The Bank of Nova Scotia v. Domains For
Life
Claim
Number: FA0407000293126
Complainant is The Bank of Nova Scotia (“Complainant”),
represented by Navin Khanna of McCarthy Tetrault LLP,
Suite 4700, Toronto Dominion Bank Tower, Toronto, ON, M5K 1E6. Respondent is Domains For Life (“Respondent”), 235 W. 102nd St., New
York, NY 10025.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwscotiabank.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 6, 2004; the Forum received a hard copy of the Complaint
on July 7, 2004.
On
July 8, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the Forum that the domain name <wwwscotiabank.com> is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com 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
July 14, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 3, 2004 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@wwwscotiabank.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
August 5, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwscotiabank.com>
domain name is confusingly similar to Complainant’s SCOTIABANK and
SCOTIABANK.COM marks.
2. Respondent does not have any rights or legitimate
interests in the <wwwscotiabank.com> domain name.
3. Respondent registered and used the <wwwscotiabank.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Bank of Nova Scotia, is in the business of providing a wide range of products
and services, including insurance and financial services, advertising and
business services, transportation services, paper goods and printed matter, and
electrical and scientific apparatus.
Complainant
holds nearly 340 trademark registrations worldwide for marks containing the
word SCOTIABANK. Complainant holds
numerous marks in Canada and with the United States Patent and Trademark Office
for the SCOTIABANK mark (including Reg. No. 1,003,026 issued January 28, 1975)
and the SCOTIABANK.COM mark (including Reg. No. 2,534,352 issued January 29,
2002).
Complainant has
used the SCOTIABANK mark continuously and extensively in Canada since at least
as early as 1929 and as early as 1961 in the United States. Complainant has used its SCOTIABANK.COM mark
in the United States since at least as early as May 1, 2001.
Respondent
registered the <wwwscotiabank.com> domain name on November 24,
2002 and the domain name currently redirects Internet users to the <abortionismurder.org>
domain name, which displays anti-abortion links, messages, and images. In July 2003, the website temporarily
redirected users to the <rxmeds.com> commercial website and then to a
website offering the <wwwscotiabank.com> domain name registration
for sale. Eventually, the <wwwscotiabank.com>
domain name again began directing users to the website located at the
<abortionismurder.org> domain name.
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 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 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.
Complainant has
established that it has rights in the SCOTIABANK and SCOTIABANK.COM marks
through registration with the United States Patent and Trademark Office and by
continuous use of the marks in commerce.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.).
The <wwwscotiabank.com>
domain name registered by Respondent is confusingly similar to Complainant’s
SCOTIABANK and SCOTIABANK.COM marks because the domain name incorporates
Complainant’s marks in their entirety, adding only the letters “www.” The mere addition of the letters “www” to a
mark to take advantage of a common typographical error made by Internet users
does not negate the confusing similarity of Respondent’s domain name. See Neiman Marcus Group, Inc. v.
S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity
has been established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark); see also Dana Corp. v. $$$ This Domain Name Is
For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's
<wwwdana.com> domain name confusingly similar to Complainant's registered
DANA mark because Complainant's mark remains the dominant feature).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant
asserts that Respondent has no rights or legitimate interests in the
<wwwscotiabank.com> domain name. Due to Respondent’s failure to respond to the Complaint, it is
assumed that Respondent lacks rights and legitimate interests in the disputed
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
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); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. 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) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent is
using the <wwwscotiabank.com> domain name to redirect Internet
users to a website that is completely unrelated to Complainant’s SCOTIABANK and
SCOTIABANK.COM marks and which features anti-abortion messages, links, and
photos. Respondent’s use of a domain
name that is confusingly similar to Complainant’s SCOTIABANK and SCOTIABANK.COM
marks to redirect Internet users interested in information regarding
Complainant to a website that displays links to various politically charged
information and messages wholly unrelated to Complainant is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of a domain name pursuant to
Policy ¶ 4(c)(iii). See Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that Respondent’s diversionary use of Complainant’s mark to attract
Internet users to its own website, which contained a series of hyperlinks to
unrelated websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names); see also
Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole
purpose in selecting the domain names was to cause confusion with Complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also E. & J. Gallo Winery v. Hanna Law Firm,
D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free
speech/complaint site does not give rights to use a famous mark in its
entirety).
In
July 2003, the <wwwscotiabank.com> domain name temporarily directed
Internet users to a website offering the domain name for sale. The Panel finds that Respondent’s
willingness to sell the domain name registration suggests that Respondent
lacked rights to or legitimate interests in the domain name pursuant to Policy
¶ 4(a)(ii). See Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, Respondent’s apparent willingness
to dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman,
D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where
Respondent offered the infringing domain name for sale and the evidence
suggests that anyone approaching this domain name through the worldwide web
would be "misleadingly" diverted to other sites).
Respondent’s
use of the <wwwscotiabank.com> domain name to direct Internet users to
its own website by taking advantage of a common
typographical error made by Internet users is a practice known as
typosquatting. The Panel finds that
Respondent’s practice of typosquatting and failure to respond to the Complaint
are evidence that Respondent lacks rights to and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Black &
Decker Corp. v. Azra Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where
Respondent used the typosquatted <wwwdewalt.com> domain name to divert
Internet users to a search engine webpage, and failed to respond to the
Complaint); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”).
Finally,
Respondent offered no evidence and no proof in the record suggests that Respondent
is commonly known by the <wwwscotiabank.com> domain name. Furthermore, Complainant has not authorized
or licensed Respondent to use its SCOTIABANK and SCOTIABANK.COM marks. Thus, Respondent has not established rights
or legitimate interests in the disputed 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
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <wwwscotiabank.com> domain name,
containing Complainant’s well-known mark, for Respondent’s commercial gain. For a period of time in July 2003,
Respondent’s domain name diverted Internet users seeking Complainant’s
SCOTIABANK and SCOTIABANK.COM marks to a commercial website located at the
<rxmeds.com> domain name where prescription drugs were sold. Furthermore, Respondent has unfairly and
opportunistically benefited from the goodwill associated with Complainant’s
marks. Respondent’s practice of
diversion, motivated by commercial gain, constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also
eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site).
The Panel finds
that Respondent’s offer to sell the <wwwscotiabank.com> domain
name is evidence of Respondent’s bad faith use and registration pursuant to
Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the
domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name, additional factors can also be
used to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive.”).
Respondent’s
practice of typosquatting by using the <wwwscotiabank.com> domain
name to redirect Internet users to its own website is evidence that Respondent
had actual knowledge of Complainant’s SCOTIABANK and SCOTIABANK.COM marks when
it registered the domain name. Thus,
the Panel finds that Respondent’s use of typosquatting to confuse Internet
users is evidence of bad faith use and registration pursuant to Policy ¶
4(a)(iii). See Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it
would be difficult for Respondent to prove to the Panel that it did not have
actual knowledge of Complainant’s distinctive MEDLINE mark when it registered
the infringing <wwwmedline.com> domain name”); see also Black &
Decker Corp. v. Azra Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith).
The <wwwscotiabank.com>
domain name uses a confusingly similar version of Complainant’s SCOTIABANK and
SCOTIABANK.COM marks and resolves to websites featuring politically charged
anti-abortion messages and material.
The Panel finds that using a domain name confusingly similar to
Complainant’s mark to divert Internet users to a website displaying politically
charged content such as abortion constitutes bad faith pursuant to Policy ¶
4(a)(iii). See McClatchy
Mgmt. Servs., Inc. v. Purdy, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By
intentionally taking advantage of the goodwill surrounding Complainant’s mark
to further its own political agenda, Respondent registered the disputed domain
names in bad faith”); see also Journal Gazette Co. v. Domain For Sale
Inc., FA 12202 (Nat. Arb. Forum Oct. 9, 2002) (“Respondent chose the domain
name to increase the traffic flowing to the <abortionismurder.org> and
<thetruthpage.com> websites”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwscotiabank.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
August 19, 2004
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