National Arbitration Forum

DECISION

Sunshine Coast Bed and Breakfast, Cottage Owners Association v. NA and Omnisquid

Claim Number: FA0410000339577

PARTIES

Complainant is Sunshine Coast Bed and Breakfast, Cottage Owners Association (“Complainant”), represented by Jeanette Panagapka, of Sunshine Coast Bed and Breakfast Cottage, Owners Association, Box 1164, Sechelt, BC, V0N 1V0, Canada.  Respondent is NA and Omnisquid  (“Respondent”), represented by Donna L. Caswell, of Benson and Company, Barristers and Solicitors, 200-270 Highway 33 W., Kelowna, BC, V0N 3A4 BC, Canada.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sunshinecoastbb.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

David P. Miranda, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2004.

On October 7, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <sunshinecoastbb.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 10, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@sunshinecoastbb.com by e-mail.

A timely Response was received and determined to be complete on November 10, 2004.

On November 18, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Sunshine Coast Bed and Breakfast, Cottage Owners Association (hereinafter “Complainant”) is a non-profit organization located in British Columbia Canada, formed in 1999 by a group of Bed and Breakfast Cottage Owners.  Chris Cutlan (“Cutlan”) was a founding member and member of Complainant’s Board until November of 2003.  Mr. Cutlan’s duties on behalf of the Complainant included website development and domain name registration.  Respondent Omnisquid originally contracted to build Complainant’s website and register its domain name.  Complainant’s domain name <bbsunshinecoast.com> was registered on March 8, 2001, for use by Complainants.  In December of 2002, Respondent registered the domain name in dispute <sunshinecoastbb.com> following Cutlan’s dismissal from the Complainant’s board.  Cutlan then began soliciting Complainant’s members to advertise on his website.

Complainant contends that Respondent registered the name <sunshinecoastbb.com> in order to create confusion among Complainant’s members, advertisers and guests in that the similarity between Complainant’s domain name <bbsunshinecoast.com> and <sunshinecoastbb.com> created confusion among its members, business partners and prospective customers.

B. Respondent

Respondent contends that Complainant has failed to establish the requisite elements of a violation of ICANN policy because it has failed to establish that the domain name at issue <sunshinecoastbb.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.  Respondent contends that Complainant has failed to provide evidence to suggest that the domain name at issue is a registered trademark.  Respondent contends that Complainant’s webpage logo does not include the <bbsunshinecoast.com> domain as part of the logo and that Complainant’s domain name is not used as a trademark, but merely as an identifying source for its website.  Respondent further contends that Complainant’s domain name comprised of “bbsunshinecoast” is merely descriptive because “bb” describes bed and breakfast, and “sunshinecoast” the geographic location of where the services are provided.  Respondent contends that Complainant has failed to establish that <bbsunshinecoast.com> is either inherently distinctive, or that it has acquired distinctiveness through secondary meaning.  The Respondent submits proof from Internet searches that show other commercial enterprises that are advertised on the Internet using search words SunshineCoast Bed and Breakfast, or some variation thereof.

C. Additional Submissions

The Panel received a supplemental response from the Complainant which was not submitted in accordance with the Rules, however, the Panel did consider the material provided.

FINDINGS

Complainant Sunshine Coast Bed and Breakfast, Cottage Owners Association of British Columbia, Canada has used the name <bbsunshinecoast.com> on its website since March of 2001.  Although Complainant has shown use of <bbsunshinecoast.com> its domain name, it has failed to show sufficient trademark or service mark rights to warrant transfer under the UDRP rules.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant contends that it has used the domain name <bbsunshinecoast.com> since March of 2001 both as a website and as a trademark for the purpose of advertising.  The proof submitted shows that the domain name <bbsunshinecoast.com> has been used in advertising for the purpose of showing where Complainant’s website is located on the Internet, not as a source identifier for its services.  No proof has been submitted showing a trademark or service mark registration by any governmental authority.

Although generally trademark or service mark rights are established by showing that the mark is registered by a government authority or agency, common law rights may be acquired through a showing of secondary meaning associated with the mark and Complainant.  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003).

In the absence of registration to the mark, the Complainant must establish common law trademark rights by demonstrating sufficiently strong identification of its mark by the public, showing the mark has acquired secondary meaning.  Complainant has failed to satisfy its burden of providing proof upon which a finding of secondary meaning could be based.  Although a Complainant in a proceeding such as this may establish common law rights to a mark, the Complainant in this case has failed to do so.  See generally NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying Complaint because Complainant was not the owner of the trademarks);  Razorbox, Inc. v. Skjodt,  FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that Complainant did not establish the requisite trademark or common law rights to grant Complainant the necessary standing for the Panel to find in its favor as Complainant’s pending trademark application did not, in and of itself, demonstrate trademark rights in the mark applied for); Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”); Tees.com, LLC v. Emphasys Technologies, Inc., FA206, 362 (Nat. Arb. Forum, Dec. 27, 2003); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Molecular Nutrition, Inc. v. Network News and Publ’ns., FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principals outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”).

Thus, Complainant has failed to establish Policy ¶4(a)(i).

Since Complainant has failed to establish the first element of the Policy, it is unnecessary to address the claims under the remaining two elements.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002). (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Priest Holms v. Whois Protection Serv., FA288, 395 (Nat. Arb. Forum, Aug. 17, 2004).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <sunshinecoastbb.com> domain name remain with Respondent.

David P. Miranda, Esq., Panelist
Dated: December 1, 2004

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