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Elysium Wealth Management Inc. v. Brian Driscoll [2003] GENDND 95 (23 January 2003)


National Arbitration Forum

DECISION

Elysium Wealth Management Inc. v. Brian Driscoll

Claim Number: FA0212000137077

PARTIES

Complainant is Elysium Wealth Management Inc., Winnipeg, MB, CANADA (“Complainant”) represented by J. Guy Joubert, of Aikins MacAulay & Thorvaldson.  Respondent is Brian Driscoll, Hamilton, ON, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ceofunds.com>, registered with Register.com, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 12, 2002; the Forum received a hard copy of the Complaint on December 16, 2002.

On December 13, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <ceofunds.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@ceofunds.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The <ceofunds.com> domain name is confusingly similar to Complainant’s CEO FUND mark.

2. Respondent has no rights or legitimate interests in the <ceofunds.com> domain name.

3.         Respondent registered and used the <ceofunds.com> domain name in bad faith.

B. Respondent has failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a registered trademark for the CEO FUND mark with the Canadian Intellectual Property Office (“CIPO”).  Complainant also has pending trademark applications filed with the CIPO for four marks, which are slight variations of the CEO FUND mark.  The CEO FUND mark received trademark registration status on November 21, 2001.  Complainant, however, first began using the CEO FUND mark as early as January 1, 2000 in connection with financial services. 

Complainant uses the CEO FUND mark substantially in association with its financial portfolio management services.  Complainant contends that it “manages unique and innovative funds generally known as the family of CEO funds.”

Complainant is a Canadian corporation with its principal place of business located in Winnipeg, Manitoba, Canada.  Complainant provides its financial services throughout Canada.

Respondent registered the domain name on April 8, 2002.  Respondent is located in Hamilton, Ontario, Canada.  Respondent has a business affiliation with CEO Hirsch Opportunistic Canadian Fund, CEO Hirsch Opportunistic Tactical Allocation Fund, CEO Hirsch Opportunistic Natural Resource Fund, CEO Canadian Demographic Fund, and Burgeonvest Securities Limited.  These entities provide investment advice and products to private, corporate and institutional clients in Canada.  In addition, all of the aforementioned entities are located in Hamilton, Ontario, Canada. 

Burgeonvest Securities Limited changed the name of its funds to reflect the CEO FUND mark in December of 2001, nearly two years after Complainant initially used the CEO FUND mark in association with its financial portfolio management services. 

Respondent uses the domain name to resolve to a website that is associated with the aforementioned entities and offers financial services in the same market as Complainant and its CEO FUND mark. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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

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

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

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the CEO FUND mark through proof of trademark registration with the CIPO and use in commerce since January 1, 2000.

Respondent’s <ceofunds.com> domain name reflects Complainant’s CEO FUND mark with the addition of an “s” and top-level domain “.com.”  The addition of the letter “s” to another’s mark is not a distinguishing alteration that takes a domain name out of the realm of confusing similarity.  Furthermore, since top-level domains are required in every domain name, the “.com” addition to Complainant’s CEO FUND mark is inconsequential in a Policy ¶ 4(a)(i) analysis.  Hence, Respondent’s <ceofunds.com> domain name is confusingly similar to Complainant’s CEO FUND mark.  See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Thus, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not come forward to challenge the Complaint.  On the other hand, Complainant has discharged its duty to submit a prima facie Complaint, satisfying the requirements of Policy ¶¶ 4(a)(i)-(iii).  The Panel therefore presumes that Respondent has no such rights or legitimate interests in the <ceofunds.com> domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Complainant challenges Respondent’s use of the <ceofunds.com> domain name in connection with similar financial services that Complainant offers under the CEO FUND mark.  Complainant operates in the financial services business in Canada and has discovered that Respondent is affiliated with Canadian financial service entities that, along with Complainant, manage funds.  Complainant contends that Burgeonvest Securities Limited, an entity with which Respondent is associated, changed the name of its funds on December 1, 2001 to reflect Complainant’s CEO FUND mark.  This change was made nearly two years after to Complainant’s adoption of the CEO FUND mark.  Respondent has not contested Complainant’s contentions so the Panel accepts them as true.  In addition, the Panel will draw all reasonable inferences in Complainant’s favor.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <ceofunds.com> domain name to enhance its financial services, which are similar to Complainant’s financial services offered within the same market.  Respondent’s use of the <ceofunds.com> domain name is not in conjunction with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does Respondent’s use represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Respondent is not commonly known by the <ceofunds.com> domain name.  Moreover, Respondent has no business connection with Complainant; Respondent has an affiliation with some of Complainant’s Canadian competitors.  The WHOIS information lists Respondent as Brian Driscoll and the Panel accepts that information as Respondent’s identity without proof of the contrary.  Therefore, Respondent has no rights or legitimate interests in the <ceofunds.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

Registration and Use in Bad Faith

Respondent and Complainant both target their financial services and fund management business at a Canadian audience.  Respondent’s registration of the <ceofunds.com> domain name and incorporation of CEO in association with financial funds its affiliated businesses offer were nearly two or more years after Complainant’s first use of the CEO FUND mark.  It is apparent, as Complainant argues, that Respondent attempted to trade off Complainant’s use of the CEO FUND mark by designating its funds in a similar way in order to attract business away from Complainant in violation of Policy ¶ 4(b)(ii).  At a minimum, the Panel infers that Respondent had constructive knowledge of Complainant’s interests in the CEO FUND mark through activity in the same industry and market and by way of the CEO FUND mark’s registration status with the CIPO.  Therefore, Respondent registered the <ceofunds.com> domain name in bad faith with constructive knowledge of Complainant’s interests in the CEO FUND mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Furthermore, Respondent uses the <ceofunds.com> domain name in an effort to advance the financial services of the Canadian financial entities it is associated with, which are substantially similar to the services Complainant offers under the CEO FUND mark.  Respondent’s offering of similar financial services by way of the <ceofunds.com> domain name has a likelihood of confusing Internet users as to Complainant’s sponsorship.  Therefore, Respondent uses the <ceofunds.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Moreover, because Respondent and its affiliated entities are situated in business practices similar to those of Complainant, there is no justifiably perceivable use of the subject domain name outside the realm of bad faith.  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <ceofunds.com> be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 23, 2003


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