DECISION
Elysium Wealth
Management Inc. v. Brian Driscoll
Claim Number:
FA0212000137077
PARTIES
Complainant is
Elysium Wealth Management Inc., Winnipeg, MB, CANADA (“Complainant”)
represented by J. Guy Joubert, of Aikins MacAulay & Thorvaldson. Respondent is Brian Driscoll, Hamilton, ON, CANADA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <ceofunds.com>, registered with Register.com, Inc.
PANEL
The undersigned certifies that he or she has acted
independently and impartially and to the best of his or her knowledge has no
known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on December 12, 2002; the Forum
received a hard copy of the Complaint on December 16, 2002.
On December 13, 2002, Register.com, Inc. confirmed by
e-mail to the Forum that the domain name <ceofunds.com>
is registered with Register.com, Inc. and that Respondent is the current
registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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 December 19, 2002, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of January 8, 2003 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@ceofunds.com 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 January 17, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the Forum appointed
Sandra Franklin 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 name be
transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1.
The <ceofunds.com> domain
name is confusingly similar to Complainant’s CEO FUND mark.
2.
Respondent has no rights or legitimate interests in the <ceofunds.com> domain name.
3. Respondent registered and used the <ceofunds.com> domain name in bad
faith.
B. Respondent has failed to submit a Response in this
proceeding.
FINDINGS
Complainant owns
a registered trademark for the CEO FUND mark with the Canadian Intellectual
Property Office (“CIPO”). Complainant
also has pending trademark applications filed with the CIPO for four marks,
which are slight variations of the CEO FUND mark. The CEO FUND mark received trademark registration status on
November 21, 2001. Complainant,
however, first began using the CEO FUND mark as early as January 1, 2000 in
connection with financial services.
Complainant uses
the CEO FUND mark substantially in association with its financial portfolio
management services. Complainant
contends that it “manages unique and innovative funds generally known as the
family of CEO funds.”
Complainant is a
Canadian corporation with its principal place of business located in Winnipeg,
Manitoba, Canada. Complainant provides
its financial services throughout Canada.
Respondent
registered the domain name on April 8, 2002.
Respondent is located in Hamilton, Ontario, Canada. Respondent has a business affiliation with
CEO Hirsch Opportunistic Canadian Fund, CEO Hirsch Opportunistic Tactical Allocation
Fund, CEO Hirsch Opportunistic Natural Resource Fund, CEO Canadian Demographic
Fund, and Burgeonvest Securities Limited.
These entities provide investment advice and products to private,
corporate and institutional clients in Canada.
In addition, all of the aforementioned entities are located in Hamilton,
Ontario, Canada.
Burgeonvest
Securities Limited changed the name of its funds to reflect the CEO FUND mark
in December of 2001, nearly two years after Complainant initially used the CEO
FUND mark in association with its financial portfolio management services.
Respondent uses
the domain name to resolve to a website that is associated with the
aforementioned entities and offers financial services in the same market as
Complainant and its CEO FUND mark.
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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a) of the Policy requires that the
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 in the CEO FUND mark through proof of trademark
registration with the CIPO and use in commerce since January 1, 2000.
Respondent’s <ceofunds.com> domain name
reflects Complainant’s CEO FUND mark with the addition of an “s” and top-level
domain “.com.” The addition of the
letter “s” to another’s mark is not a distinguishing alteration that takes a
domain name out of the realm of confusing similarity. Furthermore, since top-level domains are required in every domain
name, the “.com” addition to Complainant’s CEO FUND mark is inconsequential in
a Policy ¶ 4(a)(i) analysis. Hence,
Respondent’s <ceofunds.com>
domain name is confusingly similar to Complainant’s CEO FUND mark. See
Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to Complainant’s
“National Geographic” mark); see also
Blue Cross & Blue Shield Ass’n v.
InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding
that a domain name which merely adds the letter ‘s’ to Complainant’s mark is
sufficiently similar to the mark to cause a likelihood of confusion among the
users of the Complainant’s services and those who were to view a web site
provided by the Respondent accessed through the contested domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
Thus, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not come forward to challenge the Complaint.
On the other hand, Complainant has discharged its duty to submit a prima facie Complaint, satisfying the
requirements of Policy ¶¶ 4(a)(i)-(iii).
The Panel therefore presumes that Respondent has no such rights or
legitimate interests in the <ceofunds.com>
domain name. 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 with respect to
the domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name).
Complainant
challenges Respondent’s use of the <ceofunds.com>
domain name in connection with similar financial services that Complainant
offers under the CEO FUND mark.
Complainant operates in the financial services business in Canada and
has discovered that Respondent is affiliated with Canadian financial service
entities that, along with Complainant, manage funds. Complainant contends that Burgeonvest Securities Limited, an
entity with which Respondent is associated, changed the name of its funds on
December 1, 2001 to reflect Complainant’s CEO FUND mark. This change was made nearly two years after
to Complainant’s adoption of the CEO FUND mark. Respondent has not contested Complainant’s contentions so the
Panel accepts them as true. In
addition, the Panel will draw all reasonable inferences in Complainant’s
favor. See 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”); see also 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 <ceofunds.com> domain name
to enhance its financial services, which are similar to Complainant’s financial
services offered within the same market.
Respondent’s use of the <ceofunds.com>
domain name is not in conjunction with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor does Respondent’s use represent a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 MBS
Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001)
(finding no rights or legitimate interests when Respondent is using a domain
name identical to Complainant’s mark and is offering similar services).
Respondent is not
commonly known by the <ceofunds.com>
domain name. Moreover, Respondent has
no business connection with Complainant; Respondent has an affiliation with
some of Complainant’s Canadian competitors.
The WHOIS information lists Respondent as Brian Driscoll and the Panel
accepts that information as Respondent’s identity without proof of the
contrary. Therefore, Respondent has no
rights or legitimate interests in the <ceofunds.com>
domain name 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 Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by the disputed
domain name or using the domain name in connection with a legitimate or fair
use).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Respondent and
Complainant both target their financial services and fund management business
at a Canadian audience. Respondent’s
registration of the <ceofunds.com>
domain name and incorporation of CEO in association with financial funds its
affiliated businesses offer were nearly two or more years after Complainant’s
first use of the CEO FUND mark. It is
apparent, as Complainant argues, that Respondent attempted to trade off
Complainant’s use of the CEO FUND mark by designating its funds in a similar
way in order to attract business away from Complainant in violation of Policy ¶
4(b)(ii). At a minimum, the Panel
infers that Respondent had constructive knowledge of Complainant’s interests in
the CEO FUND mark through activity in the same industry and market and by way
of the CEO FUND mark’s registration status with the CIPO. Therefore, Respondent registered the <ceofunds.com> domain name in bad
faith with constructive knowledge of Complainant’s interests in the CEO FUND
mark. See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); 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).
Furthermore, Respondent
uses the <ceofunds.com> domain
name in an effort to advance the financial services of the Canadian financial
entities it is associated with, which are substantially similar to the services
Complainant offers under the CEO FUND mark.
Respondent’s offering of similar financial services by way of the <ceofunds.com> domain name has a
likelihood of confusing Internet users as to Complainant’s sponsorship. Therefore, Respondent uses the <ceofunds.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv).
Moreover, because Respondent and its affiliated entities are situated in
business practices similar to those of Complainant, there is no justifiably
perceivable use of the subject domain name outside the realm of bad faith. See
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); see
also Phat Fashions v. Kruger, FA
96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(b)(iv) even though Respondent has not used the domain name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will create the confusion described in the Policy”).
The Panel thus
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 name <ceofunds.com>
be TRANSFERRED from Respondent to
Complainant.
Sandra Franklin,
Panelist
Dated: January
23, 2003
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