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Reitmans Canada Limited v. Pilfold Ventures Inc., Resolution Canada, CIRA Dispute No. 00032 - by Eric Macramalla

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Domain Name: additionelle.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Paul W. Donovan

The Complainant was a large clothing retailer. It was the registered owner of several trade-marks including ADDITION-ELLE and ADDITION-ELLE & Design, both registered before the date of the disputed domain name registration. It also owned the domain names additions-elle.com, additionelle.com and addition-elle.ca.

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 Complainant must establish three elements before the Panel will order a disputed domain name transferred. The disputed domain name must be confusingly similar to a mark in which the Complainant had, and continues to have, rights, the domain name must have been registered in bad faith and the Registrant must not have a legitimate interest in the domain name.

The Panel found the domain name to be confusingly similar to the Complainant's ADDITION-ELLE marks. The omission of the hyphen was of no significance as punctuation is generally ignored in the assessment of confusing similarity (Coca-Cola Ltd. v. Hennan (BCICAC, CIRA Dispute No. 00014)).

Next, the Panel held that Complainant had shown on a balance of probabilities that the domain name was registered in bad faith as per paragraph 3.7(b) of the CDRP. The additionelle.ca domain name resolved to a customized portal offering links to sites that competed with the Complainant. This registration prevented the Complainant from registering its mark as a domain name. The Panel also held that the Registrant had engaged in a pattern of bad faith registrations. The Registrant here was the same as in Sleep Country Canada Inc., supra, where the Panel found bad faith, albeit not due to a pattern of abusive registrations. Interestingly, the Panel also noted that the Registrant here had the same address as the Registrant in ROW Limited Partnership v. Pilford Ventures Inc. (BCICAC, CIRA Dispute No. 00024). In that decision, the Complainant failed to allege bad faith registration and was therefore unsuccessful. Despite the absence of a finding of bad faith in the latter proceeding, the Panel held that it could reasonably infer:

[O]n the basis of the present complaint and the surrounding circumstances that the Registrant has, on a balance of probabilities, registered those domain names to prevent persons who have Rights in the Marks from registering the Marks as domain name. It is the Panel's finding that these three registrations constitute a "pattern" for the purposes of subparagraph (b) of paragraph 3.7 of the [CDRP].

The Panel also found bad faith under paragraph 3.7(c) of the CDRP, concluding that the Registrant registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.

As there was no evidence suggesting that the Registrant had used the disputed domain name as a mark, the Panel found it had no legitimate interest in the additionelle.ca domain name.

The Panel ordered the domain name transferred to the Complainant.

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