ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Counsel for the Complainant, ANNE OF GREEN GABLES LICENSING AUTHORITY, INC., of Charlottetown, Canada, filed a Complaint with eResolution naming as the Respondent, INTERNETWORKS of Duiven, Nederland, the registered owner of the disputed domain name - anneofgreengables.com.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 5, 2000. The hard copy of the Complaint Form was received on February 7, 2000. Payment was received on February 25, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested domain name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is "Network Solutions, Inc." and the Whois database contains all the required contact information except for the billing contact. The Contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
On February 25, 2000, eResolution clerk's office received a confirmation of the billing contact from the Registrar.
The Clerk then proceeded to send a copy of the Complaint Form and in accordance with paragraph 2(a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on February 25, 2000. That date is the commencement date of the administrative proceeding.
On February 25, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On March 15, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on March 16, 2000.
On March 22, 2000, the Clerk's Office contacted the undersigned, and requested for him to act as panelist in this case.
On April 5, 2000, the undersigned accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On April 5, 2000, the Clerk's Office forwarded a user name and a password to the undersigned, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On April 5, 2000, the parties, the Registrar and ICANN were notified that the undersigned had been appointed and that a decision was to be, save exceptional circumstances, handed down by April 20, 2000.
3. Factual Background
Complainant, Anne of Green Gables Licensing Authority, Inc., is the owner of several trademark and service mark registrations throughout the world for the mark ANNE OF GREEN GABLES. These registrations include, inter alia, registration numbers TMA 489,653 and TMS 495,616 in Canada and registration numbers 1,799,002 and 1,842,191 in the United States. The mark ANNE OF GREEN GABLES designates the source of the well-known fictional work authored by Lucy Maud Montgomery in 1908 entitled, Anne of Green Gables, the written sequels of that work, television programs and motion pictures derived from that work, and merchandise related to the work and its sequels. The Anne of Green Gables written works, television programs and motion pictures derived from those works, and accompanying merchandise enjoy widespread fame and renown in several countries, most notably in Canada. The Anne of Green Gables Museum and the annual festival celebrating Lucy Maud Montgomery are located in Prince Edward Island, Canada, the birthplace of L. M. Montgomery.
4. Parties' Contentions
Complainant contends that it is the exclusive owner of the licensing rights to the well-known mark ANNE OF GREEN GABLES and that it is the owner of several trademark and service mark registrations throughout the world for the mark ANNE OF GREEN GABLES. Complainant further contends that Respondent's predecessor, Dico Reyers, registered the domain name in bad faith and the Mr. Reyers transferred the domain name to Respondent to undermine Complainant's interests in or extract a monetary payment from Complainant. Respondent contends that its primary purpose in registering the domain name was not to undermine the Complainant's trademark interests or extract money from Complainant, but to use the domain name to develop a tourism web site devoted to Prince Edward Island.
5. Discussion and Findings
Pursuant to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), Complainant must prove the following three elements to obtain an order transferring the disputed domain name to Complainant:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no right or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
As explained below, Complainant has met its burden of proof on each of the three elements and, therefore, the Panel has ordered the transfer of the domain name to Complainant.
(i) Comparison of the domain name to the trademark or service mark
The subject domain name, anneofgreengables.com, is virtually identical to Complainant's mark ANNE OF GREEN GABLES. Complainant owns trademark and service mark registrations for the mark ANNE OF GREEN GABLES in Canada and the United States for, inter alia, books, motion pictures, television programs and a plethora of merchandising wares. Further, the mark ANNE OF GREEN GABLES appears to be a famous mark in Canada. Accordingly, the Panel finds that the Complainant has met its burden to prove that the subject domain name is identical or confusingly similar to a mark in which the Complainant has rights.
(ii) Legitimacy of Respondent's interest in the domain name
Complainant contends that it is the exclusive owner of the rights to the mark ANNE OF GREEN GABLES and that Respondent has no right to use the mark as part of a domain name. Respondent contends that it has a legitimate interest in the domain name because Respondent intends to use the domain name to attract visitors to its web site devoted to Prince Edward Island tourism. In support of its position, Respondent acknowledges its awareness of Complainant's trademark and service mark registrations and argues that its registration and use of the domain name is legitimate because Complainant's registrations do not include travel or tourism services and because Registrant will not offer goods or services through the web site that are encompassed within Complainant's registrations.
The Panel finds that Respondent does not have a legitimate interest in the domain name. ANNE OF GREEN GABLES is a well-known mark and likely, a famous mark in Canada. Respondent seeks to use the well-known mark as a domain name to attract visitors to a tourism web site devoted to Prince Edward Island, the location of the Anne of Green Gables Museum, the birthplace of L. M. Montgomery, the creator of the Anne of Green Gables fictional works, and the site of the annual festival celebrating L. M. Montgomery. Respondent's proposed use of the well-known mark owned by Complainant to lure fans and potential tourists to Respondent's web site is definitively not a legitimate use. Accordingly, Complainant has met its burden to prove the second of the three factors.
(iii) Bad faith
Paragraph 4(b) of the ICANN Policy sets forth four non-exclusive circumstances, each of which is deemed to be evidence of the registration and use of a domain name in bad faith. The Panel finds that the fourth circumstance is present in this case and, therefore, Complainant has met its burden to prove that Respondent has registered and is using the domain name in bad faith.
Paragraph 4(b)(iv) of the ICANN Policy states:
By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
Respondent has admitted that it is aware of Complainant's registrations for the well-known mark ANNE OF GREEN GABLES. Respondent also admits that its purpose in registering the domain name was to attract Internet users to its web site who are seeking tourism information about Prince Edward Island, the Canadian locale that is intimately associated with the Anne of Green Gables literary works, motion pictures, television programs and merchandising. Indeed, the home page of Respondent's web site is entitled "Anne of Green Gables" and contains information about the Anne of Green Gables literary works, motion pictures and L. M. Montgomery, the author of the literary works. A visitor to the web site may very well believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site. In sum, Respondent's knowledge of Complainant's well-known mark ANNE OF GREEN GABLES, Respondent's use of that mark as a domain name to drive traffic to Respondent's tourism web site devoted to Prince Edward Island tourism, and the importance of the mark to the tourism information services contained on Respondent's web site are compelling evidence of Respondent's bad faith. Accordingly, the Panel finds that Complainant has met its burden to prove that Respondent registered and is using the domain name in bad faith.
Based on the foregoing, the domain name anneofgreengables.com shall be transferred from the Respondent to the Complainant.
This decision of the Administrative Panel in Case No. AF-00109 was rendered on June 12, 2000.
New York, New York
(s) Perry M. Amsellem