WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Bank of Nova Scotia v. Domain Administration Limited

Case No. D2007-0883

 

1. The Parties

Complainant is The Bank of Nova Scotia, Toronto, Ontario, Canada, represented by Arnold Ceballos, Canada.

Respondent is Domain Administration Limited, David Halstead, Auckland, New Zealand.

 

2. The Domain Name and Registrar

The disputed domain name <scotiarewards.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2007. On June 18, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name(s) at issue. On June 18, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2007.

The Center appointed Lorelei Ritchie De Larena as the sole panelist in this matter on July 31, 2007. 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

Complainant has been in the banking business since 1832, commonly doing business under the name and mark SCOTIABANK. Complainant is a widely-known bank, with approximately 12 million customers in some 50 countries worldwide. Complainant has registered hundreds of marks that include the word SCOTIA. Complainant is also the current registrant of various domain names that include the word SCOTIA, such as <scotiabank.com> and <scotiacapital.com>. Complainant uses these domain names in connection with its business on the Internet.

Complainant offers a loyalty rewards program to its customers under the mark SCOTIA REWARDS. In connection with that program, Complainant registered the mark SCOTIA REWARDS in 1998 in Canada, where Complainant is headquartered. Complainant maintains a related website for ease of its customers, accessible via the URL “www.scotiarewards.scotiabank.com”.

Respondent is not affiliated with Complainant and does not have a license to use Complainant’s marks. The registrar’s records indicate that Respondent registered <scotiarewards.com> on December 14, 2003. Upon becoming aware of Respondent’s registration, Complainant sent Respondent a cease and desist letter in December 2006. As of the date the Complaint was filed, Respondent was using <scotiarewards.com> to resolve to a website offering services and links to Complainant’s competitors.

 

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar – The domain name <scotiarewards.com> is identical to the Complainant’s mark, SCOTIA REWARDS.

(b) Rights or Legitimate Interests – The Respondent has no rights or legitimate interest in respect of the domain name <scotiarewards.com>. Complainant owns a trademark registration for the mark SCOTIA REWARDS, which it uses in commerce, including for online business. Complainant’s registration of the mark predates Respondent’s corresponding domain name by 5 years. Complainant contends that the Respondent does not own any trademark or intellectual property rights in the mark SCOTIA REWARDS, and that the Respondent has never used SCOTIA REWARDS as a legal or business name. Complainant further avers that it has never authorized, licensed or permitted the Respondent to use its trademark SCOTIA REWARDS.

(c) Registered and Used in Bad Faith – The Respondent’s domain name was registered and is being used in bad faith based on the following factors: (i) disrupting the business of a competitor by diverting traffic through confusion; (ii) diverting traffic through confusion for monetary gain by offering links to other competing banking sites; (iii) knowledge of the Complainant’s long and continuous use of the SCOTIA REWARDS mark at the time of registration and that he had no right, title or interest, whatsoever, in the mark or domain name; and (iv) engaging in a pattern of registering infringing domain names.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant offers a loyalty rewards program to its customers under the mark SCOTIA REWARDS. In connection with that program, Complainant registered the mark SCOTIA REWARDS in 1998 in Canada, where Complainant is headquartered. Complainant maintains a related website for ease of its customers, accessible via the URL “www.scotiarewards.scotiabank.com”. The domain name <scotiarewards.com> is identical to the Complainant’s mark, SCOTIA REWARDS.

The Panel therefore finds that Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel accepts Complainant’s contention regarding Respondent’s lack of rights and legitimate interest in the domain name <scotiarewards.com>. Complainant owns a trademark registration for the mark SCOTIA REWARDS, which it uses in commerce, including for online business. Complainant’s registration of the mark predates Respondent’s registration of the corresponding domain name by 5 years. Complainant contends that the Respondent does not own any trademark or intellectual property rights in the mark SCOTIA REWARDS, and that the Respondent has never used SCOTIA REWARDS as a legal or business name. Complainant further avers that it has never authorized, licensed or permitted the Respondent to use its trademark SCOTIA REWARDS. Respondent has submitted no Response or materials in rebuttal.

The Panel therefore finds that Complainant has satisfied the second requirement under paragraph 4(b) of the Policy.

C. Registered and Used in Bad Faith

Three primary factors lead the Panel to infer and conclude that Respondent had knowledge of Complainant’s trademark and has registered and used the domain name <scotiarewards.com> in bad faith.

First, Complainant registered its trademark SCOTIA REWARDS in 1998, five years prior to Respondent’s registration of the domain name <scotiarewards.com>. Complainant is well-known internationally for its banking services, including its rewards program. This supports the conclusion that the mark has a sufficient reputation so as to become known to the Respondent.

Second, the Panel finds that the Respondent has chosen to register Complainant’s mark as a domain name in order to divert Internet traffic away from Complainant’s website for the purpose of disrupting Complainant’s business for monetary gain. Respondent’s website actually directs users to a range of banking services, including links to Complainant’s competitors. This conduct of diverting traffic for the purpose of disrupting the business of a competitor for monetary gain is clearly considered bad faith under the Policy. See Amazon.com, Inc. v. MCL International Ltd., WIPO Case No. D2000-1678 and American Institute of Floral Designers v. Palm Coast Floral, Inc., WIPO Case No. D2000-0335.

Third, engaging in a pattern of registering infringing domain names can be indicative of “bad faith” under UDRP Paragraph 4(b)(ii). The Panel finds that Complainant has provided sufficient evidence of such pattern by Respondent. In particular, Respondent has been ordered to transfer domain names by a number of other UDRP Panelists via the Center (<nationwid.com>; <icebergclothing.com>; <fifth-third.com>; <gettimages.com>; <hibbettssports.com>; <americandiabetesassociation.com>; <compasbank.com>) as well as the National Arbitration Forum (<officemaxsolutions.com>; <bunomatic.com>; <nololaw.com>; <thomsomeducation.com>; <diner-club.com>; <tolbrothers.com>; and <voguetyres.com>).

Accordingly, the Panel finds that Complainant has satisfied the third element under paragraph 4(c) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <scotiarewards.com> be transferred to the Complainant.

Lorelei Ritchie De Larena
Sole Panelist

Dated: August 9, 2007