I.C. Investigations Canada Inc. v. J.V. Bennett
Claim Number: FA0210000127707
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.
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.
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 firstname.lastname@example.org and email@example.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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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.
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.
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.
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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