The Complainant is Moody’s Analytics Global Education (Canada) Inc., Canada, represented by Wilson Lue LLP, Canada.
The Respondent is Michael (Mike) Robinson, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2020. On February 21, 2020, the Complainant submitted a supplemental filing. On February 21, 2020, the Respondent sent an informal email communication to the Center. The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 6, 2020. 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 carries on business as The Canadian Securities Institute (“CSI”) and is the successor of CSI Global Education Inc. The Complainant’s business was founded in 1970 and it has provided financial education services, career training and development services, certifications and designations to professionals in the financial, securities and insurance services fields since that time. CSI offers over 120 courses in Canada, covering securities and mutual funds trading, as well as training in the fields of financial derivatives, risk management, credit and lending, financial planning and wealth management, trusts and insurance. The Complainant is endorsed by regulatory authorities across Canada, and is widely recognized by professionals and firms in the financial industry. Its Canadian Securities Course has become a baseline regulatory requirement to trade in securities and mutual funds within Canadian financial institutions. The Complainant owns two relevant trademark registrations in Canada, as follows: THE CANADIAN SECURITIES INSTITUTE Trademark Registration No. TMA 459,179 dated June 30, 1989; and CANADIAN SECURITIES INSTITUTE & Design Trademark Registration No. TMA 480,237 dated December 6, 1994; The Complainant also owns a United States trademark registration for CANADIAN SECURITIES INSTITUTE (No. 3,175,713) and a European Union trademark registration for CSI (No. 009037391). The Complainant has promoted its services through the website as “www.csi.ca” since at least as early as 1999, and it also owns the related domain name The disputed domain name The Complainant submits that the disputed domain name is identical to the Complainant’s registered trademark THE CANADIAN SECURITIES INSTITUTE. The only absent element is the article “the”, which does not distinguish the disputed domain name The Complainant contends that the Respondent is not commonly known by the disputed domain name, and has not been authorized or licensed by the Complainant to use the Complainant’s registered trademarks. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and services. The disputed domain name reverts to a parking page which features links to third parties which offer competitive products/services to those of the Complainant. Accordingly, the Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant further contends that the Respondent has registered and used the disputed domain name in bad faith. The Respondent must have known about the Complainant’s rights in THE CANADIAN SECURITIES INSTITUTE mark, because as early as September, 2017 the Respondent’s related website contained a statement that “The Canadian Securities Course (CSC) is an entry-level course offered by Canadian Securities Institute (CSI)…” Further, the disputed domain name reverts to a website which features links to websites of third parties offering competing services. The Complainant wrote two letters demanding that the Respondent transfer the disputed domain name to the Complainant. The Respondent did not reply to those letters in a timely manner. In the supplemental filing by the Complainant, the Respondent’s belated email response includes an offer to sell the disputed domain name for USD 1,000. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interest 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 Panel finds that the Complainant does have recognizable trademark rights in THE CANADIAN SECURITIES INSTITUTE by virtue of its trademark registrations listed in paragraph 4 of this Decision. The Panel finds that the disputed domain name Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant clearly owns rights in the registered mark THE CANADIAN SECURITIES INSTITUTE as noted in paragraph 4 of this Decision. The Complainant has used its trademark THE CANADIAN SECURITIES INSTITUTE since at least as early as 1989 and has an established reputation in the financial and securities industry in Canada, where its courses are widely recognized among professionals and financial institutions. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was aware of the Complainant’s trademark, particularly because the Respondent chose to make reference to the Complainant and its trademarks on his related website at The Respondent was not authorized or licensed to use the Complainant’s trademark, and the Respondent is not commonly known by the mark THE CANADIAN SECURITIES INSTITUTE. In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint. Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As set out above, the Panel is prepared to find that the Respondent was clearly aware of the Complainant’s rights in THE CANADIAN SECURITIES INSTITUTE mark when he registered the disputed domain name (1) the fact that the Respondent’s recorded address is in the greater Toronto area, where Complainant’s main office and facilities are located; (2) the fact that Respondent previously made references to Complainant’s business and trademarks on his website (3) the fact that the Respondent chose to register a domain name that incorporated the Complainant’s registered trademark THE CANADIAN SECURITIES INSTITUTE virtually in its entirety; (4) the fact that the Respondent is using the disputed domain name in association with a website which features links to third parties who are direct competitors of the Complainant; and (5) the fact that the Respondent has offered to sell the disputed domain name to the Complainant for an amount which is likely in excess of his out-of-pocket expenses. The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith. The Complainant has therefore satisfied the requirements under 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, Christopher J. Pibus
Sole Panelist
Date: March 19, 2020
Full & Egal Universal Law Academy