v.
Internetworks
[Indexed as: Anne of Green Gables
v. Internetworks]
[Indexed as: anneofgreengables.com]
eRESOLUTION
Administrative Panel Decision
Case No. AF-00109
Commenced: 25 February 2000
Judgment: 12 June 2000
Presiding Panelist: Perry M. Amsellem
Well-known mark in Canada- Respondent aware of Complainant’s registrations for mark- Registered domain name in bad faith- Undermine Complainant’s interests- Primary purpose to develop a tourism web site devoted to tourism to Prince Edward Island- Virtually identical- No legitimate interest or use- Bad faith- ICANN Uniform Dispute Resolution Policy.
Complainant is the owner of several trademark and service mark registrations throughout the world for the mark “ANNE OF GREEN GABLES”. Complainant contends that it is the exclusive owner of the licensing rights to the well-known mark and that it is owner of several trademark and service mark registrations throughout the world for the mark.
Complainant further contends that Respondent’s predecessor registered “ANNEOFGREENGABLES.COM” in bad faith. Respondent contends that its primary purpose in registering the domain name was to develop a tourism web site devoted to Prince Edward Island.
Held, Domain Name Transferred to Complainant.
Pursuant to Paragraph 4 (a) of the Uniform Dispute Resolution Policy Complainant has met its burden of proof on each of the three elements. The subject domain name is virtually identical to Complainant’s mark.
The Panel finds that Respondent does not have a legitimate interest in the domain name since Complainant’s mark is a well-know mark and Respondent seeks to use the well-known mark as a domain name to attract visitors to a tourism web site devoted to Prince Edward Island. Respondent’s proposed use of the well-known mark owned by Complainant to lure fans and potential tourists to Respondent’s web site does not qualify as legitimate use.
Furthermore, Respondent’s knowledge of Complainant’s well-know mark, Respondent’s use of that mark as a domain name to drive traffic to Respondent’s tourism web site, and the importance of the mark to the tourism information services contained on Respondent’s web site are compelling evidence of Respondent’s bad faith.
Policies referred to
ICANN Uniform Dispute Resolution Policy
Rules referred to
ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy
Amsellem, Panelist:-
1. Parties and Contested Domain
Name
Counsel for the Complainant, ANNE
OF GREEN GABLES LICENSING AUTHORITY, INC., of Charlottetown, Canada, filed
a Complaint with eResolution naming as the Respondent, INTERNETWORKS of
Duiven, Nederland, the registered owner of the disputed domain name - anneofgreengables.com.
2. Procedural History
The electronic version of the Complaint
form was filed on-line through eResolution's Website on February 5, 2000.
The hard copy of the Complaint Form was received on February 7, 2000. Payment
was received on February 25, 2000.
Upon receiving all the required information,
eResolution's clerk proceeded to:
- Confirm the identity of the Registrar
for the contested Domain Name;
- Verify the Registrar's Whois Database
and confirm all the required contact information for Respondent;
- Verify if the contested domain
name resolved to an active Web page;
- Verify if the Complaint was administratively
compliant.
The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is "Network Solutions, Inc." and the Whois database contains all the required contact information except for the billing contact. The Contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
On February 25, 2000, eResolution clerk's office received a confirmation of the billing contact from the Registrar.
The Clerk then proceeded to send
a copy of the Complaint Form and in accordance with paragraph 2(a) of the
ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities
under Paragraph 2(a) in connection with forwarding the Complaint to the
Respondent on February 25, 2000. That date is the commencement date of
the administrative proceeding.
On February 25, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On March 15, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on March 16, 2000.
On March 22, 2000, the Clerk's Office contacted the undersigned, and requested for him to act as panelist in this case.
On April 5, 2000, the undersigned accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On April 5, 2000, the Clerk's Office forwarded a user name and a password to the undersigned, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On April 5, 2000, the parties, the Registrar and ICANN were notified that the undersigned had been appointed and that a decision was to be, save exceptional circumstances, handed down by April 20, 2000.
3. Factual Background
Complainant, Anne of Green Gables
Licensing Authority, Inc., is the owner of several trademark and service
mark registrations throughout the world for the mark ANNE OF GREEN GABLES.
These registrations include, inter alia, registration numbers TMA 489,653
and TMS 495,616 in Canada and registration numbers 1,799,002 and 1,842,191
in the United States. The mark ANNE OF GREEN GABLES designates the source
of the well-known fictional work authored by Lucy Maud Montgomery in 1908
entitled, Anne of Green Gables, the written sequels of that work, television
programs and motion pictures derived from that work, and merchandise related
to the work and its sequels. The Anne of Green Gables written works, television
programs and motion pictures derived from those works, and accompanying
merchandise enjoy widespread fame and renown in several countries, most
notably in Canada. The Anne of Green Gables Museum and the annual festival
celebrating Lucy Maud Montgomery are located in Prince Edward Island, Canada,
the birthplace of L. M. Montgomery.
4. Parties' Contentions
Complainant contends that it is
the exclusive owner of the licensing rights to the well-known mark ANNE
OF GREEN GABLES and that it is the owner of several trademark and service
mark registrations throughout the world for the mark ANNE OF GREEN GABLES.
Complainant further contends that Respondent's predecessor, Dico Reyers,
registered the domain name in bad faith and the Mr. Reyers transferred
the domain name to Respondent to undermine Complainant's interests in or
extract a monetary payment from Complainant. Respondent contends that its
primary purpose in registering the domain name was not to undermine the
Complainant's trademark interests or extract money from Complainant, but
to use the domain name to develop a tourism web site devoted to Prince
Edward Island.
5. Discussion and Findings
Pursuant to Paragraph 4(a) of the
Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), Complainant
must prove the following three elements to obtain an order transferring
the disputed domain name to Complainant:
1. The domain name is identical
or confusingly similar to a trademark or service mark in which the Complainant
has rights;
2. The Respondent has no right or
legitimate interests in respect of the domain name; and
3. The domain name has been registered
and is being used in bad faith.
As explained below, Complainant
has met its burden of proof on each of the three elements and, therefore,
the Panel has ordered the transfer of the domain name to Complainant.
(i) Comparison of the domain name
to the trademark or service mark
The subject domain name, anneofgreengables.com,
is virtually identical to Complainant's mark ANNE OF GREEN GABLES. Complainant
owns trademark and service mark registrations for the mark ANNE OF GREEN
GABLES in Canada and the United States for, inter alia, books, motion pictures,
television programs and a plethora of merchandising wares. Further, the
mark ANNE OF GREEN GABLES appears to be a famous mark in Canada. Accordingly,
the Panel finds that the Complainant has met its burden to prove that the
subject domain name is identical or confusingly similar to a mark in which
the Complainant has rights.
(ii) Legitimacy of Respondent's interest
in the domain name
Complainant contends that it is
the exclusive owner of the rights to the mark ANNE OF GREEN GABLES and
that Respondent has no right to use the mark as part of a domain name.
Respondent contends that it has a legitimate interest in the domain name
because Respondent intends to use the domain name to attract visitors to
its web site devoted to Prince Edward Island tourism. In support of its
position, Respondent acknowledges its awareness of Complainant's trademark
and service mark registrations and argues that its registration and use
of the domain name is legitimate because Complainant's registrations do
not include travel or tourism services and because Registrant will not
offer goods or services through the web site that are encompassed within
Complainant's registrations.
The Panel finds that Respondent
does not have a legitimate interest in the domain name. ANNE OF GREEN GABLES
is a well-known mark and likely, a famous mark in Canada. Respondent seeks
to use the well-known mark as a domain name to attract visitors to a tourism
web site devoted to Prince Edward Island, the location of the Anne of Green
Gables Museum, the birthplace of L. M. Montgomery, the creator of the Anne
of Green Gables fictional works, and the site of the annual festival celebrating
L. M. Montgomery. Respondent's proposed use of the well-known mark owned
by Complainant to lure fans and potential tourists to Respondent's web
site is definitively not a legitimate use. Accordingly, Complainant has
met its burden to prove the second of the three factors.
(iii) Bad faith
Paragraph 4(b) of the ICANN Policy
sets forth four non-exclusive circumstances, each of which is deemed to
be evidence of the registration and use of a domain name in bad faith.
The Panel finds that the fourth circumstance is present in this case and,
therefore, Complainant has met its burden to prove that Respondent has
registered and is using the domain name in bad faith.
Paragraph 4(b)(iv) of the ICANN Policy
states:
By using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users
to your web site 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 your web site or location or of a product or service
on your web site or location.
Respondent has admitted that it is aware of Complainant's registrations for the well-known mark ANNE OF GREEN GABLES. Respondent also admits that its purpose in registering the domain name was to attract Internet users to its web site who are seeking tourism information about Prince Edward Island, the Canadian locale that is intimately associated with the Anne of Green Gables literary works, motion pictures, television programs and merchandising. Indeed, the home page of Respondent's web site is entitled "Anne of Green Gables" and contains information about the Anne of Green Gables literary works, motion pictures and L. M. Montgomery, the author of the literary works. A visitor to the web site may very well believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site. In sum, Respondent's knowledge of Complainant's well-known mark ANNE OF GREEN GABLES, Respondent's use of that mark as a domain name to drive traffic to Respondent's tourism web site devoted to Prince Edward Island tourism, and the importance of the mark to the tourism information services contained on Respondent's web site are compelling evidence of Respondent's bad faith. Accordingly, the Panel finds that Complainant has met its burden to prove that Respondent registered and is using the domain name in bad faith.
6. Conclusions
Based on the foregoing, the domain
name anneofgreengables.com shall be transferred from the Respondent to
the Complainant.
7. Signature
This decision of the Administrative
Panel in Case No. AF-00109 was rendered on June 12, 2000.
New York, New York
Signed
(s) Perry M. Amsellem
Presiding Panelist
Domain Name Transferred