WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bank of Montreal v. Contact Privacy, Inc., Customer 0148742377 / Justas Leonavicius

Case No. D2018-2111

1. The Parties

The Complainant is Bank of Montreal of Toronto, Ontario, Canada, represented by Seyfarth Shaw LLP, United States of America (“United States”).

The Respondent is Contact Privacy, Inc., Customer 0148742377 of Toronto, Ontario, Canada / Justas Leonavicius of Vilnius, Lithuania.

2. The Domain Name and Registrar

The disputed domain name <bmosoccer.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2018, 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 September 18, 2018 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 September 28, 2018.

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 October 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 12, 2018. 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 a Canadian corporation with offices in Toronto, Canada. The following information is taken from a declaration by the Complainant’s Senior Counsel provided with the Complaint. The Complainant is Canada’s first bank and has used the BMO mark since as early as 1996. The Complainant is the eighth largest bank by assets in North America and provides a wide range of banking services to more than 12 million customers under the BMO mark. The Complainant spends many millions of dollars annually in the promotion of said mark.

The Complainant is the owner of United States registered trademark No. 2615685 for the word mark BMO in international class 36, registered on September 3, 2002. The Complainant provided a list of many other registered trademarks which it holds in the European Union, Canada, Hong Kong, China, Mexico, Singapore and the United States, all of which contain the mark BMO on its own or with other terms relating to financial services or business names.

The Complainant invests millions of dollars annually in sponsorship and marketing activities related to soccer. The Complainant supports professional and youth soccer programs throughout Canada, including the Toronto FC soccer team, for which it has been premier partner each year since 2007. The Complainant is the stadium name sponsor of said team’s venue “BMO Field”, Canada’s first soccer-specific stadium. The Complainant will continue as such sponsor until at least 2026. The Complainant supports over 20,000 youths annually via soccer programs throughout Canada and sponsors a program in connection with the Vancouver Whitecaps FC soccer team.

The Complainant states that it operated the disputed domain name for a decade, from May 31, 2007 to May 31, 2017, which it used to promote soccer-related activities. The Complainant notes that it inadvertently failed to renew the disputed domain name.

The disputed domain name was created on May 31, 2007. Nothing is known regarding the Respondent, who has not participated in the administrative proceeding, other than that the Respondent appears to be a person with an address in Vilnius, Lithuania. The website associated with the disputed domain name displays an unbranded placeholder concerning improving athletic performance for soccer players by the use of anabolic steroids.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant refers to its various rights in the BMO trademark and asserts that this is sufficiently strong and famous that the disputed domain name is confusingly similar within the meaning of the Policy. The Complainant notes that the disputed domain name incorporates its said mark with the generic word “soccer”. The Complainant asserts that the mark BMO is the distinctive part of the disputed domain name and that the addition of the generic word “soccer” does not distinguish the disputed domain name from the Complainant’s mark.

The Complainant asserts that it never licensed or authorized the Respondent to use the BMO trademark, noting that such mark was used and registered long before the Respondent registered the disputed domain name. The Complainant submits that the Respondent cannot show before notice of the dispute that it was engaged in the use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of the Policy, noting that the Respondent has parked the disputed domain name using non-branded informational content. The Complainant states that the Respondent has no obvious connection to the Complainant and its promotions and sponsorship of soccer teams and events.

The Complainant argues that the Respondent could not plausibly claim never to have heard of the Complainant’s famous and distinctive trademark and had to be aware that it was infringing the same when registering the disputed domain name. The Complainant submits that there is nothing in the content of the associated website to suggest any good faith use of the disputed domain name and that this suggests that the Respondent intended to sell the disputed domain name to the Complainant or to use it to profit from confusion, to free-ride on the Complainant’s well-known mark from revenue-raising arrangements or to disrupt the Complainant’s business by keeping it from using the disputed domain name to promote its soccer activities. The Complainant notes that the Respondent had attempted to conceal its identity and had provided no contact information via its website and that there is no plausible legitimate use to be found, contending that this is sufficient to demonstrate bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

A. Identical or Confusingly Similar

In terms of the first element of the Policy, the Complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. The Complainant provided a list of multiple registered trademarks which would potentially serve the purpose of demonstrating rights in a trademark, including the United States registered trademark noted in the factual background section above.

The Complainant did not see fit to provide any individual certificates or prints from the relevant trademark offices in order to demonstrate its rights. The Panel accordingly undertook limited factual research into matters of public record to verify the Complainant’s ownership of the BMO mark by accessing the relevant and readily accessible trademark registration database concerned (on the topic of panel’s independent research, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel notes for completeness that it may be unwise for a party to assume that a panel under the Policy will necessarily undertake such an investigation and that the more certain course is to provide relevant extracts from the trademark database for such panel’s reference.

Having identified that the Complainant has rights in the BMO trademark, the Panel compares this to the disputed domain name, following the typical approach of disregarding the applicable top-level suffix, in this case, “.com” (see section 1.11 of the WIPO Overview 3.0). The Panel accepts the Complainant’s submission that the second level of the disputed domain name consists of the Complainant’s BMO trademark as its first and most dominant part together with the generic word “soccer” and that the addition of such word is insufficient to distinguish the disputed domain name from the Complainant’s mark.

In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel considers that the Complainant has established the requisite prima facie case by way of its submissions that it did not license or authorize the Respondent to use the Complainant’s longstanding BMO trademark, that there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no obvious connection to the Complainant and its promotions and sponsorship of soccer teams and events. Accordingly, the burden of production shifts to the Respondent to bring forth evidence of its rights and legitimate interests in the disputed domain name.

The Respondent has chosen not to engage in the present proceedings and accordingly has failed to take the opportunity to provide any evidence or submissions which might demonstrate rights and legitimate interests within the meaning of the Policy. The Respondent uses the disputed domain name in connection with a page describing the use of anabolic steroids to assist in soccer training. There is no immediately obvious reason why the Respondent could demonstrate rights and legitimate interests in connection with its provision of such information in association with a name which couples the Complainant’s well-known mark with the generic term “soccer”. In short, the Panel has been unable to identify any obvious or apparent facts or circumstances from which the Respondent might have claimed such rights or legitimate interests.

In these circumstances, the Panel is of the opinion that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel commences its assessment on this topic by noting that the creation date of the disputed domain name is May 31, 2007. The Panel also notes that the Complainant indicates that it was the original registrant of the disputed domain name and allowed it to expire in 2017. No evidence has been provided in support of the Complainant’s said indication beyond the declaration of the Complainant’s senior counsel. While it may not be of critical importance to the outcome of this case, given the fact that the Complainant’s trademark predates even the original registration of the disputed domain name by around five years, the Panel decided to consult the Internet Archive. The Panel notes that a capture dated on June 7, 2017 shows that the disputed domain name had expired, and that a capture on September 12, 2017 shows the current use of the disputed domain name. In addition, the Panel notes that in 2016 the disputed domain name was redirecting to the Complainant’s website at “www.bmo.com” and that on November 6, 2015 the website at the disputed domain name included a heading with the message “Proud to support soccer” with a photograph of children wearing a soccer strip featuring the Complainant’s BMO logo. In all of these circumstances, the Panel finds on the balance of probabilities that the Complainant was the original registrant of the disputed domain name and will assess the question of registration and use in bad faith on the basis of a date of acquisition arising at some point in 2017, most probably between June 7, 2017 and September 12, 2017.

While the Panel is entitled to consult such historic records as being of a public nature (see section 4.8 of the WIPO Overview 3.0), the Panel notes again as with its earlier comments on the Complainant’s trademark that it is not obliged to make such investigations and that the safer course of action for a complainant is to provide suitable evidence along with its complaint. The Panel adds that it did not consider it necessary to seek either of the Parties’ comments on the historic WhoIs records given that the Complainant makes corresponding assertions in the Complaint and that the actual acquisition date of the disputed domain name is a matter already within the Respondent’s knowledge.

In the present case, the Complainant puts forward a number of potential reasons why the Respondent has registered and used the disputed domain name from which it may be sufficient to make the reasonable inference that the disputed domain name was registered and has been used in bad faith. The Complainant explains that the disputed domain name was used by it in connection with its soccer promotion activities for a decade and, given the Complainant’s submissions regarding its extensive involvement in sponsorship and promotion of the sport of soccer, it is reasonable to infer that the disputed domain name and its associated website achieved a degree of prominence while the former was in the Complainant’s hands. This gives rise to the reasonable inference that the Respondent could have had knowledge of the Complainant, its rights and its former use of the disputed domain name. This applies notwithstanding the fact that the Respondent may be based in a different jurisdiction than the Complainant, “something that some people can consider to be of greater significance than it actually is, particularly if the complainant has a significant online presence” (Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535).

Of the Complainant’s various submissions on this topic, none fit squarely into the categories of bad faith registration and use in paragraph 4(b) of the Policy as outlined above. However, these categories are expressed to be non-exclusive and the Panel is of the view on the balance of probabilities that on the basis of such submissions and, in the absence of any countervailing evidence or submissions from the Respondent, the Respondent registered and used the disputed domain name with intent to cause disruption to the Complainant’s said sponsorship activities, probably with a view to ransoming the disputed domain name to the Complainant. The Panel is aware, and the Respondent is more likely than not to have known, that the use of anabolic steroids to enhance sporting performance, for example in the sport of soccer, is a controversial topic and is a matter with which the Complainant would strongly wish to avoid any association given the extent of its sponsorship with a particular focus on youth programs.

In these circumstances, the Panel has taken the view that the subject matter of the associated website and thus the registration and use of the disputed domain name was calculated to target the Complainant and its rights in the BMO mark and thus that the disputed domain name was registered and has been used in bad faith. The Panel finds support in this determination by the fact that there is no apparent good faith motivation on the part of the Respondent on the present record, that the Complainant’s mark is well-known and its former use of the disputed domain name is likely to have been very prominent and, more importantly, that having been given the opportunity to set out any such good faith motivation, the Respondent has chosen to remain silent in the face of the Complainant’s substantial allegations of bad faith conduct.

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 <bmosoccer.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: November 26, 2018