ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: ANNE MCLELLAN
Respondent: SMARTCANUK.COM
Cases Numbers: AF-0303a;
AF-0303b
Contested Domain Names: AF-0303a: annemclellan.com;
AF-0303b: annemclellan.org
Panel Member: Sandra A. Sellers
 

 

1. Parties and Contested Domain Names

The Complainant, Anne McLellan, is an individual who resides in Edmonton, Alberta, Canada. She is the Member of Parliament for the federal riding of Edmonton West, and is also the Minister of Justice and Attorney General of Canada. She is the most senior Government of Canada official in the Province of Alberta.

The contested domain names, annemclellan.com and annemclellan.org, are registered to smartcanuk.com, which is located in Calgary, Alberta, Canada. The registrant's billing contact is Al Green. Annemclellan.com reverts to a website that reflects a brief history of the McLellan family name. Annemclellan.org is not in use.

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on August 2, 2000. The hardcopy of the Complaint Form was received on August 3, 2000. Confirmation of payment was received on August 7, 2000.

The Clerk of eResolution confirmed that the Registrar is Tucows.com inc., the Whois database contains all the required contact information, the contested Domain Name annemclellan.com resolves to an active Web page and annemclellan.org resolves to an inactive Web page. The Complaint is administratively compliant.

On August 8, 2000, the Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent and notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

Only the emails to postmaster@annemclellan.com, postmaster@annemclellan.org and to the administrative contact (Al Green) were returned 'undeliverable'. The faxes were successful.

The complaint, official notification and all the annexes were sent via UPS to the respondent. According to the UPS tracking system, all were delivered.

The Respondent's administrative contact, Al Green, contacted the Clerk's Office on August 11, 2000 to request a username and password, which was given to him on the same date. The Respondent did not submit a response, neither via the eResolution Internet site nor a signed version.

Several potential panelists were unavailable. On September 11, 2000, the Clerk's Office contacted Ms. Sandra Sellers, and requested that she act as panelist in this case. Ms. Sandra Sellers accepted and filed the necessary Declaration of Independence and Impartiality. The parties were notified that Ms. Sandra Sellers had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 24, 2000.1

Subsequently, the Complainant requested leave to file further information. On September 13, 2000, the Clerk's Office informed the Complainant that it may submit the additional information with justification as to why it had not been submitted with the complaint, and that the Panel would determine whether to consider the additional information upon review of the justification. On September 15, 2000, the Complainant submitted a letter of justification as well as a page from the August 2000 edition of the Gun Runner , which had not been available until after the complaint was filed. The Panel hereby accepts the justification for the supplemental filing and will consider the additional evidence.

3. Factual Background

Prior to July 5, 2000, Anne McLellan inquired into the possibility of registering domain names containing her name to establish sites that would facilitate her communication needs. It was discovered that the domain names annemclellan.com and annemclellan.org had been registered on April 14, 2000 by Respondent, but that the sites were not being used. On July 5, 2000, McLellan's counsel sent a letter to Al Green and Daniel Bertrand, officers of Respondent, and requested that the domain names be transferred to Complainant for reimbursement of reasonable expenses. Green signed for the waybill. A week later, the Edmonton Journal newspaper reported that Smartcanuk Internet Services, which is partly owned by Al Green, held the rights to annemclellan.com and annemclellan.org and other web addresses containing the names of politicians. The story quoted Green as saying he had not heard from McLellan, despite signing for the letter from her counsel. The story reported that annemclellan.com contained a brief history of the McLellan name and an advertisement for Smartcanuk. Complainant's counsel verified the content posted on annemclellan.com on July 14, 2000. The site still contains a brief history of the McLellan name and a banner ad for Respondent.

Parties' Contentions

Complainant contends that the Respondent has no rights or legitimate interests in the contested domain names, since there is no evidence that the Respondent has been commonly known by the domain names. Complainant also contends that the domain names have been registered and are being used in bad faith. Respondent allegedly is engaged in a pattern of conduct in which it has registered domain names that contain the names of politicians, which prevents the politicians from obtaining domain names that reflect their names. Furthermore, Complainant contends that the Edmonton Journal article revealed Respondent's true motivation - that Respondent works closely the Canadian National Firearms Association, which is a strong opponent of the Canadian Government's firearms legislation (legislation supported by the Complainant.) Finally, Respondent is using annemclellan.com to promote Respondent's services, because the site contains a banner ad and link the Respondent's website.

The Respondent did not file a response.

4. Discussion and Findings

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2) that the respondent has no legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and used in bad faith.

The question before this Panel is whether the Complainant has satisfied the requirements of Paragraph 4(a) with respect to these three elements, all of which must be proved by Complainant.

The Domain Names annemclellan.com and annemclellan.org Are Identical or Confusingly Similar to a Common Law Trademark in which the Complainant Has Rights

The Panel first must consider whether Complainant has alleged sufficiently the existence of common law trademark rights. The Policy does not require that the Complainant hold a registered trademark or service mark. It is sufficient that the Complainant can demonstrate that she has rights in a common law trademark or sufficient rights to ground an action for passing off.

Several recent ICANN decisions have considered whether common law trademark rights exist in a person's name, and whether those rights support a complaint under the ICANN Policy. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000); Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); and Cho Yong Pil v. ImageLand, Inc., WIPO Case No. D2000-0229 (May 10, 2000).

This Panel finds that the Complainant has established common law trademark rights in her name sufficient to support a complaint under the ICANN Policy. Anne McLellan is well known in Canada as the Member of Parliament for the federal riding of Edmonton West, and also as the Minister of Justice and Attorney General of Canada. She is the most senior Government of Canada official in the Province of Alberta, which the province in which both the Complainant and Respondent reside.

Having decided that Complainant has common law trademark rights in her name, the next consideration is whether the domain names annemclellan.com and annemclellan.org are identical to or confusingly similar with Complainant's name. The contested domain names are identical to the Complainant's name. Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.

The Respondent Has No Rights or Legitimate Interest In the Contested Domain Names

Respondent has no relationship with or permission from Complainant for the use of her name or mark.

In addition, the evidence presented by Complainant shows that Respondent, or individuals associated with Respondent, have registered other domain names including the names of other Canadian politicians.

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the domain name and the Respondent has not provided any evidence to rebut this conclusion. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the domain names annemclellan.com and annemclellan.org and that the requirement of the Policy paragraph 4(a)(ii) is satisfied.

The Respondent Has Registered and Used the Domain Names In Bad Faith

ICANN UDRP Policy 4(b) sets forth examples of circumstances that shall constitute evidence of bad faith:

B. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i)

(ii) you have registered 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 you have engaged in a pattern of such conduct; or

(iii)

(iv) 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.

Though the Respondent has not filed a response, the Edmonton Journal article submitted by the Complainant demonstrates that Respondent's officers clearly knew of Anne McLellan. Furthermore, that article suggests that Respondent, or individuals affiliated with Respondent, have registered other domain names that include the names of other Canadian politicians, which prevents those individuals from reflecting their names in a corresponding domain name.

Additionally, annemclellan.com reverts to a website that is topped by a banner ad and link to Respondent's website, followed by a brief history of the McLellan name. This reflects Respondent's intent to drive traffic from annemclellan.com to its website for commercial gain.

Therefore, the Panel finds that Respondent has registered and used the domain names annemclellan.com and annemclellan.org in bad faith and that the requirement of the Policy paragraph 4(a)(iii) is satisfied.

5. Conclusions

This Panel finds that Complainant has met all the requirements of UDRP 4(a). Complainant's Request to transfer the domain names annemclellan.com and annemclellan.org to Complainant is GRANTED.

Date: September 25, 2000

McLean, Virginia, USA

(s) Sandra A. Sellers

Presiding Panelist

1. Since September 24, 2000 fell on a Sunday, this opinion was considered to be due by Monday, September 25, 2000