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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canada Mortgage and Housing Corporation v. Jamil Kara, JSK Holdings Inc.

Case No. D2013-2128

1. The Parties

The Complainant is Canada Mortgage and Housing Corporation of Ottawa, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondent is Jamil Kara, JSK Holdings Inc. of North Vancouver, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <cmhcmortgages.com> (the “Domain Name”) is registered with DomainsAtCost Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2013. On December 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2013, the Registrar 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2014.

The Center appointed Haig Oghigian as the sole panelist in this matter on February 7, 2014. 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

Founded in 1946, the Complainant is a governed-owned corporation incorporated pursuant to the Canadian Mortgage and Housing Corporation Act. The corporation was initially named Central Mortgage and Housing Corporation and subsequently changed its name to the Complainant in 1979.

The Complainant is the owner of the following Official marks at the Canadian Intellectual Property Office that are comprised of, or contain, CMHC (collectively, the “CMHC Official Marks”); CMHC (Application Number: 0911362, Advertisement Date: January 26, 2000), CMHC SCHL & Design (Application Number: 0911357, Advertisement Date: January 26, 2000), SCHL CMHC & Design (Application Number: 0911358, Advertisement Date: January 26, 2000), CMHC SCHL HOME TO CANADIANS & Design (Application Number: 0911356, Advertisement Date: January 26, 2000), SCHL CMHC AU COEUR DE L'HABITATION & Design (Application Number: 0911356, Advertisement Date; January 26, 2000).

The Complainant is also the owner of the following trademark registrations at the Canadian Intellectual Property Office; CMHC SCHL YOUR CANADIAN MORTGAGE INSURANCE COMPANY & Design (Registration Number: TMA757584), SCHL CMHC LA SOCIÉTÉ CANADIENNE D’ASSURANCE HYPOTHECAIRE & Design (Registration Number: TMA757405), CMHC SCHL CANADA’S MORTGAGE INSURANCE COMPANY & Design (Registration Number: TMA757381), SCHL CMHC VOTRE SOCIÉTÉ CANADIENNE D'ASSURANCE HYPOTHÉCAIRE & Design (Registration Number: TMA757345).

Since at least as early as 1977, the Complainant has used the trademark CMHC. The CMHC Official Marks, the CMHC trademark Registration and the CMHC trademark shall be collectively referred to as the CMHC Marks.

The Domain Name was registered on June 16, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant.

The Complainant argues that the Domain Name is confusingly similar with CMHC Marks in which the Complainant has rights, and continues to have such rights (paragraph 4(a)(i) of the Policy). The Domain Name incorporates the whole of the Complainant’s CMHC mark. Further, the whole of the CMHC element of the CMHC Marks is incorporated in the Domain Name. Under the circumstances, the Respondent cannot avoid confusion, as it has misappropriated the entirety of the CMHC mark. The fact that the Domain Name includes the word “mortgages” does nothing to diminish confusion. Despite this addition, the Domain Name remains very similar to the CMHC mark in appearance, sound and in the ideas suggested. In fact, it is quite the contrary - confusion is enhanced by the addition of the term “mortgages”. Since the Complainant operates in the field of the mortgages and real estate, the Domain Name mistakenly suggests that it resolves to a website operated by, or otherwise affiliated with, the Complainant.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name (paragraph 4(a)(ii) of the Policy). The Respondent cannot claim the benefit of paragraph 4(c)(i) of the Policy. There is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use, the Domain Name, or a name corresponding to same, in connection with a bona fide offering of goods or services. There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the CMHC Marks in any manner whatsoever, including in, or as part of, a domain name. The Domain Name was initially used to drive Internet traffic to “www.bestratesbc.com”. Given the overlap with the Complainant’s field of activity, the unauthorized use of the CMHC mark by itself is sufficient to undermine any claim of rights. Indeed, the misappropriation of the CMHC mark with a view to misdirecting end users to the Respondent’s website cannot be said to be bona fide in nature.

There is no evidence to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(ii) and (iii) of the Policy).

Furthermore, with respect to paragraph 4(a)(iii) of the Policy, the Complainant insists that the Domain Name was registered and is being used in bad faith. The Respondent’s solicitation of an offer to sell the Domain Name constitutes evidence of bad faith as per paragraph 4(b)(i). The Respondent on two separate occasions solicited an offer to purchase asking “what are they willing to pay”. This by itself supports a finding of bad faith. Providing further context to the type of offer it was seeking, the Respondent suggested “big money” would be needed to purchase the Domain Name.

The Respondent has engaged in a pattern of registering domain names that contain trademarks to which it is not entitled, and it has prevented the Complainant from registering the Domain Name (paragraph 4(b)(ii) of the Policy). The Respondent has engaged in a pattern of at least 8 unauthorized domain name registrations that are comprised of third party trademarks to which it does not appear entitled. Apart from the Domain Name, the Respondent is the owner of the following domain names incorporating third party marks: <alpinemortgages.ca>, <capitaldirectomortgages.ca>, <capitaldirectmortgages.com>, <dominionlenders.ca> <mortgagecapitalonline.com>, <mymortgagecapital.com> and <thelendingtree.ca>. Except for the last two domain names, each of these domain names resolves to the website located at “www.bestratesbc.com”.

The Respondent registered the Domain Name for the purpose of disrupting the business of the Complainant, a competitor of the Respondent (paragraph 4(b)(iii) of the Policy). The Respondent hyperlinked the Domain Name to “www.bestratessbc.com”, a website offering mortgages and real estate generally. Accordingly, the Respondent is properly characterized as a competitor of the Complainant. Further, the previous use of the Domain Name was disruptive to the Complainant, as potential consumers were likely to be confused into believing that the Respondent’s website was somehow affiliated with, or sponsored by, the Complainant. As well, the mere misdirection of potential consumers to the Respondent’s website constituted a disruption to the Complainant and its business. Deactivating the Domain Name upon receipt of a cease and desist letter does not cure bad faith. The majority of the Respondent’s unauthorized domain name registrations resolve to the “www.bestratessbc.com”, and initially, the Domain Name was no exception. Indeed, the intent behind the Domain Name registration was to piggyback on the goodwill associated with the CMHC Marks with a view to driving traffic to a website for financial gain. Under the circumstances, it is reasonable to infer that the Respondent not only knew this diversion would be disruptive, but also intended it to be so. As well, by virtue of the unauthorized diversion of Internet traffic, the valuable goodwill subsisting in the CMHC Marks is harmed, thereby constituting a disruption to the Complainant.

The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with a complainant’s mark as to source, sponsorship, affiliation, or endorsement (paragraph 4(b)(iv) of the Policy). The Domain Name contains the whole of the CMHC mark and is confusing with the CMHC Marks. Further, the inclusion of the word “mortgages” in the Domain Name makes the association with the Complainant undeniable. Under the circumstances, the Domain Name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant. The use of the Domain Name in association with the “www.bestratesbc.com” website put the Respondent in a position to reap financial benefit. The Respondent piggybacked on the very valuable CMHC mark to drive traffic to the website for commercial gain. Accordingly, the Domain Name was being used in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement. The current inactivity of the Domain Name does not cure bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is confusingly similar to the trademark.

Previous UDRP panels have found that a respondent may not avoid confusion by appropriating another’s entire mark in a domain name (Research In Motion Limited v. One Star Global LLC, WIPO Case No. D2008-1752). Non-distinctive term addition will not be a defense against the finding of confusion (Research In Motion Limited v. Louis Espinoza, WIPO Case No. D2008-0759, Research In Motion Limited v. Jumpine.com, WIPO Case No. D2008-0758, Research Quitxtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). The addition of a generic top level domain, such as “.com”, and the elimination of spaces, are without legal significance in determining the issue of similarity (Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, WIPO Case No. D2008-0780). It is clear on the given evidence that the Domain Name is a combination of the Complainant’s trademark CMHC and the non-descriptive and generic element of “mortgages” and “.com”.

Furthermore, given the business operated by the Complainant, confusion is enhanced by the addition of the term “mortgages” and the Domain Name mistakenly suggests that it resolves to a website operated by, or otherwise affiliated with, the Complainant.

In accordance with UDRP precedent and for the above reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant’s CMCH Marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:

- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (Paragraph 4(c)(i));

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (Paragraph 4(c)(ii)); or

- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (Paragraph 4(c)(iii)).

In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the Complainant started to use the CMCH trademark. Thus, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Name (See PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson, WIPO Case No. D2003-0174). However, there has been no evidence produced by the Respondent in this regard.

There is no evidence that suggests that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith use and registration of the domain name. Such circumstances include, among others:

- circumstances indicating that you have registered domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark (Paragraph 4(b)(i)); -

registration of the domain name in order to prevent the owner of the domain trademark from reflecting the mark in a corresponding domain name, provided that the complainant have engaged in a pattern of such conduct (Paragraph 4(b)(ii)); and

- 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. (Paragraph 4(b)(iv).

Previous UDRP panels have found that the solicitation of an offer to purchase a domain name even if no certain price is demanded can constitute evidence of bad faith (Salomon Smith Barney Inc. v. Daniel Singer d/b/a Build Me A Website.com, WIPO Case No. D2000-1722, Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053, etc.). The evidence establishes that the Complainant issued a cease and desist letter dated August 16, 2013 requiring the Respondent the transfer of the Domain Name and a follow-up letter on September 5, 2013. In response to these letters, by way of email correspondence issued the same day, the Respondent wrote “What are they willing to pay?” In this Panel’s view, this is an obvious solicitation of an offer to purchase a domain name and shows its bad faith.

In addition, the Panel finds that the Respondent has also used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. The Panel agrees with the Complainant that the current inactivity of the Domain Name does not cure bad faith.

Finally, previous UDRP panels also have found that as far as two domain name registrations, including a disputed domain name, has been sufficient to establish that a respondent has engaged in a pattern of registering domain names that incorporate the trademarks of third parties (New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812, Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0388). The evidence shows that the Respondent has engaged in a pattern of at least 8 apparently unauthorized domain name registrations that are comprised of third party trademarks to which it does not appear entitled. Apart from the Domain Name, the Respondent is the owner of numerous domain manes incorporating third party marks: In the opinion of the Panel, in the circumstances of this case, this fact is sufficient to establish that the Respondent has engaged in a pattern of registering domain names that incorporate the trademarks of third parties.

Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use under paragraphs 4(b)(i), (ii) and (iv) of the Policy and therefore satisfied the requirement of the third element under paragraph 4(a) of the Policy.

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 Domain Name <cmhcmortgages.com> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: February 21, 2014

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