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Sleep Country Canada Inc. v. Pilfold Ventures Inc., Resolution Canada, CIRA Dispute No. 00027 - by Eric Macramalla

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Domain Name: sleepcountrycanada.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Denis N. Magnusson

The Complainant was the owner of the trade-mark SLEEP COUNTRY CANADA and the associated trade name Sleep Country Canada Inc. It asserted that it was the largest mattress retailer in Canada with annual sales of more than CDN$165 million.

The disputed domain name resolved to a customized portal. It offered links to bed and mattress retailers, many of which were competitors of the Complainant. While the decision does not refer to the operator of the portal, it was described in such a manner as to remind the reader of the DomainSponsor.com portals.

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 requirement that a domain name be "confusingly similar" to a Complainant's mark has been subject to two interpretations. The first approach, under paragraph 3.4 of the CDRP, focuses on similarity in appearance, sound or the ideas suggested by the domain name. If the mark and domain name are identical, as was found by the Panel in these proceedings, confusing similarity is established. The second, "classic approach" to the confusion analysis, is similar to the test for confusion in trade-mark law. If the Complainant's mark has a high degree of inherent distinctiveness, and the disputed domain name is similar to that of the Complainant's mark, it is held to be confusingly similar. Using this approach, the Panel held that the Complainant's mark had acquired considerable distinctiveness due to its continuous use in Canada for more than ten years, considerable advertising expenditures and significant annual sales. As the disputed domain name was similar to this distinctive mark, the Panel found that the domain name was confusingly similar.

The Panel next assessed bad faith registration. The evidence established that the domain name was registered primarily for the purpose of disrupting the business of the Complainant who is a competitor of the Registrant. Thus, the domain name was registered in bad faith. This conclusion was premised on the Panel's finding that the Registrant was a competitor of the Complainant for the purposes of the CDRP. As the disputed domain name resolved to a web page offering links to the Complainant's competitors, the Registrant's use of the confusingly similar domain name necessarily disrupted the Complainant's business. The Panel noted that it should have been obvious to the Registrant that its use of the domain name would adversely affect the Complainant's business.

The Panel concluded by briefly considering whether the Registrant had a legitimate interest in the domain name. None was found and thus the Panel ordered the disputed domain name transferred to the Complainant.

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