WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Bank of Nova Scotia v. Whois Protection

Case No. D2007-0884

1. The Parties

The Complainant is The Bank of Nova Scotia, Toronto, Ontario, Canada, represented by am internal representative, Canada.

The Respondent is Whois Protection, West Bay, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <scotiacapitalcareers.com> is registered with Rebel.com Services Corp.

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 Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On June 18, 2007, Rebel.com Services Corp 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 well-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 connect with its business on the Internet.

Complainant operates a corporate and investment banking and capital markets service under the name SCOTIA CAPITAL. In connection with that program, in 1999 Complainant filed a registration for the mark SCOTIA CAPITAL in Canada where Complainant is headquartered. Complainant has since obtained registration of the mark in Canada as well as in other countries. Prior to the trademark registration, Complainant was already operating other services under the related mark SCOTIA CAPITAL MARKETS, since 1995. Complainant offers interested customers information about career opportunities with its SCOTIA CAPITAL program via the URL “www.scotiacapital-careers.com”.

Respondent is not affiliated with Complainant and does not have a license to use Complainant’s marks. The registrar’s records indicate that the domain name <scotiacapitalcareers.com> was registered on August 26, 1998. As of the date the Complaint was filed, Respondent was using the domain name <scotiacapitalcareers.com> to resolve to a website offering services and links to career opportunities with Complainant’s competitors in the banking industry.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar – The domain name <scotiacapitalcareers.com> is identical to the Complainant’s mark SCOTIA CAPITAL, with only the addition of the descriptive word, “careers,” which would indicate to web users a place where they could find information about career opportunities with Complainant’s SCOTIA CAPITAL program.

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

(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; and (iii) knowledge of the Complainant’s long and continuous use of the SCOTIA CAPITAL and related marks at the time of registration and that he had no right, title or interest, whatsoever, in the mark or domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant operates a corporate and investment banking and capital markets service under the name SCOTIA CAPITAL. In connection with that program, in 1999 Complainant filed a registration for the mark SCOTIA CAPITAL in Canada where Complainant is headquartered. Complainant has since obtained registration of the mark in Canada as well as in other countries. Prior to the trademark registration, Complainant was already operating other services under the related mark SCOTIA CAPITAL MARKETS, since 1995.

The domain name <scotiacapitalcareers.com> is identical to the Complainant’s mark, SCOTIA CAPITAL, with only the addition of the descriptive word, “careers,” which would indicate to web users a place where they could find information about career opportunities with Complainant’s SCOTIA CAPITAL program. In fact, Complainant does offer interested customers information about career opportunities with its SCOTIA CAPITAL program via the URL “www.cotiacapital-careers.com”.

UDRP panels have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the Complainant. See, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (June 18, 2001)(“mercedesshop.com”); Microsoft Corp. v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001) (“microsofthome.com”).

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 <scotiacapitalcareers.com>. Complainant owns a trademark registration for the mark SCOTIA CAPITAL, which it uses in commerce, including for online business. Although it appears that Respondent’s corresponding domain name was registered before Complainant filed its mark SCOTIA CAPITAL (1998 versus 1999), Complainant was using the related mark SCOTIA CAPITAL MARKETS for approximately three years prior to Respondent’s registration of <scotiacapitalcareers.com>.

Complainant contends that Respondent does not own any trademark or intellectual property rights in the mark SCOTIA CAPITAL or SCOTIA CAPITAL CAREERS, and that the Respondent has never used either as a legal or business name. Complainant further avers that it has never authorized, licensed or permitted the Respondent to use its trademark SCOTIA CAPITAL. The Respondent has not rebutted Complainant’s contentions.

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

Two 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 <scotiacapitalcareers.com> in bad faith.

First, Complainant has used the related mark SCOTIA CAPITAL MARKETS since 1995, three years prior to Respondent’s registration of the domain name <scotiacapitalcareers.com>. Complainant is well-known internationally for its banking services, including its capital markets 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 the business of Complainant for monetary gain. Respondent’s website actually directs users to career opportunities with 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 (March 12, 2001) (“yuamazon.com”) and American Institute of Floral Designers v. Palm Coast Floral, Inc., WIPO Case No. D2000-0335 (June 27, 2000) (“aifd.com”).

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 <scotiacapitalcareers.com> be transferred to the Complainant.

Lorelei Ritchie De Larena
Sole Panelist

Date: August 14, 2007