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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canadian Imperial Bank of Commerce v. Canacord Capital Coprp. Belize & Canacord Capital Porp. Belize

Case No. D2004-0892

 

1. The Parties

The Complainant is Canadian Imperial Bank of Commerce, with address in Toronto, Ontario, Canada, represented by Blake, Cassels & Graydon, LLP, Canada.

The Respondent is Canacord Capital Coprp. Belize and Canacord Capital Porp. Belize, with address in Nasseau, QC, Belize.

 

2. The Domain Names and Registrar

The disputed domain names <banquecibc.com> and <banquecibc.net> (hereinafter the “Domain Names”) are registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2004. On October 29, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On October 29, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Panel assumes that typographical errors in the spelling of “Corp” in Tucows’ response were inadvertent and do not put in doubt that the Respondent is the registrant of both of the disputed domain names. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2004.

The Center appointed Clive L. Elliott, Philip N. Argy and Gerardo Saavedra as panelists in this matter on December 17, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. December 31, 2004, was the date initially scheduled for the issue of the Panel decision. Pursuant to paragraph 10(c) of the Rules, the Panel extended the date to submit its decision until January 24, 2005.

 

4. Factual Background

The Complainant is a large and well established North American financial institution based in Toronto, Canada.

The Complainant has more than nine million personal banking and business customers and offers a range of products and services through its comprehensive electronic banking network and at branches and offices across Canada and United States and other countries around the world.

At the end of fiscal 2003 (October 31, 2003) the Complainant had total assets of $277.1 billion and total revenue of $11.5 billion, Canadian dollars.

The Complainant is the owner of the trade mark CIBC (the “trade mark”), which has been registered in numerous jurisdictions around the world, including Canada, the United States of America, the European Community, Australia, Japan, Hong Kong SAR of China, Singapore and the United Kingdom. It also owns numerous registrations of trade marks in both English and French in which the trade mark is a distinctive element.

The trademark is an acronym for the Complainant’s name and the “b” relates to the word “bank”. The Complainant has used the trade mark in association with a broad range of financial services, including personal and business banking services, wealth management services, investment and brokerage services since as early as December 1993.

Although the Complainant’s name is Canadian Imperial Bank of Commerce, it has consistently referred to itself by a short form trade name identical to the trade mark in dealing with the public.

The Complainant is also the registrant of the domain name <cibc.com>, among others containing the trade mark.

Details of the Respondent are unknown.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions/submissions:

Trade Mark Rights: The Domain Names add to the trade mark only the non-distinctive element “banque” which is the French word for “bank”. Accordingly the Complainant submits that adding the word “banque” to the trade mark as part of the Domain Names does not diminish the fact that Domain Names are confusingly similar to the trade mark. Rather, it asserts, the addition of the word “banque” to the trade mark increases the confusing similarity.

No Bona fide Use: No active website was or is associated with the Domain Names.

The Complainant submits that <banquecibc.com> does not have an active web site associated with it, nor was a user accessing the domain name redirected to another website.

The Complainant asserts that prior to August 20, 2004, when an Internet user accessed “banquecibc.net” he or she was redirected to a website containing pornographic images and videos and operated in association with the domain name <cumfiesta.com>. On August 20, 2004, the website associated with the Domain Names was disabled.

Not Respondent’s Name: The Respondent is not known by the Domain Names and has no connection to the Complainant or the trade mark or trade name.

Not Legitimate Non – Commercial or Fair Use: The Respondent is using the Domain Names for commercial gain by attracting Internet users to its own or third party sites offering sexually explicit and pornographic material, and such use in calculated to mislead consumers and to tarnish the trade mark.

Blocking and Pattern: The Respondent has been involved in two domain name disputes (details provided). In both cases, the Respondent was found to have registered the respective domain names in bad faith and was ordered to transfer the domain names in questions to the respective complainant.

Attracting Users by Confusion: Pursuant to paragraph 4(b)(iv) of the Policy, the Respondent registered the Domain Names with the intention to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the trade mark as to the source, sponsorship, affiliation, or endorsement for the website.

Other Instances of Bad Faith: The Respondent in its contact information lists its location city as Nasseau and country code as BZ. BZ is the country code for Belize. Furthermore, the Respondent’s name incorporates Belize as part of the name. There is no city of Nasseau or Nassau in Belize.

The Respondent failed to respond to the Complainant’s written demand. The Complainant says that this failure provides further strong support for a determination of bad faith registration and use.

 

B. Respondent

As indicated above, the Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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”.

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no legitimate rights or interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.

The Panel finds that:

(a) the Domains Names are confusingly similar to a trade mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in the Domain Names; and

(c) the Respondent registered and has used the Domain Names in bad faith.

A. Identical or Confusingly Similar

It is uncontested that the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

It is clear from the evidence and not disputed by the Respondent that the CIBC trade mark has been registered in numerous jurisdictions around the world and that CIBC is the distinctive element. The CIBC trade mark is well recognized. It is asserted and not disputed that CIBC is a trade mark of significant value.

Given the widespread recognition of the CIBC trade mark and its association with banking and the provision of financial services the addition of the descriptive word or term “banque” (or the English word “bank”) does little to break the obvious connection between the Domain Names and the Complainant company.

In the Panel’s view, the addition of these descriptive words or terms to a well known and established trade mark does little to alter the inherent trade mark nature of the term CIBC. Accordingly, it is found that the Domain Names, containing as they do CIBC, a word in which the Complainant has trade mark rights, are confusingly similar to a trade mark in which the Complainant has rights.

The Complainant has established this ground.

B. Rights or Legitimate Interests

There is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Names by Respondent.

Given the longstanding and extensive use and exposure of the CIBC trade mark and in the absence of any explanation from the Respondent as to why it might consider it has a right or legitimate interest in using the word “CIBC”, albeit with a descriptive part or element, it is difficult to imagine how the Respondent might have a right or legitimate interest to use CIBC as part of the Domain Names. The fact that the word “CIBC” appears to be an acronym for the Complainant’s name, coupled with the fact that Complainant is engaged in the banking business, confirms that the Domain Names are not ones that someone would legitimately choose unless seeking to create an impression of an association with the Complainant.

It is alleged, again without denial, that the Respondent was using one of the Domain Names for commercial gain by attracting Internet users to its own or third party sites offering sexually explicit and pornographic material. This is plainly not legitimate.

Prima facie, the Complainant makes out its case on this ground.

C. Registered and Used in Bad Faith

Taking into consideration the nature of the Complainant’s business and the recognition of the trade mark, it is clear that Respondent should have been fully aware of the existence of the Complainant and of the trade mark at the time it registered the Domain Names, which precisely combine Complainant’s trade mark with a generic word undoubtedly referring to Complainant’s business. Further, there is no reliable evidence that the Domain Names were registered in good faith. Indeed, given the Respondent’s silence the inference can be drawn that the opposite applies.

Given the reputation in CIBC, the redirection of Internet traffic is likely to deliver a commercial benefit to the Respondent and/or it agents and associates.

There in no denial of such redirection of traffic, or any assertion that such redirection is bona fide and non-confusing to the public. In the Panel’s view, this conduct amounts to or evidences use of the Domain Names in bad faith.

The unexplained listing by the Respondent of its contact information as Nasseau and country code as BZ is also a relevant but not determinative consideration, as is its involvement in previous unfavorable domain name decisions.

Complainant submits that <banquecibc.com> does not have an active web site associated with it, nor was a user accessing the domain name redirected to another website. The passive holding of domain names may constitute use in bad faith in light of the facts present in a specific case. In the case at hand, the Panel has taken into consideration the following circumstances altogether: (i) Complainant is a well established company, and the trade mark is undoubtedly identified with Complainant; (ii) the formation of the Domain Names by adding the word “banque” to the trade mark, gives a clear impression of association between the Domain Names and Complainant; (iii) Respondent has no rights or legitimate interests in the Domain Names; (iv) Respondent’s prior use of one of the Domain Names at issue to redirect traffic, as set forth above; (v) Respondent provided to the Registrar, and failed to correct, wrong contact details. Thus it is not possible to conceive of any plausible contemplated active use of the domain name <banquecibc.com> by Respondent that would not be illegitimate.

In light of the above, it is found that the registration of the Domain Names was, on the face of it, made in bad faith and they have since been used in a way inconsistent with bona fide conduct. The ground is made out.

Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <banquecibc.com> and <banquecibc.net> be transferred to the Complainant.

 


 

Clive L. Elliott
Presiding Panelist

Philip N. Argy
Panelist

Gerardo Saavedra
Panelist

Dated: January 10, 2005.

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0892.html

 

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