Complainant is The Niagara Parks Commission, Niagara Falls, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is Steve Alek o/a Niagara Falls Corp., Crystal Beach, Ontario, Canada, represented by himself.
The disputed domain names <fallsfury.com>, <niagaraparkscam.com>, <niagrafury.com> and <niagrasfury.com> are registered with Moniker Online Services, LLC. The disputed domain name <furyphotos.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2009. On January 26, 2009, the Center transmitted by email to Moniker Online Services, LLC and eNom a request for registrar verification in connection with the disputed domain names. On January 26, 2009 and January 29, 2009, eNom and Moniker Online Services, LLC respectively transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on February 7, 2009. The Center verified that the amended 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 the Respondent of the Complaint, and the proceedings commenced on February 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2009. The Response was filed with the Center on March 5, 2009.
The Center appointed Ross Carson as the sole panelist in this matter on March 19, 2009. 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.
Complainant requested leave to file further material and submissions. The request for leave was opposed by Respondent. The Panel granted the requested leave and set times for the Parties to file submissions. Further details are provided under Discussion and Findings.
Complainant is an Ontario Provincial Crown agency originally incorporated by act of the Provincial legislature on April 23, 1887. Complainant is a self-financed agency of the Ontario Ministry of Tourism and Recreation currently governed by The Niagara Parks Act, R.S.O. 1990, and Chapter N.3. Complainant controls, manages and develops 4,250 acres of parkland and 56 kilometers of roadway and recreational trail along the Niagara River from Lake Erie to Lake Ontario. Its mandate is to preserve and enhance the natural beauty of the Niagara Falls Region and Niagara River corridor for the enjoyment of visitors, while maintaining economic sufficiency. Complainant is classified as an operational enterprise, one which sells goods and services to the public in a commercial manner. Complainant is similar to a private corporation, with all the objects, powers and duties prescribed under The Niagara Parks Act. Complainant also operates its own police force, road maintenance services, transportation system and snow and garbage removal services. The Complainant employs a staff of over 1,500 people.
Complainant is the owner of eight Official Marks, which were the subject of public notice pursuant to section 9(1)(n)(iii) of the Canadian Trade-Marks Act (the “Act”), which include “NIAGARA PARKS”: namely, NIAGARA PARKS and Design, No. 910323, public notice, October 28, 1998; NIAGARA PARKS and Design, No. 910321, public notice, December 30, 1998; THE NIAGARA PARKS COMMISSION and Design, No. 910324, public notice, October 28, 1998; THE NIAGARA PARKS COMMISSION and Design, No. 903016, public notice, October 28, 1987; NIAGARA PARKS COLLECTION, No. 910629, public notice, February 17, 1999: NIAGARA PARKS 1812 HERITAGE TRAIL and Design, No. 911390, public notice, August 23, 2000; NIAGARA PARKS WHITE WATER BOARDWALKS and Design, No. 914863, public notice, February 26, 2003; and NIAGARA PARKS FLORAL SHOWHOUSE and Design, No. 917507, public notice, June 14, 2006.
Complainant is the owner of the domain name <niagaraparks.com> registered on April 3, 1997.
Complainant is the owner of the domain name <niagarasfury.com> registered on April 4, 2007.
Respondent registered the domain names in dispute on the following dates:
<niagrasfury.com> May 9, 2008.
<niagrafury.com> May 9, 2008.
<furyphotos.com> May 18, 2008.
<fallsfury.com> May 1, 2008.
<niagaraparkscam.com> November 21, 2007.
Complainant alleges that it has rights in the Official Marks for NIAGARA PARKS and in addition that it has common law rights in the trademark NIAGARA PARKS used in association with its wares and services for decades. Complainant further alleges that it has common law trademark rights in the trademarks FURY, NIAGARA'S FURY, FURRY FALLS and NIAGARA'S FURY THE CREATION OF THE FALLS.
Complainant submits that it is a public authority which has given public notice of the adoption and use of a number of Prohibited Marks/Official Marks incorporating NIAGARA PARKS as the distinctive element pursuant to section 9(1)(n)(iii) of the Canadian Trade Marks Act. The particulars of the Prohibited Marks/Official Marks are set out in paragraph 4 immediately above.
Complainant further submits that as a result of long and extensive use (since 1887) of NIAGARA PARKS as a trademark that Complainant has established common law trademark rights in NIAGARA PARKS. Complainant submits that the trademark NIAGARA PARKS has been used in association with the promotion and sale of the Complainant's goods and services, including travel services, booking services, golf services, merchandising, restaurant services and parking lot services. Complainant states that it has generated significant revenue in association with the use of the NIAGARA PARKS trademark. In 2005 alone, it generated 79.3 million CAD in revenue and over 510 million CAD since 1999. The Complainant has also incurred significant operating expenses. In 2005 alone, its operating expenses were approximately 55 million CAD.
Complainant further submits that its NIAGARA PARKS trade-mark is also prominently featured and promoted on the Complainant's website located at <niagaraparks.com>. Complainant's website has generated significant Internet traffic, becoming a popular destination for consumers seeking to plan their vacations to the Niagara region. In 2003 alone, the <niagaraparks.com> website generated nearly 10 million hits a month during peak season, and 1 million monthly visitors at other times during the year.
FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS
Complainant submits that it had established common law rights in the trademarks FURY, NIAGARA'S FURY, FURRY FALLS and NIAGARA'S FURY THE CREATION OF THE FALLS in association with promotional, contest and informational services relating to an interactive adventure attraction based on the events associated with the creation of the falls, before the disputed domain names incorporating “niagra fury” or “fury” were registered by Respondent.
Complainant commenced planning an interactive adventure attraction based on the events leading to the creation of Niagara Falls a number of years ago. Complainant chose the trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS for use in association with the attraction. Complainant filed Canadian Trade Mark Application No. 1,343,354 for the trademark NIAGARA'S FURY on April 13, 2007. The application was based on proposed use in Canada in association with the services interactive adventure attraction as well as in association with the wares tourist souvenirs. Complainant also chose the design trademark NIAGARA'S FURY THE CREATION OF THE FALLS for use in association with the attraction. Complainant filed Canadian Trade Mark Application No. 1,357,196 for the design trademark on July 25, 2007. The design application was based on proposed use in Canada in relation to the following services: restaurant, amusement, entertainment and information services; interactive adventure attraction services; and in relation to the wares food, beverages, clothing, souvenirs, t-shirts and caps.
Complainant registered the domain name <niagarasfury.com> on April 4, 2007, for use in promoting the interactive adventure attraction.
Complainant submits that the NIAGARA'S FURY attraction utilizes state-of-the-art technology to provide a 4-dimensional experience. The show begins with an 8-minute animated narrative, in which native animals explain how the falls were shaped by the Ice Age. Immediately following the narrative, participants are moved to a state-of-the-art theater that offers a 360-degree field of view. This second segment of the interactive adventure attraction begins with a sudden 20-degree temperature drop. Participants are subjected to snow, rain and spraying water. The floor of the theater is also built to tip, rock, tremble and vibrate to simulate the experience of watching the birth of the falls.
Complainant further submits that the NIAGARA'S FURY attraction was planned for years and cost several million dollars to develop.
Complainant states that by way of a press release dated February 12, 2008, attached as an exhibit to the Complaint, Complainant announced that it would soon be launching the NIAGARA'S FURY attraction. The press release invited readers to attend Complainant's website located at <niagarasfury.com> to learn more about the attraction as well as to register with the website to receive updates on the attraction. By way of a press release dated February 26, 2008, Complainant announced that it had released a promotional video teaser of the NIAGARA'S FURY attraction. The Complainant also invited the public to attend its <niagarasfury.com> website to enter a NIAGARA'S FURY contest.
Complainant further states that by way of a press release dated May 1, 2008, attached as an exhibit to the Complaint, Complainant announced that the NIAGARA'S FURY attraction would premiere in June 2008. The attraction premiered on schedule.
Complainant further submits that the trademarks for the forthcoming NIAGARA'S FURY interactive adventure attraction received a great deal of attention since February 2008 through third party websites and Complainant's extensive use of the trademarks on its <niagarasfury.com> website.
Complainant states that its common law trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS have been in use in Canada since at least as early as February 2008 in association with announcing forthcoming interactive adventure attraction services, promotional, contest and information services.
Complainant states that it is a well-established principle that common law trademarks are entitled to protection. See Bennett Coleman & Co Ltd v. Steven S. Lalwani, WIPO Case No. D2000-0014; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.
Complainant submits that the domain name <niagaraparkscam.com> is confusingly similar to Complainant's Official Marks including NIAGARA PARKS as the distinctive element.
Complainant states that section 9(1)(n)(iii) of the Canadian Trade-marks Act, R.S.C. 1985, c. T-13, provides that “no person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of or so nearly resembling as to be likely to be mistaken for […] any […] mark adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has, at the request of […] [a] public authority […] given public notice of its adoption and use.” Once an Official Mark has been published by the Registrar, no one may adopt, use or register it, or a mark likely to be mistaken for it, unless consent of the public authority is obtained.
Complainant submits that under the Policy Official Marks are afforded the same protection as trademarks. Toronto Convention Visitors Association v. This Domain is For Sale/Email Your Offers, WIPO Case No. D2001-1463; The Bruce Trail Association v. Andrew Camp and Bruce Trail Enterprises, WIPO Case No. D2001-1021; Ontario Lottery and Gaming Corporation v. Paul Sweitzer, WIPO Case No. D2002-0602; Her Majesty the Queen in Right of the Province of Alberta v. David Indge, NAF Claim No. 0114297.
Complainant submits that the domain name <niagaraparkscam.com> is confusingly similar to Complainant's common law trademark NIAGARA PARKS as it contains the entirety of the NIAGARA PARKS trademark. See Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253, indicating that a respondent may not avoid confusion by appropriating another's entire mark in a domain name.
FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS common law trademarks
Complainant further submits that the domain names <niagrasfury.com> and <niagrafury.com> incorporate the whole of Complainant's FURY trade-mark, are nearly identical to the NIAGARA'S FURY trade-mark and are confusing with the NIAGARA'S FURY THE CREATION OF THE FALLS trade-mark. Further, these domain names constitute an intentional misspelling of the NIAGARA'S FURY trade-mark. The Respondent has intentionally excluded the letter “a” after the letter “g” in <niagrasfury.com>, while knowingly misspelling <niagrafury.com> by not including the letter “a” after the letter “g” and omitting the letter “s” before the letter “f”.
Complainant further submits that Respondent's deliberate misspelling of Complainant's common law trademarks further supports a finding of confusion, as it constitutes direct evidence of an intent on the part of the Respondent to deceive the public. It is a well established principle that confusing similarity is found where a disputed domain name constitutes an intentional misspelling of a third party mark. See DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. Peter Carrington and Party Night, Inc., WIPO Case No. D2002-0756; Citigroup, Inc v. Party Night Inc. aka Peter Carrington, WIPO Case No. D2003-0480.
Complainant submits that the domain names <fallsfury.com> and <furyphotos.com> incorporate the whole of Complainant's FURY trademark. These domain names are also confusing with the trademarks NIAGARA'S FURY, and NIAGARA'S FURY THE CREATION OF THE FALLS.
Complainant states that the fact that the domain names <niagaraparkscam.com>, <fallsfury.com> and <furyphotos.com> include the non-distinctive elements “cam”, “falls” and “photos” does nothing to diminish confusion with Complainant's trademark rights. It is a well established principle that the addition of a non-distinctive term to a domain name does not militate against a finding of confusion, and in certain instances may enhance confusion. See Research in Motion Limited v. Louis Espinoza, WIPO Case No. D2008-0759; Research in Motion Limited v. Jumpline.com, WIPO Case No. D2008-0758.
Complainant states that the addition of generic top level domains and the omission of an apostrophe, are without legal significance in determining similarity. See J.P. Morgan & Co., Incorporated and Morgan Guarantee Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437.
Complainant submits that there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, the disputed domain names or domain names corresponding to same, in connection with a bona fide offering of goods or services. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain names.
Complainant further submits that it is a well-established principle that misappropriating a third-party mark for commercial use does not confer rights or a legitimate interest in a domain name incorporating said third-party mark. See National Indemnity Company, National Liability & Fire Insurance Company v. Barak Hosting/Domain Manager, WIPO Case No. D2008-0182.
Complainant further states that there has never been any relationship between Complainant and Respondent. Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use Complainant's NIAGARA PARKS marks in any manner whatsoever, including in, or as part of, a domain name.
Complainant submits that the disputed domain names all converged on Respondent's commercial website located at <fallsviewcam.com>. Respondent's elaborate website located at <fallsviewcam.com> is designed to generate revenue through advertisements, as well as reservation services related to hotels, airlines, restaurants, attractions and other travel services for the Niagara region. Misappropriating a third-party mark for commercial use does not confer rights or a legitimate interest. See National Indemnity Company, National Liability & Fire Insurance Company, supra.
Complainant further submits that commencing on May 1, 2008, the day the Complainant announced the opening date of the NIAGARA'S FURY attraction, through to May 18, 2008, Respondent registered the domain names <niagrasfury.com>, <niagrafury.com>, <fallsfury.com> and <furyphotos.com> with full knowledge of Complainant's public notice of Complainant's intention to open and operate its attraction in Niagara Falls relating to the history of the creation of Niagara falls in association with the common law trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS.
Complainant submits that Respondent registered the domain name <niagaraparkscam.com> on November 21, 2007 with actual knowledge of Complainant's Official Marks including NIAGARA PARKS as the distinctive element. Complainant further submits that Respondent registered the domain name <niagaraparkscam.com> with full knowledge of Complainant's common law rights in NIAGARA PARKS in association with advertising tourist related services for over a hundred years in association with NIAGARA PARKS.
Complainant submits that Respondent's correspondence shows that Respondent alleged that Complainant or its agent made an offer to purchase the disputed domain names from Respondent for $5,000. Complainant states that to its knowledge no such offer to purchase the disputed domain names was ever made to Respondent and Respondent's correspondence amounts to an offer by Respondent to sell the disputed domain names to Complainant for $5,000.00, an amount well in excess of the cost of registering the disputed domain names.
Complainant submits that, in addition to registering the five disputed domain names for sale to Complainant, Respondent has engaged in an extensive and systematic pattern of abusive domain name registrations, having registered at least 260 domain names that contain third-party trademarks, or intentional misspellings of same, to which he does not appear entitled, including: <1800hiltons.com>, <airmilesrewards.com>, <embassysuiteniagara.com> and <marriottrenaissanceniagara.com>. Multiple domain names incorporating the trademark of a single trademark owner constitutes a pattern of intentionally obstructive registrations. Time Warner EntertainmentCompany, L.P. v. HarperStephens, WIPO Case No. D2000-1254; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602. Repeated registrations of trademarks of third parties results in a presumption that a disputed domain names were registered in bad faith. Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No. D2005-0786.
Complainant submits that Respondent has resolved the disputed domain names to Respondent's website at <fallsviewcam.com> that offers travel-related services that compete with, or rival, the services offered by Complainant. This redirection is particularly harmful to Complainant, as it suggests that Respondent is affiliated with, or endorses, the various travel-related businesses on the sites ― which is of course not the case. See Choice Hotels International, Inc. v. ResSystem.com, Inc. (a/k/a Finlaw Agency and ReservationSystems.com, Inc.), NAF Claim No. 282797. A respondent redirecting Internet traffic to a website competing with a complainant by using a domain name containing, or comprised of, a complainant's trademark, constitutes a disruption to the complainant.
Complainant further submits that the disputed domain names are being used in an attempt to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's marks as to source, sponsorship, affiliation, or endorsement.
Complainant states that the disputed domain names all converged on Respondent's commercial website located at <fallsviewcam.com>. In particular, the disputed domain names <niagrasfury.com>, <niagrafury.com> and <niagaraparkscam.com> were made to hyperlink directly to Respondent's website located at <fallsviewcam.com>. Respondent's website makes express reference to the NIAGARA'S FURY and FURY trademarks. The domain names <fallsfury.com> and <furyphotos.com> were made to resolve to a website located at <fallsfury.com>. This website was designed to mislead consumers into believing that they had arrived at the Complainant's website when in fact they were at the Respondent's website. The look and feel of the Respondent's <fallsfury.com> homepage was very similar to that of the Complainant's website located at <niagarasfury.com>. The title of Respondent's website was as follows: “FALLS FURYTM; Niagara's Newest Interactive Attraction Niagara Falls, Canada”. The underlying source code at the Respondent's <fallsfury.com>/<furyphotos.com> website included the metatags “Niagara Falls Fury” and “City of Niagara Falls, Ontario Canada Official Website for the Falls Fury Attraction”. The <fallsfury.com> homepage was simply a front for the Respondent's online business. By clicking on “Enter” on the homepage, the end user was taken to Respondent's <fallsviewcam.com> website.
Complainant submits that where a domain name is so obviously connected with a complainant, its use or registration by anyone other than said complainant suggests opportunistic bad faith. Pavillion Agency Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221.
Complainant further submits that this case is a clear example of opportunistic bad faith. The disputed domain names are so obviously connected to Complainant that their registration or use by anyone other than Complainant strongly suggests bad faith.
Complainant states that it should also be noted that the disputed “fury” domain names were registered on the same day or just days after Complainant announced the premiere of the NIAGARA'S FURY attraction. It seems clear that Respondent registered the disputed domain names in an attempt to capitalize on the launch of Complainant's attraction, further reinforcing a finding of bad faith.
Respondent denies strongly any and all Complainant's allegations with respect to the entire Complaint including any and all statements Complainant has made as to trademark rights or to any allegations that the domains names in dispute are identical or confusingly similar to any trademark.
Respondent states that the disputed domain name <niagaraparkscam.com> is clearly descriptive and non-infringing on any “registered” trademark as Niagara and area parks including the Parks on the USA side are shown via Respondent's webcam. Respondent states that Complainant has failed to demonstrate exclusive rights to all the parks including those in the United States of America and surrounding properties that are shown via Respondent's webcam.
Respondent states that Complainant shows evidence of using the terms “The Niagara Parks Commission” and “a city within a city”. Respondent states that by simply looking at the disputed domain names none infringe or are confusingly similar to the business name “The Niagara Parks Commission”. The term “The Niagara Parks Commission” is not a registered trademark and never will be simply because they would not be allowed to own the rights to “Niagara”. If this were the case it would clearly descriptive or deceptively misdescriptive of the geographical place of origin of the Complainant's activities, of a place widely recognized for its tourist attractions, restaurants, entertainments, hotels and motels and all other services related thereto.
Respondent submits that Complainant is not relying on any registered trademark rights in this case. Respondent further states that Complainant has failed to establish any common law trademark rights in the trademarks FURY, NIAGARA'S FURY or NIAGARA'S FURY THE CREATION OF THE FALLS.
Respondent submits that the word “fury” is clearly descriptive of displays of water cascading over the falls as seen on Respondent's <fallsviewcam.com> website linked to the website operating at <fallsfury.com>. Respondent further submits that the words “Niagara” and “Niagara Falls” are descriptive of the location of Niagara Falls and cannot be the subject matter of common law trademark rights. Respondent further states that that “Niagara” and “Niagara Falls” is the geographical name of a place widely recognized for its tourist attractions, restaurants, entertainments, hotels and motels and all other services related thereto.
Respondent further states that with respect to <fallsfury.com>, the information Respondent includes on the webpage is public knowledge. This website's graphics were custom-made with flash outlining FALLSFURY with Respondent's “TM” symbol directing people to Respondent's simple 1-page <fallsviewcam.com> website that shows people around the world a free webcam view of Niagara Falls and the absolute “fury” it displays in nature, and furthermore the disputed domain name is clearly distinctive and descriptive and does not infringe upon any registered or common law trademarks.
Respondent submits that Complainant has not obtained any exclusive trademark rights in Canada as a result of filing four trademark applications in Canada. Respondent noted that one of the trademark applications was in default about the time that this case was instituted. The default has subsequently been remedied. Respondent submits that Complainant does not even have any common law trademarks, whereas on Respondent's website <fallsfury.com> Respondent has claimed and displayed “TM” since it was launched.
Respondent states that with respect to his domains with the spelling Niagra, Complainant has not established any exclusive rights to the town or region's name, be it spelled Niagara or Niagra.
Respondent states that he has been in the Niagara travel and tourism business for many years providing goods and services to millions of people over the years. Respondent states that he is the registered owner of thousands of domain name registrations and provides advertising and promotion services online for hotels and other businesses in the Niagara area in association with Respondent's domain names.
Respondent states that he registered the domain name <fallsfury.com> and developed a website showing the natural “Fury” of the falls which was online within a week of the date of registration of the domain name. Respondent states that Complainant contacted Respondent on May 9, 2008 offering to purchase <fallsfury.com> for $5000.00 and that the offer was refused by Respondent.
Respondent submits that Complainant has failed to establish any registered or common law trademark rights in the trademarks NIAGRA PARKS, FURY, NIAGARA'S FURY, or NIAGARA'S FURY THE CREATION OF THE FALLS. Respondent further submits that the domain name <niagaraparkscam.com> is clearly descriptive of the content of the webcam which displays Niagara area parks on both the Canadian and United States side of of the Niagara river. Respondent states that the domain name <fallsfury.com> shows people around the world a free webcam view of Niagara Falls and the absolute “fury” it displays in nature, and that the domain name is clearly descriptive of the view provided by the webcam. With respect to the domain names including “Niagra”, Respondent submits that Complainant does not have any exclusive rights to the town/region name, be it spelled “Niagra” or “Niagara”.
Respondent states that the disputed domain names are descriptive of the views shown on the webpage or webpages associated with the disputed domain names and states that Respondent is entitled to use the disputed domain names.
Respondent states that Complainant contacted Respondent on May 9, 2008 offering to buy the domain name <fallsfury.com> from Complainant for $5,000. Respondent states that he refused to sell the disputed domain name to Complainant.
Respondent further states that he is entrusted to be the owner of thousands of domain names, many advertising businesses in Niagara Falls, and there has never been any action commenced against Respondent relating to the domain names entrusted to him. Respondent states that if any such action did occur, signed contracts to the contrary would be presented.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a 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 the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
Complainant stated in paragraph 34 of the Revised Complaint that it had, among other applications, filed Canadian Trademark Application No.1343354 for the trademark NIAGARA'S FURY on April 13, 2007, based on proposed use in Canada and Canadian Trademark Application No. 1357196 for the trademark NIAGARA'S FURY THE CREATION OF THE FALLS and Design on July 25, 2007, based on proposed use in Canada.
Respondent stated in the Response that Application No. 1357196 for the trademark NIAGARA'S FURY THE CREATION OF THE FALLS and Design has been noted in default by the Canadian Intellectual Property Office (CIPO).
Complainant requested leave to file supplemental material and submissions concerning the application that was in default as a result of an administrative oversight by the Complainant. Respondent opposed to the Panel granting leave to Complainant to file a supplemental submission.
The Panel notes that the Examiner responsible for the examination of the Canadian trademark applications forwarded the Examiner's First Report to Complainant in respect of each application. The Panel was interested in reviewing the CIPO files to determine if the files contained any substantive information which might be relevant in this case.
Pursuant to paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The Panel ordered Complainant to file certified copies of the CIPO files relating to each of the above-noted applications accompanied by any submissions. Respondent was invited to file a submission after receipt of Complainant's documents and submission.
Complainant filed the requested copies of the CIPO examination files together with material showing that the Canadian Trademark Application No. 1357196 had been deemed to be in default for failure to respond to the Office Action in a timely manner. Complainant also filed a copy of its request for reinstatement of the application and the CIPO notification of reinstatement of the application. Respondent filed his reply with the Center in a timely manner.
The material filed by Complainant disclosed that the application in default was reinstated. The first office actions did not disclose any substantive issues which the Panel felt necessary to address.
Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly prove that the disputed domain names are identical to or confusingly similar to a trademark in which Complainant has rights.
Complainant's Trademark Rights
As previously noted, Complainant is an Ontario Provincial Crown agency originally incorporated by act of the Provincial legislature on April 23, 1887. Complainant is a self-financed agency of the Ontario Ministry of Tourism and Recreation currently governed by The Niagara Parks Act, R.S.O. 1990, Chapter N.3. Complainant controls, manages and develops 4,250 acres of parkland and 56 kilometers of roadway and recreational trail along the Niagara River from Lake Erie to Lake Ontario.
Complainant is the owner of eight Official Marks, which were the subject of public notice pursuant to section 9(1) (n)(iii) of the Canadian Trade-Marks Act, which are listed above in section 4 of this decision.
Complainant is also the owner of the domain name <niagaraparks.com>, registered on April 3, 1997.
Section 9(1)(n)(iii) of the Canadian Trade-marks Act, R.S.C. 1985, c. T-13, provides that “no person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of or so nearly resembling as to be likely to be mistaken for […] any mark […] adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has, at the request of […] [a] public authority […] given public notice of its adoption and use.” Once an Official Mark has been published by the Registrar, no one may adopt, use or register it, or a mark likely to be mistaken for it, unless consent of the public authority is obtained.
In the decision reported as Government of the Province of Alberta v. RolloverNow, Inc., WIPO Case No. D2006-0163, the panel stated in respect of the official marks “Canada Alberta + Device” and “Alberta-Canada” that: “Although these official marks are descriptive in nature, there is also no reason for the Panel to dispute that under Canadian trademark law these marks are treated as analogous in all material aspects to a trademark or service mark and that the Canadian Trademarks Act prohibits the adoption and use by others of marks closely resembling official marks (See Government of Canada, on behalf of her Majesty the Queen in Right of Canada v. David Bedford, British Columbia International Commercial Arbitration Centre (May 27, 2003), made under the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy (for .ca domain names)).” See also Canadian Hockey Association v. Mrs. Jello, LLC, WIPO Case No. D2005-1050.
The NIAGARA PARKS Official Marks have been used in association with the promotion and sale of the Complainant's goods and services, including travel services, booking services, golf services, merchandising, restaurant services and parking lot services for decades.
The Panel finds that Complainant is a public authority entitled to the benefits of the Official Marks.
Complainant's mandate is to preserve and enhance the natural beauty of the Niagara Falls Region and Niagara River corridor for the enjoyment of visitors, while maintaining economic sufficiency. Complainant is classified as an operational enterprise; one which sells goods and services to the public in a commercial manner.
The NIAGARA PARKS trademarks have been used in association with the promotion and sale of the Complainant's goods and services, including travel services, booking services, golf services, merchandising, restaurant services and parking lot services for decades. Complainant has generated significant revenue in association with the use of the NIAGARA PARKS trademarks. In 2005 alone, it generated 79.3 CAD in revenue, and over 510 million CAD since 1999.
Complainant's website <niagaraparks.com> registered on April 3, 1997 has generated significant Internet traffic, becoming a popular destination. In 2003 alone, the <niagaraparks.com> website generated nearly 10 million hits a month during peak season, and 1 million monthly visitors at other times during the year.
The Panel finds that Complainant has established common law rights in the trademark NIAGARA PARKS in relation to travel services, booking services, golf services, merchandising, restaurant services and parking lot services.
Complainant has not alleged that it has any registered trademarks in Canada or in any other country in relation to the above noted trademarks.
Complainant submitted that it has established common law rights in the trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS in the Niagara Falls area prior to the registration of the disputed domain names by Respondent in May of 2008. Respondent denies that Complainant had established any common law rights in the above trademarks prior to the registration of the disputed domain names.
Complainant commenced an undertaking to develop an interactive immersive presentation that lets attendees experience the extreme and violent birth of Niagara Falls. The attraction is located in a complex at Table Rock Center adjoining Horse Shoe Falls. The attraction was advertised under and operates in association with the trademarks FURY, NIAGARA'S FURY, and NIAGARA'S FURY THE CREATION OF THE FALLS. Following is a chronology of events relating to developments, publicity, and opening of Complainant's attraction:
April 13, 2007 Complainant filed Canadian Trademark Application No. 1343354 for the trademark NIAGARA'S FURY in relation to its interactive adventure attraction and in association with the wares tourist souvenirs.
April 4, 2007 Complainant registered the domain name <niagarasfury.com>.
April 11, 2007 Complainant registered the domain name <niagarafury.com>.
July 25, 2007 Complainant filed Canadian Trademark Application No. 1357196 for the trademark NIAGARA'S FURY THE CREATION OF THE FALLS and Design in relation to the services restaurant, amusement, entertainment and information services; interactive adventure attraction and in relation to the wares food, beverages, clothing, souvenirs, t-shirts and caps.
February 12, 2008 By way of press release having the heading “The Fury Hits Niagara Falls This Summer Will You Survive? Go to niagarasfury.com to find out” Complainant announced that it would soon be launching the NIAGARA'S FURY attraction, to be staged at the brink of Horseshoe Falls at the new Table Rock Center. The press release invited readers to attend the Complainant's website located at <niagarasfury.com> to learn more about the attraction as well as to register with the website to receive updates on the attraction.
February 26, 2008 Complainant issued a press release having the heading “Glacial Devastation. Cataclysmic Flooding. Monumental Landslides. Will You Survive the Fury?” Complainant announced that it had released a promotional video teaser of the NIAGARA'S FURY attraction. The Complainant also invited the public to attend its <niagarasfury.com> website to enter a NIAGARA'S FURY contest. Members of the public began posting messages on the Internet concerning the type of attraction Complainant would present following this press release.
May 1, 2008 Complainant issued a press release announcing that the interactive adventure attraction associated with the trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS would open at Table Rock Center in June 2008. A subheading of the press Release announced “The Wait is Over The Fury is Finally Revealed Experience the Most Dramatic & Immersive Attraction in the World”. The attraction originally opened in June, 2008.
Complainant has used the FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS trademarks on its website <niagarasfury.com> since February, 2008. The marks were also used in the above-noted press releases. Printouts from the Complainant's <niagarasfury.com> website are attached to the Complaint. The NIAGARA'S FURY attraction also received attention since February, 2008, through Internet messages posted at third-party websites.
Respondent registered the following disputed domain names on the following dates:
May 1, 2008 Registration date of <fallsfury.com>
May 9, 2008 Registration date of <niagrasfury.com>
May 9, 2008 Registration date of <niagrafury.com>
May 18, 2008 Registration date of <furyphotos.com>
The Panel finds that as a result of Complainant's substantial announcements of its forthcoming interactive adventure attraction to be operated in association with the trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS that Complainant had established common law rights in the above marks in the Niagara Falls region prior to the registration of the disputed domain names by Respondent. The Panel follows the reasoning of the panel in Lloyds TSB Bank Plc of London v. Daniel Carmel-Brown, WIPO Case No. D2008-1889 where the panel held that: “It is well established that a high profile announcement of this nature can very rapidly create sufficient goodwill to found a claim to passing off under UK law: see , for example, the Judgment of the High Court in Glaxo Plc and another v. Glaxowellcome Limited and Others [1996] FSR 388. It is also clear that the right to protect a mark by such a claim constitutes a right in the mark for the purposes of the Policy: See, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.” The Canadian law of passing off follows the UK law. See Kirkbi AG v. Ritvik Holdings Inc, [2005] 3 S.C.R. 302, at para. 67.
Complainant having established rights in its trademarks must also establish that the disputed domain names are confusingly similar to one of its Official Marks or trademark rights.
Is the domain name <niagaraparkscam.com> confusingly similar to Official Mark No. 910323 for NIAGARA PARKS and Design? The Niagara Parks Act under which Complainant currently exists includes “Parks” in the definitions under the Act. The definition includes a number of named parks, which is the reason for using the plural form of the word “park”. Therefore, the use of the plural “parks” in the disputed domain name <niagaraparkscam.com> supports a finding that the disputed domain name <niagaraparkscam.com> is confusingly similar to the above-noted Official Mark. The addition of a non-distinctive term such as “cam” to a domain name does not mitigate against a finding of confusion, and in certain instances may enhance confusion, Research in Motion Limited v. Louis Espinoza, WIPO Case No. D2008-0759. The absence of the tree graphic in the disputed domain name is not significant as it is not possible to include design elements in domain names. The Panel finds that the disputed domain name <niagaraparkscam.com> is confusingly similar to Complainant's Official Mark No. 910323 for NIAGARA PARKS and Design.
Complainant has used the trademark NIAGARA PARKS as a trademark without the representation of a tree for many decades and as a domain name in <niagaraparks.com> for many years. For the reasons expressed immediately above, absent comments relating to any design element, the Panel finds that the disputed domain name <niagaraparkscam.com> is confusingly similar to Complainant's common law trademark NIAGARA PARKS.
The domain name <niagrasfury.com> is a misspelling of Complainant's mark NIAGARA'S FURY. The absence of the letter “a” in “niagra” in the disputed domain name does not avoid a finding of confusing similarity. It is a well-established principle that confusing similarity would usually be found where a disputed domain name constitutes an intentional misspelling of a third-party mark, DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC, supra. The absence of the apostrophe is not significant as apostrophes cannot be included in domain names. The disputed domain name <niagrasfury.com> is confusingly similar to Complainant's common law mark NIAGARA'S FURY.
The disputed domain name <niagrafury.com> is identical to the domain name <niagrasfury.com> considered immediately above except for the absence of the letter “s” after “niagra”. For the reasons expressed immediately above with respect to the disputed domain name <niagrasfury.com> the Panel finds that the disputed domain name <niagrafury.com> is confusingly similar to Complainant's mark NIAGARA'S FURY. The absence of the letters “a” and “s” in the disputed domain name is not significant in the determination of confusing similarity.
The disputed domain name <fallsfury.com> contains the whole of Complainant's common law mark FURY. A finding that a domain name incorporates the whole of a complainant's mark supports a finding of confusion (Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313). Complainant's common law trademark FURY is associated with Complainant's attraction located at Table Rock Center at the edge of the falls. The addition of the word “falls” to Complainant's common law trademark FURY enhances the confusing similarity of the disputed domain name <fallsfury.com> with Complainant's trademark FURY. The Panel finds that the disputed domain name <fallsfury.com> is confusingly similar to Complainant's common law trademarks FURY and NIAGARA'S FURY.
The disputed domain name <furyphotos.com> contains the whole of Complainant's common law trademark FURY. A finding that a domain name incorporates the whole of a complainant's mark supports a finding of confusion, Xerox Corporation, supra. The addition of a non-distinctive term such as “photos” to a domain name does not militate against a finding of confusion, and in certain instances may enhance confusion, Research in Motion Limited, supra. The Panel finds that the disputed domain name <furyphotos.com> is confusingly similar to Complainant's common law trademark FURY.
Pursuant to paragraph 4(a)(ii) of the Policy, a complainant must prove that a respondent has no rights or legitimate interests in respect of the disputed domain names.
Previous panels have recognized that it may be an impossible task to require a complainant to prove the negative that respondent has no rights or legitimate interests in the disputed domain names when that proof resides within the knowledge and control of respondent. Previous panels have held that a complainant is required to make out an initial prima facie case that respondent has no rights or legitimate interests in its domain names. Once the complainant has made out a prima facie case, the respondent is required to demonstrate rights or legitimate interests in its domain names. The overall burden of proof remains with the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Complainant has established that, prior to Complainant's cease and desist letter to Respondent dated July 11, 2008, Respondent's websites associated with the disputed domain names <niagrasfury.com>, <niagrafury.com> and <niagaraparkscam.com> all resolved to the home page associated with Respondent's domain name <fallviewcam.com>. Respondent in his Response refers to <fallsviewcam.com> as “our” website. The webpage associated with the <fallsviewcam.com> domain name includes live links to numerous hotels in the Niagara area as well as dozens of other links to attractions and activities available in the Niagara Falls area. In a very prominent position near the top right hand of the webpage is an advertisement “Niagara Falls Fury ™, Creation of the Falls, Click Here”. The advertisement is a play on Complaint's common law trademark NIAGARA'S FURY THE CREATION OF THE FALLS and will suggest to some Internet users approval or permission of Complainant to use the content of the advertisement. The advertisement was produced and run without the knowledge or approval of Complainant.
The Panel finds that Respondent has not used the disputed domain names <niagrasfury.com>, <niagrafury.com> and <niagaraparkscam.com> in connection with a bona fide offering of goods or services. Respondent uses the disputed domain names <niagrasfury.com>, <niagrafury.com> and <niagaraparkscam.com>, which are confusingly similar to Complainant's trademarks NIAGARA'S FURY and NIAGARA PARKS, to resolve to a webpage owned by Respondent. Misappropriating another's mark for commercial use does not support any rights or legitimate interests in a domain name. See National Indemnity Company, National Liability & Fire Insurance Company, supra.
Respondent's <furyphotos.com> domain name resolves to a website located at <fallsfury.com>. The content of the Respondent's <fallsfury.com> homepage appears very similar to that of the Complainant's website located at <niagarasfury.com>. The title of the <fallsfury.com> website was as follows: “FALLS FURYTM; Niagara's Newest Interactive Attraction Niagara Falls, Canada”. Respondent has not filed any evidence that he offers a new interactive attraction in Niagara Falls. The title and content of the website at <fallsfury.com> would confuse many Internet visitors to think that there was a connection between the <fallsfury.com> website and Complainant's new interactive attraction associated with Complainant's common law trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS.
The underlying source code at Respondent's <fallsfury.com> and <furyphotos.com> website included the metatags “Niagara Falls Fury” and “City of Niagara Falls, Ontario Canada Official Website for the Falls Fury Attraction”.
The webpage associated with the disputed domain name <fallsfury.com> includes an active representation of a portion of Niagara Falls with the word “ENTER” below. The word “ENTER” is an active hyperlink to Respondent's website <fallsviewcam.com>. All the disputed domain names ultimately resolve to Respondent's website at <fallsviewcam.com>. Respondent's <fallsviewcam.com> website offers travel-related services that compete with, or rival, the services offered by Complainant. The misleading content on the webpages associated with the disputed domain names <fallsfury.com> and <fallsviewcam.com> falsely suggest that Respondent offers or is connected with the new interactive attraction relating to the creation of Niagara operated by Complainant, and creates a false impression of a business connection between Complainant and its common law trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS and Respondent. The Panel infers that Respondent's “www.fallsviewcam.com” website is used to generate revenue through advertisements, as well as reservation services related to hotels, airlines, restaurants, attractions and other travel services for the Niagara Region.
Respondent has not denied that its “www.fallsfury.com” and “www.fallsviewcam.com” websites create the impression of a connection between Respondent and Complainant's interactive attraction offered in association with its common law trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS. Respondent stated in its Response that it does not infringe upon any registered trademarks. Complainant has not relied on any registered trademarks in this case. However this may be, it does little to assist the Respondent's case here; it as been long recognized that a complainant in a UDRP proceeding may rely on trademarks of an unregistered nature. The mere fact that a complainant's trademark may not be registered does not mean that a respondent therefore acquires a right or legitimate interest in targeting such mark in a domain name registration.
Respondent further submitted in the Response that the words “Falls Fury” appearing on the website <fallsfury.com> are clearly distinctive and descriptive of the absolute “fury” displayed in the free webcam view of Niagara Falls displayed on the <fallsfury.com> website.
The Domaintools Whois record for <fallsfury.com> dated October 27, 2008 describes the website title as: “FALLSFURY Niagara's Newest Interactive Attraction Niagara Falls, Canada.” The text browser describes the text for <fallsfury.com> as follows: “Falls FURY Experience The Rush and Evolution of Niagara Falls Glacial Devastation, Cataclysmic Flooding, Monumental Landslides, Exploding Thunder, Hurricane Force Winds, Catastrophic Rainfall, Electrifying Storms, Blinding Whiteouts A dramatic and immersive experience where you will actually feel the sights, sounds and creation of Niagara. This thrilling, multi-sensory event, with amazing 360 visuals, will leave you with a new appreciation of the wonder of nature…”.
Having regard to the title and content of the website operating at <fallsfury.com>, the Panel finds that the words “Falls Fury” as used on the website refer to Complainant's interactive adventure attraction offered in association with Complainant's common law trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS. It is well known in UDRP cases that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide' offering of goods or services….. to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent registered the domain name <niagaraparkscam.com> on November 21, 2007, more than 7 years after the Complainant's Official Marks for NIAGARA PARKS and Design were advertised in the Canadian Trade Mark Journal and decades after Complainant had acquired common law rights in the trademark NIAGARA PARKS in the Niagara Falls area in relation to the wares and services described above. Respondent registered the four other disputed domain names in May of 2008, after Complainant had built up substantial goodwill in the trademarks FURY, NIAGARA'S FURY and NIAGARA'S FURY THE CREATION OF THE FALLS in the Niagara Falls area and announced on May 1, 2008 the forthcoming opening of its interactive adventure attraction in Niagara Falls in June of 2008.
The Panel finds that Respondent registered the disputed domain names in bad faith.
For the reasons stated in paragraph 6 B above, the Panel finds that Respondent has used the disputed domain names in bad faith as described in paragraph 4(b)(iv) of the Policy.
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 names <niagrasfury.com>, <niagrafury.com>, <niagaraparkscam.com>, <fallsfury.com> and <furyphotos.com> be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: April 21, 2009