WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pain BC Society v. WhoIs Privacy Protection Services Inc. / Chuck Varabioff, Greater Vancouver BC Pain Society

Case No. D2015-1141

1. The Parties

The Complainant is Pain BC Society of Vancouver, British Columbia, Canada, represented by Dean Palmer IP Law, Canada.

The Respondent is WhoIs Privacy Protection Services Inc. of Kirkland, Washington, United States of America / Chuck Varabioff, Greater Vancouver BC Pain Society of Vancouver, British Columbia, Canada, represented by Fasken Martineau DuMoulin, LLP, Canada.

2. The Domain Name and Registrar

The disputed domain name <bcpainsociety.com> is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 11, 2015.

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" 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 July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. On July 21, 2015, the Respondent requested an extension of the Response due date. On July 24, 2015, the Complainant objected to the Respondent's request. On July 24, 2015, the Center informed the Respondent that the due date for Response was extended until August 16, 2015. The Response was filed with the Center on August 16, 2015.

On August 24, 2015, the Center received a Supplemental Filing from the Complainant. On August 25, 2015, the Center received a Supplemental Filing from the Respondent.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 27, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Preliminary Issue

The Complainant seeks leave to submit a further Statement in this matter for the purpose of challenging the Respondent's credibility. The proposed additional evidence relates to certain conversations between counsel for the Complainant and the Respondent before these proceedings were commenced. The Respondent objects to the filing of this "further Statement". The Panel denies the Complainant's request and rejects the Supplemental filing, on the basis that (1) additional facts relating to the conversations in question could have been included in the original Complaint and (2) the additional evidence primarily addresses issues of credibility in the nature of differing recollections of what certain parties said or did not say in telephone conversations. That type of additional evidence does not typically advance the process or assist a panel in any material way, particularly in the absence of documentary evidence to collaborate the respective versions of the conversations.

5. Factual Background

The Complainant is a non-profit society, which provides information, education, and support services to individuals suffering from pain, and to health care providers and other professionals. The Complainant was incorporated under the name Pain BC Society on October 31, 2008 in the province of British Columbia, Canada. The Complainant first used the PAIN BC name at least as early as November 2010, when it launched its PAIN BC Strategic Plan 2010-2013. The Strategic Plan was successful, generating considerable donations, including a sizable donation from Pfizer Canada Inc., a partnership with the British Columbia Medical Association and a partnership with the British Columbia Ministry of Health. The Complainant registered the domain name <painbc.ca> on November 5, 2008. The Complainant's website at "www.painbc.ca" has generated a total of 158,054 Page Views and 120,236 Unique Page Views between the period of January 2011 and June 2014. The Complainant has provided numerous workshops, webinars, seminars, and conferences under the PAIN BC common law trademark. The Complainant has produced a Pain Waves Radio program, first broadcast in September 2012, which features interactive calls from patients who speak directly to pain experts. The Complainant also hosts several Patient Education programs each month. The programs offer support and self-management skills for people suffering with pain. These live workshops and webinars are attended by thousands of patients from across British Columbia. The Complainant's services have been the focus of substantial media coverage. The Complainant was the winner of the 2015 Humanitarian Award, awarded by the British Columbia Association of Broadcasters. The Complainant's PAIN BC trademark has been displayed at hospitals and medical clinics throughout the Vancouver, Grand Forks, and Victoria, British Columbia and online.

The Complainant has applied to register its PAIN BC logo with the Canadian Trademarks Office:

No registration has yet been obtained.

The disputed domain name was registered by the Respondent on November 25, 2013. The Respondent registered the disputed domain name to be used in association with his not-for-profit society called BC Pain Society. The Respondent initially incorporated under the province of British Columbia's corporate registry with the name BC Pain Society on January 2, 2014. In April, 2015, the Respondent was contacted by the British Columbia Corporate Registry requesting that he change BC Pain Society's name. On April 20, 2015, the Respondent changed his business name to Greater Vancouver BC Pain Society. The Respondent operates four stores in Vancouver, Victoria, and Deroche under the name BC Pain Society, which offer for sale medical marijuana. The disputed domain name reverts to a website which provides information about the application process to become a member of the BC Pain Society. Customers wishing to purchase medical marijuana from the Respondent's stores must be a member of the BC Pain Society. As of August, 2015, the Respondent's business claims to have 9,555 registered members, with the stores being accessed by approximately 500 members daily.

6. Parties' Contentions

A. Complainant

Confusingly Similar

The Complainant submits that it owns substantial common law rights in the trademarks PAIN BC, PAIN BC SOCIETY, and PAIN BC Logo. The Complainant contends that it has acquired distinctiveness in its marks through promotion, advertisement, and provision of its services since 2008.

The Complainant further contends that the disputed domain name <bcpainsociety.com> is identical to the Complainant's PAIN BC SOCIETY trademark except for the inversion of the order of the words "pain" and "bc". The Complainant submits that the words are identical and have simply been re-ordered, which does not reduce the likelihood of confusion with the Complainant's common law trademark.

Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant's common law PAIN BC SOCIETY trademark.

Rights and Legitimate interests

The Complainant submits that the Respondent does not have any legitimate rights or interests in the <bcpainsociety.com> domain name. The Respondent is not commonly known by the name BC Pain Society, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain name in a bona fide offering of goods and services. The Complainant contends that the Panel should infer that the Respondent was aware of the Complainant's trademarks, because of the extensive reputation in the PAIN BC SOCIETY trademark and its services throughout Vancouver and Victoria, British Columbia, the same cities that the Respondent is operating his stores. Furthermore, the Complainant contends that the Respondent is targeting the sale of medical marijuana at the same consumers who are engaged with the Complainant, in connection with pain remedies.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name <bcpainsociety.com> in bad faith because (i) the Respondent must have been aware of the Complainant's common law trademark rights in PAIN BC SOCIETY when the Respondent registered the confusingly similar disputed domain name; (ii) the Respondent registered and is using a confusingly similar domain name to confuse consumers into believing the Complainant sponsors or endorses the Respondent's goods and services; (iii) the Respondent is using the disputed domain name in association with a website that provides services that are targeted at the same consumers of the Complainant, and is thereby interfering with the Complainant's no-profit efforts; and (iv) the Respondent is using the confusingly similar domain name in association with the sale of marijuana, an illegal activity which tarnishes the Complainant's trademark; and (v) the Respondent has engaged in a pattern of conduct of registering domain names which infringe well known trademarks of third parties.

B. Respondent

The Respondent submits that he has operated his not-for-profit medical marijuana dispensaries in Vancouver, Victoria, and Deroche, British Columbia since November 2013. The Respondent contends that he first registered the business name with the British Columbia Corporate Registry on January 2, 2014. Until April 20, 2015, he states that he was unaware of the Complainant and the Complainant's common law trademark PAIN BC SOCIETY. The Respondent submits that he registered the disputed domain name on November 25, 2013, and that the disputed domain name reverts to an active website which promotes the Respondent's medical marijuana dispensaries, provides information about the application process to become a member of the Respondent's Society and further provides links to news articles regarding medical marijuana. The Respondent submits that he is using the disputed domain name in association with a website which provides a bona fide offering of services, namely a society through which medical marijuana is supplied to registered members. Members may purchase medical marijuana from staff at the counter or from vending machines in its four locations. The Respondent submits that approximately $3,000,000 CAD in revenue was generated from one vending machine located at the Principle Dispensary. In total the Respondent operates eight vending machines in its four locations.

The Respondent maintains that he never initiated discussions about selling the disputed domain name. The Respondent admits that he told the Complainant he "would entertain an offer" for the disputed domain name, but submits that this does not support a finding of bad faith under the Policy.

The Respondent contends that the words PAIN and SOCIETY are descriptive words, and are paired with a geographic term, and therefore the Complainant's Common Law trademark is weak. The words BC and PAIN have been inverted in the disputed domain name. The Respondent is not aware of any instance of confusion, and in the absence of confusion, the Respondent contends that there is sufficient difference between the disputed domain name and the Complainant's Common Law trademark to avoid confusion.

The Respondent submits that he has legitimate rights and interests in the disputed domain name, and is using the disputed domain name in association with a bona fide offering of goods and services.

In summary, the Respondent submits that he was not aware of the Complainant's Common Law trademark at the time he registered the disputed domain name, that he is using the disputed domain name in association with a bona fide offering of goods and services, that he never targeted the Complainant for re-sale of the disputed domain name, and he is not interfering with the Complainant's business in any manner.

7. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have common law trademark rights in the marks PAIN BC, PAIN BC SOCIETY, and PAIN BC Logo by virtue of its years of promotion, advertisement, and provision of services in British Columbia, including the activities listed in paragraph 4 of this decision.

The Panel further finds that the disputed domain name <bcpainsociety.com> is confusingly similar to the Complainant's common law trademark and trade name PAIN BC SOCIETY. The inversion of the words PAIN and BC do not serve to distinguish the disputed domain name from the Complainant's common law trademark. The Panel particularly notes that all three elements of the Complainant's trade name are replicated in the Respondent's chosen domain name, including the third element "society".

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In light of the findings on bad faith, it is not necessary for the Panel to rule on rights or legitimate interests.

C. Registered and Used in Bad Faith

The principal defence raised by the Respondent is the absence of his knowledge of the Complainant's rights in PAIN BC, PAIN BC SOCIETY, and PAIN BC Logo. The Respondent has provided a sworn affidavit in which he states "Prior to this dispute, I had no knowledge or awareness of Pain BC or its trademarks."

Within the framework of the Policy, and the limits of its evidentiary rules, it is important for panels to carefully scrutinize denials of knowledge on the part of respondents, particularly where circumstances suggest that a mark is well-known in the area where a respondent resides. In some cases, countervailing evidence may be available which allows a panel to find that a respondent must have known about the complainant's rights, even in the face of an outright denial. See for example, Fomento De Construcciones Y Contratas S.A. v. eden environmental trading by Jonathan Carr / Eden Environmental Limited, WIPO Case No. D2011-1245, where a respondent registered the impugned domain name on the very day that the complainant announced its intention to adopt the mark in question in that case. However, there are situations where no such countervailing indicia are brought forward in the evidence, and the panel is constrained to make findings which might well have been different if additional evidence or a different procedural platform were in place.

In this case, the Panel notes that there is no evidence that the Respondent copied any features from the Complainant's website or its materials, or that the Respondent used symbols, logos, trade dress elements, or any other identifiers of the Complainant or its business. The question of the legality of the Respondent's marijuana distribution business model under evolving Canadian law is an issue which is beyond the jurisdiction of the Panel.

The Complainant has attempted to attack the Respondent's credibility in its Supplemental Filing, but the Panel has rejected those submissions, as set out at paragraph 1 of this decision. UDRP procedures under the Policy do not provide a forum where issues of credibility may be decided with any degree of certainty. To determine whether the Respondent was in fact unaware of the Complainant's significant reputation in British Columbia, where Respondent himself resides, would require a process that provides for full cross-examination and a more complete evidentiary record than the Panel can review in the current case, as framed. In all the circumstances, based on the evidence as filed, the Panel is constrained to find that the Complainant has failed to meet its burden to prove that the disputed domain name was registered and used in bad faith. However, nothing in this decision is intended to preclude or diminish the Complainant's common law rights, which it may choose to assert in a different forum.

Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy.

8. Decision

For the foregoing reasons, the Complaint is denied.

Christopher J. Pibus
Sole Panelist
Date: September 16, 2015