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The Standard Life Assurance Company of Canada v. Hank Morin, British Columbia International Commercial Arbitration Centre Case No. 00046 - by Eric Macramalla

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Domain Name: standard-life.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Hugues G. Richard

The Complainant was the owner of trade-mark registrations containing, or comprised of, STANDARD LIFE. The domain name was made to resolve to a customized Internet portal displaying links to competitors of the Complainant.

The Registrant did not file a Response to the Complaint, and accordingly the Complainant elected as per Rule 6(5) of the CIRA Domain Name Dispute Resolution Rules to reduce the three member Panel to a single member Panel.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a successful Complainant must establish that the disputed domain name is confusingly similar with a mark in which it had rights, that the name was registered in bad faith and that the Registrant does not have a legitimate interest in the domain name.

The Panel held that the domain name was confusing with the Complainant's mark. The addition of the hyphen was immaterial to the confusion analysis.

The Registrant was the owner of multiple domain names containing third party marks. Despite this being the case, the Panel held that the Complainant had not established bad faith registration as per subparagraph 3.7(b), which provides that bad faith will be found where a Registrant has registered third party marks as domain names and where the Complainant has been prevented from registering the disputed domain name. In this regard, the Panel held that the Complainant had not been prevented from registering the domain name, because the Complainant had already registered its mark - without the hyphen.

However, the Panel held that resolving the domain name to a customized portal displaying links to competitors of the Complainant was sufficient to establish bad faith and defeat any claim of legitimacy on the part of the Registrant.

The finding that a Complainant must show that it was prevented from registering the impugned domain name despite being able to show a pattern of abusive registrations is a puzzling criteria. This similar language appears under the Uniform Domain Name Dispute Resolution Policy ("UDRP"). However, Panellists under the UDRP give this issue of prevention little attention, or assume that the Complainant was prevented from registering the domain name if a pattern of abusive registrations is shown. In any event, the language requiring that prevention be shown should be dropped from the CDRP; noteworthy is that this criteria does not appear on the other two bad faith factors.

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