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Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
Canadian Imperial Bank of Commerce, CIBC World Markets Inc.
v. credoNIC.com/Domain for Sale
Case No. D2004-0893
1. The Parties
The Complainants are Canadian Imperial Bank of Commerce and CIBC World Markets Inc., Toronto, Ontario, Canada (the “Complainants”) represented by Blake, Cassels & Graydon, LLP, Canada.
The Respondent is credoNIC.com/Domain for Sale, United States of America (the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <davidblack-cibcwoodgundy.com> (the “Domain Name”)
is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2004. On October 28, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2004, the Registrar 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 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 Tony Willoughby, Mary Padbury
and Bruce E. O’Connor as panelists in this matter on January 6, 2005.
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.
4. Factual Background
The Complainants are a very substantial North American financial institution. The retail division of CIBC World Markets conducts business under the name CIBC Wood Gundy. The Complainants are the proprietors of a large number of trademark registrations of the mark CIBC and the mark WOOD GUNDY. CIBC Wood Gundy operates and trades through the website “www.cibcwoodgundy.com”.
The Domain Name was registered on June 19, 2004. It is connected to a website featuring adult material.
On June 21, 2004, the Complainants sent an email to
the Respondent drawing attention to the Complainants’ rights and asserting
that the Respondent’s registration and use of the Domain Name infringed
the Complainants’ trademarks. The email also complained of the content
of the website to which the Domain Name is connected. The email goes on to indicate
that “appropriate action” will be taken without further notice to
the Respondent. The Respondent responded by email providing a link to a website
indicating that the Domain Name was available for purchase at a target price
5. Parties’ Contentions
The Complainants contend that the Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights. In support, the Complainants produced significant evidence of reputation and goodwill under and by reference to the name CIBC Wood Gundy, the business name under which the retail division of CIBC World Markets trades. The Complainants also point to their many trademark registrations for the marks CIBC and WOOD GUNDY.
The Complainants further contend that the Respondent has no rights or legitimate interest in respect of the Domain Name. The Complainants draw attention to the matters set out in paragraph 4(c) of the Policy, which might demonstrate relevant rights or legitimate interests and contend that none of them applies.
The Complainants contend that there is no question of any bona fide service being offered under and by reference to the Domain Name. Essentially the Domain Name is for sale and the link to the adult site is simply a temporary holding position by virtue of which the Respondent derives income.
The Respondent is not known by the Domain Name. The David Black identified in the Domain Name is an employee of the Complainants who registered the Domain Name some time ago without authority. The Complainants asked Mr. Black to cease use of the name and to allow it to lapse. This he did. The Respondent evidently picked up the Domain Name on the lapsing of the first registration.
The Complainants contend that the Respondent is not making any legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain to mislead or divert consumers, or to tarnish the trademarks. The Complainants assert that the linking of the Domain Name to a pornographic site tarnishes the trademarks; moreover, the linking of the Domain Name to such a site is calculated to mislead Internet users.
The Complainants contend that the Domain Name was registered and is being used in bad faith. In support of this allegation the Complainants refer to three matters. First, they say that the activities of the Respondent fall within the terms of paragraph 4(b)(iv) of the Policy in that Internet users visiting the site by way of the Domain Name are likely to be doing so expecting and anticipating that they will be visiting a site of or authorised by the Complainants. They are being misled. (Initial interest confusion). The Complainants contend that the Respondent is motivated by commercial gain.
Secondly, the Complainants observe that the Whois directory information for the Respondent is at the very least incomplete. There is no contact name, state or telephone number provided as part of the Whois information for the Respondent. The Complainants assert that this is indicative of bad faith for the purposes of the Policy.
Thirdly, the Complainants point to the fact that when the Complainants first raised the matter with the Respondent, the Respondent’s immediate response was to send the Complainants a link to a site indicating that the Domain Name was up for sale at a target price of US$500. The Complainants contend that this was a primary motivation for registration of the Domain Name and evidence of bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainants must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
Apart from the generic domain suffix, which can be ignored for this purpose, the Domain Name comprises the name of David Black an ex-employee of the Complainants, the Complainants’ registered trademark CIBC and the Complainants’ registered trademark WOOD GUNDY. Moreover, it is plain from the evidence that in common law terms, CIBC WOOD GUNDY is an unregistered trademark of the Complainants, who have for many years traded under that name, extensively promoted that name and used that name in the distinctive manner of a trademark.
The Panel finds that the Domain Name is confusingly similar to trademarks in which the Complainants have rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which if shown to be present shall constitute rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy reads as follows:
“How to Demonstrate Your Rights to and Legitimate
Interests in the Domain Name in Responding to a Complaint.
When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainants assert that paragraph 4(c)(i) does not apply because the Respondent’s primary purpose in registering the Domain Name was with a view to selling it to the Complainants at a profit and/or with a view to deriving income from it, linking it to a pornographic site. The income would be derived from ‘hits’ represented by Internet users visiting the site expecting it to be a site of or authorised by the Complainants. In other words, whichever way one approaches it, the Respondent registered the Domain Name with a view to exploiting the Complainants’ trademarks without authority and for profit. The Complainants contend that the Respondent’s registration and use of the Domain Name for that purpose cannot constitute a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy.
The Complainants assert that paragraph 4(c)(ii) does not apply because to the extent that the Domain Name indicates the name of anyone other than the Complainants, it identifies their employee David Black, not the Respondent. The Complainants also operate a website using a domain name, <cibcwoodgundy.com>, that is distinguished from the Domain Name only by the absence of the personal name of their employee, David Black. The Panel thus cannot see how the Respondent could claim to be known by the Domain Name.
The Complainants contend that paragraph 4(c)(iii) cannot apply because the Respondent’s activities set out above are self-evidently neither legitimate nor non-commercial nor fair.
The Panel is of the view that the Complainants have made out a prima facie case under this head and that the Respondent has a case to answer.
In the absence of a Response and given that the Panel can think of no other reason why the Respondent might have registered the Domain Name and used it as it has, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the above and in the absence of any explanation from the Respondent, the Panel finds that the Complainants have made out their case under this head.
The Panel finds that the Respondent registered the Domain Name primarily for the purpose of selling it at a profit to the Complainants and, in the interim, to use it to mislead Internet users by encouraging them to visit the site connected to the Domain Name in the belief that that site is a site of or authorised by the Complainants and for commercial gain.
Accordingly, the Panel finds that the Domain Name was registered and is being
used in bad faith in accordance with paragraphs 4(a)(iii), 4(b)(i) and 4(b)(iv)
of the Policy.
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 Name be transferred to the Complainant, Canadian Imperial Bank of Commerce, as requested by the Complainants.
Bruce E. O’Connor
Dated: January 17, 2005