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August 27, 2010 / Nate Harris

Her Majesty the Queen v. DNA International

Summary of Her Majesty the Queen in right of Ontario, Canada as represented by the Minister of Government Services v. DNA International
(Nat. Arb. Forum Claim No. 1333246)
Filed June 30, 2010; Decided August 24, 2010 (Panelist: Alan L. Limbury)

Domain Names: <serviceontario.mobi>

serviceontario.mobi

serviceontario.mobi

The Parties

The Complainant is none other than the Queen herself—Her Majesty the Queen in right of Ontario, Canada as represented by the Minister of Government Services (“Ontario”). The Canadian Province of Ontario has used the trademark SERVICEONTARIO in connection with government services since 1993, and registered the mark in 2002.

Other than the fact that the Respondent DNA International (“DNA”) is an Italian entity, little other information about it is revealed in the decision. DNA registered both the disputed domain name and the domain name <bconline.mobi> on October 19, 2006, shortly after “.mobi” domain names became available. See Her Majesty the Queen in right of the Province of British Columbia v. DNA Int’l, Claim No. 1246701 (Nat. Arb. Forum Apr. 3, 2009) (ordering transfer of <bconline.mobi>). However, for its entire existence the disputed domain has resolved to a site that does nothing more than display an “under construction” notice. According to DNA, though it has incurred expenses in developing a legitimate website, those efforts have been hampered by the “economic downturn.”

On October 19, 2009, Ontario emailed DNA requesting that the disputed domain be transferred to Ontario. DNA responded saying, “[o]ur firm has incurred administration, marketing, and development costs in the order of 20,000 [euros] in relation to this domain name and website. If you are interested in acquiring ownership of the domain name, we are willing to discuss a reasonable compensation for lost revenue.”

Procedural

The parties filed additional submissions under Forum Supplemental Rule 7, with Ontario objecting to the content of DNA’s additional submission.

The Panel accepts Ontario’s additional submission only as far as it argues that (i) DNA registered the domain name “two years prior to the current economic situation,” and (ii) DNA has provided no evidence of demonstrable preparation to use the domain.

DNA’s additional submission is not considered, because it merely rehashes DNA’s earlier argument.

Identical or Confusingly Similar

The Panel finds that Ontario has rights in the SERVICE ONTARIO mark. Ignoring the “.mobi” suffix, the disputed domain name is identical to the mark.

Rights or Legitimate Interests

“The Panel finds that the SERVICEONTARIO mark is distinctive and well known,” which is sufficient for a prima facie showing that DNA has no legitimate rights in the domain.  Nonetheless, DNA could have countered with evidence it was preparing to use the domain in connection with a bona fide offering of goods or service; even “perfunctory preparations” would be enough. However, DNA offered no evidence of such preparations.

Thus, DNA has no rights or legitimate interest in the disputed domain name.

Bad Faith

The Panel considers whether the “20,000 euro” email constitutes an offer for to sell the domain at a price in excess of DNA’s documented out-of-pocket costs, as this would be evidence of bad faith under Paraghraph 4(a)(iii) of the Policy. DNA argued that the email was not an offer, since DNA did not demand payment nor even receive a response from Ontario. The Panel disagreed, however, finding that the email was an offer to sell the domain at an excessive price, and thus was evidence of bad faith use.

Since the offer was made three years after registration of the domain, however, it may not be evidence of bad faith registration. Regardless, the Panel finds bad faith registration on the basis of the distinctiveness of Ontario’s mark (implying that DNA knew of the mark at the time of registration); that the disputed domain was registered as soon as “.mobi” domains became available;  the finding of bad faith registration by the Panel in the <bconline.mobi> case; DNA’s failure to do anything with the website for over three years; and “the instant willingness of Respondent to sell the Domain Name to Complainant for an amount of the order of 20,000 Euros, in response to the request for transfer received by Respondent from Complainant.” [I’d be “instantly willing” to sell an unused domain name for 20,000 euros too if someone asked; does that make me a bad [faith] person?]

Thus, the Panel finds the disputed domain name was registered and use in bad faith.

Decision

“Complainant has established all the elements entitling Her to transfer of the Domain Name.” [God save the UDRP!]


Commentary

Though it’s the last-listed reason for finding bad faith registration, I get the sense that the “20,000 euro” email is what sunk DNA. Yet despite the Panel’s finding, the email clearly doesn’t “constitute[] an offer” in any contract sense of the word. There was nothing about that email that the “offeree” Ontario could accept. It simply states that DNA had incurred 20,000 euros in expenses and, at most, invites an offer from Ontario. Simply mentioning such a clearly bogus amount may be bad faith itself. But to call this email an “offer” is just incorrect, in my opinion. It matters because this Panel’s approach could discourage parties from frankly discussing costs and, possibly, coming to a settlement agreement without incurring the expense of a UDRP proceeding.

That said, it seems clear DNA wanted 20,000 euros for the domain. It probably wouldn’t have taken much probing by Ontario to generate a real offer from DNA. But to call this first email an offer is premature.

Epilogue

8/27/2010: <serviceontario.mobi> has not yet been transferred.

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