The Complainant is First Capital Realty Inc., Canada, represented by Gowlings WLG (Canada) LLP, Canada.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ira Gomez, 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 May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2020, 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 May 5, 2020, 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 May 5, 2020. 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 May 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2020. The Complainant is a publicly traded company on the Toronto Stock Exchange. (TSE: FCR.UN). It is one of Canada’s largest owners, developers, and operators of mixed-use real estate. The Complainant’s first trademark, TMA557106, was registered in 2002 for the design mark FIRST CAPITAL. The Complainant’s other trademark registrations include: TMA1074261; TMA1074254; TMA1069168; TMA1069174; TMA557106; and, TMA614245. The Respondent registered the disputed domain name on April 16, 2020. The Respondent used the disputed domain name to resolve to a website, entitled “First Capital Canada” in all capital letters and replicating the Complainant’s design marks mentioned above. 5. Parties’ Contentions A. The Complainant The Complainant alleges that the Respondent registered the disputed domain name on April 16, 2020; that it used the name to resolve to a website impersonating the Complainant’s identity and featuring the Complainant’s trademarks, including its logo which is the subject of numerous trademark registrations. The Complainant alleges further that the Respondent used the disputed domain name as an instrument of fraud, offering fake loans in exchange for a fee, or offering advance fee loans, for which those seeking loans paid a fee but received neither the loan nor return of the advance fee they paid to the Respondent. The Complainant alleges that the Respondent sought, by these means, to take advantage of Canadians facing challenging financial circumstances during the pandemic. The Complainant contends further, that on May 1, 2020, the hosting company terminated the Respondent’s website, on the Complainant’s demand; but that the Respondent reactivated the website through a different hosting company. The Complainant contends that the Respondent’s registration and use of the disputed domain name is contrary to the Policy. The Respondent registered the disputed domain name to attract Internet users to its website by creating a likelihood of confusion that it was sponsored by the Complainant; and that the Respondent disrupted the Complainant’s business for commercial profit. Accordingly, the Complainant requests that the disputed domain name be transferred to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel determines that the disputed domain name is confusingly similar to the Complainant’s trademark, contrary to paragraph 4(c)(i) of the Policy. In particular, the disputed domain name incorporates the Complainant’s trademark, FIRST CAPITAL, in its entirety. (See Research In Motion Limited v. One Star Global LLC,WIPO Case No. D2008-1752). The inclusion of the geographic term “canada” as a descriptor in the disputed domain name does not diminish that confusion. (See e.g., Research In Motion Limited v. Louis Espinoza,WIPO Case No. D2008-0759; Research In Motion Limited v. Jumpline.com,WIPO Case No. D2008-0758; Dimplex (UK) Limited v. Domains by Proxy, Inc. and Nigel Corry,WIPO Case No. D2009-0936). Nor does the use of the generic Top-Level Domain “.com” militate against a finding of confusion, since it is a standard registration requirement, as has been widely held by UDRP panels. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11, and cases cited therein). Accordingly, even though the disputed domain name is not identical to the Complainant’s trademark it is nevertheless confusingly similar to that trademark. B. Rights or Legitimate Interests The Panel determines that the Respondent has no rights or legitimate interests in the disputed domain name, contrary to 4(c)(ii) of the Policy. The Complainant, as registered owner of the FIRST CAPITAL trademark registrations, has rights in those marks. The Respondent does not have any corresponding or countervailing rights to those of the Complainant. The Respondent is not licensed, or otherwise authorized, directly or otherwise, to register or use, the disputed domain name that is confusingly similar to the Complainant’s trademark. There is no evidence of a past relationship between the Complainant and the Respondent. Notwithstanding the Respondent’s use of the disputed domain name, the Complainant has not authorized, whether expressly or impliedly, the Respondent to act for, or on behalf of the Complainant, in using the disputed domain name. There is no affiliation or other association between the Complainant, or any agent or subsidiary of the Complainant, and the Respondent. There is also no evidence that a third party has authorized the Respondent to use the disputed domain name. The Respondent is also not identified with the disputed domain name, whether through business affiliation with any party, or through personal affiliation, such as the surname of the Respondent or that of a close family member. The Respondent is not commonly known by the disputed domain name. Nor is the Respondent making a legitimate noncommercial use of it. Nor is there evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name, or a name corresponding to the same, in connection with a bona fide offering of goods or services. Accordingly, there is no reasonable basis to hold that the Respondent has any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Panel holds that the Respondent has registered and is using the disputed domain name in bad faith, contrary to paragraph 4(c)(ii) of the Policy. There is no evidence that the Respondent registered the disputed domain name in good faith. It is reasonable to assume that the Respondent was aware of the Complainant’s trademark at the time of registering the disputed domain name. The Complainant was a public company, with a publicized business model and business practices that the Respondent, not only replicated, but reproduced graphically, pictorially, and through its representation of itself in promotional materials and market practices. There is every reason to hold further, that the Respondent was well aware of Complainant’s longstanding reputation in the finance and loan sector in Canada, not least of all in replicating “canada” in the disputed domain name. The fact that the Complainant had multiple trademark registrations, at the very least, provides the Respondent with constructive knowledge of the Complainant’s rights in those marks. The Respondent’s registration of the disputed domain name with that constructive knowledge, in and of itself, constitutes bad faith. (See The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands,WIPO Case No. D2003-0305. Given that the Respondent had reasonable knowledge of the Complainant’s rights in its trademark when the Respondent registered the disputed domain name therefore affirms that the registration was in bad faith. (Document Technologies v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270). Nor did the Respondent use the disputed domain name in connection with a bona fide offering of goods or services (Research In Motion Limited v. FIRST CAPITAL World, supra; Dr. Ing. h.c. F. Porsche AG v. ANC Online Avrasya Bilisim Tekn San ve Dis Tic A S,WIPO Case No. D2006-0912). In particular, the Respondent has used the disputed name in bad faith, in offering loans to unsuspecting Internet users, in securing a loan fee from them, and in then not providing them the promised loan. Such bad faith use of the disputed domain name violates paragraph 4(c)(iii) the Policy (See e.g., Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809; Pfizer Inc. v. Enamecorp.com,WIPO Case No. D2001-0791). This case presents a clear example of a Respondent acting as though it is the Complainant in every material respect. The Respondent’s duplicitous actions, akin to identity theft, extends from attracting Internet users with limited access to loan resources, to securing goods from the Complainant’s suppliers, and to presenting the Complainant as payee of those supplies. The Respondent has adopted the Complainant’s identity by sending emails presented as though they were sent by a senior executive of the Complainant; in then sending those emails to the Complainant's suppliers to secure goods; and in seeking to have the Complainant pay for those purchases. By these devious and bad faith means, the Respondent has sought to complete the circle in duplicating the Complainant’s persona. It is wholly reasonable to conclude that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. (See e.g., eBay Inc. v. Douglas Bennett, WIPO Case No. D2015-1178). In particular, the Respondent is using the disputed domain name to lure Internet users into paying a loan fee in the reasonable belief that the Respondent will provide them with a promised loan which the Respondent has no intention of providing. The Respondent cannot invoke any rights or any legitimate interests in the disputed domain name that it is using in bad faith and for illegitimate purposes. (See Haas Food Equipment GmbH v. Usman ABD, Usmandel,WIPO Case No. D2015-0285; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017). 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 Leon Trakman
The Center appointed Leon Trakman as the sole panelist in this matter on June 3, 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
Sole Panelist
Date: June 7, 2020
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