WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fonds de placement immobilier Cominar/Cominar Real Estate Investment Trust v. WhoisGuard Protected, WhoisGuard, Inc. / Ferdinand Robert

Case No. DCO2021-0020

1. The Parties

The Complainant is Fonds de placement immobilier Cominar/Cominar Real Estate Investment Trust, Canada, represented by Gowling WLG (Canada) LLP, Canada.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ferdinand Robert, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <cominar.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On February 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 22, 2021.

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” 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 the Respondent of the Complaint, and the proceedings commenced on March 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2021.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 14, 2021. 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 is an unincorporated closed-end real investment trust operating in Canada, whose units are traded on the Toronto stock exchange. It engages in servicing, managing, selling and leasing of real estate for commercial, industrial and office purposes. It was established in 1998 though its predecessor in title was founded in 1965 and conducted its apartment, building, construction and development business in association with the trade name and trade mark COMINAR.

Evidence of the Complainant’s trading activities is set out in Annex 4 to the Complaint, which consists of printouts from its website. It registered the domain name <cominar.com> in 1998 and has operated a website from that domain name since then. The website as well as Facebook, Twitter, and Instagram social media accounts and pages of the Complainant prominently feature the trade mark COMINAR and promote its business in association with that trade mark.

The Complainant’s domain name predates the Respondent’s registration of the disputed domain name <cominar.co> by over 20 years. The Respondent’s disputed domain name was registered on September 30, 2020.

The Complainant is the owner of a number of Canadian registered trade marks, which relate to the Complainant’s business and are registered in association with various real estate services. Copies of the certificates of authentication are exhibited as Annex 6 to the Complaint including:

COMINAR trade mark registration No.TMA715578 registered on May 30, 2008
COMINAR & device trade mark registration No. TMA715579 registered on May 30, 2008.

The Complainant and/or its predecessor in title has used these trade marks since at least as early as 1982 which precedes the date of registration of the disputed domain name.

The Complainant’s trade marks enjoy widespread recognition and have generated significant trading goodwill as a result of their long use. They are well known in Canada, within the real estate industry and among the public generally. At Annex 7 to the Complaint are exhibited examples of media articles and third party websites featuring the Complainant and its trade marks.

The Complainant points out that the Respondent’s identity, based on current WhoIs records is unknown because it is “privacy protected” and not visible to the public.

The Complainant adduces evidence that the Respondent has used the disputed domain name as an instrument of fraud. This is as part of a phishing scheme to attempt to obtain the wire transfer of rent payments due to the Complainant under the guise of impersonating employees of the Complainant. The Complainant exhibits at Annex 8 to the Complaint copies of fraudulent email correspondence and wire transfer information.

In the absence of a Response and evidence to the contrary, the Panel finds the above evidence adduced by the Complainant to be true.

5. Parties’ Contentions

A. Complainant

The Complainant submits:

i. the disputed domain name <cominar.co> is confusingly similar to the trade mark COMINAR in which the Complainant owns prior registered trade mark rights;

ii. on the evidence adduced by the Complainant there is no evidence that the Respondent has rights or legitimate interests in respect of the disputed domain name;

iii. the evidence adduced by the Complainant shows that the disputed domain name was registered and is being used by the Respondent in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant, as set out above, is the registered owner of the trade mark COMINAR, which was registered before the date of registration of the disputed domain name.

The disputed domain name consists of the word “cominar” which is identical to the trade mark COMINAR together with the addition of the Top-Level Domain or TLD; “.co”.

In these circumstances the Panel finds that the disputed domain name <cominar.co> is identical to the trade mark COMINAR in which the Complainant owns prior registered rights, within paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In the Panel’s view, the Complainant rightly points out that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show, on the basis of relevant evidence, that the respondent has rights or legitimate interests in the disputed domain name. This is set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In this Complaint the Complainant relies upon the evidence that:

i. there is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

ii. there has never been any relationship between the parties. The Respondent is not licensed, or otherwise authorized, directly or indirectly, to register or use, the trade marks COMINAR in any manner whatsoever;

iii. on the evidence the disputed domain name is being used for phishing which is a fraudulent purpose which cannot generally constitute a bona fide use;

iv. there is no evidence that the Respondent has ever been commonly known by the name COMINAR or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name.

There is ample authority, cited by the Complainant, which supports the submission that impersonating a complainant by using a disputed domain name as part of an email address in the furtherance of a fraudulent scheme constitutes prima facie evidence of no rights. See, for example; TVS Motor Company Ltd. v Vistaprint Technologies Ltd., WIPO Case No. DCO2014-0007.

On the evidence of fraudulent use, the Panel agrees with the Complainant’s submission and finds that the Respondent registered the disputed domain name as part of a fraudulent scheme to defraud the Complainant’s clients that could be confused into believing, contrary to the fact, that the Respondent was in fact the Complainant.

Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The evidence of the Respondent’s phishing activity adduced by the Complainant and summarized in Section 4 above shows that the Respondent has been issuing email correspondence to at least one unsuspecting client of the Complainant in association with the internal email address of the Complainant’s employee.

The email sent advises the Complainant’s clients that rent payments are due and requests that payments are made by wire transfer using false wiring information contained in a letter attached to the email and representing that it has been signed by employees of the Complainant. Copies of the fraudulent correspondence and wire transfer information are exhibited at Annex 8 to the Complaint.

It is well-established that the registration and use of a domain name for phishing or fraudulent purposes constitutes evidence of bad faith. See for example Olivetti SpA v. mez inc., WIPO Case No. D2015-1934.

The Complainant also submits that the disputed domain name was registered for the purpose of disrupting the business of the Complainant within paragraph 4(b)(iii) of the Policy. In the Panel’s view this is established by the above evidence of phishing, which undoubtedly disrupts the Complainant’s genuine business activity and trade.

On the facts, the phishing activity is evidence that the Respondent is using the disputed domain name in order to intentionally attract, for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark COMINAR within paragraph 4(b)(iv) of the Policy.

The Panel agrees with the Complainant that there is “ample evidence of bad faith”. It therefore finds that the disputed domain name was registered and used in bad faith within paragraph 4(a)(iii) of the Policy.

7. Decision

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 <cominar.co> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: May 28,, 2021