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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toronto Port Authority v. Frank Touby and Community Bulletin Newspaper Group, Inc.
Case No. D2007-0096
1. The Parties
The Complainant is Toronto Port Authority, Toronto, Ontario, Canada, represented by McMillan Binch Mendelsohn LLP, Canada.
The Respondents are Frank Touby and Community Bulletin Newspaper Group, Inc., both of Toronto, Ontario, Canada. The Respondent is self-represented in these proceedings.
2. The Domain Names and Registrar
The disputed domain names <thetorontoportauthority.com> and <torontoportauthority.com> (the “Domain Names”) are both registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2007.
On January 26, 2007, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar”) a request for registrar verification in connection with the domain names at issue.
On January 26, 2007, the Registrar transmitted by email to the Center its verification response confirming that Frank Touby is listed as the registrant of <torontoportauthority.com> and providing the contact details for the administrative, billing and technical contact. The Registrar also indicated that the registrant of the domain name <thetorontoportauthority.com> is Community Bulletin Newspaper Group, Inc. and Frank Touby is the administrative, billing and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 21, 2007.
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 on March 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2007. The Response was filed with the Center on March 20, 2007.
On March 27, 2007, counsel for the Complainant submitted a supplemental filing to the Center. By its letter dated March 29, 2007, the Center acknowledged receipt of the Complainant’s supplemental filing wherein it stated that “no explicit provision is made under the Rules concerning supplemental filings […] [I]t will be at the Panel’s sole discretion [whether] to consider the supplemental filing.”
The Center appointed Thomas Webster as the sole panelist in this matter on April 13, 2007. 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.
The Respondent raised the issue of a conflict of interest because the sole panelist is a Canadian lawyer based in Paris and that he might have professional contacts with the counsel for the Complainant. However, that assumption was inaccurate as the sole panelist is not aware of any professional or personal contact with the Complainant’s lawyer and there is no issue of conflict of interest.
4. Factual Background
The Complainant is a Canadian federal public authority that “provides transportation, distribution, storage and container services to businesses. [The Complainant] owns and operates the Toronto City Centre Airport, Marine Terminals 51 and 52, and the Outer Harbour Marina in Toronto […] [and] also provides regulatory controls and public works services to enhance the safety and efficiency of marine navigation and aviation in the port and harbour of Toronto.”
It is not in dispute that, prior to the Respondent’s registration of the domain name, the Complainant was the original registrant of the domain name <torontoportauthority.com> and used the domain name for over five years between 1999 and 2004.
According to the Complainant, “[d]ue to an administrative oversight”, the Complainant failed to renew its domain name registration in 2004 for <torontoportauthority.com>.
The Complainant has registered rights with the Canadian Intellectual Property Office in two design marks that both incorporate the words “Toronto Port Authority”. Details of the marks are as follows:
(1) Design Mark: TORONTO PORT AUTHORITY
Application No: 0911652
Filed: December 16, 1999
Formalized: December 22, 1999
(2) Trademark: TORONTO PORT AUTHORITY
Application No: 0915106
Filed: April 17, 2003
Formalized: May 22, 2003
The Complainant also claims to operate the websites <torontoportauthority.ca> and <torontoport.com>, which are “to provide information on the Toronto Port Authority, the services it provides, financial information, and press releases.”
The Respondent is “a city-affairs journalist and a concerned resident of the City of Toronto…”.
The Respondent registered <torontoportauthority.com> on August 6, 2004 and subsequently registered <thetorontoportauthority.com> on October 10, 2006.
5. Parties’ Contentions
The Complainant first seeks to bring these proceedings against the two Domain Names. The Complainant acknowledges that the Rules provide that this is only permissible if “the domain names are registered by the same domain-name holder” (Rules, paragraph 3(c)), which is not the case in these proceedings. The Complainant, however, states that, “the Panel may, in its discretion permit the joinder of different registrants (see Vivendi S.A. v. Zhao,
WIPO Case No. D2000-0717). In addition, it is clear that [the Domain Names] were directly or indirectly registered by the same domain name holder. This is evidenced by (i) the commonality in the registration information for the two domain names;(ii) the intimate relationship between the two Respondents; and (iii) the control exerted by Respondent Frank Touby over Respondent Community Bulletin Newspaper Group, Inc.”
With respect to its claims, the Complainant asserts that it “has rights in official marks that incorporate the words “Toronto Port Authority”. According to the Complainant, these marks have been used in connection with the “identification, advertising and marketing of its various services and operations since at least as early as June, 1999.”
In addition to the protected rights in the official marks, the Complainant submits that it “has acquired enforceable common law trademark rights in the Toronto Port Authority mark since 1999”.
In this regard, the Complainant states that since at least June 8, 1999 it “has used the mark “Toronto Port Authority” in association with the various services that it offers to the public and in the ordinary course of its trade”. The Complainant uses the mark in “association with transportation, distribution, storage and container services to businesses at the Port of Toronto, the Toronto City Centre Airport and the Outer Harbour Marina”. Further, the Toronto Port Authority mark is “used on trucks and other vehicles used by the Complainant in providing its various services […] [and] on port signage and in the entrance area of the complainant’s facilities.”
The Complainant submits that “the mark “Toronto Port Authority” has come to distinguish the services provided by and associated with the Complainant.”
The Complainant claims that “the domain names <torontoportauthority.com> and <thetorontoportauthority .com> are confusingly similar, if not identical, to the Complainant’s Toronto Port Authority mark.”
The Complainant states that “the domain name <torontoportauthority.com> was originally registered by the Complainant on in 1999 […] [but] due to a clerical error, the Complainant inadvertently failed to renew the registration for <torontoportauthority.com>”. The Complainant further claims that it “did not intentionally abandon its registration for <torontoportauthority.com>“and that it “was surprised when it became aware [the Respondent] had registered the website in 2004.”
The Complainant also states that “after registering the domain name <torontoportauthority.com>, the Respondent has engaged in a campaign designed to tarnish the Complainant’s trade-marks and its business reputation.”
The Complainant claims that “the Respondent does not have any legitimate interests in the disputed domain names. Respondent is not a licensee of the Complainant, nor is Respondent otherwise authorized to use the Complainant’s trademark. The term “Toronto Port Authority” is not the subject of any trade-mark registration in which the Respondent has rights.”
The Complainant claims that “the Respondent has no apparent connection whatsoever with the domain names <torontoportauthority.com> and <thetorontoportauthority.com>, or the trade-mark “TORONTO PORT AUTHORITY” and that these domain names are “used by the Respondent simply to link Internet users who access these domain names to a variety of websites, including at times, to pornographic websites.”
The Complainant claims that the “Respondent was not using the <torontoportauthority.com> domain in connection with a good faith offering of any goods or services during the relevant period.”
The Complainant further states that “between August 2004 and October 5, 2004, Respondent caused the <torontoportauthority.com> domain to be re-directed to COMMUNITYAIR.ORG., a website set up by Community Air, an unrelated organization that is focused on, among other things, stopping the expansion of the Toronto City Centre Airport, this airport being operated by Toronto Port Authority”.
On October 4, 2004, the Complainant instructed its legal counsel to contact the Respondent to request that it transfer the <torontoportauthority.com> domain name back to the Complainant.
The Complainant claims that on October 6, 2004, the Respondent redirected <torontoportauthority.com> to a website maintained by The Bulletin (<thebulletin.ca>). The Complainant states that “the Bulletin is an independent community newspaper and its website displays an online version of the newspaper. The Respondent Frank Touby is the editor of The Bulletin newspaper.” At that time, “<torontoportauthority.com> was directly linked to articles written by the Respondent that called for the abolishment of the Toronto Port Authority.”
Furthermore, the Complainant claims that “the Respondent has not used the second disputed domain name <thetorontoportauthority.com> in connection with a good faith offering of goods or services”. The Complainant states that “since registering <thetorontoportauthority.com> the Respondent has merely redirected the domain to various sites through an affiliate program known as Cash Parking.”
The Complainant claims that “for several weeks over the past 24 months, Respondent has re-directed the <torontoportauthority.com> domain name to a variety of websites, including links to disparaging articles concerning the Complainant and its Operations.”
The Complainant states that “the Respondent has utilized the disputed domain names for commercial gain in several ways.” The Complainant indicates that Respondent “has repeatedly linked the impugned domain names to a Cash Parking website.” According to the Complainant, “Cash Parking is an online domain monetization system offered by its registrar, Go Daddy, which allows domain name registrants to earn revenues.”
Moreover, the Complainant states that “on or about September 13, 2006, the Complainant became aware that the <torontoportauthority.com> domain was being re-directed to websites containing links to various pornographic sites, such as Porn Star Site Reviews, Buy Hot XXX Videos, Local Sex and 100% Free Porn Movies.”
Lastly, the Complainant claims that “over the past two years, Respondent has attempted to sell or rent the disputed domain names to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.”
In this respect, the Complainant refers to the Respondent’s email to Complainant’s legal counsel of October 11, 2006, wherein Respondent stated “[…] I am willing to transfer ownership of the URL <www.torontoportauthority.com> for $25,000, or to redirect (forward) it to any site a renter designates for $6,000 per year […]”. The Respondent also stated in the said email that the domain <thetorontoportauthority.com> was available for transfer as part of this purported sale.
The Complainant requests that the Domain Names be transferred to the Complainant.
B. The Respondent
The Respondent claims that it “changed the domain name on its website and permitted <www.torontoportauthority.com> to expire.” The Respondent contends that “the Complainant has the resources and expertise to handle its web business and thus it was intentional, not “administrative oversight” as alleged by the Complainant’s lawyer to permit the expiry.”
The Respondent also submits that “Complainant is not an ordinary commercial entity and as a Canadian federal agency is subject to a citizen’s absolute right to harshly criticize it, even wrongly criticize it, as defined by the Supreme Court of Canada and the Canadian Charter of Rights.”
The Respondent considers that the Complainant has no trademark for the name “Toronto Port Authority” and since no trademark exists the two disputed Domain Names cannot be “confusingly similar, if not identical to the Complainant’s Toronto Port Authority mark.”
The Respondent submits that “[it] has a legitimate non-commercial and fair use of the domain names as Internet headlines to direct seekers to information about Complainant.”
The Respondent considers that “with a few inadvertent exceptions, the Respondent ensured that visitors to the disputed URLs knew immediately they were not on the Complainant’s website and had a clear link to take them there if they so wished.”
Moreover, the Respondent disputes the “contention that the brief use of Godaddy.com’s Internet Parking (3 weeks) of the subject domains was intentional.” The Respondent claims that it “misunderstood the workings of the online software and inadvertently placed all [its] domains, including domains the Respondent actively used. Further, [it] unknowingly failed to deselect the box permitting adult content. When notified by the Complainant of the redirect Respondent immediately unlinked the two domains and apologized for the accident.”
The Respondent claims that it “has clearly used the domain name to point to articles critical of the Complainant but it is a legitimate use of a domain name as an Internet headline when the subject is such a legitimate civic target as Toronto Port Authority.”
The Respondent agrees “to unlinking the domain name from <thebulletin.ca>, but refutes the contention that it was thereafter linked to Cash Parking”. The Respondent claims that “the domains are in a free parking zone erected by the Registrar Godaddy.com, which doesn’t provide revenue to Respondent and Respondent has no control over what appears on that page.”
The Respondent denies any attempt to sell the Domain Names to the Complainant. The Respondent claims that “at both times the Respondent’s mention of a price was in response to Complainant’s demand that <torontoportauthority.com> be sold to Complainant which Respondent refused to do.” With regard to the amount of US$25,000, the Respondent submits that it “did quote that figure among several others in a facetious response to repeated demands from Complainant’s lawyer for Respondent to sell the domain name which Respondent repeatedly said [it] didn’t wish to do.”
The Respondent claims that it “never profited from <www.torontoportauthority.com> in any manner whatsoever” and that this domain name “has been an expense insofar as registration fees are concerned and for legal consultation and research to counter attempts by Complainant to force the transfer of the domain name against the will of the Respondent.”
6. Discussion and Findings
A. Joinder of the Respondents
Paragraph 3(c) of the Rules provide that “[t}he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” The two domain names in dispute in these proceedings are registered by two separate “domain-name holder[s]”.
The Complainant contends that, in spite of the express provisions of the Rules, the Panel should in its discretion permit the joinder of the Respondents. The Complainant refers to previous decisions where this has been permitted, so long as certain elements are satisfied (for example, Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol,
WIPO Case No. D2000-0330).
The Complainant argues the following issues satisfy those elements: “(i) the commonality in the registration information for the two domain names; (ii) the intimate relationship between the two Respondents; and (iii) the control exerted by Respondent Frank Touby over Respondent Community Bulletin Newspaper Group, Inc.”
The Complainant notes that (i) Frank Touby is the administrative and technical contact for both domain names, (ii) the same contact email address is registered on the Whois records for both domain names, (iii) the same contact telephone number is registered on the Whois records for both domain names, (iv) the registered office address of Community Bulletin Newspaper Group, Inc. is the same as the address of Frank Touby, (v) Frank Touby is the President and General Manager of Community Bulletin Newspaper Group, Inc. and as a result “it is clear that Frank Touby exercises direct or indirect control over the Community Bulletin Newspaper Group Inc.”
The Panel notes that Frank Touby does not object to the joinder. Unlike the amended Complaint (which lists both Respondents as parties to these proceedings), the Response refers solely to Frank Touby as the Respondent, and is signed by Frank Touby. Nonetheless, both Domain Names are referred to throughout the Response, which also states that “Respondent registered [www.thetorontoportauthority.com]” (that is, the domain name registered by Community Bulletin Newspaper Group, Inc.).
The Panel finds that the two Domain Names are inextricably linked. The documents submitted by the Complainant (Annexes 1, 2, 22 and 23) support the Complainant’s contentions regarding the close relationship between the two Respondents.
The Panel finds that these elements satisfy the requirements to permit the joinder of the Respondents. For the purposes of clarification, the Panel notes that there are more instances of the close association between the two Respondents in these proceedings than, for example, in the case of Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol, supra. In that case, the Panel permitted the joinder based on the Respondents sharing the same postal address, administrative and billing contact, address and telephone number.
The Panel therefore permits the joinder of the Respondents to these proceedings.
B. Supplemental Filing
The Complainant sought to file a letter addressed to the Center and dated March 27, 2007, following the filing of the Response on March 20, 2007. The letter states that an email sent by the Respondent to the Complainant on November 3, 2006, was not read by the Complainant as it had been caught in the Complainant’s SPAM filter. The Complainant only became aware of the email following the submission of the Response.
Although the Rules are silent on the issue, the Panel is permitted in its discretion to admit supplemental filings, especially if it addresses issues raised in the Response which the Complainant was unaware of at the time of filing its Complaint (Sociйtй pour l’œuvre et la mйmoire d’Antoine de Saint Exupйry- Succession Saint Exupйry - D’Agay v. The Holding Company,
WIPO Case No. D2005-0165). This is applicable in these circumstances.
In any event, following review of the supplemental filing, the Panel does not consider the supplemental filing to have materially affected its decision in these proceedings. Accordingly, the Panel finds the parties have been treated with equality and have been given a fair opportunity to present their case as required under paragraph 10(b) of the Rules.
C. Issues for consideration
Pursuant to paragraph 4(a) of the Policy, in order for a Panel to divest the Respondent of the Domain Names, the Complainant must satisfy each of the following elements:
(i) the Domain Names are 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 in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
(i) Identical or Confusingly Similar
The Complainant has two registered design marks, both which contain the words “Toronto Port Authority”. The Complainant states that the marks are used by it “in connection with the identification, advertising and marketing of its various services and operations since at least as early as June 1999” (that is, prior to the Respondent’s registration of the domain name in 2004).
The Complainant also argues that it has common law trademark rights since 1999 in the words “Toronto Port Authority” as a result of its use of the use of the words in association with its various services, advertising and identification generally in the public domain.
The Respondent refutes this assertion, stating that “the Complainant has no trademark aside from the graphics it has registered.”
The Panel finds that the Complainant does have rights in the trademark TORONTO PORT AUTHORITY. The registration of the mark clearly establishes the Complainant’s interest and rights in the mark, which includes the Complainant’s name, since 1999. Further, the Respondent has not refuted this claim, but has instead sought to distinguish between registration and/or the use of a mark bearing the Complainant’s name, and the type of registration required for a mark to fall within the Policy. The Panel considers that no such distinction exists under the Policy.
For the sake of completeness, the Panel considers that the Complainant would nonetheless have enforceable common law rights under the Policy. The “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” provides that “[t]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services […] [including] length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition” (see Uitgeverij Crux v. W. Frederic Isler,
WIPO Case No. D2000-0575). Common law trademark rights can also be vested in names and signs on the basis of their use (Jeanette Winterson. v. Mark Hogarth,
WIPO Case No. D2000-0235; and Julia Fiona Roberts v. Russell Boyd,
WIPO Case No. D2000-0210.)
While in general, it is often difficult for the legal authority of a geographic area to show unregistered rights in that geographic term (see e.g.,
WIPO Overview, supra,
paragraph 1.5) in this particular case, the Panel finds that on the documents submitted, the Complainant satisfies these criteria for common law rights and is distinctly identifiable as the Toronto Port Authority. The Respondent does not deny this to be the case, nor assert that the Complainant operates under a different name in the public domain.
The Panel finds that the Complainant has rights in the TORONTO PORT AUTHORITY trademark.
The Panel also finds that the Domain Names are virtually identical and at least confusingly similar to the trademark in which the Complainant has rights. The absence in the domain names of a space between the words “Toronto Port Authority”, or the addition of the word “the” at the beginning of the phrase are irrelevant and do not effect the assessment of whether the trademark and domain names are identical (World Wrestling Federation Entertainment, Inc. v. Michael Bosman,
WIPO Case No. D99-0001). Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
(ii) Rights or Legitimate Interests
It is for the Complainant to prove that the Respondent has no rights or legitimate interest in the Domain Names. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which may demonstrate this lack of rights or interest. In particular, the Complainant can address one or more of the following:
“(i) before any notice to [the Respondent] of the dispute, use by [the Respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [was] 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 [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate non-commercial 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 is not, and does not claim to be commonly known by the domain name “Toronto Port Authority”. Paragraph 4(c)(ii) is therefore not applicable.
With respect to paragraph 4(c)(i) above, the website <torontoportauthority.com> was registered by the Respondent on August 6, 2004. It is not in dispute that from this time until the Complainant requested the transfer of the domain name two months later (early October 2004), the website was re-directed to another website of the Respondent (<communityair.org>). Further, the Respondent was aware of the Complainant, as demonstrated, for example, by the links to the Respondent’s associated websites which concerned the Complainant.
Over the course of the following two years (from 2004 to 2006), the Complainant and the Respondent corresponded, with the Complainant seeking to have the Domain Names transferred to it as well as, at times, seeking to have the content of the Respondent’s websites amended. This included a request to the Respondent to stop the websites posting links to pornographic websites.
Throughout this period, the websites were apparently not used for any particular purpose, save for providing links to other websites including those associated with the Respondents. This does not demonstrate a use of the domain name in a bona fide manner (see Easy Jet Airline Co. v. Steggles,
WIPO Case No. D2000-0024; Sunfest of Palm Beach Country, Inc. v. Electronic System Technologies, Inc,
WIPO Case No. D2000-0631). Nor does it demonstrate that any bona fide goods or services were offered or provided, either before or after the Respondent received notice of the dispute. Therefore, the Respondent has not satisfied paragraph 4(c)(i) above.
With respect to paragraph 4(c)(iii) above, the history of the website shows that they have not consistently been used for “non-commercial use”. What has been consistent is the Respondent’s management of the websites, namely the purpose of the websites has changed, from providing links to the Respondent’s associated websites, to links to other websites including pornographic websites. The Respondent has admitted to earning revenue from such activity, even though for an apparent limited period of time.
The Panel does not consider the Respondent’s explanation that this revenue-gaining has been “inadvertent” to be supported by the facts. The Respondent is responsible for the websites which it operates. It has shown it is capable of managing and operating the Domain Names, for example, by the changes made to the websites over the previous two and a half years. Further, Annex 12 to the Complaint is a copy of the Registrar’s “Cashparking Service Agreement” (the “Agreement”). This is an agreement subscribers must enter prior to being able to provide the “cashparking” services on their website. The Panel notes that the Agreement permits subscribers to “[…] ii. generate revenue from the advertising links on a per click basis; and iii. receive a portion of the revenue generated from the advertising links.”
The Complainant claims, and the Respondent does not deny, that the Respondent entered into this Agreement to provide the said services. Accordingly, the Panel considers that the Respondent entered into the Agreement for the purpose of providing the cashparking services, and with knowledge of potential revenue to be gained.
Such use of the Domain Names has, in the Panel’s view, misleadingly diverted customers seeking information about the Complainant, as well as tarnished the trademark of the Complainant. This does not constitute “making a legitimate non-commercial or fair use of the domain name” on the part of the Respondent (Volkswagen AG v. David’s Volkswagen Page, WIPO Case No. D2004-0498).
With respect to the Respondent’s claim that the Domain Names were used for criticism and commentary about the Complainant, the Panel recognizes the Respondent’s right to create and host a site for these purposes. However, such right does not in the Panel’s view extend to the registration and use described of domain names that are virtually identical to the Complainant’s marks. Accordingly, the Panel considers that this is an issue that falls outside the scope of the Policy, and “should not be confused with having a legitimate right to the Domain Name in question in this case.” (The Laurel Pub Company Limited v. Peter Robertson/Turfdata,
WIPO Case No. DTV2004-0007)
The Panel therefore finds that the Respondent has no legitimate interests in respect of the Domain Names, and accordingly does not satisfy the requirements of paragraph 4(a)(ii) of the Policy.
(iii) Registered and used in bad faith
When registering the Domain Names, the Panel considers that the Respondent knowingly chose a name which is identical to the trademark of the Complainant. The Respondent has not denied this to be the case.
Immediately following registration, the <torontoportauthority.com> domain name was used as a link to the Respondent’s website, which provided comments and criticism about the Complainant. As stated above, in this case this does not in itself show a use of the disputed domain names in good faith.
The Panel considers that the Respondent registered the disputed domain names in order to provide this link to its own website, thereby misleadingly diverting users from the intended site. Although the Respondent claims it always provided a link to the Complainant’s websites, the Panel finds this to be further evidence of the Respondent’s knowledge that users probably sought to initially locate the Complainant’s websites instead of the Respondent’s websites; or, at the least, the majority of users did not intend to view the Respondent’s material, whether through the Domain Names or other websites associated with the Complainant.
Over the course of the next two or more years, the Respondent’s continued use of the domain name to provide links to other websites reinforces the lack of bona fide use of the domain name. The subsequent registration of the <thetorontoportauthority.com> domain name in 2006 confirms this in the Panel’s view.
Further, the offer by the Respondent to sell the domain name for a sum of US$25,000 strikes the Panel as an indication of the Respondent’s bad faith (Vlaamse Media Maatschappij v. Barry van der Auwera,
WIPO Case No. DTV2001-0022). As noted in that case, such requests coupled with the links to pornographic websites and other unwarranted and unrelated material “has turned out to be part of a tactic of domain name squatters to put pressure on a trademark owner to buy a domain name.” Although it is not necessary to decide on this matter, the Panel has taken this issue into consideration when weighing the facts.
While the Respondent claims this offer to have been “facetious”, the Respondent set it out in a detailed email of over a page long that looks anything but facetious. Moreover, the Complainant took it seriously at the time it was made and responded to the Respondent, rejecting such an offer.
These actions of the Respondent are not evidence of good faith; on the contrary they suggest the Respondent’s intention to use the Domain Names to cause damage to the Complainant’s trademark, while ‘playing’ the Complainant along and making offers which it admits were not even made with good intent.
The Respondent states that it registered the domain name <thetorontoportauthority.com> “to illustrate Complainant’s lack of real desire to claim or trademark the name as a web identity.” The Panel finds that this is also evidence of registration in bad faith as it does not show any intention to use the domain name for a bona fide offering of goods or services, but to directly interfere with, or in the least, obfuscate the Complainant and its rights in its trademarks.
The Panel finds that Respondent has registered and used the Domain Name in bad faith, and therefore does not satisfy the requirements under paragraph 4(a)(iii) of the Policy.
In light of the foregoing, the Panel decides that the Domain Names are identical to the trademark in which the Complainant has rights, the Respondent has no right or legitimate interest in respect of the Domain Names, and that the Domain Names were registered and are being used in bad faith.
Pursuant to Paragraph 4(i)(c) of the Policy and 15 of the Rules, the Panel orders that the registration of the Domain Names be transferred to the Complainant.
Dated: May 9, 2007