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Generic Top Level Domain Name (gTLD) Decisions |
Bank of Montreal v. Party Night Inc.
a/k/a Peter Carrington
Claim
Number: FA0401000234365
Complainant is Bank of Montreal (“Complainant”), represented
by Mark Evans, of Fraser Milner Casgrain
LLP, 1 First Canadian Place,
39th Floor, 100 King Street West, Toronto, ON, M5X 1B2 Canada. Respondent is Party Night Inc a/k/a Peter Carrington (“Respondent”), Jan Luykenstraat 58,
Amsterdam 1071 CS, Netherlands.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bmoinvesterline.com>, registered with Key-Systems
Gmbh.
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding:
Honorable Charles A. Kuechenmeister and
Honorable Ralph Yachnin as Panelists and Alan L. Limbury, Esq., as Presiding
Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 30, 2004. The
Forum received a hard copy of the
Complaint on February 9, 2004.
On
February 2, 2004, Key-Systems Gmbh confirmed by e-mail to the Forum that the
domain name <bmoinvesterline.com> is registered with Key-Systems
Gmbh and that Respondent is the current registrant of the name. Key-Systems
Gmbh has verified that
Respondent is bound by the Key-Systems Gmbh 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
February 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 8, 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@bmoinvesterline.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 March 22, 2004, pursuant to
Complainant's request to have the dispute decided by a three-member Panel, the
Forum appointed Honorable
Charles A. Kuechenmeister, Honorable Ralph Yachnin
and Alan L. Limbury, Esq., as Panelists.
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:
Complainant
provides banking and other financial services in Canada and elsewhere under the
names “BMO”, “Bank of Montreal” and “BMO
Investorline Inc”. Since 1996 and 1989 respectively, Complainant has been the
registered proprietor of Canadian trade marks BMO (Reg. No. TMA 524,145)
and
INVESTORLINE (Reg. No. TMA 363,153).
Since 1996, it has used the combination mark BMO INVESTORLINE in
connection with services provided at its website located at
<bmoinvestorline.com>.
Complainant claims common law rights in the
trademarks BMO INVESTORLINE and BMOINVESTORLINE.COM.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
is not commonly known by the disputed domain name,
which bears no resemblance or relevance to the pornographic content offered
through
its website. Respondent is not employed by or affiliated with Complainant and
has never been licensed or otherwise authorized to use Complainant’s
trademarks. By redirecting Internet users to a domain associated with
pornography, for profit, Respondent is not making a legitimate,
non-commercial
or fair use of the domain name. The primary purpose
of the disputed domain name is to catch consumers seeking to access
Complainant’s <bmoinvestorline.com>
website who inadvertently misspell the word “investor”.
The
disputed domain name was registered and is being used in bad faith. Respondent is not who it claimed to be upon
registering the disputed domain name. This is a strong indicator of bad faith. See
Hunton & Williams v. Am. Distribution Sys., Inc. et al.,
D2000-0501 (WIPO Aug. 1, 2000). "Party Night
Inc." is not a legal entity and both "Party Night Inc." and
"Peter Carrington" are aliases
for John Zuccarini. See Microsoft Corp. v. Party
Night Inc., D2003-0501
(WIPO Aug. 18, 2003). Mr. Zuccarini is an individual against whom over
35 cases under the Policy have been upheld and who recently pled guilty to
offenses
under the United States Truth
in Domain Names Act, 18 U.S.C. § 2252B.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
established all three elements entitling it to the relief sought.
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 must 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
may draw such inferences as it considers
appropriate pursuant to paragraph
14(b) of the Rules. See Hewlett-Packard
Co. v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000); see also
David G. Cook v. This Domain is For Sale,
FA 94957 (Nat. Arb. Forum July 12, 2000); see also Reuters Ltd. v. Global Net
2000, Inc., D2000-0441 (WIPO July 20, 2000).
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.
The
evidence establishes that Complainant has rights in the registered trademarks
BMO and INVESTORLINE and that, through use, Complainant
has also acquired
common law rights in the mark BMO INVESTORLINE in relation to the services it
offers at <bmoinvestorline.com>. It is unnecessary to determine whether
Complainant has common law rights in BMOINVESTORLINE.COM.
The addition of
the words ‘invester’ and ‘line’ to Complainant’s registered trademark BMO does
not detract from the distinctiveness
of that mark. The Panel finds the disputed
domain name to be virtually identical to
Complainant’s common law trademark BMO INVESTORLINE and confusingly similar to
each of Complainant’s registered trademarks
BMO and INVESTORLINE.
Complainant has
established this element of its case.
Complainant
has asserted that it has no relationship with Respondent, which it has not
authorized to register the disputed domain
name nor to use its trademarks. The
Panel finds the marks are distinctive of Complainant and its services and were
in use for some
years before registration of the disputed domain name, which
comprises a slight misspelling of Complainant’s marks. Neither the domain
name
nor the website to which Internauts entering the domain name are redirected
have any apparent connection with the initials B,
M or O, nor does the domain
name have any apparent connection with Respondent’s name (real or fictitious).
These
circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate
interests in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to
Respondent to show by concrete evidence that it does have rights or legitimate
interests
in that name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000) and the cases
there cited.
Respondent
submitted no such evidence. Accordingly, the Panel infers from the evidence
presented by Complainant that Respondent has
no rights or legitimate interest
in the disputed domain name.
Complainant has
established this element of its case.
The
circumstances set out in paragraph 4(b) of the Policy are not exhaustive.
Respondent
registered the disputed domain name well after Complainant's registration of
its marks and its use of the combination thereof
in commerce. There is no logical connection between the
domain name and the content of the website to which traffic is directed. In the
absence
of any Response, the conclusion is inescapable that Respondent selected
the disputed domain name for the very reason that it comprises
a slight
misspelling of Complainant’s well-known trademarks, for the purpose of
garnering and profiting from misdirected web traffic,
as he has been found to
have done in numerous other cases under the Policy. See AT&T Corp., v. Carrington,
D2002-0931 (WIPO Nov. 21, 2002); see also Disney Enter.,
Inc. v. Zuccarini, D2001-0489 (WIPO July 3, 2001) and the cases there
cited. News media reports
provided by Complainant about Respondent’s activities, which Respondent has not
attempted to refute, support this
conclusion.
The
Panel finds that registration in such circumstances and for such a purpose
amounts to registration in bad faith.
The Panel
concludes that Respondent is using the domain name in order to attract
Internauts to Respondent’s website, for commercial
gain, by creating a
likelihood of confusion with Complainant’s marks as to the source, sponsorship,
affiliation, or endorsement of
Respondent’s website: Policy paragraph 4(b)(iv).
This is evidence of both bad faith registration and bad faith use. The Panel
finds
the domain name was registered and is being used in bad faith.
Complainant has
established this element of its case.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bmoinvesterline.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Presiding Panelist
Honorable Charles A. Kuechenmeister,
Panelist
Honorable Ralph Yachnin, Panelist
Dated: 30 March, 2004
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