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DRN Commerce Inc. v. REPO DEPO (TM), Park and Sell of Canada Limited, Resolution Canada, CIRA Dispute No. 00030 - by Eric Macramalla

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Domain Name: drn.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: James E. Redmond, Q.C., R. John Rogers, and Jacques A. Léger, Q.C.

The Complainant and the Respondent were competitors, both operating collection processing and debt recovery services. The Complainant operated under the trade name DRN Commerce Inc., using the acronym DRN to represent "Debt Recovery Network". It did not own any associated trade-mark registrations, but claimed common law trade-mark rights in the DRN mark. The Registrant, REPO DEPO (TM), Park and Sell of Canada Limited, registered the domain name from which it operated a website entitled "Disaster Recovery Network".

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a Panel will order a disputed domain name transferred to a Complainant provided it can establish that the disputed domain name is confusingly similar to a mark in which it had rights, that the Registrant has no legitimate interest in the domain name and that the name was registered in bad faith.

To establish confusing similarity, the Complainant must demonstrate that the disputed domain name is confusingly similar with a mark in which it had rights, prior to the date of domain name registration. The definition of a "Mark" under paragraph 3.2(a) of the CDRP includes "a trade name that has been used in Canada ... for the purpose of distinguishing the wares, services or business of that person." Thus, the Complainant's use of its trade name, DRN Commerce Inc., was sufficient to establish use of the mark under the CDRP. As this mark was similar to the disputed domain name, apart from the top level domain portion, the Panel found that the Complainant had met its burden of proving confusing similarity.

Although the Registrant filed a Response to the Complaint, it failed to provide any evidence of rights in the DRN mark or legitimate use of the disputed domain name. This led the Panel to draw a negative inference and hold that the Registrant had no legitimate interest in the domain name.

Having established confusing similarity and absence of legitimate interest, the Panel went on to consider whether the domain name was registered in bad faith. It began by noting that the CDRP differs from the Uniform Domain Name Dispute Resolution Policy ("UDRP") with respect to the definition of bad faith registration. The CDRP approach is much more restrictive, and provides an exhaustive list of types of bad faith registration. Recognizing that bad faith registration may be difficult to prove, the Panel noted that it would be willing to consider the surrounding circumstances and draw reasonable inferences. This strategy was previously adopted in Canadian Broadcasting Corp. v. Quon (BCICAC, CIRA Dispute No. 00006):

[T]o require the Complainant to provide direct evidence of the Registrant's bad faith would allow a Registrant with a certain amount of skill to easily evade the application of the [CDRP], hence rendering its application moot or irrelevant ... therefore, once the Complainant has presented sufficient evidence to establish one of the submissions in 3.7, it is incumbent upon the Respondent to either respond or explain why its conduct should not be considered bad faith."

The Complainant argued that the disputed domain name was registered primarily to disrupt its business. It alleged that the Registrant was aware of its trade names "Debt Recovery Network" and "DRN", prior to registering the disputed domain name. The Complainant also argued that since the disputed domain name was comprised exclusively of its mark, bad faith should be inferred. In light of the Registrant's admission that it was a competitor of the Complainant, the Registrant's prior knowledge of the Complainant's business name and the fact that the disputed domain name was comprised solely of the Complainant's mark, the Panel concluded that the domain name was registered in bad faith, for the primary purpose of disrupting the business of the Complainant.

As a result of the foregoing, the Panel ordered the disputed domain name transferred to the Complainant.

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