WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canaccord Capital Corporation v. Corporation Canaccord Capital, Bélize

Case No. D2003-0087

 

1. The Parties

The Complainant is Canaccord Capital Corporation, C/O Keith Titterton, P.O. Box 10337, Pacific Centre, 2200 - 609 Granville Street, Vancouver, British Columbia V7Y 1H2, of Canada, represented by Miller Thomson, LLP of Canada.

The Respondent is Corporation Canaccord Capital, Bélize, 55 Frédéric Street, P.O. Box CP Box 13039, Nassau, Bahamas.

 

2. The Domain Name and Registrar

The disputed domain name is <canaccordcapital.com> (further domain name).

The Registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2003. On February 7, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 10, 2003, 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. In response to a notification by the Center that the Complaint was administratively deficient on February 13, 2003, the Complainant filed an amendment to the Complaint on February 18 2003. The Center verified that the Complaint together with the amendment to 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 February 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2003. The Response was filed with the Center on March 5, 2003, in the French language, followed on March 7, 2003, by a version in the English language. Both were preceeded on February 21, 2003, by a facsimile submission of the Canaccord Capital Corporation, Belize Share Certificate copy with no accompanying brief.

The Center appointed Mladen Vukmir as the Sole Panelist in this matter on March 13, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on March 13, 2003, as required by the Center to ensure compliance with the Rules, paragraph 7.

After having received all of the submissions, and the complete file material by courier mail on March 17, 2003, the Panel verified the language of the submissions. As the Registrarís Registration Agreement is in the English language, and most of the material submitted was in English language, in accordance with the Rules, paragraph 11(a), the Panel decided that English language is to be the language of the administrative proceeding. The Panel examined the contents of the documents submitted by the Respondent in the French language as well and found their contents to be consistent with the statements submitted in the Response filed in the English language.

In accordance with the Rules, paras. 3(a), 3(b)(xv) this dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the disputed domain name is registered, incorporates the Policy.

 

4. Factual Background

The Complainant demonstrated to be the owner of the trademark CANACCORD, registered in Canada on September 3, 1993, under registration no.  TMA416499. The Complainant alleged the he has used the trademark CANACCORD in association with the following goods and services in Canada since at least as early as October 9, 1992.

Printed publications relating to investments, equity and debt securities, and corporate finance; and

Investment dealer services; acting as broker and dealer of equity and debt securities; acting as a broker and dealer of foreign exchange; underwriting equity and debt securities; advice services relating to corporate finance, mergers and acquisitions;

financial and investment research services; financial and investment counseling services.

The Complainant is also the owner of the trade name and unregistered trademark CANACCORD CAPITAL, used in Canada since 1992. The Complainant is the registrant of the following domain names:

<canaccord.com> <canaccordipo.com>
<canaccord.net> <mycanaccord.com>
<canaccordclearing.com> <canaccord.ca>
<canaccordeurope.com> ("Complainantís domain names").

The Respondent does not dispute any of these allegations. As the entire body of facts asserted by the Complainant remained essentially unchallenged by the Respondent, the factual pattern will be presented within the Complainantís general allegations below.

 

5. Partiesí Contentions

A. Complainant

a. the Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant asserts that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. It further asserts that the disputed domain name incorporates the Complainantís registered trademark CANACCORD and its common-law trademark CANACCORD CAPITAL. In particular, the Complainant asserts that the disputed domain name is confusingly similar to the Complainantís trademarks CANACCORD and CANACCORD CAPITAL pursuant to the Policy.

The Complainant holds that it is appropriate under the Policy to apply trademark law to a determination of confusion between a domain name and a trademark and that it is also appropriate under the Policy to apply the laws of countries relevant to the circumstances of a domain name dispute. (Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, July 20, 2000).

The Complainantís diligent research revealed that several factual circumstances of this case would bring this case under the Canadian law. The Complainant is pointing out to the fact that in this dispute, the address of the Complainant is in Canada, the email address for the administrative contact for the Respondent is in the Ď.caí domain and that the Registrar is located in Canada. Further, the trademarks and the trade name in issue were first used in Canada, and CANACCORD trademark has been registered in Canada. The Complainant therefore suggests, that a Canadian trademark law analysis of confusion is an appropriate consideration in determining confusing similarity under the Policy.

The Complainant argues that under Canadian trademark law, confusion is assessed according to the guidelines in section 6 of the Trade marks Act. Subsection 6(1) thereof provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the wares or services associated with those trademarks are sold, leased, hired or performed by the same person, whether or not they are of the same general class. The Complainant respectfully informed this Panel that in assessing confusion, subsection 6(5) mandates that consideration be given to all of the surrounding circumstances including:

the inherent distinctiveness of the trademarks and the extent to which they have become known;

the length of time the trademarks have been used;

the nature of the wares, services or business;

the nature of the trade; and

the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them.

The Complainant further elaborates that his registered trademark CANACCORD, as a coined word, possesses a high degree of inherent distinctiveness. The trademark is normally used by the Complainant in association with the word "capital" as part of the Complainantís trade name Canaccord Capital Corporation and its common-law trademark, CANACCORD CAPITAL.

The Complainant asserts, without providing specific evidence, that it has been using its marks CANACCORD and CANACCORD CAPITAL since October 1992. Since that date, the mark has become well known in Canada and internationally in association with corporate finance and investment services and publications. The Complainant points out that in contrast with his long-term usage, the Respondent only registered <canaccordcapital.com> in September 2002.

The Complainant analyses the natures of the wares or services which the Respondent has offered on his website associated with <canaccordcapital.com> ("Website") and concludes that these include investment, funds transfer, private lending and mortgage services. The Complainant concludes that such services overlap considerably with the services offered by the Complainant. The evidence offered contains printed copies of the content downloaded from the Website at <canaccordcapital.com> on October 8, 2002, October 28, 2002, and November 15, 2002, confirming these allegations. In addition, the Complainant finds also similarity in the nature of the trade as between the Complainant and the Respondent. The Complainant has a presence on the Internet through the Complainantís domain names, principally <canaccord.com>. The Respondent seeks to attract to its own Website Internet users who are seeking the Complainantís websites.

The Complainant asserts that the sound, appearance and ideas suggested by the disputed domain name are very similar to those suggested by the Complainantís marks CANACCORD and CANACCORD CAPITAL, the Complainantís trade name Canaccord Capital Corporation, and the Complainantís domain names.

The Complainant concludes that, under Canadian trademark law, the disputed domain name is confusing with the Complainantís trademarks CANACCORD and CANACCORD CAPITAL, with the Complainantís trade name Canaccord Capital Corporation and with the Complainantís domain names, and that the above analysis provides support for a finding that under the Policy, in light of the paras. 4(a), (b), (c); Rules, para. 3. the disputed domain name is confusingly similar to the Complainantís trademarks.

b. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

The Complainant asserts that the Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainantís mark. Under established UDRP case law this is an important step in determining that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020, March 14, 2000).

The Complainant further asserts that there is no evidence of the Respondentís use of, or demonstrable preparations for the use of, the disputed domain name or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Rather, the disputed domain name and associated Website appear to be elements of a fraudulent investment scheme, evidence for which is described in Section V(11)(c) of the Complaint.

In addition, asserts the Complainant referring to the established UDRP case law, it is not a legitimate use of a domain name to generate commercial gain by intentionally and misleadingly diverting users away from a Complainant companyís website to a Respondentís competing site. (Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252, April 9, 2001).

It is pointed out that the operation by a Respondent of a website which offered essentially the same services as the Complainant and displayed the Complainantís mark was insufficient for a finding of a bona fide offering of goods and services. (America Online Inc. v. Shenzhen JZT Computer Software Co., WIPO Case No. D2000-0809, September 6, 2000).

The Complainant closes its assertions in respect of Policy, para. 4(a)(i), Rules, para. 3(b)(ix)(2)) by concluding Respondent is not making a legitimate non-commercial or fair use of the disputed domain names, but rather seeks commercial gain by diverting clients of the Complainant, tarnishing the Complainantís trademarks, and offering to sell the disputed domain name to the Complainant.

c. The Disputed Domain Name was registered and is being used in bad faith

The Complainant laid out numerous interrelated facts in respect of the Respondentís alleged bad faith in registration of the domain name in his Complaint. Numerous evidence in form of e-mail messages, WHOIS database extracts, Web site resolving to the domain name contentsí printouts and other documentation is produced for Panelís consideration.

The Complainant asserts that on August 21, 2001, an individual identifying himself as Stephane Desmarteau opened an account in the Complainantís Montreal office. This individual allegedly sought to involve the Complainant in an investment project, but ended his relationship with the Complainant when the Complainant sought clarification of the project terms proposed by him. After the business relationship between this individual and the Complainant ended, the Respondent, knowing through its administrative contact Desmarteau that the Complainant had a prior right to the use of the trademarks CANACCORD and CANACCORD CAPITAL, nevertheless registered the disputed domain name incorporating the Complainantís trademarks.

On September 9, 2002, the Complainantís lawyers became aware of the registration of the disputed domain name. On October 8, 2002, they downloaded the content of the Website. The Website content includes use of the Complainantís trademarks and trade name in association with an offering of services similar to those of the Complainant.

Meanwhile, between August 14, 2002, and August 22, 2002, at least four customers of the Complainant have been persuaded by an individual identifying himself as Stephane Desmarteau to attempt to transfer locked-in Registered Retirement Savings Plan ("RRSP") accounts from the Complainant to other Canadian banking institutions. The forms used to request transfer ("Forms") were fraudulent imitations of genuine transfer forms of the Complainant. To the Complainantís knowledge, the transferee institutions refused four such transfer requests. Copies of the Forms and banking institution correspondence refusing the transfers are provided as evidence.

Each of the Forms requested transfer of the RRSP account to an entity entitled "Corporation Canaccord Capital" at 1755 Robson Street, Vancouver, British Columbia, V6G 3B7, telephone number 1-866-393-3334. The address provided is that of a mailbox rental company, and the telephone number is identical to the number recorded with the Registrar for the administrative contact of the Respondent. The same telephone number was also provided for more information by the individual identifying himself as Stephane Desmarteau to one of the customers of the Complainant who sought to transfer her RRSP account.

The Respondent, via the Website email, made several unsolicited attempts between October 10, 2002, and November 14, 2002, to sell the disputed domain name to the Complainant. In the November 14, 2002 offer, the message indicated that an individual identifying himself as Stephane Desmarteau had sent it. Copies of these email messages are provided as evidence too.

In the October 20, 2002 email, the Respondent advised that it would no longer return the Complainantís email effective October 21, 2002, and that the Respondent had received "lots of them." An offer to sell the disputed domain name was attached. In the two email messages received October 22, 2002, the Respondent stated: "we have receive a lot of email. we have save them," and "today Tuesday receive 9 mail canaccordcapital.com" and attached a further offer to sell the disputed domain name.

Between November 7, 2002, and November 11, 2002, the Respondent registered several other domain names incorporating trademarks of well-known Canadian financial institutions, namely the Canadian Bank of Commerce (also known as "CIBC" and "Banque Canadienne Imperiale de Commerce" in French) and Manulife Financial Corporation ("Manulife," also known as "Financiere Manuvie" in French). Each of the registrations for <financieremanuvie.net>, <financieremanuvie.com>, <banquecibc.ne> and <banquecibc.com> is registered by Canaccord Capital Corp. Belize or variations thereof. In all four registrations, the administrative contact is recorded as one "Stephane Desmarteaux." The address provided for the registrant and administrative contact is 55 Frederic Street, Nassau, QC 13039, BS or similar. Copies of the Tucows WHOIS database search results for these domain names are provided as evidence.

In November 2002, each of the domain name registrations by the Respondent which incorporated "banquecibc" or "financieremanuvie" was linked to the Website. By December 5, 2002, these domain names were no longer linked to the Website, rather they direct Internet users to a site under construction as an on-line casino.

In November 2002, several employees of Manulife received offers from an individual identifying himself as Stephane Desmarteau to sell the <financieremanuvie.net> and <financieremanuvie.com> domain names. In response, a cease and desist letter was sent by lawyers for Manulife to the Respondent. In a subsequent message to Manulife, an individual identifying himself as Stephane Desmarteau represented himself as the Canadian representative for the Respondent, and reiterated that the subject domain names were for sale. A copy of the text of the latter message is provided as evidence.

The Complainant suggests that it has been held to be evidence of bad faith where a Respondent engaged in a pattern of registering domain names, which are the names or marks of well-known businesses. Such action suggests an intent to profit from the activities of others. (J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035).

Several members of the public have been allegedly confused by the Respondentís use of the disputed domain name. Evidence is provided in the form of examples of correspondence misdirected to the Respondent as a result of such confusion, and redirected to the Complainant. A search using the GoogleTM Internet search engine on December 18, 2002, revealed two results linking to the website. These search results are provided as evidence too.

The Complainant suggests that it was held to be bad faith use for a Respondent to use a domain name to direct Internet users to a website where services similar to those of the Complainant are offered, as this is likely to confuse Internet users into believing that the Complainant is the source of, or is sponsoring, the services offered at the website. The Claimant refers the Panel to the established UDRP case law (Identigene, Inc. v. Genetest Lab., WIPO Case No. D2000-1100, November 30, 2000).

The Complainant argues that although the Respondent stated in an email received October 8, 2002, by an agent of the Complainant that the Respondent exists only in Belize it is still clear that the email message originated from a "videotron.ca" server in Canada, as evidenced by the originating path displayed in the header of the email message. Also, the only address provided to the Registrar and on the Website indicates a headquarters address in the Bahamas, not in Belize. A copy of the October 8, 2002, email message as received, and one showing the originating path information, is provided as evidence.

The Complainant suggests that these discrepancies indicate that the Respondent provided false information to the Registrar, an indication of bad faith registration of the disputed domain name.

On December 3, 2002, the Complainantís lawyers sent cease and desist letters to the Respondent, to S. Desmarteau, to the Registrar, to the Registration Service Provider Centre Corporation, to the Internet Service Provider Toxik Technologies Inc. ("Toxik"), and to Mediaweb, which hosted the administrative contact email address for the Respondent. Copies of the letters sent are provided as evidence, as well.

On December 3, 2002, apparently in response to receipt by the Respondent of the Complainantís cease and desist letter, the Complainantís lawyers received an email message from the Respondent. The message stated that anyone can find the Respondent on the Internet using search engines with keywords such as "canaccord capital belize," "canaccord capital offshore," "canaccordoffshore," "canaccord capital compte offshore" and others. The message further stated that the Respondent seeks to sell its company and the Website because it has received more than 100 email messages per week, including several highly confidential messages. The message advised that the offer to sell the company and domain name would expire within 5 days. The message indicated that an individual identifying himself as Stephane Desmarteau of Montreal had sent it. A copy of the message is included as evidence. The Respondentís response to the cease and desist letter is further evidence of its bad faith intentions.

In an email message sent December 6, 2002, Toxik asked the administrative contact for the Respondent at eric@mediaweb.ca to confirm that it had stopped using Toxik servers for the disputed domain name. In a second email sent December 6, 2002, by Toxik to Equinoxe Graphics, Toxik advised that all hosting services for the disputed domain name had been suspended. Copies of both messages sent by Toxik are provided as evidence.

A search of the Internet for the disputed domain name conducted by the Complainant on December 6, 2002, revealed that the Website had been removed. However, in an email message received by the Complainantís lawyers on December 6, 2002, from one "Stephane" using the email address pro-immo@videotron.ca, the author of the message suggests that the suspended Website would be reactivated on December 9, 2002. A copy of the December 6, 2002, email message is provided as evidence. No reactivation of the Website occurred in December 2002. Another email message from an individual identifying himself as Stephane Desmarteau, was received by the Complainant and its lawyers on January 26, 2003. This latter message indicated that the website associated with the disputed domain name would be operating as of January 28, 2003, and appeared to ask the Complainant to notify the Complainantís clients of the Complainantís website address, in order that email messages intended for the Complainant would not be sent to the Respondentís Website. A copy of the email message of January 26, 2003, is attached as evidence.

The Complainant represents that the Respondent amended its domain name registration details to record a change in host domain servers from Toxik Technologies to Hostex.net on January 31, 2003. A copy of the Tucows WHOIS data from January 31, 2003, for the disputed domain Name is provided as evidence. The Complainantís lawyers sent a cease and desist letter to Hostex.net at the email address abuse@hostex.net on January 31, 2003. A copy of the letter is provided as evidence, as well.

According to the Complainant the Respondent reactivated the Website, posting content very similar to the content previously posted, and notified the Complainant and the Complainantís lawyers by email that the Website was again active on February 3, 2003. The email message received and the content downloaded from the website on February 3, 2003, are both provided as evidence.

The Respondent has used, is using and threatens to continue to use the disputed domain name to attract Internet users to the Respondentís Website by creating a likelihood of confusion with the Complainantís trademarks CANACCORD and CANACCORD CAPITAL. The Complainant considers the Respondentís above described behavior to be in clear contravention of the Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)).

B. Respondent

On February 18, 2003, the Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center. The Respondent drafted a Response in French language dated March 3, 2003, and have submitted it to the Center on March 5, followed by an English version on March 7, 2003.

In his Response the Respondent is asserting that the Complainant and the Respondent are not involved in the same business, as his company is operating on Internet (20%) and offshore: St-Lucie, Dominican Republic, Curaçao, Venezuela (80%). The Respondent is also replying to the Complainantís assertion by stating that if the websites are compared, it apparently becomes clear that Complainantís and Respondentís companies respectively do not offer the same services. The Respondent also expressly declines to compare his respective services to those of the Complainant.

The Respondent is pointing out the difference between the company names of the names of the companies in the present dispute emphasizing that the Respondentís company name is Canaccord Capital Corporation du Belize, while the Complainantís company name is: Canaccord Capital Canada.

The Respondent reasons that: "Just like you have some people name is: College DELTA, DELTA airline, Voyage DELTA, they are Delta ,but they are all differents compagnies" and concludes that "We are a compagny legaly constitute. We do not have this name as an a individuel We are a COMPAGNY."

The Panel assumes that the Respondent is of belief that it is satisfactory to demonstrate a proper incorporation of a company in a different country than the country of incorporation of the Complainantís company in order to be legally entitled to use such a corporate name as a gTLD name on the Internet. It also emerges that the Respondent is not conscious of the legal provisions that regulate the rights to a domain name applicable to the domain names he registered, such as the ICANN UDRP, and the Rules.

From the text of the Response it does not appear that Respondent considered important to either rebut other allegations made by the Complainant, or to submit other relevant facts to the Panel.

 

6. Discussion and Findings

The Panel infers that the Respondent holds that it is sufficient for him to demonstrate that he is a properly incorporated company in a country different from the country of incorporation of the Complainantís company in order to acquire legal rights to use such a corporate name as a gTLD name on the Internet. It further appears to the Panel that the Respondent is blissfully unaware of the legal provisions that regulate the rights to a domain name applicable to the domain names he registered, such as the ICANN UDRP, and the Rules and its contents. It is unfortunate reality of the recent Internet usage, which attests to a great number of domain name registrants, and regular Internet users who have very little knowledge and/or understanding of the Policy and its implication for their behavior. It is somewhat frustrating to see that even the ever-growing body of the UDRP case law finds scarce communication to the domain name registrants, such as to the present Respondent. In addition to the lack of knowledge of the body of law related to the Internet, the Panel got the impression that the Respondent when doing business does not take into account the aspects related to the trade identities, such as a trade name, trademark or other signage, nor other bodies of law regulating business activities.

A. Identical or Confusingly Similar

(Policy, paras. 4 (a)(i), Rules paras. 3(b)(viii), (b)(ix)(1))

The first test under this element is to ascertain whether the Complainant has right in a trademark or a service mark.

The Panel duly notes that the address of the Complainant is in Canada, the email address for the administrative contact for the Respondent is in the Ď.caí domain and that the Registrar is located in Canada. In addition, the trademarks and the trade name in issue were first used in Canada, and CANACCORD has been registered in Canada.

The Panel agrees with the Complainantís contentions that it is appropriate under the Policy to apply the laws of countries relevant to the circumstances of a domain name dispute to this part of the test under the first element of the Policy (Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, July 20, 2000).

It is clear from the evidence presented to the Panel, that the Complainant has established a common law trademark right to CANACCORD under Canadian law.

The next part of the first element is to prove that the mark in which the Complainant has right is confusingly similar or identical to the domain name.

The issue here is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient confusing similarity between the domain name and the trademark to advance to consideration of the second and third factors (Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, November 6, 2001).

There can be no question but that the Domain Name is confusingly similar to Complainantís common law trademark CANACCORD for purposes of the Policy. Respondentís Domain Name incorporates in its entirety the mark. As numerous prior panels have held, the fact that a domain name wholly incorporates a Complainantís registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, (November 6, 2001), EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000).

Accordingly, the Panel finds that the Complainant has established that it has rights in CANACCORD, which is confusingly similar with the domain name <canaccordcapital.com>.

B. Rights or Legitimate Interests

(Policy, paras. 4(a), Rules paras. 3(b)(ix)(2))

The Complainant recognized that the Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainantís mark as the Respondent did not contest this allegation. Under recognized UDRP case law this is an important step in determining that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020, March 14, 2000).

The Complainant further demonstrated that there is no evidence of the Respondentís use of, or demonstrable preparations for the use of, the disputed domain name or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Rather, the disputed domain name and associated website appear to be elements of a fraudulent investment scheme, evidence for which is described in Section V(11)(c) of the Complaint. The Respondent never attempted to rebut such allegations.

In addition, the Panel holds that the Complainant is right when it contends that it is not a legitimate use of a domain name to generate commercial gain by intentionally and misleadingly diverting users away from a Complainant companyís website to a Respondentís competing site. The established UDRP case law clarified and confirmed the Policy on this point (Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252, April 9, 2001).

This Panel further sides with the Complainant when he asserts that the Respondent of a website resolving to the disputed domain name offered essentially the same services as the Complainant and displayed the Complainantís mark. The Panel holds that it is unreasonable to expect from an average financial services user to go into analysis of the possible differences between the exact services and the geographic coverage offered on the website whose domain name is confusingly similar and identical to the Complainantís trademarks and its web site, when both of the web sites offer a number of financial services. The Panel holds in this respect that such use is insufficient for a finding of a bona fide offering of goods and services, as already established by the UDRP case law (America Online Inc. v. Shenzhen JZT Computer Software Co., WIPO Case No. D2000-0809, September 6, 2000). Accordingly, the Panel finds that the Respondent is in violation of the Policy, paras. 4 (a)(iii), as he is not making a legitimate non-commercial or fair use of the disputed domain name.

C. Registered and Used in Bad Faith

(Policy, paras. 4 (a)(iii), 4(b); Rules paras. 3(b)(ix)(3))

The Panel finds that the evidence of bad faith on multiple grounds provided for by the Policy is abundant. It appears that the Respondent fully lacks understanding of the legal concepts regulating the registration of the domain names, as well as the underlying legal concepts regulating the behavior of business entities in market competition. Unfortunately, many elements of such behavior became somewhat typical for a certain category of Internet domain name registrants. Sometimes, other learned Panelists used weighty words such as "extortion" to describe the sum of such elements found in various combinations in different cases. This Panel will stop short of describing the sum of the particular actions, which the Respondent thought he was free to make in this case, but which are contrary to the Policy, paras. 4 (a)(iii), 4(b); Rules paras. 3 (b)(ix)(3), and possibly other legal provisions. It suffices to assess here the meaning of just some isolated actions in order to find that each one of these is contrary to the requirements of a behavior required under the Policy, and clarified by the subsequent pertinent case law.

The Panel finds that it constitutes bad faith under Policy, paras. 4 (a)(iii), 4(b); Rules paras. 3 (b)(ix)(3) for the Respondent to use a domain name to direct Internet users to a website where services similar to those of the Complainant are offered, as this is likely to confuse Internet users into believing that the Complainant is the source of, or is sponsoring, the services offered at the website. (Identigene, Inc. v. Genetest Lab., WIPO Case No. D2000-1100, November 30, 2000).

The Complainant showed that the email message originated from a "videotron.ca" server in Canada, as evidenced by the originating path displayed in the header of the email message, in spite of the Respondentís claims in an email received October 8, 2002, by an agent of the Complainant that the Respondent exists only in Belize. Also, the only address provided to the Registrar and on the Website indicates a headquarters address in the Bahamas, not in Belize. The Panel holds that the fact that the Respondent apparently really incorporated an offshore company in Belize, he never demonstrated that his intentions were actually directed to doing business in that country. Therefore, the Panel decides that the offshore veil of the Canaccord Capital Corporation of Belize is to be pierced for the purposes of this proceedings. The Respondent who incorporated an offshore company for the purposes that cannot be held legitimate under the Policy, paras. 4(a)(iii), 4(b); Rules paras. 3(b)(ix)(3), cannot be allowed to rightfully claim that he is doing business in another country, especially if there is no sufficient evidence that his activity in such country was real and effective. The Panel finds that the Complainant is right to suggest that these discrepancies constitute the evidence that the Respondent provided false information to the Registrar, which is to be considered as indication of bad faith registration of the disputed domain name.

 

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 name, <canaccordcapital.com> be transferred to the Complainant.

 


 

Mladen Vukmir
Sole Panelist

Dated: March 27, 2003