Bank of Montreal and BMO Nesbitt Burns
Corporation Limited v. World Nic Yoo
Claim Number: FA0603000660720
PARTIES
Complainant is Bank of Montreal and BMO Nesbitt Burns Corporation Limited (“Complainant”), represented
by John Lee, of Fraser Milner Casgrain
LLP, 99 Bank Street, Suite 1420, Ottawa, ON K1P 1H4. Respondent is World Nic Yoo (“Respondent”), 929-5 Woram-dong, Dalseo-gu, Daegu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bmonesbitburns.com>,
registered with Hangang Systems,Inc. d/b/a Doregi.com.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as panelists in this proceeding.
Judge James Carmody (Ret.), Mr. Clive Elliott (Chair) and Ms. Anne
Wallace QC as Panel.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 15, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 20, 2006.
The Complaint was submitted in both Korean and English.
On March 23, 2006, Hangang Systems,Inc. d/b/a Doregi.com confirmed by
e-mail to the National Arbitration Forum that the <bmonesbitburns.com> domain name is registered with Hangang
Systems,Inc. d/b/a Doregi.com and that the Respondent is the current registrant
of the name. Hangang Systems,Inc. d/b/a
Doregi.com has verified that Respondent is bound by the Hangang Systems,Inc.
d/b/a Doregi.com 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 March 30, 2006, a Korean language Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of April 19, 2006 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@bmonesbitburns.com by
e-mail.
Having received no Response from Respondent, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Judge James Carmody (Ret.), Mr. Clive
Elliott and Ms. Anne Wallace QC as the Panel.
Having reviewed the communications records, the Administrative Panel
(the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental
Rules and any rules and principles of law that the Panel deems applicable,
without the benefit of any Response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language
requirement has been satisfied through the Korean language Complaint and
Commencement Notification and, absent a Response, determines that the remainder
of the proceedings may be conducted in English.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Bank of Montreal was founded in 1817 and carries on business in Canada
and internationally as a well-known provider of banking and other financial
services. Its trademark BMO is well
known and is readily associated with the Bank of Montreal.
The trademark NESBITT BURNS is owned by BMO Nesbitt Burns Corporation
Limited, which is a wholly owned subsidiary of Bank of Montreal.
The trademarks BMO and NESBITT BURNS are used by BMO Nesbitt Burns Inc
under license from (and under the care and control of) Bank of Montreal and BMO
Nesbitt Burns Corporation Limited respectively. BMO Nesbitt Burns Inc operates as “BMO Nesbitt Burns” (“BMO
Nesbitt Burns”).
Since 1999, BMO Nesbitt Burns has been one of North America’s leading
full‑service investment firms and a recognized leader in personal
finance. BMO Nesbitt Burns is well
known for its investment services for individuals, corporations and
institutions.
The domain name <bmonesbittburns.com> is registered to
Bank of Montreal and used by BMO Nesbitt Burns under license.
It is suggested that the disputed domain name is nearly identical in spelling, appearance, sound, and idea to Bank of Montreal’s trademark BMO NESBITT BURNS and that there is a real and practical likelihood that the disputed domain name has and will continue to be confused with Bank of Montreal’s trademark.
Complainant states that Respondent is using the disputed domain name by
competing for Internet traffic and profiting through sponsored links
searches. It asserts that Respondent
has no legitimate interest in the disputed domain name. In January 2006 the disputed domain name
linked to the service <domainsponsor.com> which offers links to web sites
of competitors of Complainant and of Complainant’s services.
Complainant submits that Respondent’s use of the
<domainsponsor.com> service in association with the disputed domain name
is for no other reason except commercial gain.
The Respondent must be aware of the trademark rights of Complainant as
shown by the overlap in the business of the “sponsored links” being financial
services with that of Complainant’s business.
It is submitted that by simply misspelling the word NESBITT in the
domain name <bmonesbitburns.com> Respondent has created a domain
name which is intended to be and in fact is confusingly similar to the
trademarks BMO NESBITT BURNS used by BMO Nesbitt Burns.
Complainant points out that Bank of Montreal’s attempts to resolve this
matter in advance of filing this Complaint have been ignored by
Respondent. It states that a demand
letter dated January 11, 2006 sent to the Registrant by email and mail went
unanswered. The letter was sent to the
address provided by the Registrant in the registration particulars and was
returned to the Complainant marked “Attempted – Address Unknown; Return to
Sender.”
The address originally provided by Respondent is invalid. It is asserted that this is an indicator of
bad faith as is Respondent’s failure to respond to Complainant’s demand letter.
B. Respondent
Respondent filed no response nor sought further time in which to do
so. Accordingly, the Panel is only able
to assess the evidence and submissions filed by Complainant and in the absence
of any dispute as to the accuracy and correctness of that evidence, those
submissions will be presumed to be true.
C. Additional Submissions
No additional submissions were lodged.
FINDINGS
Having considered the Complaint, the Panel
finds that:
(1) the domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights;
(2) the 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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); 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.”).
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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Identical or Confusingly
Similar
Complainant has established rights in the BMO
and NESBITT BURNS marks by registering them with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,615,685 issued September 3, 2002 and
Reg. No. 1,980,676 issued June 18, 1996, respectively). See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the
NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The <bmonesbitburns.com> domain name is
confusingly similar to Complainant’s BMO and NESBITT BURNS marks because the
domain name combines Complainant’s marks and omits the letter “t” and adds the
generic top-level domain “.com.” The
Panel finds that such minor alterations to Complainant’s registered marks are
insufficient to negate the confusingly similar aspects of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding
confusing similarity where respondent combined the complainant’s POKEMON and
PIKACHU marks to form the <pokemonpikachu.com> domain name); see also
State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb.
Forum June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to the complainant’s STATE FARM mark); see also
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) ( “[I]t is a well established principle that generic top-level domains
are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
On this basis the Panel finds that the ground is
established.
Once Complainant makes a prima facie
case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights
or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the
respondent does not have rights or legitimate interests with respect to the
domain name, it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name). The
Panel concludes that on the basis of the record and in the absence of any
effort to contradict Complainant's assertions and submissions that a prima facie case is established under
this ground.
Respondent is not
authorized or licensed to register or use a domain name that incorporates
Complainant’s marks. Moreover,
Complainant contends that Respondent is not commonly known by the <bmonesbitburns.com>
domain
name. Respondent does not appear to be
commonly known by the <bmonesbitburns.com> domain name, and
accordingly the Panel is of the view that Respondent does not have rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where a respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the mark precede the
respondent’s registration; and (3) the respondent is not commonly known by the
domain name in question).
Furthermore, Respondent is using the <bmonesbitburns.com> domain name to redirect Internet users interested in Complainant’s BMO
and NESBITT BURNS services to Respondent’s website featuring investment and
banking services that compete with Complainant. The Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s BMO and NESBITT BURNS marks to redirect
Internet users interested in Complainant’s services to Respondent’s competing
website is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see also DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site).
Accordingly, the ground is established.
On the basis of the material put before it the Panel concludes that
Respondent is using the <bmonesbitburns.com>
domain name for Respondent’s
commercial gain by diverting Internet users interested in Complainant’s BMO and
NESBITT BURNS services to Respondent’s website featuring investment and banking
services that compete with Complainant.
The Panel likewise finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s marks to attract Internet users to
Respondent’s website for commercial gain by creating a likelihood of confusion
with Complainant’s marks is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO
Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of
the recognition that eBay has created for its mark and therefore profiting by
diverting users seeking the eBay website to the respondent’s site).
Furthermore, the Panel considers that Respondent, a provider of
investment and banking services, registered the confusingly similar domain name in order to promote
services that compete with Complainant.
Finally, it determines that Respondent registered the domain name
primarily for the purpose of disrupting the business of a competitor, which
evidences bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competed with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)); see also Gorstew
Ltd. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000)
(transferring <sandalsagency.com> and <sandalsagent.com> from the
respondent travel agency to the complainants, who operated Sandals hotels and
resorts).
On this basis, the ground is made out.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bmonesbitburns.com>
domain name be TRANSFERRED from Respondent to Complainant.
Judge James Carmody (Ret.),
Mr. Clive Elliott (Chair) and
Ms. Anne Wallace QC as Panel
Dated: May 11, 2006