the descriptive term “pins.”
Respondent is not commonly known by the <poppypins.com> domain name domain name because it has not been permitted to use Complainant’s POPPY mark, the available WHOIS information identifies “Host Master / HostPapa” as Registrant, and the resolving website identifies Respondent as “black Pin Centers Home Page. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used in an attempt to draw attention to Respondent’s commercial sale of products similar to and in competition with those sold by Complainant, on a website designed to create confusion regarding Complainant’s association with the website. Respondent’s disclaimer indicates that Respondent lacks rights or legitimate interests in the domain name.
Respondent uses the <poppypins.com> domain name in bad faith because the resolving website is used to sell goods for personal financial gain which are similar to products sold by Complainant under the POPPY mark, while displaying the POPPY mark both on the website and in the source code. Respondent registered the <poppypins.com> domain name domain name in bad faith because it did so while fully aware of Complainant’s rights in the POPPY mark as demonstrated by Respondent’s association with Complainant, Complainant’s registration of the mark in Canada, and the disclaimer present on the resolving website.
B. Respondent
Complainant has overstated the nature of its “Protected Marks,” as it owns no such marks for the word mark POPPY, but rather only for a specific design. Complainant’s POPPY mark is not related to “pins,” but rather to fundraising. The narrowness of Complainant’s POPPY marks does not prevent others from using the term “poppy” in marks within Canada. The non-distinctive nature of Complainant’s POPPY mark allows for small differences to be important in the creation of a domain name, such that the addition of the word “pins” renders the POPPY mark and <poppypins.com> domain name dissimilar.
Respondent has rights or legitimate interests in the <poppypins.com> domain name because it is an accurate description of the goods sold at the resolving website, while referencing Complainant’s mark only to the extent necessary to accurately identify the product and without suggesting an affiliation with Complainant. Complainant has demonstrated acquiescence of Respondent’s use of the <poppypins.com> domain name through purchase for resale of Respondent’s goods and delay in taking action to prevent Respondent’s use. Respondent’s status as an affiliate of Complainant at the time of domain name registration is suggestive of a bona fide use of the domain name. The disclaimer on the resolving website adequately demonstrates that the website and Respondent are neither Complainant nor endorsed by Complainant.
Respondent’s registration and use of the <poppypins.com> domain name was done in good faith, as Complainant has acquiesced to such registration and use through a delay in bringing an action and the purchase and resale of Respondent’s products. Respondent’s sale of goods is done without interfering with or competing with Complainant’s use of the POPPY mark. The disclaimer present at the resolving website is sufficient to disavow any association between Complainant and the <poppypins.com> domain name.
C. Additional Submissions
The term “pins” is related to the POPPY mark because, even though the mark does not directly cover the sale of pins, it is a well-known practice of Complainant to sell “poppy pins” in conjunction with fundraising services related to the POPPY mark. Respondent does not need to use the POPPY mark in the domain name to describe the products sold there because the resolving website refers to such products as “Black Pin Centers.” Complainant has not acquiesced to Respondent’s registration of the <poppypins.com> domain name and Respondent has provided inadequate evidence to suggest as much. Respondent does not deny benefitting commercially from the sale of products in association with Complainant’s POPPY mark.
Complainant has failed to meet the ICANN Policy ¶ 4(a)(ii).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Respondent has provided evidence of other parties holding marks containing or similar to Complainant’s POPPY mark in its Annex A. The Panel notes that a complainant need only demonstrate a showing of rights in a mark to satisfy Policy ¶ 4(a)(i), but not necessarily demonstrate that other parties do not have similar rights in similar marks. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place). The Panel finds that Respondent has called into question Complainant’s rights in the POPPY mark, and Complainant has failed to satisfy Policy ¶ 4(a)(i). See NBA Props., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying complaint because the complainant was not the owner of the KNICKS trademarks).
Respondent claims that the non-distinctive nature of Complainant’s POPPY mark allows for small differences to be important in the creation of a domain name, such that the addition of the word “pins” renders the POPPY mark and <poppypins.com> domain name dissimilar. The Panel agrees with this characterization of the POPPY mark, and it finds Respondent’s <poppypins.com> domain name not confusingly similar to the POPPY mark. See Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”)
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent maintains that it can have rights or legitimate interests in the <poppypins.com> domain name because the words of the domain name constitute an accurate description of the “poppy pins” sold at the resolving website, while referencing Complainant’s mark only to the extent necessary to accurately identify the product and without suggesting an affiliation with Complainant. The Panel agrees that Respondent is merely using the <poppypins.com> domain name to describe its business without creating an affiliation with Complainant, and the Panel finds that Respondent has rights or legitimate interests in the domain name. See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the <skyart.com> domain name to sell “digital and photo images of Southwest scenes, especially the sky” bestowed rights and legitimate interests in the domain name).
Respondent claims that Complainant has acquiesced to Respondent’s use of the <poppypins.com> domain name through purchase for resale of Respondent’s goods and delay in taking action to prevent Respondent’s use. Respondent claims having suggested to Complainant in 2008 the sale of the products sold at the <poppypins.com> domain name and being refused. Subsequently, Respondent claims to have begun such sale and maintained the domain name since 2008 and that this use has included sales made to Complainant for Complainant’s resale until 2015. Further, Respondent claims that its status as an affiliate of Complainant is suggestive of Respondent’s making a bona fide use of the domain name. Respondent swears to this in its Michetti Affidavit and notes that it is corroborated by Complainant’s White Affidavit. The Panel finds these events suggestive of a bona fide use of the domain name, it finds that Respondent has rights or legitimate interests in the <poppypins.com> domain name. See Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding it a persuasive factor that the respondent had used the disputed domain name for over seven years in concluding that the respondent had rights or legitimate interests in the disputed domain name); see also Century 21 Real Estate LLC v. Wiechert At the Rockies , FA 1660574 (Forum Apr. 4, 2016) (“Prior panels have decided that where a respondent was affiliated with a complainant when the respondent registered a domain, respondent was making a bona fide use of the domain”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <poppypins.com> domain name REMAIN WITH Respondent.
Hon. Nelson A Diaz (ret.) Panelist
Dated: November 8, 2016
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