I.C. Investigations Canada Inc. v. J.V.
Bennett
Claim Number: FA0210000127707
PARTIES
Complainant
is I.C. Investigations Canada Inc.,
Calgary, AB, CANADA (“Complainant”).
Respondent is J.V. Bennett,
Whiterock, BC, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <investigationscanada.com>
and <investigationscanada.org>, registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 3, 2002; the Forum received a hard copy of the
Complaint on October 7, 2002.
On
October 9, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain names <investigationscanada.com>
and <investigationscanada.org> are registered with Network
Solutions, Inc. and that Respondent is the current registrant of the
names. Network Solutions, Inc. verified
that Respondent is bound by the Network Solutions, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
October 15, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 4, 2002, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@investigationscanada.com
and postmaster@investigationscanada.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 25, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<investigationscanada.com> and <investigationscanada.org> domain names are identical to
Complainant’s INVESTIGATIONS CANADA mark.
Respondent has no rights to or legitimate interests in the <investigationscanada.com> and <investigationscanada.org> domain names.
Respondent
registered and used the <investigationscanada.com>
and <investigationscanada.org> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns a trademark
registration in Canada for the INVESTIGATIONS CANADA mark (TMA 454,459). Complainant has continually used the mark as
its brand name since 1994. The
INVESTIGATIONS CANADA mark is used in association with investigative,
consultation and security management services.
Complainant provides services to insurance, legal, human resources,
government and corporate professionals across Canada, the United States and
other countries.
Complainant conducts its business on the
Internet at the <investcan.com> website.
Complainant extensively uses its INVESTIGATIONS CANADA mark to advertise
its services on promotional materials, sale collateral materials, presentations
and slides, print materials such as business cards, letterhead, and brochures. In addition, Complainant also uses the
INVESTIGATIONS CANADA mark in industry publications and other published works.
In 1998, Respondent, J.V. Bennett &
Associates Inc., explored the idea of becoming a partner or affiliate of
Complainant through efforts of its President, Mr. Jim Bennett. Complainant did not pursue the option of
entering into business with Respondent and talks of becoming affiliated broke
off.
Respondent then registered the <investigationscanada.com>
domain name on March 30, 1999. During a
security tradeshow in Las Vegas, Nevada, held in September of 1999, Mr. Bennett
approached some of Complainant’s agents on the exhibitor’s floor and notified
the agents that he was using the <investigationscanada.com> domain
name to link to his business website.
Mr. Bennett noted that he was surprised that the <investigationscanada.com>
domain name was available and questioned what it was worth for Complainant to
obtain the rights to it. Complainant’s
agents informed Mr. Bennett that the domain name was a registered trademark owned
by Complainant and that Mr. Bennett should transfer the domain name.
Respondent held onto the domain name
registration and subsequently registered <investigationscanada.org>
on January 24, 2002. Both of these
domain names currently resolve to Respondent’s website where Respondent offers
information on its investigation and security related services.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed representations
pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such
inferences as the Panel considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Complainant has established its rights to
and interests in the INVESTIGATIONS CANADA mark through proof of trademark
registration in Canada and by its extensive use of the mark in commerce as a
brand name since 1994.
The domain names registered by
Respondent, <investigationscanada.com>
and <investigationscanada.org>, incorporate Complainant’s entire
INVESTIGATIONS CANADA mark. The only
difference between the subject domain names and Complainant’s mark is the
generic top-level domains “.com” and “.org” and the absence of a space between the
words of the mark. Top-level domains
are required in domain names and spaces are not permitted in the second-level
domain name. Therefore, top-level
domains and the absence of spaces have been held to have no significance when
conducting a Policy ¶ 4(a)(i) identical analysis. Hence, Respondent’s <investigationscanada.com>
and <investigationscanada.org> domain names are identical to
Complainant’s INVESTIGATIONS CANADA mark.
See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” do not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); see
also Blue Sky Software Corp. v.
Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to Complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant has set out a prima facie
case as to the confusing nature of the domain names and Complainant’s rights to
the mark and domain names. This
effectively shifts the burden to Respondent to demonstrate rights or legitimate
interests in the <investigationscanada.com>
and <investigationscanada.org> domain names. Respondent, however, has not submitted a
Response and therefore has failed to articulate such rights or legitimate
interests in the <investigationscanada.com>
and <investigationscanada.org> domain names. Therefore, the Panel will presume
Complainant’s assertion that Respondent has no rights or legitimate interests
in the subject domain names to be true.
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests in respect of the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Furthermore, the Panel will draw all
reasonable inferences in favor of Complainant because Respondent has failed to
rebut the Complaint. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent uses the <investigationscanada.com> and
<investigationscanada.org> domain names to divert Internet traffic to
Respondent’s commercial website.
Respondent’s website is related to its investigation and security
services, which is the same industry in which Complainant has developed the
brand name INVESTIGATIONS CANADA.
Respondent, through Mr. Bennett, was aware of Complainant’s interests in
the INVESTIGATIONS CANADA mark but continued to use to the subject domain names
to solicit business away from Complainant.
Using another entity’s mark to divert Internet traffic to a competing
business does not constitute rights or legitimate interests in the subject
domain names under Policy ¶¶ 4(c)(i) and (iii). See Chip Merch.,
Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the
disputed domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website).
Respondent has no business relationship
with Complainant and therefore has no right to use the INVESTIGATIONS CANADA
mark in its <investigationscanada.com>
and <investigationscanada.org> domain names. Respondent operates in the same service industry
as Complainant and is commonly known as J.V. Bennett & Associates Inc.,
which is the name Respondent operates under at the website to which the subject
domain names resolve. Hence, Respondent
is not commonly known by the <investigationscanada.com>
and <investigationscanada.org> domain names and therefore
Respondent has no rights or legitimate interests in the subject domain names
pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has
no rights or legitimate interests in domain names because it is not commonly
known by Complainant’s marks and Respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s diversionary use of the <investigationscanada.com> and <investigationscanada.org> domain names constitutes bad
faith use. Respondent uses the <investigationscanada.com> and <investigationscanada.org> domain names to direct Internet
traffic to its business services, which are identical to Complainant’s
INVESTIGATIONS CANADA brand services.
Respondent is most likely profiting from consumers that are searching for
Complainant’s investigation services but end up at Respondent’s website that
offers the same investigation and security services. Hence, the Internet user is liable to be confused as to
Complainant’s affiliation with or sponsorship of Respondent’s website. Therefore, Respondent’s actions fall within
the purview of Policy ¶ 4(b)(iv). See
Am. Online, Inc. v. Tencent Comm.
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where
Respondent registered and used an infringing domain name to attract users to a
website sponsored by Respondent); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used the domain name for commercial
gain to intentionally attract users to a direct competitor of Complainant).
Furthermore, the surrounding
circumstances make it evident that Respondent was aware of Complainant’s
interests in the INVESTIGATIONS CANADA mark prior to registering the <investigationscanada.com> and <investigationscanada.org> domain names. Respondent’s President, Mr. Bennett,
attempted to establish a business relationship with Complainant in 1998. Complainant and Respondent never entered
into an agreement and Respondent never gained any rights to use the
INVESTIGATIONS CANADA mark. After the
foregoing referenced business discussions, Respondent registered <investigationscanada.com>
and Mr. Bennett expressed his surprise to the availability of the domain
names. Mr. Bennett also insinuated to
Complainant’s agents at a Las Vegas tradeshow that he would be interested in
transferring the domain name registration for what Complainant felt it was
worth. Complainant’s agents expressed
its interest in the INVESTIGATIONS CANADA mark and asked Respondent to transfer
the domain name registration. Respondent
did not comply with Complainant’s request and thereafter registered the <investigationscanada.org>
domain name. Therefore, Respondent was
clearly aware of Complainant’s interests in the INVESTIGATIONS CANADA trademark prior to registering the subject
domain names. The Panel finds that
Respondent’s registrations were completed in bad faith. See Entrepreneur Media, Inc. v.
Smith, 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Albrecht v. Natale, FA 95465 (Nat.
Arb. Forum Sept. 16, 2000) (finding registration in bad faith where there is no
reasonable possibility and no evidence from which to infer that the domain name
was selected at random since it entirely incorporated Complainant’s name).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain names <investigationscanada.com>
and <investigationscanada.org> be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: December 9, 2002.
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