The Complainant is Invesco Canada Ltd. of Toronto, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Shiari Chen of Toronto, Ontario, Canada / Whoisguard Protected, WhoisGuard Inc. of Panama, Panama. 2. The disputed domain name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2015. On December 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 4, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform disputed domain name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform disputed domain name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform disputed domain name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2016.
The Center appointed Haig Oghigian as the sole panelist in this matter on January 18, 2016. 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 is a Canadian company operating internationally. It is an independent investment management company operating in the financial services market. The Complainant states that it has been utilizing the TRIMARK trademarks for more than 20 years. Its TRIMARK trademarks have been registered since at least 1988.
The Complainant is the owner of multiple trademarks for the word “TRIMARK” on its own, combined with other words, and with an accompanying logo. The Complainant is also the owner of a large number of domain names containing its marks. 5. Parties’ Contentions A. Complainant
The Complainant requests that the disputed domain name be transferred to it.
The Complainant asserts that there is confusing similarity between the Complainant’s trademarks and the disputed domain name as (i) the disputed domain name incorporates the mark TRIMARK in its entirety and (ii) the addition of the words “lending groups”, given their relation to the Complainant’s field of financial services, increases the likelihood that consumers would believe that the disputed domain name refers to a website of the Complainant.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or variations thereof. The Complainant adds that (i) the Respondent is not commonly known by the disputed domain name, “trimark”, or “trimarklendinggroups”; (ii) the Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant; and (iii) the website under the disputed domain name is being used to divert Internet traffic to a “Scam Website” that seeks to elicit sensitive personal information from unwary or unsophisticated visitors (and is therefore not a bona fide offering of goods and services).
Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith as the Respondent has deliberately chosen a domain name with a connection to the Complainant’s widely known marks to attract customers to the Respondent’s website and with the purpose of disrupting the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the complainant to prove that the domain name is identical or confusingly similar to a trademark in which the complainant has rights.
The disputed domain name contains the TRIMARK trademark in its entirety, and “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Further, the addition of “lendinggroups” increases the confusing similarity between the disputed domain name and the Complainant’s trademarks.
For the above reasons, and in accordance with previous UDRP decisions, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));
- an indication that the respondent has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is clear on the given evidence that the disputed domain name was registered long after the Complainant registered and started to use the TRIMARK marks. Further, there is no evidence that the Respondent has been or is commonly known by the disputed domain name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Further, the Respondent’s use of the disputed domain name to divert Internet traffic to a “Scam Website” that seeks to elicit sensitive personal information from visitors does not provide a legitimate interest in the disputed domain name.
Therefore, in the absence of any Response to rebut the Complainant’s prima facie case, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate the respondent’s bad faith registration and use of the domain name. Such circumstances include:
- use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the respondent’s website or location (paragraph 4(b)(iv)).
In the Panel’s view, the Respondent must have had knowledge of the Complainant’s rights in its marks when the Respondent registered the disputed domain name, since the Complainant’s marks are unique and have been used for many years. The choice of the name was therefore intentional and not random. “Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith”. Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. The TRIMARK trademarks are widely known and the Respondent has no connection to the Complainant, is not authorized and does not have a legitimate purpose to use the Complainant’s trademarks.
Finally, the Panel finds that by fully incorporating the Complainant’s trademarks into the disputed domain name and by using it in connection with a website that diverts Internet traffic to a “Scam Website” that seeks to elicit sensitive personal information from visitors, the Respondent falsely creates the impression that it is associated with the Complainant, such conduct disrupts the Complainant’s business, and this is evidence of fraud or scam and supports a finding of bad faith.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) of the Policy. 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.
Haig Oghigian
Sole Panelist
Date: January 25, 2016
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