The Bruce Trail Association v. Andrew Camp; Bruce Trail Enterprises

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Bruce Trail Association v. Andrew Camp and Bruce Trail Enterprises

Case No. D2001-1021

1. The Parties

The Complainant in this administrative proceeding is The Bruce Trail Association,

a not-for-profit corporation registered in the Province of Ontario and a recognized

"public authority" within the meaning of Section 9(1)(n)(iii) of the

Canadian Trade-marks Act, whose principal place of business is the Rasberry

House on the grounds of the Royal Botanical Gardens' Arboretum, located in Hamilton,

Ontario, Canada.

The Respondents in this administrative proceeding are Mr. Andrew Camp and Bruce

Trail Enterprises, an individual and a partnership respectively, both of whose

principal places of business are located at 139 Finch Avenue East, North York,

Ontario, Canada, M2N 4R6.

2. The Domain Names and Registrars

The disputed domain names are <brucetrail.com> and <brucetrail.net>.

The Registrars of these domain names are Network Solutions, Inc. of Herndon,

Virginia, USA and Tucows, Inc. of Toronto, Ontario, Canada.

By registering the subject domain names with the Registrars, the Respondents

agree to the resolution of disputes pursuant to the Policy and Rules.

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance

with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet

Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the

"Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy,

approved by ICANN on October 24, 1999, (the "Rules") and the World

Intellectual Property Organization ("WIPO") Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of one member was appointed on October

8, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") on August 13, 2001,

by email and on August 15, 2001, by hardcopy. The Center dispatched to the Registrar

two Requests for Registrar Verification on August 16, 2001. On August 22, 2001,

having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules, the Center formally commenced this proceeding. The

Center received the Respondents’ Response on September 17, 2001, by email and

on September 21, 2001, by hardcopy.

An examination of this material confirms that all technical requirements for

the prosecution of this proceeding were met.

It was brought to the attention of the Administrative Panel that the Response

was delivered late. The Administrative Panel has exercised its discretion to

consider it.

Neither party requested an opportunity to make further submissions and the

Administrative Panel is content to proceed on the basis of the existing record.

4. Factual Background

The following information is derived from the Complainant’s material.

The Bruce Trail is the oldest marked hiking trail in Canada. It extends over

780 kilometers, with more than 290 kilometers of associated side trails. The

Bruce Trail has earned a worldwide reputation comparable to that of the Appalachian

Trail in the United States.

The significance of the Bruce Trail extends beyond being Canada's best-known

and most heavily used public footpath. The trail and its surrounding environment

also serve as a vitally important link between over 100 public parks and natural

areas within the Niagara Escarpment region. The Trail is part of a greenway

providing an undisturbed habitat and a migratory corridor for a wide range of

plants and animals.

The Bruce Trail traces its beginnings to 1960, when a small committee was formed

with a vision of creating a public hiking trail that would draw attention to

the natural treasures and dramatic scenery along the glacial formed Niagara

Escarpment, including its sea stacks, karst formation caves, deep valleys, scenic

waterfalls, rugged hills, and spectacular cliffs. The committee made the first

plans for what has come to be known as the Bruce Trail, a footpath originating

near Niagara Falls, Ontario and terminating at the tip of the Bruce Peninsula

in Tobermory, Ontario.

On March 13, 1963, the Complainant was incorporated under Ontario Letters Patent

as a not-for-profit corporation and on October 15 of that year, it held its

first Annual General Meeting. Volunteers talked with hundreds of landowners

along the mapped route, negotiating the necessary trail access agreements. Workers

cut trails through the bush and along fence-rows, marking the route, erecting

signs, and building stiles and footbridges where needed.

In less than seven years work on the trail was completed and on June 10, 1967,

in Tobermory, Ontario, the Bruce Trail was opened officially in a ceremony presided

over by the Province of Ontario's Minister of Lands and Forests.

The next decade was one of growth and maturation for the Bruce Trail. Membership

grew from 60 to approximately 7,500. Eleven local Bruce Trail Clubs (later reduced

to nine) were created. More campsites were added to the growing range of trail

resources and more and more people from around the world discovered the joy

of exploring the Niagara Escarpment on foot.

In 1985, amid much publicity and after nearly 18 years of study, the Ontario

Government approved the Niagara Escarpment Plan, which included a commitment

to acquire lands for escarpment parks and to secure and stabilize a route for

the Bruce Trail connecting those parks.

In 1990, the Niagara Escarpment was designated by UNESCO as a World Biosphere

Reserve, one of only six in Canada. A Biosphere Reserve is an area that has

successfully balanced the conservation and preservation of a significant ecosystem

with its surrounding development. The presence of the Bruce Trail, with its

progressive endeavors in the region, was a critical element to this designation.

The Bruce Trail is perhaps the most diverse region in the Province of Ontario,

supporting an incredible ecosystem of flora and fauna, including many threatened

and endangered species, all located in the heart of Canada's most densely populated

area. As such, the Bruce Trail is an important part of both Canada's and the

world's natural and cultural heritage. A few of the other internationally renowned

areas that have also been recognized as World Biosphere Reserves include the

Florida Everglades, the African Serengeti, and the Galapagos Islands.

On May 25, 1992, the Complainant was awarded the Canadian Environmental Achievement

Award, and was presented with a Certificate of Honour for its efforts. More

recently, in February of 1995, the Complainant received the Lieutenant Governor's

Conservation Award, sponsored by the Conservation Council of Ontario.

Today, about 42% of the Bruce Trail is on Crown land, conservation areas, and

land purchased and managed by the Complainant, with the balance following public

roads or road allowances, or being located on private land. The Complainant

is responsible for the promotion and protection of the wildlife and natural

resources along the now famous Bruce Trail and for the appreciation of its natural

beauty. To this end, the Complainant actively purchases property, as necessary,

to ensure the continuation and protection of the Trail.

The Complainant has an Environment Committee with duties directed to the promotion

of environmental awareness in general, including, inter alia, the promotion

of the Bruce Trail as an integral component of the Niagara Escarpment World

Biosphere Reserve, the education of the general public about the environmental

character and potential of the Trail, the promotion of the environmental and

preservation values of the Complainant and making presentations to other interested

organizations.

The Complainant currently has approximately 8000 members organized into nine

clubs across southwestern Ontario (including one in Toronto with approximately

3500 members), of which total 700 are active volunteers. Club members promote

the Bruce Trail within their region and are responsible for organizing hikes,

social outings and seminars. They also keep in touch with local landowners and

participate in Club committees.

Conservative estimates indicate that the Bruce Trail draws approximately 30,000

visits each year from out-of-province visitors, with a significant portion of

these people coming from the United States.

The Complainant provides the following information concerning its registered

Canadian marks:

Trade-mark

Reg.

No.

Advertised

BRUCE

TRAIL

904,012

January

10, 1990

BRUCE

TRAIL ASSOCIATION

904,013

January

10, 1990

BRUCE

TRAIL & Design

904,014

January

10, 1990

Each of these marks is registered as an official mark, pursuant to the provisions

of the Canadian Trade-marks Act.

While the Complainant uses each of these official marks in association with,

inter alia, its activities outlined herein, their registration under

Section 9(1)(n)(iii) effectively bars their use by others in association with

any wares or services. Accordingly, the Complainant reserves the right

to use these official marks with any such wares or services as may yet be determined

in the future.

The Complainant is also the registered proprietor of the following domain names:

<brucetrail.org>, registered with Network Solutions, Inc., on October

7, 1995; <brucetrail.ca>, registered with Internic.ca Corp., on December

15, 2000.

In February of 1998, the Complainant formed a committee to oversee its existing

and future Internet presence. It remains the goal of this committee to provide

a site that is informative for current members of the Complainant, that is educational

for everyone and that ultimately will attract new members to the association.

Through its <brucetrail.org> website and through other channels of trade,

the Complainant presently offers a variety of promotional materials bearing

its registered BRUCE TRAIL marks, including, without limitation, videotapes,

audio cassettes, calendars, guides and handbooks, maps, sweatshirts, t-shirts,

books, bags, first aid kits, hats, hiking staffs, and mugs.

The Respondents operate the <brucetrail.com> and the <brucetrail.net>

domain names as promotional and marketing tools for their serial broadcast products

and entertainment services involving a fictional character named Bruce Trail

that investigates environmentally sensitive cases.

As residents of North York, a part of Metropolitan Toronto in the Province

of Ontario, the Respondents would have been aware of the existence of the internationally

famous BRUCE TRAIL marks when, on April 24, 1996, Bruce Trail Enterprises was

registered as a general partnership.

On learning of the existence of Bruce Trail Enterprises, the Complainant contacted

the Respondents’ lawyer on January 13, 1997, specifically to notify them of

their infringing use of the Complainant’s marks and to request that the name

of the partnership and that of the "Bruce Trail" character, be changed.

The Respondents’ lawyer replied on January 20, 1997, stating that he was preparing

a response.

On May 6, 1998, the Respondents’ application for registration of BRUCE TRAIL

EVIRO P.I. as a trade-mark in Canada was corrected and re-advertised in the

Trade-marks Journal, claiming a date of first use in Canada of May 1, 1995.

The Respondents were aware of the Complainant’s BRUCE TRAIL marks on May 1,

1995, their claimed date of first use of the BRUCE TRAIL EVIRO P.I. mark.

On May 22, 1998, the Complainant’s opposition was entered against the Respondents’

Canadian trade-mark application.

In finding for the Complainant and refusing the Respondents’ application, the

Trade-marks Opposition Board found, inter alia, as follows:

a) the Complainant’s BRUCE TRAIL official mark has become known and has been

in use in Canada since at least as early as 1963;

b) the Complainant’s BRUCE TRAIL mark is identical to the dominant word components

of Respondents’ BRUCE TRAIL ENVIRO P.I. mark, such that Respondents’ BRUCE TRAIL

ENVIRO P.I. mark so nearly resembles as to be likely to be mistaken for the

Complainant’s BRUCE TRAIL official mark.

The Respondent, Bruce Trail Enterprises, is the owner of a registered United

States trademark, BRUCE TRAIL ENVIRO P.I., which claims use in commerce in association

with a series of radio and television programs featuring a cartoon character

since May 1, 1995. The Complainant did not seek to oppose the registration

of this trademark for a variety of reasons, including, inter alia, the

presence of the additional word elements "ENVIRO P.I.", and the fact

that the application was brought in the United States based on use in commerce

in that country alone.

On April 28, 2001, the Respondents wrote to the Complainant stating:

"…the Ontario partnership of ‘Bruce Trail Enterprises’ is no longer pursuing

the possibility of distribution of any of its products in Canada…the …Ontario

partnership…will be resigned….

At no time were products ever sold in Canada…no licenses were issued for commercial

broadcast in Canada of any products represented by the Ontario partnership.

The top level domain names, <brucetrail.com> and <brucetrail.net>

are being used commercially under authority of ‘Bruce Trail Enterprises’ located

in Nashville, Tennessee, USA and are protected under USA Trademark, Copyright

and also registered with Network Solutions in the USA…."

The following information is derived from the Respondents’ material.

The Respondents concede that the Complainant has a pending application for

a Canadian trademark for BRUCE TRAIL, but note that they registered Bruce Trail

Enterprises, as a style name for the corporation, Goldhand Inc., with the State

of Tennessee on April 26, 2001, and that they registered Bruce Trail Enterprises

as a partnership under the Province of Ontario Business Names Act, on

April 21, 2001.

The Respondents applied to register their trademark with the United States

Patent and Trademark Office on August 15, 1996. It was registered as of October

14, 1997.

The Respondents created a multimedia comic strip character named Bruce Trail,

as his proper name. The idea came from the geographic location, The Bruce Trail,

but Respondents’ use is creative and fictional.

The Bruce Trail Enviro P.I. Character has been in development and use since

as early as 1996.

The subject domain names were registered on November 12, 1998, and March 8, 2000.

They were registered because they were the subject of a fictional character

and comic strip for publication primarily within the United States.

The Respondents have invested substantial time and money in the creation of

their multimedia cartoon. Every radio episode mentions the subject domain name,

<brucetrail.com>. If the domain names were transferred to the Complainant,

it would create a significant financial hardship for the Respondents.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its long use of the name Bruce Trail and on its registration

of its mark. Without distinguishing between the concepts, it contends that the

subject domain names "…are identical or confusingly similar…." to

its mark.

Relying on Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO

Case No. D2001-0051, the Complainant says that the Respondents do not have

a legitimate interest in the subject domain names because they "…must have

been aware of the Complainant’s internationally famous BRUCE TRAIL marks prior

to naming both their environmentalist character and their partnership, and prior

to registering the contested domain names". In addition, it is asserted

that there is an overlap between the audio cassettes and videotapes sold by

the Complainant and the serial programs produced by the Respondents. Concern

is expressed with the fact that these "…invariably deal with environmental

themes in a cavalier and highly superficial manner in an effort to be humorous…with

the risk of deleterious effects upon the Complainant’s BRUCE TRAIL marks, which

are used, inter alia, to address serious environmental issues of concern

to the Bruce Trail, the Niagara Escarpment, and similar ecosystems around the

world". A further factor relevant to the Respondents’ lack of a legitimate

interest in the subject domain names is said to be the fact that "…the

Respondents are intentionally attempting to attract for financial gain environmentally

conscious consumers familiar with the Complainant’s marks, by creating a likelihood

of confusion with the Complainant’s marks as to the source, sponsorship, affiliation,

or endorsement of the Respondents’ website, and of the goods and services offered

by the Respondents…."

Bad faith is said to be apparent because the Respondents clearly knew of the

Complainant’s rights and that they are using the subject domain names "…intentionally…to

attract for commercial gain Internet users to their website by creating a likelihood

of confusion with the Complainant’s BRUCE TRAIL marks as to the source, sponsorship,

affiliation, or endorsement of their website and of the products offered thereon".

B. Respondent

The Respondents appear to concede that the subject domain names are identical

or confusingly similar to the Complainant’s mark. They say:

"…it [is] apparent that Complainant and Respondent share an interest in

the same marks, although in different countries, and in respect of different

services.

It is submitted that the first issue, i.e. that of identical trademarks or

confusing similarity, is not determinative and the two further requirements

under Paragraph 4 of the UDRP must be considered".

Relying on the decision in Nutrisystem.com, Inc.v. Easthaven, Ltd.

(sweetsuccess.com), CPR Case No. 012, the Respondents note that trademarks do

not confer exclusive rights to all commercial activities and the commercial

activities of the parties in this case differ. The Respondents also contend

that"

"…even if Respondents had a website about the geographic Bruce Trail,

located at <brucetrail.com> and <brucetrail.net>, this would be

perfectly legitimate, as in <toronto.com> and <newyorkcity.com>.

The ".com" and ".net" suffixes specifically relate to commercial

and/or network services, and not to non-profit or governmental organizations".

In addition, the Respondents deny that they are attempting to confuse Internet

users and state that the Respondents’ use of humour does not support a contention

that they do not have a legitimate interest in the subject domain name.

The Respondents deny bad faith. They assert that a visit to their website makes

it clear that they are not seeking to attract customers from the Complainant.

They state that they are not cybersquatters and are "…artists who are using

domain names legitimately and in complete good faith".

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in

which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name;

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number

of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of the Complainant, for

valuable consideration in excess of the Respondent’s documented out-of-pocket

costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark

or service mark from reflecting the mark in a corresponding domain name, provided

that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting

the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial

gain, Internet users to the Respondent’s website or other on-line location,

by creating a likelihood of confusion with the complainant's mark as to the

source, sponsorship, affiliation, or endorsement of the website or location

or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which

may arise evidence of bad faith.

The parties refer to domain name dispute decisions. While these are neither

controlling nor binding on this administrative panel, they can be of assistance.

The resolution of this dispute takes place in the context of a consideration

of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the words "Bruce Trail".

It has long use and registered marks. The subject domain names differ only by

the addition of ".com" and ".net".

The Complainant’s submission on the point was terse and did not distinguish

between the concepts: identical and confusingly similar. They engage different

considerations. If a domain name were identical, the inquiry would end. A domain

name can be similar, but not be confusing. Whether it is confusing in the context

of a domain name dispute is an objective inquiry.

The Respondents essentially concede that the subject domain names are identical

or confusingly similar to the Complainant’s mark, but even if they were not

to have done so, it is apparent that they are essentially identical.

The Administrative Panel is satisfied that the Complainant has met the requirements

of paragraph 4(a)(i).

B. Respondents’ Legitimate Interest

It is clear that the Respondents knew about the Bruce Trail. They say that

it was a reason for naming their comic character. In the context of this case,

the Complainant’s contention that the fact that the Respondents knew about the

Complainant’s interests is a basis for concluding that the Respondents do not

have a legitimate interest in the subject domain names is rejected. This case

differs from the Yahoo decision and other cases in which there is a blatant

misuse of a complainant’s intellectual property, because the words at issue

here are descriptive of a physical fact. The Bruce Trail is a geographic fact.

Its name derives from the Bruce Peninsula in Ontario, Canada.

This opens the door to a legitimate interest in the words "Bruce Trail"

and their use by a number of entities for a number of purposes. That is, unlike

some cases, the mere fact of using the words does not lead to a conclusion of

illegitimacy. The Nutrisystem.com, Inc. decision is apt in the circumstances

of this case.

The parties have been doing battle for some time. They appear to have joined

issue principally on the question of trademarks. Their early 1997 correspondence

was concerned with that, as was the proceeding before the Trade-marks Opposition

Board. The Complainant’s opposition to the Respondents’ application was filed

before the registration of the subject domain names, although one, <brucetrail.com>,

was registered not long after on November 12, 1998.

The Respondents applied to register their trademark with the United States

Patent and Trademark Office on August 15, 1996. It was registered as of October

14, 1997. That registration has not been challenged by the Complainant. The

evidence is that the Respondents have confined their activities to the United

States.

As was stated in the Nutrisystem.com, Inc. case: "The scope of

Complainant's trademark rights is insufficient to bar Respondent from acquiring

legitimate rights in the same term when used for a different purpose".

This is particularly so when those rights are confined to Canada and the center

of the Respondents’ activities is elsewhere.

In the circumstances of this case, it cannot be said that the Respondents do

not have a legitimate interest in the subject domain names. They operate a commercial

enterprise that is legitimate. There is no effort by them to confuse members

of the public or to make them think that they are involved with the custodians

of the Bruce Trail. Although their connection to the words Bruce Trail does

not extend as far back in time as that of the Complainant, the link and use

of the words was well established before the first registration of a subject

domain name.

The Administrative Panel is not satisfied that the Complainant has met the

requirements of paragraph 4(a)(ii).

C. Bad Faith

The analysis that concludes that the Respondents do have a legitimate interest

in the subject domain names militates against a conclusion that they were registered

and are being used in bad faith.

In addition, there is no evidence that the Complainant demanded that the Respondents

cease using the subject domain names or transfer them to the Complainant, although

there may have been communications between the parties to that effect.

The Respondents state frankly why they chose to call their comic character

Bruce Trail. The main point of the Complainant’s case on bad faith is the assertion

that the Respondents must have know about the Complainant’s interests and rights.

Assuming that this was true, it does not establish bad faith in the circumstances

of this case. The words designate a physical trail. The commercial activities

of the Respondents differ significantly from the main focus of the Complainant.

The words were being used before the registration of one of the subject domain

names. The focus of the Respondents’ activities has been in the United States.

The Administrative Panel is not satisfied that the Complainant has met the

requirements of paragraph 4(a)(iii).

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative

Panel is not satisfied that the Complainant has established its case. It is

dismissed.

Edward C. Chiasson, Q.C.

Sole Panelist

Dated: October 12, 2001