The Complainant is Desjardins Capital Management Inc. of Montréal, Québec, Canada, represented by McCarthy Tétrault LLP, Canada.
The Respondent is Perfect Privacy LLP of Jacksonville, Florida, United States of America (“USA”) / DesJardins, Julie of Hollywood, California, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2018. On June 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2018, 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 June 19, 2018 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 June 23, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 23, 2018. 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 enterprise which is part of the Fédération des Caisses Desjardins du Québec (“the Desjardins Fédération”), a financial institution and financial service provider. The Complainant states that the Desjardins Fédération has operated in Québec, Canada and in the USA since 1900. The Complainant itself was founded on January 24, 2001 and is an investment fund manager specializing in venture and growth capital. Besides the Complainant, the Desjardins Fédération’s group includes another enterprise which uses the term “Desjardins Capital” as a corporate identifier, namely Desjardins Capital Inc., founded on December 21, 1994.
The Complainant has operated under its present name since November 21, 2017 and prior to this was named both Desjardins Venture Capital and, in the alternate French language version, Desjardins Capital de Risque from September 2, 2003. The Complainant has submitted evidence showing its widespread use of the French variant of its corporate name in the form of advertising and marketing materials and media coverage spanning the years from 2003 to 2017. The Complainant has also submitted evidence showing its use of the name Desjardins Capital on websites, search engines and social media since it was renamed in 2017.
In terms of a Trademark License Agreement dated May 17, 2018 and May 28, 2018 the Desjardins Fédération granted the Complainant a non-exclusive, royalty-free license to use the unregistered mark DESJARDINS CAPITAL in Canada and such other territories as may be authorized in writing. In terms of clause 5.1.1 of the said Agreement, the Complainant acknowledges that such mark is the exclusive property of the Desjardins Fédération. In terms of clause 2.3 of the said Agreement, the Desjardins Fédération authorizes the Complainant to use such mark as part of its domain name(s).
The disputed domain name was created on July 26, 2009. The website associated with the disputed domain name contains an “Under Construction” page featuring pay-per-click (“PPC”) hyperlinks. Such site features the Registrar’s branding and appears to have been published by it. Some of the said hyperlinks refer users to websites of wealth management or private equity firms competing with the Complainant.
The registrant name appearing on the WhoIs record for the disputed domain name is “DesJardins, Julie”. The Registrar states in its verification response “Julie DesJardins is the current registrant of [the disputed domain name]”. Nothing else is known regarding the Respondent who has not participated in the present Administrative Proceeding. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant sets out the manner in which it and other members of the Desjardins Fédération’s group have used the name “Desjardins Capital” as a corporate identifier since at least the beginning of 1995. The Complainant asserts that by virtue of its Trademark License Agreement, whereby it is authorized to use the mark DESJARDINS CAPITAL as part of its domain names, it is the appropriate entity of its group to which to transfer the disputed domain name.
The Complainant notes that the Respondent is not a person affiliated to the Desjardins Fédération and is not authorized to use the mark DESJARDINS CAPITAL or the name “Desjardins”. The Complainant asserts that the mark DESJARDINS CAPITAL is a distinctive identifier which the public associates with the activities of the Complainant and its affiliated entities, adding that due to the activities of Desjardins Capital Inc., such mark has been employed for over 20 years in connection with financial services, particularly the issuing of securities on capital markets, generating a high degree of public recognition. The Complainant asserts that it has also used another version of the mark DESJARDINS CAPITAL itself since 2003 by virtue of its former French language name and in terms of its current English language name, relating to its services as a fund manager that offers strategic and financial support to growing businesses and innovative start-ups. The Complainant states that a search of the words “Desjardins Capital” on the Google search engine demonstrates links to many webpages managed by its group and that searches on social media also confirm its association with that term in the context of financial services.
The Complainant asserts that the specific use of the mark DESJARDINS CAPITAL in the disputed domain name confirms that such mark is a distinctive identifier of the Complainant and its affiliates because the associated website shows links to websites managed by such affiliates or to competitors of the Complainant, adding that many links appear in the French language and thus are seemingly directed at a francophone audience, in the same manner as the Complainant directs its own business.
The Complainant submits that the disputed domain name precisely comprises the entirety of the trademark to which the Complainant has rights and accordingly is identical or confusingly similar thereto. The Complainant contends that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the mark DESJARDINS CAPITAL. The Complainant states that it has failed to detect any evidence that the Respondent is commonly known by the words in the disputed domain name and adds that there is neither evidence of the disputed domain name being used by the Respondent in connection with a bona fide offering of goods or services nor evidence of demonstrable steps by the Respondent to commence business activities associated with the disputed domain name. The Complainant notes that the website associated with the disputed domain name has remained under construction since 2009 and thus that there is no evidence of credible investment in website development, promotional materials, a genuine business plan or other bona fide indications.
The Complainant describes the website associated with the disputed domain name noting that the main page has a tab which appears to redirect users to a group of the Complainant’s affiliates but which actually redirects to other links unrelated to the Complainant or its affiliates. Such links advertise wealth management or investment websites that are competitors of the Complainant and are apparently PPC links. The Complainant notes that this use cannot confer a right or legitimate interest upon the Respondent as the links do not constitute a bona fide offering of goods or services and are calculated to take unfair advantage of the Complainant’s DESJARDINS CAPITAL mark. The Complainant notes that the language of many of the links is French and that these offer services from the Complainant’s competitors based in Québec or elsewhere in Canada, thus further demonstrating knowledge of the Complainant and intent to target it on the Respondent’s part. The Complainant submits that it is impossible for someone familiar with the Québec market for financial services to be unaware of it and its affiliates’ existence as a financial institution.
The Complainant asserts that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users, for commercial gain, to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant states that in some cases under the Policy, including the present case, the absence of an evidence-based rationale for the registration of a domain name coupled with no credible explanation for the Respondent’s choice of domain name can be evidence of bad faith. The Complainant also suggests that the operation of a website appearing to be “under construction” for eight years while offering PPC links may also be construed as evidence of bad faith.
The Complainant provides evidence showing that it sent notice letters to the email and postal address of the Respondent on February 7, 2018, adding that the privacy service then adopted by the Respondent assigns specific email addresses to each of its customers such that the Respondent should have received the email concerned. The Complainant states that no response to such letters was received and that the Respondent’s failure to reply should be seen as evidence of bad faith. The Complainant also submits that the use of a privacy shield by the Respondent should be considered as evidence of bad faith because this facilitates cybersquatting and indicates an intention to delay the Complainant or to avoid being contacted in connection with the Respondent’s PPC activities. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant claims that it has standing to bring the present Complaint by way of the trademark license described in the factual background section above. The said license is non-exclusive and contains an acknowledgement on the part of the Complainant that the Desjardins Fédération is the owner of the relied-upon mark. The principles to which the Panel may have regard on the topic of whether a trademark owner’s affiliate or trademark licensee has standing to file a UDRP complaint are discussed in section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This section notes that a trademark owner’s affiliate, such as a subsidiary of a parent or of a holding company or an exclusive trademark licensee is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. It adds that while panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint and that absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.
In the present case, no such authorization from the Desjardins Fédération has been supplied by the Complainant. Instead, the Complainant argues that its license entitles it to bring the present Complaint because it authorizes the Complainant to hold domain names corresponding to the mark concerned. The Panel is not wholly convinced by the Complainant’s assertion in this regard given that the license does not confer the exclusive right upon it to hold such domain names. In these circumstances, by virtue of the license alone, the Complainant has no better right than any other non-exclusive licensee under a similar license granted by the Desjardins Fédération. Nevertheless, the Panel notes that in a number of cases under the Policy panels have allowed a complainant with similar beneficial rights to those of the Complainant in the present case to bring the complaint concerned due to the fact that such complainant was not only a non-exclusive licensee but also a wholly owned subsidiary of the mark owner and operated under a corporate name corresponding to the licensed mark. This latter factor in particular has been expressed as persuasive on the issue (see Komatsu Deutschland GmbH v. Ali Osman / ANS,WIPO Case No. D2009-0107). The Complainant in the present case fulfils these criteria. This demonstrates, in the Panel’s view, that the Complainant has an affiliation with the trademark owner which is of greater proximity and substance than that of a mere non-exclusive licensee (by contrast, see the treatment of this issue by the panel in NA PALI SAS v. BWI Domains, Domain Manager,WIPO Case No. D2008-1859 where no such additional factors were found to be present). In these circumstances, the Panel finds that the Complainant is entitled to assert its rights in the DESJARDINS CAPITAL mark. This mark is an unregistered or common law trademark and accordingly the Panel therefore turns to consider whether the evidence produced by the Complainant is sufficient to establish it as a UDRP-relevant right.
Section 1.3 of the WIPO Overview 3.0 indicates that in order to establish unregistered or common law trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. The section goes on to note that relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. In the present case, the Panel is satisfied that the Complainant has produced adequate materials to support its assertion that the DESJARDINS CAPITAL mark is such a distinctive identifier based upon its comprehensive evidence of lengthy use as the sole or dominant element of its and its affiliate’s public facing corporate identifiers including by way of the filing of numerous public documents, the relative media recognition dating from 2003 and its use in multiple online and offline advertising/marketing materials.
Having found that the Complainant has rights in the DESJARDINS CAPITAL mark and has standing to bring the present Complaint, the Panel turns to a comparison of the mark and the disputed domain name, disregarding the generic Top-Level Domain (“gTLD”) “.com” as is customary in cases under the Policy (see section 1.11.1 of the WIPO Overview 3.0). This leaves a side-by-side comparison between the mark DESJARDINS CAPITAL and the second level of the disputed domain name “desjardinscapital” (see section 1.7 of the WIPO Overview 3.0). It can be seen that these are alphanumerically identical with the exception of an additional space between the two elements of the mark. Such space is of no significance as it is not permissible to place a space into a domain name and accordingly this is either removed or is sometimes replaced by another character such as a hyphen.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
In the present case, the Panel is of the view that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not affiliated to the Desjardins Fédération and is not authorized to use the mark DESJARDINS CAPITAL. The Complainant also notes that the disputed domain name has been used in connection with PPC hyperlinks pointing to the Complainant’s competitors. Section 2.9 of the WIPO Overview 3.0 notes that UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. In all of these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name.
The Respondent has not filed a Response and thus has not provided any submissions or evidence pointing to any rights or legitimate interests which it may have, despite having received notification of the Complaint. The Panel notes that the Registrar has indicated in its verification response that the Respondent is named Julie DesJardins. This alerts the Panel to the potential that the Respondent might have claimed rights and legitimate interests in the disputed domain name by virtue of the Respondent’s family name. The Panel notes that there have been previous cases under the Policy where it has been determined that respondents do not require license or authorization to use family names in a domain name genuinely intended for noncommercial use (see, for example, Mathiesen S.A.C. v. Allan Mathiesen,WIPO Case No. D2009-0087). However, it is necessary for a respondent making such a claim to demonstrate a genuine connection to the name concerned. For example, in G. A. Modefine S.A. v. A.R. Mani,WIPO Case No. D2001-0537, the panel noted that the respondent had filed “detailed evidence…and this matter is not in dispute”. There is no evidence whatsoever before the Panel in the present case indicating that the Respondent has such a genuine connection to the family name concerned and, in the absence of a suitable explanation, the Panel cannot think of any reason as to why anyone genuinely intending a noncommercial use would choose to couple their family name with the word “capital” in a domain name. This is especially so where, as in the present case, it renders the disputed domain name confusingly similar to the Complainant’s mark.
Given that the Respondent has failed to bring forward evidence of its rights and legitimate interests in the disputed domain name sufficient to displace the Complainant’s prima facie case outlined above, the Panel holds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name and thus that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant’s case on this topic focuses predominantly on the use of the disputed domain name to display PPC links which target the Complainant or its affiliates and which link to its competitors. It is of some significance that the disputed domain name has not been developed for a lengthy period and that the ongoing publication of PPC links has continued despite the fact that the Complainant has communicated its concerns to the Respondent both in prior correspondence and via the filing of the present Complaint.
The Panel is mindful of the fact that the PPC links on the website associated with the disputed domain name are published by the Registrar and not directly by the Respondent. Nevertheless, as section 3.5 of the WIPO Overview 3.0 notes, a respondent cannot disclaim responsibility for content appearing on the website associated with the domain name and neither the fact that such links are generated by a third party nor the fact that the respondent itself may not have directly profited would by itself prevent a finding of bad faith. The section goes on to note that UDRP panels have found positive efforts by the respondent to avoid links which target the complainant’s mark to be a mitigating factor in assessing bad faith. In the present case, the Panel is unaware of any such efforts, nor is there any evidence that any such measures have been taken, given the fact that the links appear to be directly targeting the Complainant and are focused upon its line of business and principal operating language.
It is also necessary on this topic for the Panel to consider the Registrar’s statement as to the Respondent’s name. The selection and use of a domain name in connection with one’s family name is typically, in and of itself, an unobjectionable activity from the point of view of the Policy. Indeed, this might have been a factor indicating registration and use in good faith in the present case. However, as the Panel has noted above, it cannot see any reason why a person of the family name concerned would wish to couple its name with the word “capital”. In the absence of countervailing evidence, this is much more suggestive of a use targeting the Complainant and its DESJARDINS CAPITAL mark and thus of registration and use in bad faith. Had the Respondent any explanation for its selection of the disputed domain name, the Panel would have expected it to bring this forward. The Panel would also have expected the Respondent to cease publication of the PPC links targeting the Complainant by arranging this with the Registrar as soon as the Complainant issued its initial communication and certainly no later than upon notification of the present Complaint. That it has not, in the mind of the Panel, is sufficient for the Panel to find on the balance of probabilities that the Respondent’s motivation in the registration and use of the disputed domain name could not be considered to be in good faith.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: August 6, 2018
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