| Six Continents Hotels, Inc. v. Virgin Enterprises Limited , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00035 - by Eric Macramalla
Domain Name: crownplaza.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: Patrick D. Flaherty, Jacques A. Léger, Q.C., and R. John Rogers
In the second 'typosquatting' case decided under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a three-member Panel ordered the disputed domain name transferred to the Complainant.
The Panel's reasoning was similar to that in the landmark 'typosquatting' case of AMAZON.COM Inc. v. Abraham (BCICAC, CIRA Dispute No. 00018)
The Complainant was an international hotel operator who owned or operated more than two hundred hotels worldwide, including five in Canada. It was the registered owner of several Canadian trade-mark registrations such as CROWNE PLAZA and CROWNE PLAZA & Design as well as the domain names crowneplaza.com and crownplaza.com. Its Canadian affiliate, InterContinental Hotels Group (Canada) Inc., was the registered owner of the crowneplaza.ca domain name.
The disputed domain name was purchased by the Registrant who was in the business of registering lapsed domain names. At the time of the Complaint, the disputed domain name resolved to a website entitled "Atlanta Universal". The site contained banner and text advertisements linked to affiliate marketing services. When first contacted by the Complainant, the Registrant offered to transfer the domain name for $1460 and a lifetime membership in the Complainant's Ambassador Club Program.
Under the 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.
In assessing confusing similarity the Panel applied the test established in Canada v. Bedford (BCICAC, CIRA Dispute No. 00011):
For each Domain Name the Complainant must prove on a balance of probabilities that a person, on a first impression, knowing the Complainant's corresponding mark only and having an imperfect recollection of it, would likely mistake the Domain Name (without the .ca suffix) for Complainant's corresponding mark based upon the appearance, sound or the ideas suggested by the Mark.
The Panel concluded that crownplaza.ca was confusingly similar to the Complainant's CROWNE PLAZA mark. The absence of the silent "e" was not sufficient to distinguish the disputed domain name in appearance, sound or ideas suggested. This reasoning was similar to that of the Panel in AMAZON.Com Inc v. Abraham, supra, where the addition of the letter "s" to the word "amazon" did not distinguish the disputed domain name amazons.ca from the Complainant's AMAZON marks.
The Panel began its analysis of bad faith registration by noting that it was entitled to consider the Registrant's conduct and surrounding circumstances to draw common sense inferences. In this case, the Registrant's offer to sell the domain name for a fee considerably larger than its registration costs led the Panel to infer that it was purchased for the primary purpose of selling it to the Complainant. This led to a finding of bad faith registration under paragraph 3.7(a) of the CDRP. It was irrelevant that the Registrant stated it acquired the name with the intention of transferring it to the previous Registrant and that it had no intention of interfering with this particular Complainant.
The Panel then went on to find that the Registrant had no legitimate interest in the disputed domain name. In reaching this conclusion, the Panel undertook a comprehensive analysis of whether the registration of lapsed domain names constitutes a legitimate activity under paragraph 3.6(a) of the CDRP. This section states that:
The Registrant has a legitimate interest in a domain name if ... before the receipt by the Registrant of notice from or on behalf of the Complainant that a Complaint was submitted: (a) The domain name was a Mark, the Registrant used the Mark in good faith and the Registrant had Rights in the Mark
The Panel ultimately found that the Registrant had no legitimate interest in the domain name. It had no rights in the CROWN PLAZA mark, the domain name was not descriptive of any of its services and the Registrant acted in bad faith by acquiring the domain name for the purpose of selling it to the Complainant. This situation was distinguished from that of Acrobat Construction/Enterprise Management Inc. v. 1550507 Ontario Inc. (Resolution Canada, CIRA Dispute No. 00013) where the Registrant's business of redirecting Internet traffic qualified as a legitimate interest since the registrations were not made with the intention of selling them for profit.
Given the Complainant's success in the proceedings, the Panel had to determine how to award relief. As the Complainant was an American Corporation, it did not satisfy the Canadian Presence Requirements for Registrants ("CPR"). However, section 2(q) of the CPR provides an exception, permitting the registration of a dot-ca domain name consisting of or including the exact word component of a previously registered Canadian trade-mark. The Panel interpreted this section liberally, in a manner consistent with Canadian trade-mark law. It held that although the disputed domain name differs from the Complainant's CROWNE PLAZA Canadian trade-mark, in that the domain name is missing the silent "e", it contains the "exact" word components of the mark. Therefore, the Complainant would be entitled to have the disputed domain name transferred to it. Notwithstanding this conclusion, the Complainant requested the domain name transferred to its Canadian nominee, InterContinental Hotels Group (Canada) Inc.