Her Majesty the Queen in right of Alberta v. RolloverNow, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Government of the Province of Alberta v. RolloverNow, Inc.

Case No. D2006-0163

1. The Parties

Complainant is the Government of the Province of Alberta, Canada, represented by an internal representative.

Respondent is RolloverNow, Inc., Palm Beach, Florida, United States of America,

represented by Keith E. Shanahan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <albertacanada.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2006. On February 7, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On the same day BulkRegister.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced February 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Response was filed with the Center March 6, 2006.

The Center appointed Torsten Bettinger, Gordon Harris

and Richard W. Page as panelists in this matter on March 15, 2006. The Panel

finds that it was properly constituted. Each member of the Panel has submitted

the Statement of Acceptance and Declaration of Impartiality and Independence,

as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the Government of the Province of Alberta, Canada, on behalf of Her Majesty the Queen in Right of her government in the Province of Alberta, Canada.

Respondent is an Internet directory of Investment Professionals, incorporated in Hobe Sound, Florida, United States of America. Respondent registered the disputed domain name <albertacanada.com> in November 1998. Respondent uses this domain name in order to redirect Internet users to Respondent’s website at “www.rollovernow.com” where it provides services in connection with U.S. 401 K plans (employment retirement plans).

Respondent has registered various other domain names in the .com top level

domain that incorporate the names of Canadian provinces such as: <britishcolumbiacanada.com>,

<newbrunswickcanada.com>, <britishcomlubiacanada.com>, <manitobacanada.com>,

quebeccanada.com>, <novascotiacanada.com>, and <newfoundlandcanada.com>.

5. Parties’ Contentions

A. Complainant

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant contends as follows:

(a) Complainant has rights in the following two official marks under the Canadian Trademark Act:

- “Canada Alberta + Device”, No. 0907648, filed on October 1995, and publicly notified by the Canadian Registrar of Trademarks on November 29, 1995;

- “Alberta-Canada” No. 0915638, filed on February 4, 2004, and publicly notified by the Canadian Registrar of Trademarks on April 14, 2004.

(b) Official Marks as granted pursuant to section 9(1) of the Canadian Trademarks Act are analogous to trademarks in all material aspects.

(c) The disputed domain name is confusingly similar to Complainant’s official marks “Canada Alberta + Device” and “Alberta-Canada”. The addition of the top level domain “.com” and the addition or subtraction of a hyphen have no distinctive value. The inversion of two words in the mark is without legal significance with respect to the requirement of an identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant states that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion Complainant argues that:

(a) Respondent has never used the disputed domain name in conjunction with a bona fide offering of goods or services;

(b) Respondent has directed Internet users to a variety of websites, none of which include any logical connection to the Province of “Alberta, Canada”, including pornographic websites, websites advertising foreign women, and websites promoting land brokers in South Florida;

(c) Respondent by registering the disputed domain name has intentionally sought to divert consumers who are seeking information regarding Alberta Canada;

(d) Respondent has registered numerous other domain names which consist of the names of Canadian provinces and are used to redirect Internet users to Respondent’s website at “www.rollovernow.com”.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that the disputed domain name was registered to prevent Complainant from reflecting the mark in a correspondent domain name and that Complainant is engaged in a pattern of such conduct.

Furthermore, Complainant asserts that Respondent uses the domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

In support of these assertions Complainant argues that:

(a) Respondent registered various other domain names in the .com top level domain that incorporate the names of Canadian provinces;

(b) Respondent used the disputed domain name to redirect Internet users to its website at “www.rollovernow.com” which has no connection to Alberta Canada;

(c) Respondent registered the domain name in order to fraudulently increase the number of visits to the “www.rollovernow.com” website.

B. Respondent

Respondent denies that Complainant has exclusive rights to “Alberta Canada” and that the disputed domain name is identical or confusingly similar to the marks in which Complainant asserts to have trademark rights. In support of this assertion Respondent argues that:

(a) “Alberta Canada” is a geographic designation and, as such, may be used by everybody without any restrictions both on and off the Internet.

(b) A trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the Policy, since it is impossible for the domain name to have been registered in bad faith.

(c) Respondent registered the disputed domain name in November of 1998. Complainant registered the domain name <alberta-canada.com> in April of 1999. At the time of registration of the domain name, Complainant had full knowledge that the domain name was already registered and in use. Complainant’s assertion that it is the cause of any confusion is therefore misconceived and is intentionally abusing the Policy.

(d) Complainant has not and cannot establish that consumers associate the words “Alberta” and “Canada” only with Complainant, because numerous third parties use the words “Alberta” and Canada” in the same descriptive sense.

(e) A geographic name by itself cannot serve as an exclusive trademark, otherwise every map maker, product packager and mail delivery company would be out of business.

(f) Complainant claims exclusive rights to the geographic

indicators “Alberta Canada”, while Complainant is not laying claim

to any other domain name other than <albertacanada.com> such as <albertacanada.ca>,

<alberta-canada.ca>, <albertacanada.net>, or <albertacanada.org>

which are registered and used by third parties.

Respondent also denies that it has no rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy and that it has registered and uses the disputed domain name in bad faith. In support of this assertion Respondent argues that:

(a) The disputed domain name <albertacanada.com> was open to the general public on the Internet before Respondent registered the domain name in 1998.

(b) Respondent offers a bona fide offering of a service, namely “Financial Advisory Services” in the United States and Canada.

(c) Respondent is a website development company which has a legitimate legal business interest to register non-trademarked generic geographical domains in November of 1998.

(d) There was no mark in 1998 for Alberta Canada, and there was no domain name <alberta-canada.com> until six months after the registration of the domain name and therefore Complainant cannot prove that Respondent registered the domain name with Complainant in mind.

(e) There is no evidence of intent to cause confusion on the part of Respondent. Respondent operates a legitimate business that offers a bona fide service that does not infringe on Complainant’s rights.

(f) Respondent registered other geographic domain names for its web development company including other geographical areas of North America and around the world. At the time of registration, Respondent did not know of Complainant’s alleged trademark rights.

(g) There is no ICANN rule that states that only governments

of Provinces are allowed to register geographical domains or that they are reserved

for exclusive use by governments as implied by Complainant. Domain names such

as <torontocanada.com> and <montrealcanada.com> are owned by individuals,

not city governments, without contest, and the Canadian Provincial government

of the Yukon does not own the domain name <yukoncanada.com>.

(h) There is no evidence that the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant as Respondent registered the domain name <albertacanada.com> in advance of the registration of Complainant’s trademark and domain name. Respondent did not try to sell the domain name to a competitor of Complainant nor did it attempt to sell the domain name to Complainant when initially contacted by Complainant.

(i) Respondent registered the domain name when there was no filing of an official mark for Alberta-Canada and no use of Complainant’s domain name <alberta-canada.com>.

(j) Respondent has used the disputed domain name for

multiple purposes and before Complainant ever used its domain name <alberta-canada.com>

or filed for a mark. At no time has Respondent’s use of the domain name

created a likelihood of confusion between Respondent’s and Complainant’s

business.

6. Discussion and Findings

A. Complainant’s Rights in a Trademark

The name “Canada Alberta” is a geographical designation which is not protected as such under the Policy. A complaint based on a geographical designation can therefore only be successful if it is entered in the trademark register or it is shown by evidence of its use to have become distinctive of the goods or services of a particular trader (The Report of the Second WIPO Domain Name Process, http://wipo2.wipo.int./process2/report/html/report.htm expressly maintained this position, citing the still largely inconsistent international legal situation as regards geographical terms, but also qualifying as unsatisfactory the situation that numerous registrations of geographical terms by natural persons or businesses had no relationship to the location to which the domain name referred).

Complainant has provided evidence that when it filed the Complaint, it was the registered owner of:

(1) the official mark No. 0907648 consisting of the geographical term “Canada Alberta ” and a figurative element filed on October 1995 and advertised on November 29, 1995, and

(2) the official mark “Alberta-Canada”, No. 0915638, filed on February 4, 2004, and advertised on April 14 2004.

The Panel accepts Complainant’s contention that it can rely on statutory rights in the words “Canada Alberta” and “Alberta Canada” arising out of its publication as official marks under the Canada Trademarks Act, a special form of protection for the marks of public authorities.

Although these official marks are descriptive in nature, there is also no reason for the Panel to dispute that under Canadian trademark law these marks are treated as analogous in all material aspects to a trademark or service mark and that the Canadian Trademarks Act prohibits the adoption and use by others of marks closely resembling official marks (See Government of Canada, on behalf of her Majesty the Queen in Right of Canada v. David Bedford, British Columbia International Commercial Arbitration Centre (May 27, 2003), made under the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy (for .ca domain names)).

On the basis of the facts which are established by

the evidence submitted by Complainant the official marks have been duly advertised.

The mere advertising of the official mark is sufficient to establish “rights”

in the “trademark” within the meaning of the Policy and the Policy

does not require or permit a panel to go behind the Canadian Trademarks Register

to determine whether the mark is valid or invalid based upon lack of distinctiveness

or non-use. Those kinds of challenges to registered trademarks and advertised

official marks are beyond the scope of the Policy and the jurisdiction of the

Panel, and must be the subject of court or other proceedings (See also Government

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

Case No. D2001-0470).

The fact that Complainant’s official mark No.

0915638 was registered after the registration of the disputed domain name is

of no relevance under paragraph 4(a)(i) of the Policy. The issue under paragraph

4(a)(i) of the Policy is whether Complainant has rights as of the time of the

Complaint. Respondent’s lack of knowledge of Complainant’s trademark

rights at the time of the registration of the domain name may, in appropriate

cases, be relevant to the second and third factors (legitimate interest and

bad faith), but it is not relevant to the analysis of the first factor which

looks solely at the question of whether Complainant has trademark rights and

whether the domain name is identical or confusingly similar to that mark (See

Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom

Inc., WIPO Case No. D2004-0242 –

<mexico.com>; Mr. Severiano Ballesteros Sota, Fairway, S.A. and Amen

Corner S.A. v. Patrick Waldron, WIPO Case

No. D2001-0351 – <seveballesterostrophy.com>; Document Technologies,

Inc. v. International Electronic Communications Inc., WIPO

Case No. D2000-0270 – <htmlease.com>; Delikomat Betriebsverpflegung

Gesellschaft m.b.H. v. Alexander Lehner, WIPO

Case No. D2001-1447 – <delikomat.com>).

The Panel thus finds that Complainant has rights in a trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Identity or Confusing Similarity between Domain Name and Complainant’s Marks

The test of confusing similarity under the Policy

is confined to a comparison of the disputed domain name and the trademark alone,

independent of the products for which the domain name is used or other marketing

and use factors, usually considered in trademark infringement (See Arthur

Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO

Case No. D2000-1698 – <guiness.com>; Ansell Healthcare Products

Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO

Case No. 2001-0110 – <ansellcondoms.com>; Dixons Group Plc

v. Mr. Abu Abdullaah , WIPO Case No. D2001-0843

– <dixons-online.net>; AT&T Corp. v. Amjad Kausar, WIPO

Case No. D2003-0327 – <attinternet.com>, <attuniversal.com>;

BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO

Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,

WIPO Case No. D2001-0505 – <britanniabuildingsociety.org>).

The disputed domain name wholly incorporates the word element “Alberta Canada” of Complainant’s figurative trademark No. 0907648 in inverse order and is identical with Complainant’s mark No. 0915638 “Alberta-Canada” apart from the hyphen between the word “Albertra” and “Canada” and the addition of the Top-Level-Domain “.com”.

It is consensus view among panelists that the assumption

of confusing similarity between domain name and trademark is not refuted by

the fact that complainant’s trademark contains an additional figurative

element which can not be reproduced in a domain name (Toyota Motor Sales

USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO

Case No. D2001-0032; Wherehouse Entertainment, Inc. v. NetVentures,

WIPO Case No. D2001-0036; Fábricas

Agrupadas de Muñecas de Onil S.A. (FAMOSA) v. Gord Palameta, WIPO

Case No. D2000-1689) and that the domain name contains the word elements

of the trademark in inverse order (Société des Bains de Mer v. Michael Ditursi,

WIPO Case No. D2005-1343 – <montecarlointernationalcasino.com>).

Also, it is well established that the specific top

level of a domain name such as “.com”, “.org” or “.net”

and a hyphen does not affect the domain name for the purpose of determining

whether it is identical or confusingly similar (See Magnum Piering, Inc.

v. The Mudjackers and Garwood & Wilson, Sr., WIPO

Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO

Case No. D2000-0429).

The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s official marks No. 0907648 and No. 0915638 and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires Complainant to prove that Respondent

has no rights or legitimate interests in the disputed domain name. However,

it is consensus view among panelists that if complainant makes a prima facie

case that respondent has no rights or legitimate interests, and respondent fails

to show one of the three circumstances under Paragraph 4(c) of the Policy, the

burden shifts to respondent to rebut the showing by providing concrete evidence

that it has rights to, or legitimate interests in the domain name (see Croatia

Airlines d.d. v. Modern Empire Internet Ltd., WIPO

Case No. D2003-0455 – <croatiaairlines.com>; Belupo d.d.

v. WACHEM d.o.o., WIPO Case No. D2004-0110

– <belupo.com>).

Complainant has made a prima facie showing that Respondent has no rights to or legitimate interests in the domain name <albertacanada.com>. Complainant has established that Respondent has not been known by the name “Alberta Canada” or “Canada Alberta” and that Complainant has not yet licensed or otherwise permitted Respondent to use Complainant’s official marks.

Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Respondent alleges that it registered <albertacanada.com> not because of any trademark sense of the words “Alberta Canada”, but rather because of its sense as the geographical designation “Alberta Canada”. However, on the material before the Panel, Respondent has not used the domain name for a website the content of which has a connection with “Alberta Canada”, but to redirect Internet users to its website at “www.rollovernow.com” where it provides services in connection with U.S. 401 K plans (employment retirement plans).

The use of the domain name without any nexus to the Province of Alberta Canada is not a bona fide offering of goods or services or any other fair use of the domain name in its geographic sense giving rise to a right or legitimate interest in the domain name within the meaning of paragraph 4(c) of the Policy.

Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

D. Registered and Used in Bad Faith

Finally, paragraph 4(a)(iii) of the Policy requires Complainant to prove, that Respondent registered and used the domain name in bad faith.

Complainant contends that Respondent registered and is using the domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

Complainant also asserts that Respondent registered the domain name to prevent Complainant from reflecting its marks in a correspondent domain name and has engaged in a pattern of such conduct. In this regard Complainant points to the domain name in dispute, and also relies on Respondent’s registration of numerous other domain names in the .com top level domain that incorporate the names of Canadian provinces, including <britishcolumbiacanada.com>, <saskatchewancandada.com>, <manitobacanada.com>, <quebeccanada.com>, <novascotiacanada.com>, <newfoundlandcanada.com> and <newbrunswickcanada.com>.

Respondent disputes Complainant’s assertions of bad faith, claiming that “Alberta Canada” is a geographical term which is not entitled to trademark protection and as such may be used by everybody without any restrictions, that a trademark did not exist at the time the disputed domain name was registered and that it was unaware of Complainant’s rights or interests in the mark “Canada Alberta”.

In this case the Panel is satisfied that Respondent by using the domain name has met the standard of the requirement of paragraph 4(b)(iv) of the Policy.

The Panel has no doubt that Respondent registered the disputed domain name in bad faith, namely with the intent to attract, for commercial gain, Internet users to its website. Furthermore, by using the disputed domain name Respondent has also created a likelihood of confusion with Complainant’s mark as to the source, affiliation or endorsement of Respondent’s website. In this regard the Panel accepts that as the terms “Canada Alberta” and “Alberta-Canada” enjoy trademark protection in Canada which prohibits the adoption and use of the terms by others, part of the public can be misled into thinking that there may be an association, affiliation or endorsement of Respondent’s website and Complainant. Respondent had no reasonable grounds to believe that the registration and use of <albertacanada.com> in order to redirect Internet users to its company website having no connection whatsoever with the Canadian Province of Alberta was fair use or otherwise lawful.

The Panel finds that bad faith on the part of Respondent is further suggested by the fact that Respondent has engaged in a pattern of registering domain names which correspond with the names of Canadian Provinces, none of which in their use have a nexus with the respective Canadian Provinces or which would be used in a descriptive, non-source identifying way.

Under these circumstances, the Panel finds that Respondent

registered and is using the domain name <albertacanada.com> in bad faith

and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <albertacanada.com> be transferred to Complainant.

Torsten Bettinger

Presiding Panelist

Gordon Harris

Panelist

Richard W. Page

Panelist

Dated: May 27, 2006