Industrielle Alliance, Assurance et Services Financiers Inc. v. Manuel Valentine
Claim Number: FA2104001943449
Complainant is Industrielle Alliance, Assurance et Services Financiers Inc. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Manuel Valentine (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <investia.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2021; the Forum received payment on April 29, 2021.
On April 30, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <investia.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 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@investia.us. Also on May 4, 2021, 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 June 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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 is part of iA Financial Corporation inc., one of the largest insurance and wealth management groups in Canada. Complainant has common law trademark rights in the INVESTIA mark through Complainant’s continuous and extensive use of the mark, Complainant’s identical domain, and the popularity of Complainant’s website that features advertisements using the mark. Respondent’s <investia.us> domain name is identical to Complainant’s INVESTIA mark as it contains the INVESTIA mark in its entirety and merely adds the country-code top level domain “.us.”
Respondent lacks rights or legitimate interests in the <investia.us> domain name. Respondent is not commonly known by the disputed domain name nor is Respondent authorized by Complainant to use the INVESTIA mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to send emails passing off as Complainant’s employee in furtherance of a financial scam.
Respondent registered and uses the <investia.us> domain name in bad faith. Respondent uses the disputed domain name to send emails passing off as Complainant’s employee in furtherance of a financial scam. Additionally, Respondent provided false WHOIS information when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <investia.us> domain name was registered on July 30, 2020.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
Complainant asserts common law trademark rights in the INVESTIA mark because the mark has acquired distinctiveness through Complainant’s continuous and extensive use of the mark, Complainant’s identical domain, and the popularity of Complainant’s website that features advertisements using the mark. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Additionally, secondary meaning can be evidenced by longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant argues that Complainant’s INVESTIA mark is a distinctive identifier which consumers associate with Complainant’s goods and/or services. To prove this, Complainant provides screenshots showing Complainant’s identical domain name, that the resolving websites feature Complainant’s mark, and that Complainant’s website is frequently visited by consumers. Complainant further provides copies of websites advertising services under the INVESTIA mark dating back for 20 years. Therefore, the Panel finds that Complainant has demonstrated rights in the INVESTIA mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <investia.us> domain name is identical to Complainant’s INVESTIA mark as it contains the INVESTIA mark in its entirety and merely adds the country-code top level domain “.us.” The addition of a ccTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the <investia.us> domain name as Respondent is not commonly known by the disputed domain name, nor is Respondent authorized by Complainant to use the INVESTIA mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information for the disputed domain name lists the registrant as “Manuel Valentine,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the INVESTIA mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Further, there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, Respondent has failed Policy ¶ 4(c)(i).
Complainant argues that Respondent fails to use the <investia.us> name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to send emails passing off as Complainant’s employee in furtherance of a financial scam. Using a domain name to pass off as a complainant in furtherance of a financial scam is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Here, Complainant provides screenshots showing that Respondent uses the disputed domain name as part of a fraudulent scheme to offer fake employment opportunities in the U.S. and in Canada to prospective job applicants. Complainant highlights that Complainant has received thirteen (13) complaints from victims who have been contacted by an individual claiming to work as a human resource manager for the Complainant or its corporate affiliate using “Investia” as or in a trademark and/or trade name. Complainant also highlights that Respondent has asked prospective job applicants to receive donations in their personal bank accounts and then transfer the money to a Bitcoin ATM. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Thus, Complainant has also satisfied ¶¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <investia.us> domain name in bad faith as Respondent uses the disputed domain name to send emails passing off as Complainant’s employee. Using a confusingly similar domain to pass off as an employee of a complainant can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant provides screenshots showing that Respondent uses the disputed domain name to send emails passing off as Complainant’s human resource manager in order to offer fake employment and solicit applications for their personal bank account information. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent registered and uses the <investia.us> domain name in bad faith as Respondent provided false WHOIS information when registering the disputed domain name. Respondent has not disputed this. Providing false WHOIS information can evince bad faith registration and use per Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Here, Complainant argues that Respondent provided false contact information when registering the disputed domain name because Respondent provided a postal address, which appears to be a golf course. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <investia.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 16, 2021
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