ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
Complainant is Manitoba Metis Federation Inc.. The Respondent is Terry Belhumeur.
The domain name at issue is: manitobametisfederation.com
2. Procedural History
electronic version of the Complain form was filed on-line through
eResolution’s Website on April 27, 2001. The hardcopy of the Complaint Form
and annexes were received on May 1, 2001. Payment
was received on May 3, 2001.
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 essential contact information for Respondent;
Verify if the contested Domain
Name resolved to an active Web page;
Verify if the Complaint was
inquiry lead the Clerk of eResolution to the following conclusions: the
Registrar is Register.com, the Whois database contains all the required contact
information, the contested Domain Name resolves to an active Web page and the
Complaint is administratively compliant.
email was sent to the Registrar by eResolution Clerk’s Office to obtain
confirmation and a copy of the Registration Agreement on April 27, 2001.
The requested information was received April 30, 2001.
Clerk then proceeded to send a copy of the Complaint Form and the required Cover
Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules
for Uniform Domain Name Dispute Resolution Policy.
The Clerk’s Office fulfilled all its
responsibilities under Paragraph
2(a) in forwarding the Complaint to the Respondent, notifying the
Complainant, the concerned Registrar and ICANN on May 4, 2001.
This date is the official commencement date of the administrative
All the faxes were successful.
The complaint, official notification and all the annexes were sent
via registered mail with proof of service, to the respondent.
According to the Canada Post tracking system, all were delivered.
On May 22, 2001, the Respondent submitted, via eResolution Internet
site, his response. The signed
version of the response was received on May 10, 2001.
On May 24, 2001, the
Clerk’s Office contacted Anne m.
Wallace, and requested that she acts as panelist in
On May 24, 2001, Anne
M. Wallace, accepted to act as panelist in this
case and filed the necessary Declaration of Independence and Impartiality.
On May 25, 2001, the Clerk’s Office forwarded a user name and a
password to Anne M. Wallace,
allowing her to access the Complaint Form, the Response Form, and the evidence
through eResolution’s Automated Docket Management System.
25, 2001, the parties were notified that Anne
M. Wallace had been appointed and that a decision was
to be, save exceptional circumstances, handed down on June 8, 2001.
3. Factual Background
Complainant is the Manitoba Metis Federation Inc. (herein “MMF”), a
non-profit, non-share company incorporated under the laws of the Province of
Manitoba on December 28, 1967. According to its
Constitution, the objectives of MMF are as follows:
promote the history and culture of the Metis people and otherwise to promote
the cultural pride of its membership.
promote the participation of its members in community, municipal,
provincial, federal, Aboriginal, and other organizations.
To promote the education of its members respecting their legal, political,
social and other rights.
to promote the political, social, and economic interests of its members.
The MMF is the political
representative of the Metis people of Manitoba, an aboriginal
The MMF is recognized by
both the Manitoba Government and the Government of
Currently, the MMF employs
approximately 150 individuals. The consolidated financial statements for the
fiscal year ending March 31, 2000 reflect annual operating revenues of
approximately 11.9 million dollars. MMF has a registered membership of
approximately 38,000 individuals. The MMF has incorporated a number of “arms
length” non-profit, non-share corporations which are affiliated with it and
help serve the needs of the Metis people of Manitoba. These include:
Pemmican Publications Inc.
Since the MMF was
incorporated on December 28, 1967 its name has acquired and now enjoys wide
spread recognition not only in the Province of Manitoba but throughout Canada
both in the Aboriginal and non-Aboriginal community. The name Manitoba Metis
Federation Inc. is not currently a registered trademark however, an application
is pending to register same with the Trademarks Office. The application was
filed on June 8, 2000.
Respondent, Terry Belhumeur, is a resident of Manitoba. He is a member of the
Manitoba Metis Federation and is the Vice-Chair of the Local in Teulon,
Manitoba, which is part of the Interlake Region of the MMF. The Respondent is
using the site manitobametisfederation.com to post information of a political
nature and to advance his opposition to the current president and administration
of the MMF. By following one link from the web site, a user ends up at the web
site for Teulon Local. From that site, a link leads to the Respondent’s
personal business called T.B. Outfitting and Guide Services.
it is necessary to review the evidence further, I will do so in the discussion
and findings below.
4. Parties' Contentions
The Complainant contends
that it has trademark rights in the name Manitoba Metis Federation, that the
domain name at issue is identical to the Complainant’s name, that the
Respondent has no rights or legitimate interest in respect of the domain name at
issue and that the Respondent is using the domain name in bad faith. The
Complainant requests that the domain name be transferred to the Complainant.
The Respondent contends that the Complainant has no trademark rights in the name Manitoba Metis Federation. He has held the registration for the disputed domain name since May 7, 2000 and that he is exercising his right to free speech and is offering to post the views of all Metis people across Canada on the site. He denies illegitimacy and denies bad faith.
5. Discussion and Findings
order to prevail, the Complainant must prove the following three elements:
that the Respondent’s domain name is identical or confusingly similar
to a trademark or service mark in which the Complainant has rights;
the Respondent has no rights or legitimate interests in the domain name;
the Respondent has registered the domain name and is using it in bad
faith. (ICANN Policy, para. 4(a)).
respect to the first question, the MMF has filed an application for a trademark
for Manitoba Metis Federation. The application, filed June 8, 2000, is currently
pending. It is clear, however, from the evidence, that the MMF has acquired
common law rights in the trademark through use of the name dating back to at
least until 1967 when the MMF was incorporated. Further, it is clear that the
name Manitoba Metis Federation is a service mark in which the Complainant has
common law rights as well. Common law rights are sufficient to establish the
existence of a trademark or service mark for the purpose of these proceedings.
Respondent’s domain name is identical to the name that identifies the
Complainant and by which the Complainant is commonly known. The Respondent has
not submitted any evidence to show that he is referred to or commonly known as
the Manitoba Metis Federation. The fact that the Respondent is a member of the
MMF and a Vice-Chair of the Teulon Local is not sufficient. Because the
Respondent’s domain name is identical to the Complainant’s name, for which
the Complainant has common law trade mark and service mark rights, the first of
the three elements is resolved in favour of the Complainant.
to the second element, the Respondent has been unable to establish a legitimate
interest in the domain name. Again, the Respondent’s status within MMF is not
sufficient to establish a legitimate interest. Using the criteria set out in
Para. 4(c) of the ICANN Policy, there is no evidence that the Respondent was
using or preparing to use the domain name or a name corresponding to the domain
name in connection with the bona fide offering of goods or services. Neither has
the Respondent been commonly known by the domain name within the meaning of the
policy. That leaves the question of whether the Respondent is making legitimate
non-commercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert customers or to tarnish the trademark or service
mark at issue.
evidence shows that the Respondent is using the site
manitobametisfederation.com to post information of a political nature to advance
his opposition to the current president and administration of MMF. Initially, he
was using the logo of Manitoba Metis Federation Inc. (Guns and Bison) and
referred to the site as “Official Site of the Manitoba Metis Federation”.
Following receipt of correspondence from counsel for MMF dated June 5, 2000, he
ceased using the logo and took out the word “Official”. In his response to
correspondence from counsel for the Complainant, the Respondent by e-mail of
June 8, 2000, stated, « You might let your client know the site is for
sale if the price is right. »
As of September 12, 2000, accessing the site brought one to
« Manitoba Metis Federation News ». This implies that this is news
of the MMF, when in fact it is information that is selected and published on the
site by the Respondent and that is not sanctioned by the MMF. During the last
year, the Respondent has continued to publish on the web site under the title « Manitoba
Metis Federation News » and « Manitoba Metis Federation Updates ».
Currently (as of June 5, 2001), the Respondent is using the words « Manitoba
Metis Federation News ».
the Respondent has ceased using the logo and has taken out the word
“Official”, he has nevertheless demonstrated an illegitimate purpose in
acting in this fashion, and the site could easily be confused by someone as
being a site sponsored by the MMF. The site is not a forum for the free exchange
of ideas since the Respondent controls the content of the site. Furthermore, the
Respondent will not be permitted to hide behind a free speech argument in
circumstances where, as here, the Respondent has set up the site with links that
lead to his own personal commercial enterprise. It is clear as well that, even
if the Respondent did not intend to obtain commercial gain from the site, he
does intend to tarnish the trademark and service mark at issue here. Indeed,
that appears to one of the purposed of the site. ICANN Policy, para. 4(c)(iii).
The second element of the test, therefore, falls in favour of the
to the issue of bad faith, I have concluded that the Respondent has registered
and is using the domain name manitobametisfederation in bad faith. Evidence of
bad faith can include using a domain name to intentionally attract, for
commercial gain, Internet users to the Respondent’s web site (ICANN Policy,
para. 4(b)(iv)). Based on the evidence, at least one reason for the Respondent
having registered the name was to link the name to a web site from which he
offers commercial services which he owns. There is, however, additional evidence
of bad faith in this case. Mr. Belhumeur has
registered the name primarily for the purpose of selling it at a commercial
profit. This aim is to be achieved by using the domain name site as a forum to
publish political views critical of the present MMF administration in the hope
MMF will purchase the site. He has also engaged in a pattern of registering a
number of domain names all of which use the name of Metis or other Aboriginal
entities in the Province of Manitoba. These include the following:
Assembly of Manitoba Chiefs -
The Respondent has not restricted his registrations solely to entities in
the Province of Manitoba. He has also registered a domain name for the National
Association of Friendship Centres (nationalassociationoffriendshipcentres.com)
and has even gone so far as to register the name of a Federal Government agency
Aboriginal Business Canada (aboriginalbusinesscanada.com).
The fact that the Respondent has registered the name
He has also posted a message to the Assembly of Manitoba Chiefs on
the domain name
is a message to the AMC to get in touch with me if you would like your .com
Since at least October 17, 2000, accessing
manitobametisfederation.com provides several
of the name manitobametisfederation.com will lead people to the link with the
The attempt by the Respondent to create the impression of
affiliation is further
In Squires v. Zuccarini the Panel determined that there had
been bad faith in the
“It would certainly appear from the
circumstances, including the high volume of similar conduct, that the respondent
has registered and used this and other domain names for the purpose of
capitalizing upon confusion and mistakes by end-users of the web who unwittingly
tap into their keyboards any variation of the correct domain names. In other
words, by creating a likelihood of confusion with the complainant’s mark, the
respondent can pose as the source of information that would otherwise come from
the holder of the actual domain name. For these reasons, the Panel has
determined that, under the definitions and requirements of the applicable policy
and rules, respondent has made a bad faith registration and use of the domain
name under dispute.”
case is similar to the Squires case. The Respondent here has engaged in a
pattern of registering domain names containing the names of Metis and Aboriginal
organizations. His offer to sell the name if “the price is right” is a clear
indication of intention to sell the site at a price higher than the
out-of-pocket expenses. From the Respondent’s own submission, it is also clear
that he registered and uses the domain name to prevent the MMF from using their
trade mark and service mark in a corresponding domain name. Furthermore, there
is certainly a pattern of conduct in this regard in terms of linkage to the
Respondent’s commercial site.
I therefore find that the Respondent in this case has acted in bad faith within the meaning of the ICANN Policy.
For all the foregoing
reasons, I conclude that the domain name registered by the Respondent is
identical to or confusingly similar to the Complainant’s name in which the
Complainant has common law trademark and service mark rights, that the
Respondent has no rights or legitimate interest in the domain name, and that the
Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to the ICANN Policy and Rules, I direct that the
registration for the domain name “manitobametisfederation.com” be
transferred to the Complainant.
In making this decision, I wish to make it clear that I am not in any way suggesting that the Respondent does not have a right of free speech in relation to comments and criticisms he may wish to make with respect to the MMF and its current president and administration. The bad faith use in a domain name in these circumstances, however, of the trademark of the MMF is not the proper forum.
Dated at Saskatoon, Saskatchewan, this 5th day of June, 2001.