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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Bank of Nova Scotia v. Domain Privacy Group, Inc. c/o scotiabanktheatre.com / Mario Osvaldo Rayo / Ultra.Life Media c/o Domain Privacy Group, Inc.

Case No. D2007-1584

1. The Parties

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

Several names are listed as Respondents: Domain Privacy Group, Inc. c/o scotiabanktheatre.com, Mario Osvaldo Rayo, Ultra.Life Media c/o Domain Privacy Group, Inc., Toronto, Canada. Domain Privacy Group, Inc. appears to be a privacy domain registration service. For purposes of these proceedings, the Panel will treat all of these as Respondent.

2. The Domain Names and Registrar

The disputed domain names <scotiabanktheatre.com> and <scotiabanktheatres.com> (herein, “Disputed Domain Names”) are registered with Netfirms, Inc. (herein, “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2007. On October 29, 2007, the Center transmitted by email to Registrar Netfirms, Inc. a request for registrar verification in connection with the Disputed Domain Names. On November 7, 2007, Netfirms, Inc. transmitted by email to the Center its verification response advising of new registrant information. In response to a notification by the Center of a notice of change in registrant information, Complainant filed an amended Complaint (hereinafter, “Complaint” simpliciter) on November 9, 2007. 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 Respondent of the Complaint by all means required under the Rules, and the proceedings commenced on November 12, 2007. The Panel has ascertained from the record that this notification fully complied with the requirements of the Rules. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2007. Respondent did not submit any response by this date. Accordingly, the Center notified Respondent’s default on December 3, 2007.

The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on December 12, 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.

On December 27, 2007, Ultra.Life c/o Mario Osvaldo Rayo submitted an e-mailed response almost four weeks after the deadline without giving sufficient reasons for this delay that affected the integrity of the Center’s procedures (especially in respect of adequate notice and reasonable opportunity to respond). In any event, the Panel’s consideration of this document indicates that its contents do not affect the Panel’s findings in the case.

4. Factual Background

Complainant’s portfolio of Canadian trademarks for, or formed from, the mark SCOTIABANK (herein collectively, “SCOTIABANK Trademark”) includes Canadian registration No. 215240 and registrations in the United States of America, Hong Kong, SAR of China, United Kingdom of Great Britain and Northern Ireland, Jamaica and Japan.

Respondent registered the Disputed Domain Names on February 1, 2007.

5. Parties’ Contentions

Complainant contends, and Respondent’s late response denies, that the Disputed Domain Names are confusingly similar with the SCOTIABANK Trademark in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Names, and that Respondent registered and uses the Disputed Domain Names in bad faith.

6. Discussion and Findings

One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (See, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (See Procedural History, supra).

To succeed in accordance with paragraph 4(a) of the Policy, Complainant must meet three requirements that will be considered in turn below.

A. Identical or Confusingly Similar

Complainant contends that it is one of North America’s premier financial institutions, serving about 12 million customers in about 50 countries worldwide; that its SCOTIABANK Trademark is famous in Canada, the country of residence of Respondent; that it spent significantly to acquire naming rights to major movie theatres across Canada, and that some theatres have been now renamed “Scotiabank Theatres”, further expanding the reach of Complainant’s SCOTIABANK Trademark.

Complainant contends, that the Disputed Domain Names are confusingly similar to its SCOTIABANK Trademark for the following reasons: Respondent incorporated entirely Complainant’s SCOTIABANK Trademark, i.e. the word “Scotiabank”, into the Disputed Domain Names with the mere addition of the word “theatre” and “theatres” respectively; and that the mere addition of the generic top-level domain, “com”, and of a descriptive term like “theatre(s)” to a mark does not negate confusing similarity.

The Panel agrees with Complainant’s contention that the SCOTIABANK Trademark is famous in Canada. The SCOTIABANK Trademark clearly refers to Complainant and it is not generic, nor is its combination in the Disputed Domain Names with the theatres with which Complainant has become associated. The Disputed Domain Names are confusingly similar to Complainant’s SCOTIABANK Trademark.

The Panel concludes that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

The record suggests that Respondent is not commonly known by the Disputed Domain Names; that Respondent is not a licensee of Complainant; that Respondent has no authorization (express or implied) from Complainant to use the SCOTIABANK Trademark, or any domain names incorporating it, when Respondent registered the Disputed Domain Names and since then.

Respondent sent an email to Complainant on September 6, 2007, explaining that it held the registrations of the Disputed Domain Names and of six other domain names - <scotiabanktheatre.ca>, <scotiabanktheatres.ca>, <sbtheatre.ca>, <sbtheatres.ca>, <sbtheatre.com>, and <sbtheatres.com> - and requesting an “expression of interest” from Complainant with respect to them. That September 6, 2007 email suggested to Complainant that what was being offered “could be of great value” to Complainant. That email was sent the day Toronto International Film Festival started, and the Scotiabank Theatre Toronto was one of its venues.

By virtue of the statutory rights in the SCOTIABANK Trademark (provided by the registrations in Canada and elsewhere (Section 4, Factual Background, supra)), and of the common law rights associated with the SCOTIABANK Trademark (that flow from Complainant’s contentions about the scope and longevity of its business activities and fame in the marketplace (Section 6A, supra)), Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Names. The Panel, has not found any other circumstances described in paragraph 4(c) of the Policy of proof of rights or legitimate interests by Respondent in the Disputed Domain Names.

The Panel concludes that the second requirement of the Policy is met.

C. Registered and Used in Bad Faith

Complainant contends, that Respondent registered the Disputed Domain Names in bad faith by doing so knowing of Complainant’s rights in the SCOTIABANK Trademark, which is famous in Canada and internationally, and in particular, that Respondent registered the Disputed Domain Names, about one week after the announcement of the renaming of the (then named) Cineplex theaters to “Scotiabank Theatres”. In other words, Complainant contends that Respondent registered the Disputed Domain Names to trade on the goodwill of Complainant’s SCOTIABANK Trademark and aforesaid theatre-naming business.

Respondent uses the Disputed Domain Names passively (i.e. they do not resolve to active websites) but that does not end the inquiry. Although Respondent’s email of September 6, 2007, mentioned no amount, the Panel infers from the surrounding circumstances (the date of the registration of the Disputed Domain Names and the date of that email, both relative to events in the marketplace) that if discussions had proceeded between the parties, the sum requested by Respondent would likely have been for valuable consideration in excess of the out-of-pocket costs directly related to the Disputed Domain Names. The Panel therefore considers that Respondent’s registration and use of the Disputed Domain Names was in bad faith (Policy, paragraph 4(b)(i)).

The Panel’s decision is supported by prior UDRP decisions, such as Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. Furthermore, the Panel notes that Respondent’s email of September 6, 2007, mentioned six other domain name registrations that were formative of the mark “Scotiabanktheatre(s)”, for which Respondent requested an “expression of interest” from Complainant. The Panel considers the total of eight domain name registrations sufficient as evidence of a pattern of conduct, as set out in the Policy, paragraph 4(b)(ii).

The Panel concludes that the third requirement of the Policy is met.

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 Disputed Domain Names <scotiabanktheatre.com> and <scotiabanktheatres.com> be transferred to Complainant.

Mark Ming-Jen Yang
Sole Panelist

Dated: December 31, 2007