ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant in this matter is Canadian Imperial Bank of Commerce, and the respondent is D3M Virtual Reality inc and D3M Domain Sales. Complainant seeks transfer of two domain names registered to Respondent: cibconline.net and cibconline.com. The registrar for both domain names is Network Solutions, Inc.
2. Procedural History
This matter was initiated by the filing of a complaint pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999 ("ICANN Policy"). The complaint was filed with the Disputes.org/eResolution Consortium, an ICANN-approved administrative dispute resolution service provider. The electronic version of the complaint form was filed online through eResolution's web site on August 17, 2000, and a hard copy with annexes was received by eResolution on August 23, 2000.
The Clerk of eResolution found, and the Panel has independently confirmed, satisfaction of the procedural requirements in the Rules for Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 ("ICANN Rules"), and the eResolution Supplemental Rules.
The Clerk of eResolution forwarded a copy of the complaint to Respondent on August 30, 2000, which represents the official commencement date of this proceeding. The complaint and accompanying documents were sent via registered mail with proof of service, via facsimile, and via e-mail. The e-mail transmissions were returned "undeliverable," but the facsimile and registered mail transmissions were successful.
No response was received from Respondent.
Neither party having requested a three-member panel, eResolution selected David E. Sorkin from the Disputes.org/eResolution Consortium list of arbitrators to serve as the sole panelist in this proceeding. On September 21, 2000, the parties were notified of the panel appointment and that save exceptional circumstances a decision would be handed down by October 4, 2000.
3. Factual Background
Complainant, a financial institution based in Canada, owns the trademark CIBC, Canadian trademark number TMA350269, registered on January 20, 1989.
Respondent is the registrant of the domain names in dispute here, cibconline.net and cibconline.com, registered on July 1, 1999, and May 10, 1999, respectively. Respondent is located in Montreal, Quebec, Canada. (One of the domain names in dispute here, cibconline.com, is registered to D3M Virtual Reality Inc., with a representative of D3M Domain Sales as the contact person. The other domain name, cibconline.net, is registered to D3M Domain Sales, with a representative of D3M Virtual Reality as the contact person. The two intertwined and similarly named D3M entities share the same physical address, telephone number, and e-mail address; the Panel therefore concludes that they are in actuality, or at least in practical effect, a single entity.)
4. Parties' Contentions
Complainant contends that the domain names are confusingly similar to its trademark CIBC; that Respondent has no rights or legitimate interests in the domain names, and that the domain names have been registered and are being used in bad faith.
As previously noted, no response was received from Respondent.
5. Discussion and Findings
Since no response has been filed, pursuant to paragraph 14 of the ICANN Rules the Panel decides this matter based upon the complaint, drawing appropriate inferences therefrom.
Under paragraph 4(a) of the ICANN Policy, a complainant must prove that the domain name at issue is identical or confusingly similar to the complainant's trademark; that the respondent has no rights or legitimate interests in the domain name; and that the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the ICANN Policy requires that the domain name be identical or confusingly similar to the complainant's trademark. As noted, Complainant alleges that the domain names at issue here are confusingly similar to its trademark CIBC. Complainant argues that the inclusion of "online" and the top-level domains ".com" and ".net" do not reduce the likelihood of confusion. The Panel agrees, and finds the domain names confusingly similar to Complainant's trademark.
Paragraph 4(a)(ii) of the ICANN Policy asks whether the respondent has any rights or legitimate interests in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (1) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (2) the fact that the respondent has commonly been known by the domain name; and (3) legitimate non-commercial or fair use of the domain name.
Complainant contends that none of the circumstances set forth in paragraph 4(c) are applicable here, and that Respondent has no rights or legitimate interests in the domain names. No such right or interest is immediately apparent to the Panel, and Respondent has not come forward to suggest any such right or interest that it may possess. The Panel therefore concludes that Respondent lacks rights and legitimate interests in the domain names.
Finally, the third element in paragraph 4(a) of the ICANN Policy requires a complainant to prove that the domain name was registered and is being used in bad faith. Paragraph 4(b) sets forth four examples of circumstances in which the registration and use of a domain name may be found to be in bad faith: (1) the respondent has registered or acquired the domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant at a profit; (2) the respondent registered the domain name to prevent the complainant from reflecting its trademark in a corresponding domain name and has engaged in a pattern of similar conduct; (3) the respondent registered the domain name primarily to disrupt a competitor's business; and (4) the respondent's use of the domain name intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's trademark. As noted in numerous decisions under the ICANN Policy, the requirement of bad faith registration and use is conjunctive; both bad faith registration and bad faith use must be demonstrated.
Complainant alleges that Respondent registered the domain names primarily for the purpose of selling them to Complainant or a competitor at a profit. Considering the fact that one of Respondent's names includes the phrase "Domain Sales," the difficulty in imagining non-infringing uses of the domain names at issue here, and the fact that Respondent has not come forward with a plausible alternative explanation, the Panel concludes that Respondent did indeed register the domain names primarily for the purpose of selling them to Complainant or a competitor at a profit; and considering the fact that Respondent appears to be passively holding the names while effectively advertising them for sale (based upon the information recorded on Respondent's behalf in the Whois database), the Panel concludes that Respondent is using the domain names in bad faith.
Complainant further alleges that Respondent registered the domain names in order to disrupt Complainant's business, and to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's trademark. The Panel has insufficient evidence before it to support either of these conclusions.
Complainant also asks the Panel to find bad faith registration and use based upon the totality of the evidence, without regard to the four examples set forth in paragraph 4(b). In support of this argument Complainant also points to other facts, including the Respondent's registration of numerous other domain names corresponding to other prominent financial institutions and charitable organizations. See, e.g., Royal Bank of Canada v. D3M Domain Sales, ICANN Case No. AF-0147 (eResolution May 1, 2000) (ordering transfer of royalbankonline.com, banqueroyaleducanada.com, and royalbankfinancial.com). These and other facts do indeed lend further support to a finding of bad faith registration and use.
The Panel concludes that the domain names at issue here were registered and are being used in bad faith.
Having found all three of the requirements set forth in paragraph 4(a) of the ICANN Policy to be satisfied, the Panel orders that the domain names cibconline.net and cibconline.com be transferred to the Complainant.
23 September 2000
Chicago, Illinois, USA
(s) David E. Sorkin