Government of Canada v. David Bedford a.k.a. the Domain Baron

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Government

of Canada v. David Bedford a.k.a. DomainBaron.com

Case No.

D2001-0470

1. The Parties

The Complainant is Government

of Canada, represented by Cal Becker, Esq., Coordinator and Senior Counsel,

Intellectual Property Secretariat, Department of Justice, Room 166C – 235 Queen

Street, Ottawa, Ontario, Canada K1H 0H5.

The Respondent is David

Bedford a.k.a. DomainBaron.com of 5317 Barker Avenue, Burnaby, British Columbia,

Canada V5H 2N6, representing himself.

2. The Domain Names

and Registrar

The disputed domain names

are:

<canadacouncil.com>

<nrcan.com>

<canadiancustoms.com>

<nrcanada.com>

<canadianforces.com>

<receivergeneral.com>

<canadiangrain.com>

<resourcescanada.com>

<cangov.com>

<revcan.com>

<contractscanada.com>

<revenuecan.com>

<customscanada.com>

<statcan.com>

<dominionofcanada.com>

<statcanada.com>

<envcan.com>

<statisticscanada.com>

<environmentcanada.com>

<statistics-canada.com>

<environment-canada.com>

<statscan.com>

<gouvernementducanada.com>

<statscan.org>

<govcan.com>

<stats-canada.com>

<governmentofcanada.com>

<thebankofcanada.com>

<hrcanada.com>

<thegovernmentofcanada.com>

<humanresourcescanada.com>

<transportcanada.com>

The Registrar is Network

Solutions, Inc., of Herndon, Virginia, USA.

3. Procedural History

This is an administrative

proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute

Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

("the Supplemental Rules") of the WIPO Arbitration and Mediation Center

("the Center").

The Complaint was received

by the Center by email on March 30, 2001, and in hard copy on April 2, 2001.

The Center acknowledged receipt on April 3, 2001, and next day sought registration

details from the Registrar. On April 10, 2001, the Registrar confirmed that

the Respondent is the registrant of all 32 disputed domain names; the Registrar’s

5.0 Service Agreement (which incorporates the Policy) is in effect and that

the status of all disputed domain names is "active."

On April 10, 2001, the

Center satisfied itself that the Complainant had complied with all formal requirements,

including payment of the prescribed fee. On April 11, 2001, the Center formally

notified the Respondent (by registered mail and courier with enclosures and

by fax and email without enclosures) of the Complaint and of the commencement

of this administrative proceeding and sent copies to the Complainant, the Registrar

and ICANN.

The formal date of the

commencement of the proceeding was accordingly April 10, 2001. The

last day specified in the notice for a response was April 30, 2001. On April

20, 2001, the Center, pursuant to Rule 5(d) and with the consent of the

Complainant, acceded to a request from the Respondent for an extension of time

for the Response until May 7, 2001. On May 7, 2001, the Respondent filed a Response

by email and on May 10, 2001, in hardcopy. Its receipt was acknowledged by the

Center on May 8, 2001.

By email on May 1, 2001,

and in hardcopy on May 3, 2001, the Complainant sought leave of the panel to

amend the remedies requested in relation to the domain name <receivergeneral.com>

to correct a mistake in the Complaint. The panel has allowed the amendment.

Through the Complaint,

the Complainant sought a three-member Administrative panel. In accordance with

Rule 6 and Supplemental Rule 7, on May 16, 2001, the Center notified the parties

of the appointment of the undersigned three panelists as the administrative

panel, each panelist having submitted to the Center a Statement of Acceptance

and Declaration of Impartiality. The Center nominated June 20, 2001, as the

date by which, absent exceptional circumstances, the panel is required to forward

its decision to the Center. The panel extended the time for its decision until

July 6, 2001.

The language of the proceeding

was English.

The panel is satisfied

that the Complaint was filed in accordance with the requirements of the Rules

and Supplemental Rules; payment was properly made; the panel agrees with the

Center’s assessment concerning the Complaint’s compliance with the formal requirements;

the Complaint was properly notified in accordance with paragraph 2(a) of the

Rules; the Response was filed within the extended time specified by the Center

in accordance with the Rules and the three-member administrative panel was properly

constituted.

4. Factual Background

(uncontested facts)

The Complainant, the Government

of Canada, is commonly known as Government of Canada (English) and Gouvernement

du Canada (French). From 1867 to 1982, it was known as Dominion of Canada.

The complainant engages

(through its departments, agencies and programs) in a wide range of activities,

of which the following are relevant:

The Canada Council

is an agency of the Government of Canada, created by the Canada Council Act.

Its official names are the "Canada Council" (in English) and le "Conseil

des arts du Canada" (in French). It awards prizes to professional artists,

creators and arts institutions and administers highly- prestigious annual awards

which contribute to its high public profile. It commonly styles itself the Canada

Council for the Arts but is also known as Canada Council, The Canada Council,

Canada Council for the Arts, The Canada Council for the Arts, Conseil du Canada,

le Conseil du Canada, Conseil des arts du Canada and le Conseil des arts du

Canada.

The Canada Customs and

Revenue Agency (CCRA) was established by legislation on November 1, 1999.

Its predecessor, the Department of National Revenue, was most commonly known

as Revenue Canada (on the taxation side) and Customs Canada or Canada Customs

(on the customs side). The Department of National Revenue Act 1985, provided

that both expressions "Revenue Canada" or "Revenu Canada"

could be used to refer to the Department. Names by which the Department is and

has been commonly known, both before and subsequent to the CCRA, are Canada

Customs, Customs Canada, Revenue Canada, RevCanada, Department of National Revenue,

National Revenue and Revenue.

The Department of National

Defence, established in 1923, is responsible for all matters relating to

national defence, including construction and maintenance of defence establishments

and works for the defence of Canada; research relating to the defence of Canada

and the development of and improvements in materiel. Under the National Defence

Act, the "Canadian Forces" are "the armed forces of Her Majesty

raised by Canada and consist of one Service called the Canadian Armed Forces."

The Department of National Defence Act makes it a criminal offence to use the

name CANADIAN FORCES in any advertising or in any trade or service, having been

requested in writing by the Minister to cease that usage.

The Canadian Grain Commission

maintains and enhances the quality of Canadian grain by regulating the grain

handling system in Canada, through the establishment of a grain grading system,

the official inspection and weighing of grain, the licensing of grain elevators

and grain dealers, and conducting scientific research related to grain quality.

It is known as Canadian Grain Commission, Grain Commission and CGC.

Contracts Canada

(in French, "Contrats Canada") is a program created in 1996, and administered

by the Department of Public Works and Government Services. One of the main goals

of the program is to make information about doing business with the federal

Government more accessible and easier to understand for small and medium-sized

businesses. The Contracts Canada mark (as well as the Contrats Canada mark)

appear on all literature relating to the Contracts Canada Program and are shown

on all pages of its Internet site, which receives more than 124,000 hits per

month, mostly from the business community. The marks have been used continuously

since the founding of the Program.

The Department of the

Environment, established by the Department of the Environment Act, is responsible

for all matters relating to the preservation and enhancement of the quality

of the natural environment, including water, air and soil quality; renewable

resources, including migratory birds and other non-domestic flora and fauna;

water and meteorology. Its applied or operating name is Environment Canada.

The Department of Human

Resources Development was created in 1996. It is the largest single department

of the Complainant, measured by expenditures on programs and services. In Fiscal

Year 2000-2001 more than $58 billion goes directly to individual Canadians through

the Employment Insurance, Canada Pension Plan and Old Age Security programs

and other statutory transfer payments. HRDC's programs and services reach more

than 9 million Canadians each year.

The legislation which created

the department indicates that the term "Human Resources Development Canada"

is deemed to refer to the department. It uses that name and "HRDC"

as its acronym or abbreviation for purposes of publicly identifying its programs

and services. Human Resources Development Canada applies its name to all relevant

correspondence and publications. Names by which the Department is known are

Human Resources Development Canada, HRDC and Human Resources Canada.

The Department of Natural

Resources was established by legislation in 1995. Its mission is to provide

knowledge and expertise for the sustainable development and use of Canada's

natural resources and the global competitiveness of the resource and related

sectors for the well-being of present and future generations. For this purpose,

the Department provides policy and scientific information and services in earth

sciences, energy, forestry and mines and minerals. Products and services include

the National Atlas of Canada, the Energuide website and publications, digital

and paper maps from the Centre for Topographical Information, minerals and mining

information and statistics, the Forestry Information Network, forest fire monitoring,

mapping and modelling systems and climate change information. Names by which

the Department is commonly known are NRCan, RNCan, NRCanada, RN Canada, Natural

Resources Canada, Ressources naturelles Canada, Canadian Natural Resources,

Ressources naturelles canadiennes, Natural Resources, Ressources naturelles,

NR and RN.

The function of the

Receiver General for Canada pre-dates Confederation (1867). In 1879 the

Minister of Finance became ex officio Receiver-General. Since 1996, the function

has been performed by the Minister of Public Works and Government Services.

The Receiver General is responsible for receiving and paying sums to the credit

/ debit of the Government of Canada's accounts. The Receiver General provides

banking and cash management services to the federal Government and produces

the Public Accounts of Canada, which are summary reports and financial statements

of the Government that are laid before Parliament and are published and distributed

to the Canadian public.

Departmental Internet links

refer to "the Receiver General" and "the Receiver General for

Canada" interchangeably. Both terms are also used in the Public Accounts

of Canada. Cheques are issued to the public by "the Receiver General for

Canada". General Income Tax and Benefit Guides instruct taxpayers to make

cheques for balances owing payable to the "Receiver General". A Google

search for RECEIVER-GENERAL conducted in March 2001, indicated some 11,100 references

to Receiver General, the majority of which appear to relate to the Receiver

General for Canada. The first four references were references to the Receiver

General for Canada as were eight of the first ten references. However, there

were also references to the office of Receiver General in the State of Massachusetts

and in the United Kingdom.

The Receiver General for

Canada is known as Receiver General for Canada, Receiver General of Canada,

Receiver General Canada, Receiver General (Canada) and Receiver General.

Statistics Canada

was established by statute (as the Census and Statistics Office) in 1906.

It has been known as the Dominion Bureau of Statistics but since 1971, it has

been known as Statistics Canada. Its principal activities or programs are the

Census of Population and the Census of Agriculture; collection of criminal statistics

and a variety of mandatory national surveys regarding health and welfare, the

economy, labour and employment, commercial and industrial activity and transportation.

Names by which the agency is commonly known are Statistics Canada, Stats Canada,

StatsCan and StatCan.

The Bank of Canada

is the country's central bank. Its role is to promote the economic and financial

well-being of Canada. Founded in 1934, as a privately owned corporation, in

1938, it became a Crown corporation belonging to the federal government, the

Minister of Finance holding the entire issued share capital. Created to be the

sole issuer of bank notes and to facilitate management of the country's financial

system, the Bank of Canada is responsible for policy (influencing the economy

by regulating the amount of money in circulation); central banking services

(supporting the implementation of monetary policy and providing services to

government, banks, other central banks, certain other financial institutions

and the general public); bank notes (issuing them and ensuring their authenticity

and a supply equal to public demand) and administering public debt (advising

the government, issuing debt, maintaining bondholder records and making payments

on behalf of the government for interest and debt redemption). Names by which

the Bank of Canada is commonly known are the Bank of Canada and La Banque du

Canada.

The Department of Transport

was established by statute in 1936. It is responsible for ensuring that all

parts of the transportation system work effectively together to provide a system

which is safe, efficient and sustainable. In the past five years, it has moved

out of the operation of the system and established agencies to do so. The department

focuses on providing the policy and regulatory framework within which the system

operates. Since 1985, the legal name of the Department has been (in English/French):

the Department of Transport/le ministère des Transports. Since 1998,

the names by which the Department is commonly known are Transport Canada and

Transports Canada.

The respondent is in the

business of selling domain names.

The disputed domain names

were registered on the following dates, all in the name "<domainbaron.com>

(domain names for sale)", the billing contact in each case being the Respondent

Mr. Bedford, "Owner@domainbaron.com":

<canadacouncil.com>

February 17,1999

<canadiancustoms.com>

February 17, 1999

<canadianforces.com>

February 17, 1999

<canadiangrain.com>

February 17, 1999

<cangov.com>

June 3, 1999

<contractscanada.com>

February 20, 1999

<customscanada.com>

June 4, 1999

<dominionofcanada.com>

August 14, 1999

<envcan.com>

February 3, 1999

<environmentcanada.com>

February 17, 1999

<environment-canada.com>

April 26, 2000

<gouvernementducanada.com>

January 21, 2000

<govcan.com>

February 3, 1999

<governmentofcanada.com>

February 19, 1999

<hrcanada.com>

March 15, 1999

<humanresourcescanada.com>

March 8, 1999

<nrcan.com>

February 12, 1999

<nrcanada.com>

March 15, 1999

<receivergeneral.com>

March 15, 1999

<resourcescanada.com>

March 15, 1999

<revcan.com>

January 29, 1999

<revenuecan.com>

February 15, 1999

<statcan.com>

January 19, 1999

<statcanada.com>

March 15, 1999

<statisticscanada.com>

February 18, 1999

<statistics-canada.com>

April 26, 2000

<statscan.com>

January 7, 1999

<statscan.org>

January 23, 1999

<stats-canada.com>

May 1, 2000

<thebankofcanada.com>

October 5, 1999

<thegovernmentofcanada.com>

October 1, 1999

<transportcanada.com>

February 17, 1999

Respondent is making

use of the domain names by redirection of the domains to his <domainbaron.com>

site where he is

∙ selling the

domain names and many others;

∙ promoting his

persona of Darwin Bedford, Spiritual Reality Therapist, and Atheist Messiah;

and

∙ earning income

from displaying advertisements and engaging in affiliate programs.

5. Parties’ Contentions

A. Complainant

Rights

The Complainant has common

law trade-mark rights in the names of its various departments, agencies and

programs. In some cases, those trade-mark rights are reinforced through legislative

or administrative provisions, e.g., ENVIRONMENT CANADA is protected as an official

mark, which is a special form of protection for the marks of public authorities

in Canada; the National Defence Act prohibits the unauthorised use of the term

CANADIAN ARMED FORCES; etc. Generally, however, the names of federal departments,

agencies and programs are protected only by a generic prohibition in the Trademarks

Act, RSC c. T-13, s. 9(1)(d) against the commercial use of:

...any word or symbol likely

to lead to the belief that the wares or services in association with which it

is used have received, or are produced, sold or performed under royal, vice-regal

or governmental patronage, approval or authority.

Although other remedies,

e.g., civil proceedings in Canadian courts, may be available to the Complainant

in respect of certain of the disputed domain names, the Complainant has elected

to pursue its remedies via the ICANN arbitration in the interests of securing

a comprehensive solution on behalf of all the Government of Canada departments,

agencies and programs affected by the Respondent's registrations in the dot.com

domain.

In the earlier days of

the Internet, it was the policy of the Government of Canada that the domain

names of all federal departments, agencies and programs would be registered

in the dot.gc.ca domain. This was intended to promote federal identity on the

Internet. Although well-intended, this policy did not protect the Government

of Canada from cybersquatters, i.e., those who registered the names of federal

departments, agencies and programs in other domains, such as dot.com and dot.org.

Identity and confusing

similarity

The Respondent has deliberately

registered a series of some 32 dot.com and dot.org names that are identical

or confusingly similar to the names of the Government of Canada and its various

departments, agencies and programs.

Illegitimacy

The Respondent has no rights

or legitimate interests in respect of the disputed domain names. The Respondent

does not carry on business as or on behalf of, for example, the Government of

Canada, Transport Canada, or the Canadian Grain Commission.

For some months, the Respondent

has been using the government-related Internet addresses solely as hyperlinks

to his primary Internet address <domainbaron.com>, where these names were

priced and advertised for sale. <environmentcanada.com> was advertised

as carrying a price of $30,000 USD, <customscanada.com> a price of $8,000

USD, etc. (See Annex 5 for a copy of the <domainbaron.com> site, as it

appeared on January 30, 2001, complete with an inventory of Canadian government-related

domain names and their respective selling prices in US dollars.)

The Respondent has used

the disputed domain names as hyperlinks to other sites operated by him. In July

1999, the Respondent operated what he described as a "Government of Canada

Link Through Service by <DomainBaron.com>", where Internet users

who looked for Environment Canada via the dot.com domain would be referred to

the genuine Environment Canada site in the dot.gc.ca domain. Most of the Canadian

government-related disputed domain names were listed on this site as being available

for sale or lease. The website itself was represented as "A public service

provided by <DomainBaron.com>." along with a disclaimer that "This

is NOT an official website of The Government of Canada". Near the end of

the "link through service" was what was described as a "Service

Disclaimer", in the following terms:

"Service Disclaimer:

Starting in January 1999, <DomainBaron.com> registered the domain names

listed in the left column. We invite individuals and organizations to buy or

lease them – including federal departments of Canada or their employees. We

may transfer or lease any of the above domain names to another party at any

time. We may also redirect them to another URL without notice. We are not affiliated

with Her Majesty the Queen in Right of Canada and we have not sought Her permission

to provide links into Her sites. If you notice a broken link we would greatly

appreciate you telling us.

To buy or lease a domain

name listed above or to advertise on this page, contact…David Bedford."

On this site, the Respondent

explicitly offered Canadian government-related names for sale or lease, along

with an implicit threat to interfere with access to Government of Canada websites

by transferring or leasing any of his identical or confusingly similar domain

names to other parties at any time or by redirecting users to another URL without

notice.

Shortly thereafter, that

is precisely what he did, i.e., he began to redirect users seeking Canadian

government-related websites to other URLs. For example, for several months in

1999, users were directed to a site promoting atheism, also owned by the Respondent.

Subsequently, the Respondent began to direct users to a site promoting smokers'

rights for children, ostensibly sponsored by the Canadian Union of Nicotine

and Tobacco Sellers (the acronym for which was explicitly set out) and complete

with displays of young children smoking or purporting to smoke cigarettes; this

site was also owned and operated by the Respondent. More recently, the Respondent's

hyperlinks take Internet users directly to <DomainBaron.com>, which, in

addition to its inventory of government-related names, contains a vaguely anti-religious

tract under the title "The Pope is Humpty Dumpty".

Predictably, these links

to offensive sites prompted public complaints and queries from persons who were

incredulous that the Complainant would sponsor or countenance such links. It

may reasonably be inferred from the Respondent's hyperlinking practices that

he hoped to make the purchase of his government-related Internet names a more

attractive proposition to the Government of Canada.

Bad Faith

The Respondent deliberately

registered domain names that were identical or confusingly similar to the names

of the Government of Canada and various of its departments, agencies and programs.

The Respondent's intentions are manifest, inter alia, from the <govcan.com>

website, which in July 1999, purported to be a public service provided by <DomainBaron.com>.

On that site, the Respondent provided "link-through" links from his

inventory of domain names to the genuine Government of Canada domain names,

indicating that he was very well aware that the domain names in his inventory

were identical to or confusingly similar to the names of the Government of Canada

and various of its departments, agencies and programs. The Respondent did so

without having any rights or legitimate interests in those names and he has

used and continues to use them to link to his home site <domainbaron.com>

where Canadian government-related names are priced and offered for sale.

The Respondent's practice

of hyperlinking government-related names to offensive websites owned by him,

that promoted atheism and childrens' smoking rights, was designed to generate

public complaints and thereby enhance the complainant’s interest in purchasing

the disputed domain names.

By letter dated November

9, 1999, the complainant asked the Respondent to cease and desist using Internet

domain names related to the departments, agencies and programs of the complainant

and said that the Complainant was prepared to consider compensating the Respondent

for his registration and transfer costs, up to the value of $300 CDN per domain

name. In his response, dated November 20, 1999, the Respondent offered

to reconfigure his websites to reduce the risk of confusion on the part of those

trying to access websites of the Government of Canada, but declined to cease

offering the domain names for sale. The essence of his response was:

"I am not interested

in transferring any of my domain names to the federal government for the amount

of $300 (CDN) each. My expected price for <environmentcanada.com> is $10,000

(CDN). It is my position that the federal government will not be able to gain

legal title to any of the domain names that I have registered without my willingness

to transfer them. If I have registered domain names that the federal government

would now like full control of, then perhaps we can negotiate a group price

for them."

The Respondent later indicated

that he was prepared to consider permitting the Government of Canada to "steal"

the disputed domain names for $1200 CDN each. When this was rejected, the Respondent

informed the Complainant:

"My position is that

the federal government has no right to appropriate these names and I intend

to receive, through the sale of these names, much more than the amount I suggested".

These circumstances demonstrate

that the Respondent has registered the disputed domain names primarily for the

purpose of selling, renting or otherwise transferring the domain name registrations

to the complainant or, alternatively, to another entity that could be expected

to use the name in a manner that would interfere with the Complainant's electronic

delivery of information, services and programs; further that the Respondent

is offering his registered domain names for valuable consideration in excess

of his out-of-pocket costs directly related to the domain names. For example,

although the original price that the Respondent attached to <environmentcanada.com>

was $10,000 USD (or CDN, depending upon the source), the current price is $30,000

USD.

These circumstances also

demonstrate a pattern of conduct typical of cybersquatting. In the dot.com and

dot.org domains alone, the Respondent has registered some 32 domain names identical

to or confusingly similar to the names by which the Government of Canada and

its various departments, agencies and programs are known. He has also registered

and offered for sale at least three government-related domain names in the dot.ca

domain, e.g., GovernmentOfCanada.ca, StatsCanada.ca and TransportCanada.ca .

In his <domainbaron.com> website presentation and in his communications

with Mr. Becker (on behalf of the Complainant), the Respondent has been

explicit and unambiguous in declaring his intention of offering his inventory

of government-related domain names for sale.

Since there is no prospect

of such domain names being used legitimately by parties other than the government

departments, agencies and programs to which they relate, it is reasonable to

infer that the Respondent expected the complainant to be his primary market

for the purchase of the domain names in dispute. Alternatively, should a domain

name such as <GovernmentOfCanada.com> or <CanadaCouncil.com> be

sold to an entity other than the Government of Canada or the Canada Council,

it would be reasonable to infer that the purchaser intended to use the domain

name for illegitimate purposes.

The Respondent's method

of operation suggests that he intended to attract unsophisticated Internet users

(e.g., those unaware that the official Government of Canada websites were registered

solely in the dot.gc.ca domain) to his websites in order to shock them into

complaining to the federal government about its apparent support for, variously,

atheism, children's smoking rights and a vaguely-antireligious tract carrying

the title "The Pope is Humpty Dumpty". This practice, the Complainant

asserts, was deliberately calculated to put pressure on the Complainant to purchase

the Respondent's government-related domain names and/or to increase the price

that the Complainant would pay for the domain names in dispute.

Remedies Requested

The Complainant requests

the administrative panel to issue a decision that the contested domain names

be dealt with as follows:

Domain

Name

Remedy

Requested

<canadacouncil.com>

transfer to Canada

Council

<canadiancustoms.com>

transfer to Canada

Customs and Revenue Agency

<canadianforces.com>

transfer to Department

of National Defence

<canadiangrain.com>

transfer to Canadian

Grain Commission

<cangov.com>

transfer to Treasury

Board of Canada on behalf of the Government of Canada

<contractscanada.com>

transfer to Public

Works and Government Services Canada

<customscanada.com>

transfer to Canada

Customs and Revenue Agency

<dominionofcanada.com>

transfer to Treasury

Board of Canada on behalf of the Government of Canada

<envcan.com>

transfer to Environment

Canada

<environmentcanada.com>

transfer to Environment

Canada

<environment-canada.com>

transfer to Environment

Canada

<gouvernementducanada.com>

transfer to Treasury

Board of Canada on behalf of the Government of Canada

<govcan.com>

transfer to Treasury

Board of Canada on behalf of the Government of Canada

<governmentofcanada.com>

transfer to Treasury

Board of Canada on behalf of the Government of Canada

<hrcanada.com>

transfer to Human

Resources Development Canada

<humanresourcescanada.com>

transfer to Human

Resources Development Canada

<nrcan.com>

transfer to Natural

Resources Canada

<nrcanada.com>

transfer to Natural

Resources Canada

<receivergeneral.com>

transfer to Public

Works and Government Services Canada

<resourcescanada.com>

transfer to Natural

Resources Canada

<revcan.com>

transfer to Canada

Customs and Revenue Agency

<revenuecan.com>

transfer to Canada

Customs and Revenue Agency

<statcan.com>

transfer to Statistics

Canada

<statcanada.com>

transfer to Statistics

Canada

<statisticscanada.com>

transfer to Statistics

Canada

<statistics-canada.com>

transfer to Statistics

Canada

<statscan.com>

transfer to Statistics

Canada

<statscan.org>

transfer to Statistics

Canada

<stats-canada.com>

transfer to Statistics

Canada

<thebankofcanada.com>

transfer to the Bank

of Canada

<thegovernmentofcanada.com>

transfer to Treasury

Board of Canada on behalf of the Government of Canada

<transportcanada.com>

transfer to Transport

Canada

B. Respondent

Identity or confusing similarity

The names are not covered

by the Policy because they are not registered trademarks or service marks

in which Complainant has established rights. The Complainant has no legitimate

interest in the domain names because most of the names are comprised solely

of generic or common words and places that are excluded from protection by trademark

laws. See City Utilities of Springfield, Missouri, aka City Utilities v.

Ed Davidson (WIPO Case D2000-0407),

where the panel found that City Utilities has no rights in the term "city

utilities" as such a term is generic and does not function as a mark and

is therefore not protectable.

Respondent is in the business

of selling descriptive domain names and the disputed domain names are comprised

of descriptive terms. Of the names that include acronyms or abbreviations of

words, Complainant has not registered the names, nor are they sufficiently famous

or distinctive to be considered common law names. See General Machine Products

Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), (NAF Case FA0001000092531)

and Car Toys, Inc. v. Informa Unlimited, Inc., (NAF Case FA0002000093682),

where the panels accepted that the domain names <craftwork.com> and <cartoys.net>

were descriptive, and were not fanciful or arbitrary enough for the Complainants

to enjoy rights to them-- thus the Respondents have legitimate interests in

respect of the domain names.

For example, many company

names in Canada end with the word "Canada" and people in Canada or

abroad may associate the domain name <TransportCanada.com> with a web

site of a company selling transport equipment rather than the federal government's

Department of Transport.

Respondent does not contest

that certain of the names are confusingly similar to the names of the Complainant's

various departments, agencies, and programs, however, Respondent does contest

that the names are confusingly similar to the domain names used by the

said departments, agencies, and programs. See ANNEX 4 for refutation on a per

name basis of the arguments made by Complainant concerning the manner in which

the domain names are allegedly identical or confusingly similar to a trade-mark

or service mark in which the Complainant claims it has rights.

Only three of the disputed

names exactly match the names of Canadian Federal Government departments, agencies

and programs ahead of the dot-com appendage--namely <statisticscanada.com>,

<statistics-canada.com> and <contractscanada.com>, of which only

the name "Contracts Canada" has the Complainant protected as an official

mark (and this was done more than a year after the Respondent registered the

domain name). Complainant appears to be submitting that it enjoys common law

trade-mark rights to the names of all of its departments, agencies and programs,

past and present (and future presumably)--and to any and all "know as"

names respective to the said names, and to any and all names comprised of combinations

of terms and/or abbreviations of the said names. Respondent submits that if

every country's federal government were to assume same then there would be numerous

conflicts of legitimate interest. Then imagine if every governmental entity

of any level of every country were to assume same. Respondent has registered

the domain names <parksboard.com>, <wildlifeservice.com>, <employmentinsurance.com>,

<stateoffice.co>", and <standardscouncil.com>. Is it first

UDRP complaint takes all?

Complainant has protected

"ENVIRONMENT CANADA" as an official mark of Canada, which means it

is prohibited from use "in connection with a business". Respondent

claims that Complainant is interpreting the clause out of context. Simply using

the term as a domain name and not a bona fide business or service named by that

name may not constitute a violation of the Trademarks Act. Respondent

also contends that the name is sufficiently generic to be interpreted as

anything concerning the environment of Canada. See Bruce Springsteen

v. Jeff Burger and Bruce Springsteen Club (WIPO

Case D2000-1532), where the panel contends that the users of the Internet

do not expect all sites bearing unregistered names to be authorized or in some

way connected with a party seemingly named in the domain name.

Legitimacy

Respondent is making

fair use of the domain names by redirection of the domains to his <Domainbaron.com>

site where he is selling the domain names and many other domain names; and where

he is promoting his persona of Darwin Bedford, Spiritual Reality Therapist,

and Atheist Messiah; and where he is earning income from displaying advertisements

and engaging in affiliate programs. The names in dispute are not being treated

any differently from the other names that Respondent has registered and listed

for sale at the <DomainBaron.com> site. Respondent is doing so without

intent misleadingly to divert consumers or to tarnish the trademark or service

mark at issue.

A consumer looking for

a federal government department, agency, or program is simply not going to be

misled into thinking that a site where domains names such as <assgasm.com>

and <pantsoff.com> (which are two of the domain names listed for sale

at the <DomainBaron.com> site) is a Canadian Federal Government approved

site. Nor is a consumer looking for a federal government department, agency,

or program going to be misled into thinking that a site where someone is purporting

to be "Domain Baron" or an "Atheist Messiah" is an official

site of any country's government. In a news article Canada Disputes Doppelganger

Dot-Com Domain, by Steven Bonisteel, Newsbytes, April 6, 2001,

the reporter concurs that the <DomainBaron.com> site is "unlikely

to be confused for the official line from the nation's capital in Ottawa".

The Policy is not a ban

of the re-selling of domain names and nor do domain names necessarily have to

be used for bona fide web sites of businesses to constitute a legitimate use.

Domain names may be acquired simply for the purpose for using them as an e-mail

address or as other Internet uses such as ftp--however, this last point is on

the topic of the legitimate use that a purchaser may ultimately make of a domain

name.

Bad faith

Respondent has not registered

the names in bad faith and is not using the names in bad faith.

In January 1999, Respondent

registered the name <StatScan.com> for an associate who mentioned his

intention of writing software that would serve as a statistical scanner search

engine--i.e. that would search the Internet and ferret out statistics concerning

a target subject. Shortly after activating the name it was discovered that there

were an above average number of direct hits to the name. After examining the

logs Respondent determined the hits were from people looking for Statistics

Canada's website. Respondent then researched the availability of other U.S.A.

and Canadian government related names. Respondent found that many of the names

(such as <RevenueCanada.com>, <BankOfCanada.com>, <ParksCanada.com>)

were already registered by other individuals. Then Respondent looked up the

Canadian federal government's policy pertaining to domain names for their departments.

The HTML page describing their policy was last updated in July of 1998, and

is still there. The Government of Canada Internet Guide states that Complainants'

departments and agencies must apply for a <.GC.CA> domain name in order

to conform to its Federal Identity Program. So Respondent knew right from the

start that any domains that he registered that were similar to Canadian federal

government departments, agencies and programs, that he could not expect to sell

them to Complainant because it was its policy not to use dot com names that

were of such free form and natural style. Complainant has admitted to this policy

in the Complaint.

The prospect of using the

names to bring attention to the domain names for sale at the <DomainBaron.com>

web site, and of providing a service to the public (Canada and abroad) by aiding

them in locating the wares and services of Complainant, and of earning advertising

revenue from the traffic generated to the website, seemed attractive to Respondent

so he proceeded with his plans. See United States Postal Service v. Postoffice.com,

Inc., (NAF Case FA0012000096313), regarding the domain name <postoffice.com>,

where the panel found: "The Respondent is making a fair legitimate use

of the domain name offering an international service to Internet users with

a disclaimer of any connection to Complainant. In fact, the Respondent's web-site

directs users to Complainant's web-site for the purchase of goods and services

offered by Complainant."

And of course there was

always the prospect of selling the domain names to someone other than the Complainant.

Respondent believed at the time of registration that the most probable party

seeking possession of such domain names would be a media baron such as CanWest

Global Communications Corp., owner and operator of the <Canada.com> Internet

network and portal (and which is also providing links to Government of Canada

web pages). Other expected buyers of the said domain names include venture capitalists

and the parties that had already acquired similar such domain names. In the

case of the Statistics Canada related domain names, pollsters were considered

to be the most likely buyers.

During the first few months

of operation it became apparent to Respondent that perhaps the Complainant should

be considered as a possible buyer of certain names. People known and unknown

to Respondent were approaching Respondent to suggest that the Canadian Federal

Government should acquire certain names. Respondent also noticed that certain

governmental departments had in fact made use of descriptive domain names. One

such department was the Department of Fisheries and Oceans who were using the

domain name <OceansCanada.com> for their Internet site. At this point

in time Respondent stated on his site (to let the public know) that Complainant

was not being prevented from acquiring any of the domain names listed at the

site--i.e. that they were available for the Complainant to purchase or rent.

However, this should not be construed to mean that Respondent considered the

Complainant to be the primary or most likely party to come forward seeking possession

of the said domain names.

Some months later, after

the Respondent had received congratulatory e-mail messages from the public and

earned advertising revenue from a major Canadian book store, Complainant responded

with a cease and desist letter accompanied with the choice of either

a promise of "recommendation" of compensation of $300 CDN per name

transferred to Complainant, or (threat) of initiation of legal proceedings against

Respondent. Not knowing which of the 100 or so names that Complainant was interested

in, Respondent asked Complainant to identify the names and suggested the idea

of a "group price" as a means of mediation to avoid litigation. Respondent

also complied fully with the letter and spirit of Complainant's request except

for the actual transferring of the unidentified domain names.

Respondent denies the allegation

worded "implicit threat to interfere with access to Government of Canada

websites by transferring or leasing any of his identical or confusingly similar

domain names to other parties at any time or by redirecting users to another

URL without notice". This allegation has been fabricated by Complainant

by combining and interweaving Respondent's offer of service with the phrases

"implicit threat", " interfere with access"

and "identical or confusingly similar" and is an incorrect

and misleading interpretation of the Respondent's offer of service.

Respondent has been promoting

his persona as Darwin Bedford, Spiritual Reality Therapist and Atheist Messiah

since 1996. Respondent has also served on the board of directors of AIRSPACE

Action on Smoking and Health, an anti-tobacco lobby organization, since

June 1997. Respondent admits that the underlying subject matter of these two

initiatives is controversial, but claims that it is his right to participate

in democracy. Respondent objects to the following statement in the Complaint:

"It may reasonably be inferred from the Respondent's hyperlinking practices

that he hoped to make the purchase of his government-related Internet names

a more attractive proposition to the Government of Canada." This is

incorrect conjecture on behalf of Complainant. The majority of the non-disputed

domain names that are listed at the site also point to the same page. This accusation

touches upon the Complainant trying to curb the Respondent's free speech.

Respondent has not ever

initiated any communications to Complainant nor any of its departments or agencies.

Respondent has only responded to the letters and e-mail messages initiated by

Complainant.

Respondent has not approached

Complainant with a selection of domain names. Complainant has selected the domain

names comprising the dispute from the <DomainBaron.com> site list.

Respondent took the view

that since Complainant offered $300 CDN per name then it thereby set a precedent

that the names were negotiable. If Respondent had simply refused the offer then

it may have been construed that Respondent was preventing Complainant from reflecting

the marks in corresponding domain names--as described in Policy paragraph 4(b)(ii)–a

"damned if I do, damned if I don’t" situation.

With reference to Policy,

paragraph 4(b)(i), especially the clause "for valuable consideration

in excess of your document out-of-pocket costs directly related to the domain

name", Respondent does not consider the counteroffer of $1200 CDN to

be excessive. $1200 CDN is approximately $782 USD, which is less than the WIPO

fee of $1,000 USD for filing a complaint over a single domain name with the

single panelist option. If the definition of out-of-pocket costs includes labour

then the $1200 CDN amount is not in excess of Respondent’s costs. Complainant

has rejected an amount of $37.200 CDN for all of the remaining 31 domain names.

Ironically in this case, if Respondent were to receive $37.200 for the names

Respondent would jump to a higher income tax bracket and would have to pay approximately

half of the amount back to Complainant. The net revenue of Complainant for its

past fiscal year (according to the Vancouver Public Library) was 165,708 Millions

of Canadian dollars. A spokesperson for Complainant reported to the press that

Complainant is "not prepared to reward" Respondent beyond what

Complainant determines to be his out-of-pocket costs.

Complainant is claiming

that sale of the names to a third party could only result in websites that pass

off as a Canadian federal government sites. Respondent's position is that this

is narrow minded and displays a lack of knowledge of the Internet and a lack

of imagination. One of the names, <DominionOfCanada.com> has sold (for

an amount greater than the amount offered by Complainant) to a History Professor

of a university. Also note that the registrant of <DominionOfCanada.ca>

is The Dominion of Canada General Insurance Company. Respondent has also

received offers for some of the disputed names that would seemingly result in

legitimate use of the name. One such offer was from a publisher of a Canadian

magazine dealing with human resources who wanted the domain name "HRCANADA.COM".

Respondent concludes that

Complainant is acting in bad faith by trying to set a precedent with this case

so that it can more easily obtain the countless domain names, that it has been

remiss to register, from the numerous individuals that have registered them.

Respondent also concludes that Complainant is acting in bad faith by including

in its wish list, names that are vaguely or remotely similar to the names of

its departments, agencies and programs.

Reverse Domain Hijacking

The Respondent respectfully

requests the Administrative Panel to make a finding of reverse domain name hijacking.

6. Discussion and Findings

Elements to be proved

To qualify for cancellation

or transfer, a Complainant must prove each element of paragraph 4(a) of the

Policy, namely:

∙ the disputed

domain name is identical or confusingly similar to a trade-mark or service mark

in which the Complainant has rights; and

∙ the Respondent

has no rights or legitimate interests in respect of the domain name; and

∙ the disputed

domain name has been registered and is being used in bad faith.

Basis of panel decision

Rule 15(a) requires the

panel to decide this complaint on the basis of the statements and documents

submitted and in accordance with the Policy, the Rules and any rules and principles

of law that it deems applicable.

In this case, since both

parties reside in Canada, the rules and principles of law of that country are

applicable and particularly federal trade-mark law and those of the province

of British Columbia, where the Respondent resides and to the jurisdiction of

the Supreme Court of which the Complainant has submitted with respect to any

challenge which may be made to any decision of this panel to cancel or transfer

the contested domain names.

Does the Policy apply to

the names of Government Departments, agencies and programs?

In delineating the proposed

scope of what has now become the Policy, the Final Report of the first WIPO

Process (April 1999) (Footnote 1),

said:

"The second limitation

would define abusive registration by reference only to trademarks and service

marks. Thus, registrations that violate trade names, geographical indications

or personality rights would not be considered to fall within the definition

of abusive registration for the purposes of the administrative procedure".–paragraph

167.

"[…]It is in the interests

of all.... that the practice of deliberate abusive registrations of domain names

be suppressed. There is evidence that this practice extends to the abuse of

intellectual property rights other than trademarks and service marks [134],

but we consider that it is premature to extend the notion of abusive registration

beyond the violation of trademarks and service marks at this stage. After experience

has been gained with the operation of the administrative procedure and time

has allowed for an assessment of its efficacy and of the problems, if any, which

remain outstanding, the question of extending the notion of abusive registration

to other intellectual property rights can always be re-visited".–paragraph

168.

The Interim Report of the

Second WIPO Internet Domain Name Process (April 12, 2001) (Footnote

2), distinguishes between trade-marks and "other real world identifiers"

for example the names of "government departments" - paragraph 8.

It thus appears to the

panel that the Policy, as it stands at present, is not intended to afford protection

from the abusive registration as domain names of the names of Government Departments,

agencies and programs as such.

In the field of geographical

indications, cases under the Policy have established that they are likewise

not protected as such but may still be shown by evidence of their use

to have become distinctive of the goods or services of a particular trader and

thus may be protected as trade-marks in the same way as descriptive (generic)

words shown to have become distinctive. (Footnote

3)

Applying the same approach,

the panel is of the view that names of Government Departments, agencies and

programs, although not protected as such under the Policy, may nevertheless

qualify for protection under the Policy if they are shown to be trade-marks.

Are the names of the Complainant’s

Departments, agencies and programs trademarks?

The names which the Complainant

seeks to protect in this Administrative Proceeding are not registered as trademarks

and they need not be registered to come within the scope of 4(a) of the Policy.

(Footnote 4)

One feature of all the

names which the Complainant seeks to protect in this Administrative Proceeding

is that, to a greater or lesser extent, they are used in association with the

provision of Government services of an essentially non-trading character and

hence indicate a connection with the Complainant as the source of these services.

For example, the function of the Canadian Grain Commission, already described,

is a regulatory function. It is clearly a service provided by Government to

the people of Canada and it has direct impact on the trading of grain in Canada.

Whether or not some revenue is generated by way of fees paid eg. for licensing

or inspection activities, the connection between the name Canadian Grain Commission

and its activities is overwhelmingly a governmental, rather than a trading connection.

The Canadian Trademarks

Act (Footnote 5) defines "trade-mark"

as including

"a mark that is used

by a person (Footnote 6) for the purpose

of distinguishing or so as to distinguish wares or services manufactured, sold,

leased, hired or performed by him from those manufactured, sold, leased, hired

or performed by others" (s.2).

Section 4 provides:

4.(1) A trade-mark is deemed

to be used in association with wares if, at the time of the transfer of the

property in or possession of the wares, in the normal course of trade, it is

marked on the wares themselves or on the packages in which they are distributed

or it is in any other manner so associated with the wares that notice of the

association is then given to the person to whom the property or possession is

transferred.

(2) A trademark is deemed

to be used in association with services if it is used or displayed in the performance

or advertising of those services.

In commenting on the contrast

between the requirements of these two sub-sections, the Federal Court of Appeal

of Canada in Sim & McBurney v. Gesco Industries, Inc. and The Registrar

of Trade-Marks (FC A-866-97) (October 26, 2000) (Footnote

7), held as a matter of statutory interpretation that a trade-mark may be

deemed to be used in connection with services even though it is not used in

the normal course of trade.

Accordingly, the panel

concludes that the marks on which the complaint is based are trademarks recognised

under the Canadian Trademarks Act.

In Federal Court of

Canada v. federalcourtofcanada.com (eResolution Case AF-0563) a three-member

panel found the Complainant to have common law rights to the name Federal Court

of Canada based on extensive and continuous use, that name having been conferred

by statute and the court being the only one by that name in Canada.

Does the Complainant have

rights in the trademarks?

Since this panel is of

the view that the trademarks of the Complainant are recognised under the Canadian

Trademarks Act, the question arises whether in fact the Complainant has rights

in them, since the Policy requires proof of rights in a trademark.

The panel finds, based

on the evidence on the record that the Complainant has rights in all except

one of the alleged trademarks. The exception is Dominion of Canada, which has

not been used by the Complainant since 1982.

Identity or confusing similarity

It has been decided in

many cases under the Policy that "essential" or "virtual"

identity is sufficient for the purposes of the Policy: see The Stanley Works

and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO

Case D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO

Case D2000-0102). The suffix ".com" is of no significance. See

The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491).

The Panel is of the opinion

that the following domain names are essentially identical to the following trademarks

of the Complainant:

Domain

Name

Trade-mark

<canadacouncil.com>

Canada Council

The Canada Council

<customscanada.com>

Customs Canada

<canadianforces.com>

Canadian Forces

<governmentofcanada.com>

Government of Canada

<thegovernmentofcanada.com>

Government of Canada

<gouvernementducanada.com>

Gouvernement du Canada

<contractscanada.com>

Contracts Canada

Contrats Canada

<environmentcanada.com>

Environment Canada

<environment-canada.com>

Environment Canada

<humanresourcescanada.com>

Human Resources Canada

<nrcan.com>

NRCan

<nrcanada.com>

NRCanada

<receivergeneral.com>

Receiver General

<statisticscanada.com>

Statistics Canada

<statistics-canada.com>

Statistics Canada

<statcanada.com>

Stats Canada

<stats-canada.com>

Stats Canada

<statcan.com>

StatCan

StatsCan

<statscan.com>

Stats Can

StatCan

<statscan.org>

Stats Can

StatCan

<thebankofcanada.com>

The Bank of Canada

Bank of Canada

<transportcanada.com>

Transport Canada

The test of confusing similarity

under the Policy, unlike trade-mark infringement or unfair competition cases,

is confined to a consideration of the disputed domain name and the trade-mark:

AltaVista Company v. S.M.A., Inc., (WIPO

Case D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly

Gateway Media Productions, Inc.) (WIPO

Case D2000-0109).

The Panel is of the opinion

that the following domain names are confusingly similar to the following trademarks

of the Complainant:

Domain

Name

Trade-mark

<canadiancustoms.com>

Canada Customs

<revcan.com>

RevCanada

<revenuecan.com>

Revenue Canada

RevCanada

<canadiangrain.com>

Canadian Grain Commission

<cangov.com>

Government of Canada

<govcan.com>

Government of Canada

<envcan.com>

Environment Canada

<hrcanada.com>

Human Resources Canada

<resourcescanada.com>

Natural Resources

Canada

Resources Naturelles

Canada

Accordingly the Complainant

has established that these 31 disputed domain names are identical or confusingly

similar to trademarks in which it has rights.

Illegitimacy

Paragraph 4(c) of the Policy

sets out, without limitation, circumstances which, if proved, establish a registrant’s

rights or legitimate interests to a disputed domain name. The Complainant has

the onus of proof on this, as on all issues.

Based on the allegations

made in the complaint which for the most part have not been contradicted by

the Respondent and which have been summarized herein above in the "Parties'

Contentions", the panel finds that the Complainant has met its burden of

proof and holds that the Respondent has no right or legitimate interest in respect

of the domain names complained of.

More precisely, the Complainant

has not authorized the Respondent to use any of its trademarks nor to include

those marks in any domain name. The Respondent has not asserted that he is commonly

known by any of the disputed domain names.

Furthermore, by registering

the disputed domain names and offering those names in the course of his business

for sale in Canada on his <domainbaron.com> website, the Respondent, being

subject to the personal jurisdiction of the laws of Canada, has most likely

contravened the prohibition in section 9(1)(d) of the Canadian Trade-marks Act.

Accordingly, he can hardly claim to have a legitimate interest in the disputed

domain names within paragraph 4(c) of the Policy

The panel finds that (leaving

aside <dominionofcanada.com>, which need not be considered further) the

Complainant has proved that the Respondent does not have any rights or legitimate

interests in the disputed domain names.

Bad faith

The Respondent registered

the disputed domain names in the name "<domainbaron.com> (domain

names for sale)". This fact alone points to their sale as being the Respondent’s

primary purpose at the time of registration. Registering domain names that are

not identical or confusingly similar to the trademarks of others for the purpose

of sale is, of course, unobjectionable. However, if those domain names are identical

or confusingly similar to the trademarks of others, such registration may be

taken to be evidence of bad faith for the purposes of the Policy. This is a

risk taken by those whose business involves registering domain names for sale.

Within 6 months of the

registration of the first of the disputed domain names, the Respondent was offering

on his website to sell or lease them to anyone prepared to pay his asking price,

including the Complainant. Although the Respondent says he could not have expected

to sell the names to the Complainant because its policy was not to use dot com

names, he well knew that names similar to those of the Complainant in the dot

com domain attracted above average direct hits from people searching for the

Complainant. The Panel concludes that he set about to embarrass the Complainant

into paying his asking price for the disputed domain names by placing on the

site to which the disputed domain names were directed objectionable content

that was likely to prompt complaints to the Complainant from outraged members

of the public.

The Panel concludes on

all the material before it that the Respondent registered the disputed domain

names primarily for the purpose of selling, renting or otherwise transferring

them to the Complainant for valuable consideration exceeding his out-of-pocket

expenses directly related to the domain names. This is evidence of both bad

faith registration and bad faith use: Policy, paragraph 4(b)(i).

Further, the Panel is satisfied

that the Respondent also registered the disputed domain names in order to prevent

the Complainant from reflecting its trade-marks in corresponding domain names,

should it ever wish to do so, and that the large number of domain names so registered

(including some dot ca ccTLDs) evidence a pattern of such conduct. This is evidence

of both bad faith registration and bad faith use: Policy, paragraph 4(b)(ii).

Accordingly, the Complainant

has proved that the disputed domain names (other than <dominionofcanada.com>

which need not be considered further) were registered and are being used in

bad faith.

Reverse domain name hijacking

Rule 1 defines reverse

domain name hijacking as "using the Policy in bad faith to attempt to deprive

a registered domain-name holder of a domain name." See also Rule

15(e). To prevail on such a claim, Respondent must show that Complainant knew

of Respondent’s unassailable right or legitimate interest in the disputed domain

name or the clear lack of bad faith registration and use, and nevertheless brought

the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx

Pty. Ltd., (D2000-1224) and Goldline

International, Inc. v. Gold Line (D2000-1151).

In Smart Design LLC v. Hughes, (D2000-0993)

bad faith was found to encompass both malicious intent and recklessness or knowing

disregard of the likelihood that the Respondent possessed legitimate interests.

The complaint having been

upheld as to 31 of the 32 disputed domain names, the Respondent cannot succeed

on this point with respect to those names. As to the domain name <dominionofcanada.com>,

the panel is not satisfied the requirements for such a finding have been established.

7. Decision

Pursuant to paragraphs

4(i) of the Policy and 15 of the Rules, the panel requires the following 31

domain names to be transferred to the following transferees:

Domain

Name

Transferee

<canadacouncil.com>

Canada Council

<canadiancustoms.com>

Canada Customs and

Revenue Agency

<canadianforces.com>

Department of National

Defence

<canadiangrain.com>

Canadian Grain Commission

<cangov.com>

Treasury Board of

Canada on behalf of the Government of Canada

<contractscanada.com>

Public Works and

Government Services Canada

<customscanada.com>

Canada Customs and

Revenue Agency

<envcan.com>

Environment Canada

<environmentcanada.com>

Environment Canada

<environment-canada.com>

Environment Canada

<gouvernementducanada.com>

Treasury Board of

Canada on behalf of the Government of Canada

<govcan.com>

Treasury Board of

Canada on behalf of the Government of Canada

<governmentofcanada.com>

Treasury Board of

Canada on behalf of the Government of Canada

<hrcanada.com>

Human Resources and

Development Canada

<humanresourcescanada.com>

Human Resources Development

Canada

<nrcan.com>

Natural Resources

Canada

<nrcanada.com>

Natural Resources

Canada

<receivergeneral.com>

Public Works and

Government Services Canada

<resourcescanada.com>

Natural Resources

Canada

<revcan.com>

Canada Customs and

Revenue Agency

<revenuecan.com>

Canada Customs and

Revenue Agency

<statcan.com>

Statistics Canada

<statcanada.com>

Statistics Canada

<statisticscanada.com>

Statistics Canada

<statistics-canada.com>

Statistics Canada

<statscan.com>

Statistics Canada

<statscan.org>

Statistics Canada

<stats-canada.com>

Statistics Canada

<thebankofcanada.com>

the Bank of Canada

<thegovernmentofcanada.com>

Treasury Board of

Canada on behalf of the Government of Canada

<transportcanada.com>

Transport Canada

The Panel has found that,

through non-use since 1982, the Complainant does not have trademark rights in

the name Dominion of Canada. Pursuant to Rule 15(e), the panel therefore states

that the dispute, insofar as it concerns the domain name <dominionofcanada.com>,

is not within the scope of paragraph 4(a) of the Policy.

Alan L.

Limbury

Presiding Panelist

Hugues

G. Richard

Panelist

G. Gervaise

Davis III

Panelist

Dated: June

30, 2001

Footnotes:

1. "The Management

of Internet Names and Addresses: Intellectual Property Issues", available

at <wipo2.wipo.int/process1/report/finalreport.html>. (back

to text)

2.

Available at <wipo2.wipo.int/process2/rfc/rfc3/index.html>. (back

to text)

3. See Brisbane City

Council v. Warren Bolton Consulting Pty Ltd. (WIPO

Case D2001-0047); City of Hamina v, Paragon International Projects Ltd.

(WIPO Case D2001-0001); Port of Helsinki v.

Paragon International Projects Ltd. (WIPO Case

D2001-0002); Wembley National Stadium v. Tim Gordon (WIPO

Case D2000-1218); Skipton Building Society v. Peter Colman (WIPO

Case D2000-1217); City of Salinas v. Brian Baughn (NAF Case FA104000097076)

and the discussion at paragraphs 276 –286 of the Interim Report of the Second

WIPO Internet Domain Name Process. (back to text)

4. Cedar Trade Associates,

Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven

S. Lafwani (WIPO Case D2000-0014);

SeekAmerica Networks Inc. v. Tariq Masood (WIPO

Case D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250).

(back to text)

5. R.S., c. T-10, available

at <laws.justice.gc.ca/en/T-13/89689.html>. (back to text)

6. "Person" includes

"the administrative authority of any country, state, province, municipality

or other organized administrative area" (s.2). (back to text)

7. Available at <canlii.org/ca/cas/fc/2000/2000fc27624.html>.

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