World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PI Financial Corp. v. Pi Financial QC

Case No. D2011-1741

1. The Parties

The Complainant is PI Financial Corp. of Vancouver, British Columbia, Canada, represented by Miller Thomson, LLP, Canada.

The Respondent is Pi Financial QC of St.-Nicolas, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <pifinancial.com> is registered with Rebel.com Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 14, 2011, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On October 14, 2011, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2011.

The Center appointed J. Nelson Landry as the sole panelist in this matter on November 14, 2011. 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.

4. Factual Background

The Complainant produced 30 Annexes of which 17 are documentary evidence, the others are UDRP decisions to the elaborate 15 page Complaint, two affidavits of employees in managerial capacity, one by Mr. Thomas with exhibits A to Z and AA and another by Mr. Tonnesen, with exhibits A to F, the whole representing more than 500 pages of evidence.

On September 6, 1983, the Complainant, then named D.J. Hall & Company Inc., changed its name to Pacific International Securities Inc. and subsequently, on July 1, 2007, to PI Financial Corp., its current name.

On July 11, 2006, the Complainant filed two applications to register the trademark PI and the trademark PI & Design, each designated the same four categories of services, category 1, financial services, estate planning services, securities research and advisory services and securities landing and bowering services, based on use since September 6, 19831. The trademark PI & Design was registered on November 16, 2007 under No. 701,052, and trademark PI on June 3, 2008 under No. 715,691. (herein collectively the “PI Trademarks” and the “PI” or “PI & Design Trademark”)

On October 22, 2009, the Complainant filed an application to register the trademark PI FINANCIAL EXPERIENCE. DRIVEN. & Design, in association with investment dealer services based on use as early as July 1, 2007 and the registration was made on August 12, 2010. (herein the “PI FINANCIAL Trademark”)

According to the evidence in the affidavit of Mr. Thomas, senior Vice-President Compliance & Corporate Secretary of the Complainant, employee of the Complainant since June 1983, the Complainant had commenced the use of its two Trademarks PI and PI & Design in association with the promotion and provision of its financial services in 1983, as declared in the two trademark registrations produced as exhibits.

Mr. Thomas also produced several exhibits showing promotional activities, brochures and flyers circulated during the period of 1983 to at least 1994 on which the Trademarks PI and PI & Design are present. He further stated that by 1999 the Complainant had approximately 15,000 individual investment clients and the number exceeds this amount in 2011.

The Complainant registered the domain names <pi-securities.com> on November 14, 1996, <pisecurities.com> on January 16, 2001 and <pifinancialcorp.com> on March 22, 2007. The Trademarks PI, PI & Design and PI FINANCIAL were promoted on the websites operated at the corresponding addresses. Several exhibits showing this use of the various trademarks PI, PI & Design and PI FINANCIAL prior to and after 2000 were produced by Mr. Thomas2. Finally, Mr. Thomas produced as exhibits copies of representative account statements, reports issued to customers and clients’ fee schedules as used in the past years and finally, sample press reports and articles pertaining to the reputation of the Trademarks PI and PI FINANCIAL which were used in this documentation3.

The disputed domain name was registered on October 31, 2000 by Whoisprotection in West Bay, Grand Cayman, through register.com which remained owner until October, 2007. There were several changes of ownership. On October 5, 2007, BWI Domain Manager, also in West Bay, was shown as owner until February 9, 2008, when Marketing Express, also in West Bank, was then shown as owner. On September 15, 2009, the Respondent acquired the disputed domain name. The registration was to expire on December 31, 2010 and upon acquiring it, the Respondent extended the registration which is now set to expire on October 31, 20124.

Mr. Tonnesen, Manager, Information Technology of the Complainant, reported the results of his various searches on the web in respect of the registration of the disputed domain name, its changes of ownership and efforts to identify the various owners, registrars, domain name broker services, name servers and domain parking service involved in its activities.

Prior to the corporate name change in July 2007, the Complainant officer, Mr. Tonnesen, initially checked the availability of the disputed domain name and observed that the domain name was registered with eNom.com, a domain reseller, and thereafter under Rebel.com, a registrar offering bulk domain name services. Mr. Tonnesen, on behalf of the Complainant, tried to acquire the disputed domain name through a domain name broker service named Sedo and was advised by Mr. Cox, of said broker service, that “the owner was not interested in discussing the sale of the [disputed] domain name for anything less than five figures.”

The Complainant has not granted any license neither to the earlier registrants nor to the Respondent nor authorized same to use any of its Trademarks and the Respondent is not an authorized representative of the Complainant.

The Respondent has provided as its name and coordinates, Pi Financial QC of St.- Nicolas, Quebec, Canada a telephone number, and an email address nationalbrands@gmail.com5.

Pursuant to a search by the Complainant on the Nuans database for Canadian corporation names, trade names or trademarks, no entity was found corresponding to the Respondent’s corporate name nor any was found in the Québec Registre des Entreprises nor in a Google search6.

Pursuant to searches made by the Complainant between March 25, 2011 and August 12, 2011, the Respondent has used the disputed domain name to place on its website targeted advertising links provided by NameDriveND, parking services and earn money, subsequently placed advertising links provided by Searchnut.com, used other links provided by Sedo website and finally used third party advertising at Teststartlive.com and Surveystartonline.com7.

Pursuant to further searches, as disclosed in a Reverse WhoIs report for domain names which provided as contact the email contact of the Respondent namely “nationalbrands@gmail.com”, there are 13 additional domain names registered in the name of the current Respondent and the evidence adduced by the Complainant indicates that all the registrants’ names incorporate the domain name elements with the addition of “QC”, “Québec” or “blog”, and the Complainant has provided data showing that a registered trademark is present in the domain name. By way of example, <eclipsesoftware.com>, incorporates the trademark ECLIPSE registered in Canada under TMA 561,483 for computer software owned by Schlumberger Technology Corporation, and is registered in the name of Eclipse Software Dev QC at the same postal address and email contact as the Respondent8.

5. Parties’ Contentions

A. Complainant

Upon relying on the facts which are summarized hereinabove, as submitted by the Complainant and not contradicted by the Respondent, the Complainant represents that at the time that the Respondent acquired the disputed domain name by transfer on September 15, 2009, the Trademarks PI & Design and PI where registered in Canada respectively on November 16, 2007 and June 3, 2008 and that, at the time that the disputed domain name was originally registered on October 31, 2000, the Complainant had already acquired common law trademark rights pursuant to its use and promotion on the said two PI Trademarks since 1983.

The Complainant further represents that the disputed domain name incorporates the PI Trademark, part of the registered PI & Design Trademark and the PI part of its third registered Trademark and furthermore, is confusingly similar to the said Trademarks of the Complainant and that the gTLD suffix “.com” can be disregarded, as one may also disregard the addition of the descriptive word “financial” to the Complainant’s Trademark PI and relies on earlier UDRP decisions. See Nintendo of America Inc. v. Fernando Sasch Gutierrez, WIPO Case No. D2009-0434 and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.

The Complainant submits that the disputed domain name, as registered by the predecessors of the Respondent and acquired by transfer by the Respondent, was not pursuant to a license from or authorization by the Complainant and that the earlier owners and current Respondent are not authorized representatives of the Complainant. Furthermore, the Complainant submits that the said owners and registrants at various periods were all operating commercial activities such as a pay-per-click advertising website at the address of the disputed domain name and were not making a legitimate and noncommercial use of the disputed domain name and consequently did not have, now or before, any rights or legitimate interests in respect of the disputed domain name9.

According to the Complainant and considering the nature of the disputed domain name and the services associated therewith in the various websites of the predecessors of the Respondent and of the Respondent itself, the initial registration of the disputed domain name, in all likelihood, was done with knowledge of the Trademarks of the Complainant and similarly at the time that the Respondent acquired by transfer in September 2009 the disputed domain name when one considers the adoption of the Respondent’s name as registrant, namely Pi Financial QC, by which, as alleged by the Complainant, the Respondent is not commonly known, has no trademark rights corresponding to it and even more, the name of the Respondent is fictitious in that it does not correspond to any incorporated company in Canada or registered enterprise in the Province of Quebec.

The Complainant further contends that the Respondent, in the present case, has engaged in a pattern of behavior of registering or acquiring domain names in the name of a fictitious company or business which incorporates the domain name10.

The Complainant has further submitted in the affidavit of Mr. Tonnesen that in 2007, upon investigating the recovery of the disputed domain name in contacting Sedo domain name broker services, he was advised that the owner was not interested in discussing the sale of the disputed domain name “for anything less that five figures” which according to the Complainant is a demonstration of bad faith.

Finally the Complainant contends that the Respondent, in using a fictitious name, is acting in bad faith and is engaged in a business of registration of domain names containing registered and unregistered trademarks of other parties for which the Respondent has no legitimate use, rights or interests as it appears from the over 800 current and over 100 historical domain names associated with the email address, nationalbrands@gmail.com of the Respondent11.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Policy stipulates at paragraph 4(a)(i) and in the Rules, paragraphs 3(b)(viii), (b)(ix)(1) as the first criterion, that the domain name shall be identical or confusingly similar to a trademark or a service mark in which the complainant has rights.

The determination of the rights of the Complainant in the three Trademarks involved in the present proceeding, brings into play two different dates in view of the facts that the disputed domain name was registered on October 31, 2000 by the first predecessor of the Respondent and that the Respondent acquired the disputed domain name on September 15, 2009.

In respect of this later date on which the disputed domain name was transferred to the Respondent, the evidence clearly shows that the Complainant had registered rights in the Trademarks PI & Design and PI, respectively registered in 2007 and 2008. The Panel finds that, at the time the disputed domain name was transferred to the current Respondent, the Complainant had rights in these two registered Trademarks.

It has been generally held by UDRP panels that the transfer of a domain name to a third party typically amounts to a new registration, as determined by panels in UDRP decisions cited by the Complainant; see BMEzine.com LLC. V. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008-0882, and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-006212. This Panel nevertheless considers useful to explore and determine whether the Complainant had common law rights in some of its Trademarks in 2000 when the disputed domain name was registered for the first time.

While the Complainant has not provided in its evidence financial data about its annual volume of business and promotion budgets from the date of first use in 1983 and 2000, the year of registration of the disputed domain name, the evidence discloses that the Trademarks PI and PI & Design were first used on September 6, 1983, for the services in category 1 disclosed in association with this date in the registrations, which services correspond to the type of financial services which are advertised by the Respondent and its predecessors in title on the various websites at the address of the disputed domain name. These Trademarks’ use since 1983 is further corroborated in the affidavit of Mr. Thomas and substantiated with the several exhibits produced by this affiant and in particular the fact that the Complainant had approximately 15 000 individual investments clients by 199913. The Trademark PI is the acronym of the new corporate name, Pacific International Securities Inc., adopted on September 6, 1983 and has been used as a common law trademark by the Complainant from 1983 until 2007 when the first registration was granted.

In the Panel’s view, one cannot appreciate the high standard of distinctiveness in the PI and PI, & Design Trademarks in view of the missing evidence, but this Panel considers that there is sufficient evidence to determine that by the year 2000, the Complainant had common law rights in the said two Trademarks.

The disputed domain name incorporates the PI Trademark and PI element of the PI & Design Trademark and the addition of the descriptive term “financial” and of the gTLD suffix “.com” does not diminish the confusing similarity with the two Trademarks in which the Complainant had rights in 2000 and on September 2009 as it has been determined in earlier UDRP decisions cited by the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the PI and PI & Design Trademarks of the Complainant in which it had rights at all relevant times.

The first criterion under the Policy has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations of facts included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, but rather is using a fictitious name which in this Panel’s view has been deliberately chosen in corresponding to the disputed domain name, is not making any legitimate noncommercial or fair use of the disputed domain name but rather operates a commercial business of generating income from pay-per-click advertisements of competitive services to those of the Complainant.

Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The second criterion under the Policy has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

Upon relying on two earlier UDRP panel decisions respectively of HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager of 2007, supra, and BMEzine.com LLC. V. Gregory Ricks / Gee Whiz Domains Privacy Service of 2008, supra, the Complainant represented that a transfer of a domain name to a third party is the same as a new registration. It is most convincing in observing the fictitious name of the Respondent, equivalent to the disputed domain name, along with the fact that in 2009 the Complainant was operating a website under the domain name <pifinancialcorp.com> to come to the conclusion that the Respondent either knew or should have known of the Complainant and its rights in the two Trademarks which then incorporated the 17 year old acronym PI.

Upon considering those facts which follow the nine years of activities of the disputed domain name and the pattern of the Respondent in choosing well-known trademarks which it incorporates in a domain name and also in a fictitious corporate or business name as registrant, as shown by the 13 examples put in evidence by the Complainant14, this Panel comes to the conclusion that the disputed domain name was acquired in bad faith on September 15, 2009 and also registered in bad faith in 2000. The adoption of a business name corresponding to the disputed domain name and the first two terms of the corporate name of the Complainant cannot be a coincidence in this Panel’s view but rather a deliberate choice further indicative of bad faith in this case.

Further awareness of the existence of the Trademarks and of behavior in bad faith of the Respondent resides in the fact that the Respondent, on the exact day that it acquired the disputed domain name, either re-registered or extended the lifetime of the registration thereof until October 31st, 201215. To this Panel this is further justification that the transfer of the disputed domain name is tantamount to a new registration and that consideration of registration in bad faith can be made at the time that the disputed domain name was transferred to the Respondent.

The bad faith behavior of the Respondent at the time of registration of the disputed domain name, is similar to and consistent with its earlier behavior when it registered the domain name <eclipsesoftware.com> in the name of Eclipse Software Dev. Qc, at the same address and same email address on April 5, 200916. Similarly in the two instances, the Panel observes the registration of a domain name confusingly similar to the trademark of another party, the disputed domain name similar to the trademarks of the Complainant on the one hand and the registration of <eclipsesoftware.com> similar to the Eclipse trademark of Schlumberger Technology Corporation on the other hand. Moreover, the domain names were registered in a fictitious Quebec corporate name. The Panel finds in this further confirmation that the disputed domain name was acquired by transfer or registered in bad faith by the Respondent on September 15, 2009.

The disputed domain name being confusingly similar with PI Trademarks of the Complainant is used by the Respondent to attract for commercial gain Internet users to its website by capitalizing on the said confusion and then presenting, on the website at the address of the disputed domain name, links and promotion of financial corporations offering services in competition with those of the Complainant, all being commercial activities17. In this Panel’s view, this is not an isolated case for the Respondent, as already indicated, it is one of 13 similar situations which clearly reveal the pattern of behavior of, as alleged by the Complainant, a “professional domainer” who has displayed a pattern of conduct of engaging in bad faith practices.

In addition to the 13 instances mentioned hereinabove, the Complainant has cited two recent UDRP decisions in which the Respondent is also involved under a fictitious name. See Caja de Ahorros y Monte de Piedad de Las Baleares v. Sa Nostra QC, WIPO Case No. D2010-0062 and Games Workshop Limited v. Forge World Quebec Blog, WIPO Case No. D2010-184418. In each of these two cases, a similar pattern of behavior has been observed in the choice of a domain name which had been registered earlier and subsequently acquired by a respondent or registrant with the same address in St.-Nicolas Quebec, under a fictitious business name similar to the trademark in issue. This confirms the Complainant representations of the Respondent as “professional domainer”.

The Panel is in agreement with the Complainant that the Respondent, pursuing its earlier course of conduct and pattern, most likely acquired the disputed domain name to sell it to the Complainant for a large sum of money or to take advantage of the most likely or unavoidable confusion between the disputed domain name and the PI Trademarks and domain names of the Complainant to engage in profitable commercial activities.

Notwithstanding the fact that the Complainant is the owner of the domain name <pifinancialcorp.com>, the Respondent pursuant to its established pattern has, in acquiring the disputed domain name and extending the date of expiration of its registration, prevented the Complainant from registering a domain name corresponding to its Trademark PI FINANCIAL.

Further evidence of the bad faith registration and use of the disputed domain name as contemplated in paragraph 4(b)(iv) of the Policy is the intentional attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location of financial services on the Respondent’s website as it has been determined in UDRP earlier decisions. See Carondelet Health, v. ZJ c/o Yi Zhang, NAF Claim No. 0706001000186; Computer Doctor Franchise Systems, Inc. v. The Computer Doctor, NAF Claim No. 0008000095396; WeddingChannel.com Inc. v. Andrey Vasiliev a/d/a NA and Free Domains, NAF Claim No. 03050000156716.

The Panel finds that there is substantial and convincing evidence that the Respondent has been using the disputed domain name in bad faith as it did in many other earlier occasions according to its established earlier mode of action.

The third criterion under the Policy has been met.

7. Decision

The Panel concludes that:

(a) the disputed domain name <pifinancial.com> is confusingly similar to the Complainant’s Trademarks;

(b) the Respondent has no rights or legitimate interests in the disputed domain name;

(c) the disputed domain name has been transferred or registered and is being used in bad faith.

Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pifinancial.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist
Dated: November 25, 2011


1 The application also included three other categories of services, namely: category 2, market services, used since May 25, 2004, category 3, insurance services, used since September 2, 2005 and category 4, financial services. The services under category 4 were based on proposed use and a declaration of use was filed on October 23, 2007, for the trademark PI, logo & design and another declaration on May 12, 2008 for the trademark PI. Annex 4.

2 Exhibit E 1997 to exhibit M 2007. Annex 7.

3 Exhibit N to Q for the years 1983 and 1984. Annex 7.

4 Annex 26.

5 Upon considering the circumstances of this case and the cunning efforts of the Respondent to hide one’s identity under an artificial and false name as a pattern of behavior as demonstrated by the Complainant, a deliberate behavior used in several instances, the Panel considers appropriate to disclose the email address under which the Respondent operates in the hope that legitimate trademarks owners may be better protected by the disclosure of the pattern of behavior of the Respondent.

6 The search for the corporate names disclosed a corporate name identical to that of the Complainant for each of the ten provinces in Canada except for Quebec.

7 Annexes 14 to 17.

8 Annex 27.

9 Affidavit of Mr. Tonnesen. Exhibits A and C provided a WhoIs history of the disputed domain name and Exhibit D provided a hosting history of the disputed domain name.

10 Annexes 26 to 29.

11 Annex 26 is the result of the Reverse WhoIs Lockup search made on September 22, 2011. The reasons of the Panel to disclose this email address are the same as those enunciated in footnote 5 herein.

12 Annexes 24 and 25 of the Complaint.

13 Affidavit Mr. Thomas, Exhibits supra 2 and 3.

14 Annexes 26 and 27 of the Complaint.

15 As the evidence shows (Exhibit C of the Mr. Tonnesen Affidavit), on September 14, 2009, the disputed domain name was owned by Marketing Express of West Bay, Grand Cayman and the expiration date of the registration of the disputed domain name, about to be transferred the next day, was October 31, 2009, with 45 days of registered life remaining, while on the next day, under the Respondent’s name as current owner or registrant, the expiration date had been extended to October 31, 2012.

16 Exhibit 27.

17 Affidavit Mr. Tonnesen, Exhibit F. By way of illustration, the following services are listed amongst other: Financial, Planning Career, Got Financial Dreams, Financial Courses Payroll and Debt Pooling Vancouver, Vancouver City being the city where the Complainant’s head office is located.

18 In the Caja de Ahorros, where the respondent is SA Nostra QC with the same postal address as the Respondent in the present case, a different email address “tddomainname@gmail.com” was provided. The Complainant searched the domain names associated with this email address as it did for the email address of the Respondent in this case. It did find that there are 4953 current domain names along with 2175 historical names. The reasons of the Panel to disclose this email address are the same as those enunciated in footnote 5 herein.

 

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