The Complainant is Canadian Association of Professional Employees, Canada, represented by Norton Rose Fulbright Canada LLP, Canada.
The Respondent is Samson Assogba, Benin. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021. On March 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2021, 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 March 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition, the Center sent an email communication in both French and English regarding the language of the proceeding on March 17, 2021. The Complainant replied on March 20, 2021 requesting English to be the language of the proceeding and the Respondent did not submit any comments. The Complainant filed an amended Complaint in English on March 22, 2021. 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 in French and in English, and the proceedings commenced on March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2021. The Center appointed Fabrice Bircker as the sole panelist in this matter on April 21, 2021. 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 the Canadian Association of Professional Employees, also known when communicating in French as Association Canadienne des Employés Professionnels. This association is also identified under the corresponding acronyms of its English and French names, namely CAPE and ACEP. Existing since 2003 and with over 18,500 members, the Complainant is one of the largest public services unions in Canada. The Complainant claims common law rights in the ACEP trademark and operates its website “www.acep-cape.ca” since 2003. It is dedicated to advocating on behalf of federal employees in the Economics and Social Science Services and Translation groups, as well as employees of the Library of Parliament, the Office of the Parliamentary Budget Officer and civilian members of the Royal Canadian Mounted Police. Thus, as the bargaining agent for its members, the Complainant is responsible for negotiating collective agreements, representing individual members before administrative tribunals, defending and promoting members’ rights as employees and acting as their official spokesperson on pertinent issues pertaining to their employment. The Respondent is located in Benin. The disputed domain name At the time of drafting this decision, it does not resolve to any active website. However, it results from the record of the case that the disputed domain name previously redirected toward a website reproducing a large part of the Complainant’s website, including its identifying elements (name, logo, address). The disputed domain name has also been used to send emails impersonating the Complainant. Through the website to which the disputed domain name resolved, the emails sent via the disputed domain name and also through messages posted on social media, the Respondent has implemented a scheme consisting notably in proposing fake job opportunities at the Complainant to people interested in immigrating in Canada. In this context, the Respondent requested to these job applicants to open bank accounts and to pay sums of money on the pretext of completing the immigration process. When aware of this scam, the Complainant notably requested the Registrar and the host provider of the website to which the disputed domain name resolved to, among other, terminate their services to the Respondent. Then, this procedure has been introduced. 5. Parties’ Contentions A. Complainant The Complainant’s submissions may be summarized as follows: Firstly, the Complainant requests that the proceedings be conducted in English. In this respect, it notably contends that the Complainant and its representative operate in English, that the website available through the disputed domain name was available in English, and that the disputed domain name begins with the English term “jobs”. Then, the Complainant contends that the disputed domain name is confusingly similar with its common law rights in the ACEP-CAPE, CAPE and ACEP trademarks. The Complainant puts forward that its trademark is well-known and recognized in Canada to identify the services it provides as a public sector union. The Complainant argues that the disputed domain name is confusingly similar with its ACEP trademark because it incorporates it in its entirety and because the added terms, “jobs” and “canada”, are notdistinctive. Then, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, notably because it is using it to fraudulently pass itself off as being the Complainant or a hiring company affiliated with the Complainant. The Complainant also states that the Respondent is not affiliated with nor authorized by it in any way to make any use of its rights. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant puts forward that the Respondent acted in bad faith when it registered the disputed domain name because it had actual knowledge, or ought to have known, of the Complainant’s rights in its trademark prior to registering the disputed domain name by virtue of the Complainant’s use of the trademark for more than 17 years. The Complainant argues that the use of the disputed domain name with a phishing scam is itself evidence of bad faith and that the provision of false address information by the Respondent to the Registrar is further evidence of the Respondent’s bad faith and malicious intentions. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issue: language of proceedings Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.” In the present case, the Registrar confirmed that the language of the registration agreement is French. However, the Complainant has submitted a substantiated request for English be the language of the proceedings putting forward that English is the most suited language to conduct this procedure and that the Respondent has sufficient capability to communicate in English. In this context, the Panel notes that: - the disputed domain name is constituted with the English term “jobs”, - the disputed domain name resolved to a Website which was in part available in English, - the Respondent has posted on Facebook English-drafted content linking toward the website available through the disputed domain name, - the Respondent has passed off himself for the Complainant, which operates in English, - the Respondent has been given the possibility to contest the Complainant’s request on the language of the procedure, but he did not do so. Given the circumstances above, the Panel considers that the Respondent is able to communicate in English. Therefore, it would be unfair and counterproductive to request the Complainant to translate the Complaint and all the supporting documents into French. Consequently, the Panel accepts that the language of the proceeding be English. 6.2. Substantive issues Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark. In the present case, the Complainant relies on its common law rights in the ACEP trademark. First of all, it is constant that “[t]he term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks.” (WIPO Overview 3.0, section 1.1). Besides, “[t]o establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (…) 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. (…) Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint (…). The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier” (WIPO Overview 3.0, section 1.3). In the present case, the Panel finds that: - the Complainant is located in Canada, a country where unregistered or common law trademarks can be protected, - the Complainant has communicated a very large volume of evidence showing that it is using the ACEP denomination on the market for almost 20 years to identify the services it renders to its members, who pay dues to benefiting of them, - it results from this material that the Complainant’s common law trademark has been subject to substantive investment in advertising and promotion, - the Complainant’s common law trademark designates one of the largest public service union in Canada, - according to the evidence submitted, the public, including the media, identifies the Complainant’s activities under the ACEP trademark, - the Respondent has not contested the Complainant’s common law rights in the ACEP trademark, - the Respondent has clearly targeted the Complainant’s ACEP mark (cf. paragraph C infra) what means that he necessarily perceived it as a source identifier of the services provided by the Complainant. As a consequence, the Panel concludes that the Complainant has demonstrated that the ACEP denomination is perceived by the public as a distinctive identifier of the services it provides and, therefore, that the Complainant has common law trademark rights for ACEP for the purpose of the Policy. Turning to whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, as indicated in WIPO Overview 3.0, section 1.7, “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark (…), the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. This test is satisfied here, as the disputed domain name, Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 3.0, section 2.1). In the present case, the Respondent is not commonly known by the disputed domain name and has not been authorized to register and use it. Besides, the use of the disputed domain name in connection with a fraudulent phishing scheme intended to extract money from deceived people, cannot qualify as fair or noncommercial use (see WIPO Overview 3.0, section 2.13; and Colas, Société Anonyme v. Concept Bale,WIPO Case No. D2020-2733). Accordingly and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith. The circumstances deemed to be evidence of the registration and use of a domain name in bad faith listed at paragraph 4(b) of the Policy are non-exhaustive examples. In the present case, the Panel finds that: - the disputed domain name identically reproduces the common law trademark ACEP of the Complainant which enjoys awareness on the relevant market, - the terms “jobs” and “Canada” composing the disputed domain name refers to the Complainant’s activity, - the Respondent used the disputed domain name to fraudulently impersonate the Complainant and for unduly collecting personal data and generating financial gain (see paragraph 4 above), - the Respondent has very likely provided the Registrar with inaccurate contact details, - the Respondent, while invited to defend his case, has been remaining silent in this procedure. It necessarily and obviously results from the above findings that the Respondent registered the disputed domain name being fully aware of the Complainant’s prior rights, and that it has intentionally used the disputed domain name for commercial gain by deceiving third parties by fraudulently impersonating the Complainant. In that regard, it is of constant case-law that the use of a domain name for illegitimate activity, such as phishing or identity theft, is considered as manifest evidence of bad faith (see WIPO Overview 3.0, sections 3.1.4 and 3.4, and Sobeys Capital Incorporated v. Private By Design, LLC / Max Bill and Billi Max,WIPO Case No. D2020-1670). At last, the fact that the disputed domain name does no longer resolve to an active website does not prevent a finding of bad faith under the doctrine of passive holding (See WIPO Overview 3.0, section 3.3), all the more that this deactivation is very likely the consequence of the takedown notices sent by the Complainant to the Registrar and to the webhosting provider. As a conclusion of the above, the Panel finds that the disputed domain name was registered and has been used in bad faith, within the meaning of 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 Fabrice Bircker
Sole Panelist
Date: May 3, 2021
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