WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Manufacturers Life Insurance Company v. Canaccord Capital Corp. Belize
Case No. D2003-0945
1. The Parties
The Complainant is The Manufacturers Life Insurance Company, Toronto, Ontario, Canada, represented by Bereskin & Parr, Canada.
The Respondent is Canaccord Capital Corp. Belize, Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <financieremanuvie.com> and <financieremanuvie.net> are registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on November 27, 2003, and by hardcopy on November 28, 2003. On November 28, 2003, the Center transmitted by email to Tucows, Inc. ("Tucows") a request for registrar verification in connection with the domain names at issue. On November 28, 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. 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 December 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 24, 2003.
The Center appointed William R. Towns as the sole panelist in this matter on January 6, 2004. The Panel finds that it was properly constituted. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is a business entity incorporated under the laws of Canada. The Complainantís business involves the provision of a range of financial services. The Complainant has operations in Canada, the United States and internationally.
The Complainant is the owner of a number of trade marks comprising or including the words FINANCIÈRE MANUVIE and MANULIFE FINANCIAL in association with the provision of financial services. FINANCIÈRE MANUVIE is the French translation of MANULIFE FINANCIAL. The Complainant has obtained registrations for such marks in Canada, the United States, United Kingdom, Korea, Indonesia, Malaysia, Vietnam and the Philipines. In addition, the Complainant holds several registrations for the mark MANULIFE in Canada, and claims rights in MANULIFE and MANUVIE arising from the use of these marks in Canada dating back as far as 1986.
The Complainant also has registered the domain names <manulife.com> and <manuvie.com>. These domain names resolve to the Complainantís English and French language web sites, respectively, which promote and provide information about the Complainantís financial products and services, and display the Complainantís MANULIFE FINANCIAL, FINANCIÈRE MANUVIE, MANULIFE and MANUVIE marks.
The Respondent appears to be a privately held company registered in Belize, with its principal place of business in the Bahamas. An individual is said to be the Respondentís "Canadian representative". The Respondent registered the disputed domain names <financieremanuvie.com> and <financieremanuvie.net> on November 7, 2002. Within a week of this registration, the Respondent, through its Canadian representative, sent several email communications to various employees of the Complainant indicating the disputed domain names were for sale.
There is no indication in the record that the disputed domain names reflect any trade name, trademark or service mark of the Respondent, or that the Respondent has used either of the disputed domain names in connection with an offer of goods or services, with the possible exception of a period in November 2002, when both domain names resolved to the Respondentís web site. On the other hand, both before and after registering the disputed domain names in this case, the Respondent had registered domain names reflecting trademarks of other established Canadian financial companies, including Canaccord Capital Corporation (<canaccordcapital.com>) and Canadian Imperial Bank of Commerce (<banquecibc.com> and <banquecibc.net>). These domain names also resolved during November 2002, to the Respondentís web site.
The Respondentís registration of the domain name <canaacordcaptial.com> was the subject of a decision under the Policy. Canaccord Capital Corporation v. Corporation Canaccord Capital, Belize, WIPO Case No. D2003-0087. In that decision, the Panel determined that the Respondent had no rights or legitimate interest in the disputed domain name <canaccordcapital.com>, which reflected the Complainantís trademark, and held that the Respondent had registered and used the disputed domain name in bad faith.
5. Partiesí Contentions
The Complainant contends that since at least 1986, it has provided a range of financial services, in Canada, the United States, and in other countries under its FINANCIÈRE MANUVIE, MANULIFE FINANCIAL, MANULIFE or MANUVIE trademarks and service marks. The Complainant contends that its marks are well known, that the FINANCIÈRE MANUVIE and MANULIFE FINANCIAL marks have been registered in Canada, the United States and a number of other countries, and that MANULIFE and MANUVIE are registered marks in Canada.
The Complainant contends that the Respondentís domain names <financieremanuvie.com> and <financieremanuvie.net> are identical or confusingly similar to the Complainantís trademarks and service marks, and that the disputed domain names incorporate the Complainantís FINANCIÈRE MANUVIE mark in its entirety. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names because the Complainant has not licensed or otherwise authorized the Respondent to use its marks, and because the Respondent is not identified by the domain names and has not used the domain names in connection with any bona fide offer of goods or services.
Finally, the Complainant maintains that the Respondent registered and is using the disputed domain names in bad faith. The Complainant alleges that the primary reason for Respondentís registration of the domain names is for purposes of selling or transferring the domain names to the Complainant for amounts in excess of the Respondentís out-of-pocket costs related to the domain names. Further, the Complainant believes that the Respondentís registration of domain names reflecting the trademarks of other leading Canadian financial companies in addition to the Complainant demonstrates a pattern of conduct establishing the Respondentís bad faith registration and use of the disputed domain names.
For these reasons, the Complainant seeks to have the disputed domain names transferred to it.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use, also known as "cybersquatting." Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774; Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).
Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Since Paragraph 4(a)(iii) requires the Complainant to prove that the domain name has been registered and is being used in bad faith, a number of Panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence that it has rights or legitimate interests in the domain name, once the Complainant has made a prima facie showing under Paragraph 4(a)(iii). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademarks and service marks in issue. Further, the Panel concludes that the Respondentís domain names are identical or confusingly similar to the Complainantís marks for purposes of the Policy. The disputed domain names reflect the Complainantís FINANCIÈRE MANUVIE mark in its entirety. A domain name that incorporates a complainantís mark in its entirety is sufficient to establish confusing similarity for purposes of the Policy. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainantís mark).
C. Rights or Legitimate Interests
The Complainant has demonstrated for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant without question has established its rights in its FINANCIÈRE MANUVIE and MANULIFE FINANCIAL marks. Further, the Complainant has shown that Respondent is not commonly known by the disputed domain names, and that the Respondent has acquired no trademark or service mark rights. In that regard, the Complainant established that it has not licensed or otherwise authorized the Respondent to use any of its marks in connection with the conduct of the Respondentís business or as part of Respondentís domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
In addition, the evidence reveals that Respondent has engaged in a pattern of registering domain names reflecting marks of well known Canadian financial companies, and using those domain names to resolve to a the Respondentís web site, where financial services similar to those of the Canadian companies have been advertised. This is not a legitimate use of a domain name under the Policy. Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252. Nor is offering to sell the disputed domain names to the Complainant under circumstances from which it reasonably can be inferred that the Respondent was seeking compensation well in excess of its actual out-of-pocket costs directly related to the domain names. See Quixtar Investments, Inc. v. Scott A. Smithberger, WIPO Case No. D2000-0138. See also J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035. This is sufficient under the Policy to show that the Respondent lacks rights and legitimate interests and require consideration of Respondentís bad faith under Paragraph 4(a)(iii).
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on its web site or location.
The circumstances of this case compel a finding that the Respondent registered and is using the disputed domain names in bad faith. The evidence demonstrates that the Respondent has engaged in an unmistakable pattern of registering domain names in order to prevent the legitimate owners of trademarks or service marks from using their marks in corresponding domain names. Further, the evidence establishes that the Respondent registered the disputed domain names for the primary purpose of selling the domain names to the Complainant at an exorbitant price, and that the Respondent used the disputed domain names for commercial gain to attract Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís marks. This is precisely the type of abusive domain name registration that the Policy was created to address.
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 <financieremanuvie.com> and <financieremanuvie.net> be transferred to the Complainant.
William R. Towns
Dated: January 19, 2004