The Royal Canadian Legion, Dominion Command v. Quang Truong
Claim Number: FA1802001771834
Complainant is The Royal Canadian Legion, Dominion Command (“Complainant”), represented by Timothy Bourne of Ridout & Maybee LLP, Canada. Respondent is Quang Truong (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legionca.com>, registered with NameCheap, Inc.
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.
Ho-Hyun Nahm, Esq., David P. Miranda, Esq., (Panelists) and The Honourable Neil Anthony Brown QC (Presiding Panelist).
Complainant submitted a Complaint to the Forum electronically on February 14, 2018; the Forum received payment on February 14, 2018.
On February 14, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <legionca.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@legionca.com. Also on February 19, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ho-Hyun Nahm, Esq., David P. Miranda, Esq., (Panelists) and The Honourable Neil Anthony Brown QC (Presiding Panelist) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, The Royal Canadian Legion, Dominion Command, is a dues-supported, non-profit corporation originally incorporated by an act of the Canadian Parliament now known as An Act Respecting the Royal Canadian Legion. See White Aff. p.1. Complainant has used its LEGION mark in connection with goods and services related to supporting veterans and their families, promoting Remembrance, and providing essential services within Canadian communities. Complainant established rights in its LEGION mark through registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA207352, registered May 30, 1975). See White Aff. Ex. B. Respondent’s <legionca.com> domain name is confusingly similar to Complainant’s mark because it merely appends the geographic term “ca” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated LEGION mark.
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion. Respondent is not commonly known by the <legionca.com> domain name as the WHOIS information of record lists “Quang Truong” as the registrant. See White Aff. Ex. Q. Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant and uses the <legionca.com> domain name to resolve to a website that sells products that compete with Complainant’s business. See White Aff. Ex. M.
Respondent registered and is using the <legionca.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to its competing website. Respondent also attempts to create confusion between the disputed domain name and Complainant’s LEGION mark for Respondent’s own commercial gain. See White Aff. Ex. M.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a long-established dues-supported, non-profit corporation incorporated by an act of the Canadian Parliament now known as An Act Respecting the Royal Canadian Legion and which provides goods and services to further its activities.
2. Complainant has established its trademark rights in its LEGION mark through its registration with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA207352, registered May 30, 1975).
3. Respondent registered the <legionca.com> domain name on August 8, 2017.
4. Respondent attempts to pass itself off as Complainant and uses the <legionca.com> domain name to resolve to a website that purports to sell products that compete with Complainant’s goods and 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."
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.
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(f), 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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in its LEGION mark through registration with the CIPO (e.g., Reg. No. TMA207352, registered May 30, 1975). See White Aff. Ex. B. Registration with a trademark authority, such as the CIPO, confers rights in a mark. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”). Therefore, the Panel finds that Complainant has established rights in the LEGION mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LEGION mark. Complainant contends that Respondent’s <legionca.com> domain name is confusingly similar to Complainant’s mark because it merely appends the geographic term “ca” and the gTLD “.com” to the fully incorporated LEGION mark. The addition of a geographic term and a gTLD do not negate confusing similarity between a mark and a domain name that is otherwise present. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As such, the Panel finds that Respondent’s <legionca.com> domain name is confusingly similar to Complainant’s LEGION mark for the purposes of Policy ¶ 4(a)(i) because internet users would take the “ca” term to indicate that the domain name related to Complainant’s activities in Canada.
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LEGION mark and to
use it in its domain name, adding only the geographic term “ca” which encourages internet users to assume that the domain name relates to the Canadian activities of Complainant;
(b) Respondent registered the disputed domain name on August 8, 2017;
(c) Respondent has used the domain name to resolve to a website that purports to sell products that compete with Complainant’s goods and services;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain name because it has not licensed or otherwise authorized Respondent to use its LEGION mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <legionca.com> lists “Quang Truong” as the registrant. See White Aff. Ex. Q. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent attempts to pass itself off as Complainant to offer competing goods or services. Use of a domain name by a registrant to pass itself off as a trademark owner and sell products that compete with the trademark owner’s business is generally not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Complainant provides screenshots of the resolving webpage which features Complainant’s LEGION marks and products related to Complainant’s Poppy & Remembrance Promotional products. See White Aff. Ex. M. Accordingly, the Panel finds that Respondent has passed itself off as Complainant to offer competing goods or services, failing to confer rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons:
First, Complainant argues that Respondent registered and uses the <legionca.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to benefit commercially by offering competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted previously, Complainant provides screenshots of the resolving webpage which features Complainant’s LEGION marks and products related to Complainant’s Poppy & Remembrance Promotional products. See White Aff. Ex. M. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the LEGION mark and in view of the conduct that Respondent engaged in when using the domain name, including attempting to mislead the public into the belief that Respondent truly represented the interests of veterans and their families, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legionca.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC (Chair)
Ho-Hyun Nahm, Esq. and
David P. Miranda, Esq. (Panelists)
Dated: March 26, 2018
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