The Complainant is 9120 Real Estate Network L.P. of Laval, Quebec, Canada, represented by Corporation d'avocats Mathieu Inc., Canada.
The Respondent is Jason Lemire, Privestors Conseils Inc., Privestors Inc. of Blainville, Quebec, Canada, represented by BBK Avocats Inc., Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with united-domains AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 29, 2015. On July 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 31, 2015.
On September 1, 2015, the Center received email communications from Complainant and Respondent.
The Center appointed J. Nelson Landry as the sole panelist in this matter on September 9, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant has registered the domain name on April 30, 2009 and has used said domain name since that date.
The Complainant is the owner of the trademark VIA CAPITALE registered in Canada on August 23, 2011, under No. 806069 in relation with various services of a real estate agency including real estate brokerage services (herein the “Trademark VIA CAPITALE”).
The disputed domain name was registered by the Respondent on December 10, 2014.
The Respondent was never employed nor affiliated with the Complainant and furthermore, the Complainant has never licensed or permitted the Respondent to use the Trademark VIA CAPITALE in any capacity, including authorization to register the disputed domain name.
On April 20, 2015, the Complainant caused to be served to the Respondent a cease and desist letter dated April 17, 2015, requesting the Respondent to transfer the disputed domain name to the Complainant with a deadline stipulated for April 24, 2015. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name which incorporates its registered Trademark VIA CAPITALE in full is therefore confusingly similar to its Trademark since the addition of the descriptive term “vendu” (French for “sold”) and the suffix “.immo” does not in any way diminish the confusing similarity and visitors to the web site will be misled into believing that the Respondent offers real estate services related to the Complainant or its business.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name since according to the Complainant the Respondent has never been commonly known by the Trademark VIA CAPITALE or by the disputed domain name and furthermore, had never been employed by or affiliated with the Complainant and not having received any permission or license to use the Complainant’s Trademark VIA CAPITALE
The registration of the disputed domain name incorporates the whole of the Complainant’s Trademark VIA CAPITALE without any authorization or license from the Complainant and the Respondent maintains the said disputed domain name notwithstanding the reception of a cease and desist letter from the Complainant. The latter represents that the disputed domain name was registered in bad faith.
The Complainant further represents that the registration of the disputed domain name prevents the Complainant from reflecting its Trademark VIA CAPITALE in a corresponding domain name.
The Complainant observes that the Respondent is a licensed real estate agency where its president is a licensed real estate broker and therefore, both the Respondent and its president are competitors of the Complainant and its affiliates. The Complainant submits that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, a competitor.
The Complainant further represents that the Respondent knew or must have known that the Complainant had registered and used the domain name , since April 30, 2009.
The Complainant states that the Respondent as a real estate broker under a name subject to the approval of the “Organisme d’autoréglementation du courtage immobilier du Québec”, which approval may not be obtained from said organism by reason of the Complainant being the registered owner of the Trademark VIA CAPITALE is using the said Trademark VIA CAPITALE and has licensed others to use same in relation to their real estate brokerage activities.
For these reasons, the Complainant submits that the disputed domain name is used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The Complaint was notified to the Respondent by the Center on July 29, 2015. The Respondent did not send a Response to the Center within the deadline but on September 1, 2015, the Respondent communicated by email with the Center mentioning that it had received a copy of the Complaint, noted that it had 20 calendar days to submit a Response. Yet the Respondent’s attorney received a copy of the Complaint notified on August 10, 2015, but did not submit any Response. On August 31, 2015, the counsel for the Respondent sent an email to the Center acknowledging the reception of the notification of Respondent’s default to file a Response. The Center was thus informed that the attorney responsible for the Respondent’s file was presently out of office since August 21, 2015 and would be back by Monday, September 7, 2015 and therefore asked for an extension of the delay to submit a Response.
On September 3, 2105, the Center communicated by email with the Respondent’s lawyer, mentioning the rules which may allow the Center, in exceptional cases, to extend the period of time for the filing of the Response and having considered the request and taking into consideration the Complainant’s objections, the reception of the request after the due date for submission of the Response and noting lack of appearance of exceptional circumstances, declined to extend the period for Response. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has clearly established its ownership and continuing use of the Trademark VIA CAPITALE and that the disputed domain name incorporates in identical form the whole of the said Trademark with the addition of the descriptive term “vendu” also present in the domain name that the Complainant previously registered on April 30, 2009. It is well known in UDRP decisions that the addition of a descriptive term such as “vendu” (French for “sold”) and of the generic Top-Level Domain (“gTLD”) “.immo” does not diminish in any way the likely confusion with the Complainant’s Trademark VIA CAPITALE and the Panel finds confusing similarity in the present circumstances.
The first criterion of the Policy has been met. B. Rights or Legitimate Interests
The Complainant has met its prima facie evidence burden in stating that the Respondent has never been commonly known by the Trademark VIA CAPITALE or by the disputed domain name, on the one hand and was never affiliated with the Complainant who has never given any authorization to the Respondent to use its Trademark VIA CAPITALE nor to register the disputed domain name, on the other hand. Considering the absence of a formal Response, the Panel finds that the Complainant has met its burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name and so finds.
The second criterion of the Policy has been met. C. Registered and Used in Bad Faith
Considering that the disputed domain name is confusingly similar with the Complainant’s registered Trademark VIA CAPITALE and furthermore, that the Complainant and the Respondent being respectively located in Laval and Blainville, two cities adjacent to each other in the province of Quebec, Canada, the Panel is also of the view that the Respondent was surely familiar with the Complainant (i.e., its competitor)and its Trademark VIA CAPITALE as well as with the latter’s domain name identical to the disputed domain name except for the gTLD “.immo”.
The Panel finds that the disputed domain name was registered in bad faith by the Respondent.
The evidence of the Complainant shows that the Respondent is active in providing the services of a real estate agency under the disputed domain name which prevents the Complainant from reflecting its Trademark VIA CAPITALE in a corresponding domain name. The additional representations that the Respondent must obtain the approval of the regulatory body for real estate brokerage activities which cannot be obtained because of the incorporation of the Complainant’s Trademark VIA CAPITALE and yet the Respondent carries on real estate brokerage activities under the disputed domain name, thereby causing Internet visitors to believe that the Respondent is a licensed broker likely associated with the Complainant in respect of its real estate brokerage activities.
The Panel considers that all those unauthorized activities by the Respondent demonstrate that the latter is using the disputed domain name in bad faith and so finds.
The third criterion has been met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Date: September 17, 2015
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