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Microsoft Corporation Redmond WA v. Microscience Corporation (P.E.I.), Resolution Canada, CIRA Dispute No. 00034 - by Eric Macramalla

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Domain Name: msnsearch.ca
OutCome: Transfer Denied
Response Filed: Yes
Panellist: Paul W. Donovan, Denis N. Magnusson, and Daria Strachan

The Complainant was the registered owner of various trade-marks containing the element MSN. These included the marks MSN and MSN & Design. Both marks were registered prior to the date of the disputed domain name registration thus establishing the Complainant's rights for the purposes of the proceedings. The Complainant also attempted to assert common law trade-mark rights in MSNSEARCH. However, the Panel refused to accept this argument in the absence of evidence of use of the mark prior to the registration of msnsearch.ca.

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 began by considering the issue of confusing similarity between the Complainant's mark and the disputed domain name. The Panel concluded that a person, having a recollection of the Complainant's marks, would view the domain name and identify the MSN mark, modified by the descriptive word "search". Consequently, the Panel held that the Complainant had established confusing similarity between the domain name and its MSN marks.

Having established confusing similarity, the Panel went on to consider whether the domain name was registered in bad faith. The Complainant had not alleged that the domain name was registered for the primary purpose of selling it to the Complainant or to one of its competitors, as required by paragraph 3.7(a) of the CDRP. Similarly, although the domain name was found to be confusingly similar with the Complainant's marks, it did not prevent the Complainant from registering any of its marks as domain names. Thus, there was no evidence of bad faith registration under paragraph 3.7(b) of the CDRP. The Panel also failed to find bad faith under paragraph 3.7(c) of the CDRP as no evidence was provided to suggest that the Registrant and Complainant were competitors.

Given the absence of bad faith registration, the Panel did not go on to consider whether the Registrant had a legitimate interest in the domain name.

Under paragraph 4.6 of the CDRP, a Registrant who successfully resists a Complaint may be eligible to receive up to $5000 in costs from the Complainant. The Registrant must establish that the Complainant attempted to cancel or obtain a transfer of the disputed domain name registration unfairly and without colour of right. In this case, the Panel recognized the Complainant's familiarity with the Uniform Domain Name Dispute Resolution Policy ("UDRP") and its lower threshold for establishing bad faith registration. The Panel held that the Complainant made a mistake of law in thinking that the name had been registered in bad faith and thus acted with colour of right. To this end, the Registrant was not awarded its costs.

The Panel also noted that the Complainant in these proceedings did not satisfy the Canadian Presence Requirements for Registrants ("CPR") and thus, had it been successful, the Panel would not have been able to order the domain name transferred to it. The Panel would have merely ordered a cancellation of the domain name registration or a transfer from the Registrant to a nominee of the Complainant who met the CPR.

This case was wrongly decided. At the very least, a finding that the registration was disrupting the business of the Complainant should have been made. While the parties may not have been "competitors" in the strict sense, the CDRP case law has held that attempting to attract Internet traffic to a site with a view to reaping a commercial advantage by capitalizing on consumer confusion constitutes bad faith as per 3.7(c) of the CDRP. As well, in considering whether a pattern of abusive registrations has been established, CDRP and UDRP Panellists have put little emphasis on the Complainant being prevented from registering the domain name - the focus has traditionally been on the conduct of the Registrant.

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