Canaccord Genuity Corp. v Registration Private
WIPO Case No. D2025-0782
•01-05-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Canaccord Genuity Corp. v. Registration Private
Case No. D2025-0782
1. The Parties
The Complainant is Canaccord Genuity Corp., Canada, represented by CSC Digital Brand Services Group
AB, Sweden.
The Respondent is Registration Private, United States of America.
2. The Domain Name and Registrar
The disputed domain name <canaccordwealth.com> is registered with Dynadot Inc (the “Registrar”).
3. Procedural History
| 2025. On February 26, 2025, the Center transmitted by email to the Registrar a request for registrar | The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, an amended Complaint on March 3, 2025. |
| The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2025. |
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The Center appointed Zineb Naciri Bennani as the sole panelist in this matter on April 17, 2025. 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
The Complainant is a financial services firm specialized in wealth management and capital markets. The
Complainant’s company was established in 1950 and has offices in Australia, Canada, Guernsey, Isle of
Man, Jersey, and United Kingdom, with 2,892 employees.
The Complainant’s capital market division is established in North America, United Kingdom, Europe, Asia and Australia and the Complainant is publicly traded on the Toronto Stock Exchange market.
The Complainant includes evidence that it owns numerous trademarks including:
- United Kingdom trademark No. UK00004092224 filed on August 27, 2024, and registered on November 15,
2024, for CANACCORD WEALTH for the classes 16, 35, 36 and 41;
- Canada trademark No. TMA416499 filed on October 16, 1992, and registered on September 3, 1993, for
CANACCORD and CAN ACCORD for the classes 16 and 36; and
- Australian trademark No. 1451208 filed on October 5, 2011 and registered on May 10, 2012, for
CANACCORD for the class 36.
The Complainant promotes its services through the domain name <canaccordgenuity.com>, registered on
February 24, 2010, which, according to the Complaint, received 85,200 visits between November 2024 and
January 2025, and owns the following domain names:
- <canaccordwealth.au>;
- <canaccordwealth.com.au>.
The disputed domain name was registered on August 27, 2024.
The disputed domain name redirects to a page offering the disputed domain name for sale for USD 25,000.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name is identical to the Complainant’s registered trademark in which the Complainant has rights.
The Complainant asserts that it is standard practice when comparing a disputed domain name to a complainant’s trademark, to not take the generic Top-Level Domain into account.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
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The Complainant argues that is has exclusive right to use the CANACCORD WEALTH and CANACCORD trademarks in commerce and that the Respondent is not sponsored by or affiliated with the Complainant in any way, nor has the latter given any permission to the Respondent to use the Complainant’s trademarks in any manner.
According to the Complainant, the Respondent is not commonly known by the disputed domain name.
Moreover, the WhoIs identifies the Respondent as “Registration Private”.
The Complainant contends that the disputed domain name is redirected to a website where it is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith.
According to the Complainant, the Complainant and the CANACCORD trademark are known worldwide with trademark registrations across numerous countries and the Complainant has marketed its services using this trademark since 1950.
Thus, the Complainant asserts that the Respondent knew or should have known of the existence of the domain name on the same day the Complainant filed its trademark application for CANACCORD WEALTH.
The Complainant contends that the disputed domain name redirects to a website where it is being offered for sale which constitutes bad faith and that the disputed domain name can only be taken as intending to cause confusion among Internet users.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the
Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
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The entirety of the CANACCORD mark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
Although the addition of other terms, here “wealth,” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
The Respondent is identified as Registration Private and is, therefore, not commonly known by the disputed domain name.
The disputed domain name is not used for a legitimate noncommercial or fair use.
In the present case, there are no elements asserting that the Respondent uses the disputed domain name
for a bona fide offering. The disputed domain name redirects to a webpage offering it for sale for USD
25,000. The Panel notes that the disputed domain name incorporates the Complainant’s CANACCORD
trademark and is identical to the Complainant’s CANACCORD WEALTH trademark. Therefore, noting there
are no otherwise apparent reasons for the Respondent’s adoption of the disputed domain name, the Panel
accepts there is a strong inference that the Respondent registered the disputed domain name with the
intention of targeting the Complainant. That inference is even stronger bearing in mind that the disputed
domain name was registered on the same day when the Complainant’s trademark application for
CANACCORD WEALTH was filed.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the second element of the Policy has been established.
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C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, the Panel notes that given the circumstances of this case, in particular the extent of use and reputation of the Complainant's trademark, and the timing of registration of the disputed domain name, the Respondent registered the disputed domain name with prior knowledge of the Complainant and the Complainant's marks.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
In this case the disputed domain name incorporates in its entirety the CANACCORD trademark, widely used, due to the Complainant’s presence worldwide, and is identical to the CANACCORD WEALTH trademark filed on August 27, 2024.
The Panel finds that the timing of the disputed domain name registration indicates the bad faith registration.
Further, the disputed domain name redirects to a page offering the disputed domain name for sale for USD 25,000. In the circumstances of this case, the Panel finds it more likely than not that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
The Panel finds that the Complainant has established the third element 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 disputed domain name <canaccordwealth.com> be transferred to the Complainant.
/Zineb Naciri Bennani/
Zineb Naciri Bennani
Sole Panelist
Date: May 1, 2025
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