WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canopius Services Limited v. Chen Xiansheng, Mr. Chan
Case No. D2014-0293
1. The Parties
The Complainant Canopius Services Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Crowell & Moring LLP, Belgium.
The Respondent is Chen Xiansheng, Mr. Chan of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <canopius.uk.com> (the "Domain Name") is registered with one of CentralNic's registrars Ascio Technologies Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2014. On February 26, 2014, the Center transmitted by email to CentralNic and the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2014, CentralNic transmitted by email to the Center a verification response confirming that the Respondent is listed as the registrant, providing the contact details and stating that CentralNic had not entered into mediation with regard to the Domain Name. On February 28, 2014, the Complainant confirmed that a mediation request to CentralNic had been filed. On March 19, 2014, both the Complainant and CentralNic informed the Center that the CentralNic mediation had terminated.
The Center verified that the Complaint satisfied the formal requirements of the CentralNic Resolution Policy (the "Policy") and the Rules for CentralNic Dispute Resolution Policy (the "Rules") and WIPO Supplemental Rules for CentralNic 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 March 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2014. As the Respondent did not submit a Response with this date, the Center notified the Respondent's default on April 10, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 16, 2014. 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.
On April 17, 2014, the Panel issued an Administrative Panel Procedural Order inviting the parties to put on further evidence in respect to the question of whether the Domain Name had, in the past, resolved to a website described below as the Respondent's Website and explaining the discrepancy between the date of the apparent registration of the Domain Name and the apparent date of the cease and desist letter sent by the Complainant to the Respondent. On April 25, 2014 the Complainant filed further submissions on this question. The Respondent was provided until May 1, 2014 to file any submissions or evidence in response but chose not to file any such evidence or submissions. On May 2, 2014, the Complainant filed further evidence and revised submissions. The Panel chose to accept the late submission of the Complainant and allow the Respondent until May 9 2014, to respond. Again, the Respondent chose not to file any further evidence and submissions.
4. Factual Background
The Complainant is a privately owned insurance and re-insurance group incorporated in of Guernsey but operating out of London and trading internationally. It was established in 2003 and now has total financial resources of approximately GBP 500 million. It maintains a website at "www.canopius.com".
The Complainant owns two registered trademarks that contain the word "Canopius" including a United Kingdom trade mark registration for the word mark CANOPIUS (the "CANOPIUS Mark"), registration number 2542618, which was registered on March 22, 2010. The CANOPIUS Mark is registered for services in classes 35 and 36.
The Domain Name <canopius.uk.com> was created on a date unknown but prior to May 14, 2012. Its registration lapsed and then was re-registered by the same registrant on February 6, 2013, which for the purpose of this proceeding is considered by the Panel the date of registration. The Domain Name is currently inactive; however prior to the commencement of proceedings, on May 14, 2012, it apparently resolved to a website (the "Respondent's Website") that identified itself as the headquarters of "CMA" which was connected to the Canopius Group and offered commodity trading services and other financial services. There is no evidence before the Panel that the Respondent had any relationship with the Complainant or that "CMA" ever existed.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's CANOPIUS Mark;
(ii) that the Respondent has no rights or any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith.
The Complainant is the owner of the CANOPIUS Mark having registered the CANOPIUS Mark on March 22, 2010. The Domain Name is identical to the CANOPIUS Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register the CANOPIUS Mark or to seek the registration of any domain name incorporating the CANOPIUS Mark. The Respondent is using the Domain Name to operate a site containing information about the Complainant's business and group of companies with a clear intention to make unjustified profits. The use of the Domain Name in this manner does not and never could confer a right or legitimate interest on the Respondent.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with full knowledge of the CANOPIUS Mark as the Respondent's Website makes reference to the Canopius Group. Prior to the commencement of the proceeding, the Domain Name was used to host a website containing information about the Complainant's business and group of companies. Moreover, the Respondent's Website contained tabs titled "open account" and "deposit funds", which are typically used to collect information and money from the users of the website. The Respondent thus created the false impression that the website was being maintained by the Complainant, which may have lead Internet users to provide sensitive information about their credit cards and log in details for access to their accounts with the Complainant, or even to send money to the Respondent. Such use is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy or otherwise. The Respondent's use of the Domain Name is calculated to create confusion with the CANOPIUS Mark and to take advantage of that confusion for financial gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the CANOPIUS Mark, having registrations for CANOPIUS as a trade mark in the United Kingdom. Here, as the ".uk.com" TLD may be discarded in considering the identity or confusing similarity between a domain name and a mark, the Domain Name is identical to the CANOPIUS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"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 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." (Policy, paragraph 4(c).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CANOPIUS Mark or a mark similar to the CANOPIUS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
The Respondent is currently not using the Domain Name. Prior to the commencement of the proceeding it appears that the Respondent was using the Domain Name to operate a website that, without the permission of the Complainant, made reference to the Complainant (via the use of the Complainant's name) and appeared to offer financial services, either in direct competition with the Complainant or as a means of committing fraud upon customers who thought that they were dealing with the Complainant. Neither the Respondent's present use or past use establishes a basis to find that the Respondent was making a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered Or Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location; or
(v) the Respondent has provided false contact details to CentralNic.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the CANOPIUS Mark at the time the Respondent registered the Domain Name. The Respondent's Website appears to offer financial services, the Complainant's area of business and makes reference to the Complainant. Furthermore, the Complainant had sent a cease and desist letter to the Respondent on November 26, 2012. The Respondent, who by reason of the letter must have been aware of the Complainant, allowed the Domain Name to lapse, then re-registered the Domain Name on February 6, 2013. That registration must have been made while the Respondent was aware of the Complainant and its registration of the CANOPIUS Mark.
In any event the CANOPIUS mark is not a descriptive or generic term and the Panel cannot identify any reason (and the Respondent does not offer any explanation) why any entity would register the Domain Name, other than by reason of the reputation of the Complainant's CANOPIUS Mark. The registration of the Domain Name in awareness of the CANOPIUS Mark and in the absence of rights or legitimate interests amounts in this case to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the CANOPIUS Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent's Website consisted of a website appears to offer financial services, by making reference to the Complainant's CANOPIUS Mark. The only apparent purposes behind the conduct of the Respondent are either to commit fraud upon customers who think that they are dealing with the Complainant or attract customers on the basis of confusion between the Respondent and the Complainant. It appears both from the Domain Name itself and from the Respondent's Website that it is likely that the Respondent has intentionally attempted to attract Internet users to the Respondent's Website by means of confusion with the CANOPIUS Mark, and received or intended to receive revenue for that activity. The Panel finds that such use amounts to use in bad faith. Furthermore, given the Respondent's past use of the Domain Name, and failure to offer any explanation for the re-registration and passive holding of the Domain Name, the Panel finds that the Respondent's present lack of use of the Domain Name amounts to the passive holding of the Domain Name in bad faith.
The Panel, while noting that the Policy only requires that a complainant show that a respondent registered or used the domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 <canopius.uk.com> be transferred to the Complainant.
Date: May 10, 2014