WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Questrade, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / 247, naijajamz247 plc
Case No. DCC2019-0008
1. The Parties
Complainant is Questrade, Inc., Canada, represented internally.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / 247, naijajamz247 plc, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <questrade.cc> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On August 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 5, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 9, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 3, 2019.
The Center appointed Ingrida Karina-Berzina as the sole panelist in this matter on September 9, 2019. 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
Complainant is a corporation incorporated in Canada and operating as a registered online securities brokerage firm in Canada primarily through a website at “www.questrade.com”. Complainant and its affiliates have been using the QUESTRADE mark (the “Mark”) since June 1, 2000.
Complainant is the proprietor of several trademark registrations incorporating the Mark, including Canadian trademark No. 1150399 QUESTRADE for (1) Financial services, namely securities clearing, underwriting, financial advisory services, option trading, futures trading, currency trading, commodities trading; software development services. (2) Brokerage services, namely discount brokerage services, on-line brokerage services, day trading services, and on-line trading; financial services, namely lending and financing; providing on-line access to trading software, registered on September 7, 2005.
Respondent registered the Domain Name on June 30, 2019, using a privacy service. The Domain Name does not currently resolve to an active website, but it previously resolved to a website containing Complainant’s Mark and offering visitors the opportunity to create a user account for investment services by entering personal data. The Registrar identified the registrant of the Domain Name as 247, naijajamz247 plc, Nigeria, and Respondent did not respond to the Complaint.
The Complaint includes a printout of a complaint filed to the Federal Bureau of Investigation Internet Crime Complaint Center (IC3) by Complainant alleging trademark infringement at <questrade.cc.>.
5. Parties’ Contentions
In respect of the first element, Complainant alleges that it has well-established rights in the Mark, which is registered for financial services and brokerage services. The Domain Name incorporates the Mark in its entirety.
In respect of the second element, Complainant alleges that it has been using the Mark since June 1, 2000, and that Complainant is a corporation, incorporated and subsisting under the laws of Ontario, Canada, carrying on business as an online securities brokerage throughout Canada. Complainant is and has been widely known in the securities brokerage industry for years with a very large presence through its website “questrade.com.” Respondent is not commonly known by the Domain Name and is not making any legitimate noncommercial use of the Domain Name. There is no evidence of Respondent using or preparing to use the Domain Name.
In respect of the third element, Complainant alleges that Respondent has registered and is using the Domain Name in bad faith. By using the Mark in the Domain Name and by previously listing Complainant’s address at the website to which it resolved, and by posting Complainant’s Broker Check Report from the Financial Industry Regulatory Authority, Respondent has fraudulently held itself out as being Complainant to attract visitors to deposit funds to purportedly invest with Respondent. Complainant submits that this has been a case of identity theft and fraud. Under such circumstances, Complainant requests the transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the Mark, through at least Canadian registrations and use of the Mark, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name <questrade.cc> wholly incorporates and is therefore confusingly similar to Complainant’s Mark.
It is the well-established view of UDRP panels that the addition of a generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the trademark with permission of Complainant. Complainant’s rights in the trademark predate the registration of the Domain Name by a number of years.
The circumstances indicate that Respondent has no rights or legitimate interests of the case. First, the nature of the Domain Name (comprising Complainant’s Mark) cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1.). Second, the Domain Name previously resolved to a website purporting to offer services identical to Complainant’s. The incorporation of Complainant’s Mark is apparent. Such a use cannot support a finding of rights or legitimate interests in the Domain Name.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of creating an association with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name by nearly two decades. Complainant’s Mark is distinctive. The Domain Name contains Complainant’s Mark in its entirety, and Respondent’s website described its operator as follows: “QUESTRADE USE INC is a legitimately enrolled private constrained organization, which was established in 2009 in Ontario Canada. what’s more, it transformed into an open organization give everybody access to the monetary items offered by Questrade.cc.” There can be no doubt that Respondent chose the Domain Name in full awareness of Complainant’s Mark.
Further, the website references Complainant’s address on Yonge Street in Toronto, Canada, and includes a form for visitors to enter personal information to create a brokerage account. It is apparent that Respondent has attempted to impersonate Complainant and mislead visitors by claiming association with Complainant and thereby obtain visitors’ personal data including name, e-mail address and cryptocurrency account information. In the view of the Panel, such circumstances, taken together, indicate that Respondent used the Domain Name for the purpose of exploiting Complainant’s Mark. Complainant’s Mark is being used in both the Domain Name and on the website to which it resolves in a manner that demonstrates an intention to attract Internet users to this website (see WIPO Overview 3.0, section 3.1.4).
Finally, additional circumstances further support a finding of bad faith: Respondent’s failure to file a substantive response and Respondent’s use of privacy services (see WIPO Overview 3.0, section 3.1.1).
The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <questrade.cc> be transferred to Complainant.
Date: September 30, 2019