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Sotheby's (Canada) Inc. v. PII Technologies Inc. , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00026 - by Eric Macramalla

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Domain Name: sothebys.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: James.E. Redmond, Q.C., Peter Cooke, and David M. Robinson

(Gowlings acted for the Complainant in these proceedings)

The disputed domain name in these proceedings was registered using an intermediary organization, Privacy.ca, which offers Registrants the opportunity to conceal their contact information. The Registrant listed in CIRA's WHOIS database, PII Technologies Inc., was not the owner of any Canadian trade-mark registrations and was not incorporated under any laws of Canada. After considerable effort, the Complainant was able to contact Keith Lihou, who represented that he was the owner of the disputed domain name and affirmed that PII Technologies was not a corporate entity, but merely a name under which he carried on business. This business involved technology, real estate consulting and lease financing.

The Complainant, its parent company and its affiliates, were the registered owners of the Canadian trade-mark SOTHEBY'S and associated domain name sothebys.com used in association with auctioneer and real estate services. Upon becoming aware of the domain name registration and locating the Registrant, the Complainant was offered the opportunity to purchase the domain name for CDN$6000 ($5000 for website development costs and $1000 for legal expenses).

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), Complainants must establish three elements. Firstly, the disputed domain name must be confusingly similar to a mark in which the Complainant had, and continues to have, rights. Secondly, the domain name must have been registered in bad faith. Finally, the Registrant must have no legitimate interest in the domain name.

The Panel held that the domain name sothebys.ca was "virtually identical" to the SOTHEBY'S trade-mark, in which the Complainant had rights, prior to the domain name registration. As the absence of punctuation marks and the dot-ca suffix are not relevant to the evaluation of similarity, the Panel found the domain name was confusingly similar to the Complainant's mark.

With respect to the issue of bad faith registration, the Panel first considered whether the domain name was registered primarily for the purpose of selling it to the Complainant for a profit. There was considerable evidence leading to this conclusion, including the exorbitant level of costs requested and the use of Privacy.ca to conceal the Registrant's contact information. However, the Panel refused to rule that the domain name was registered in bad faith on these grounds. Instead, it found that bad faith registration was established under paragraph 3.7(c) of the CDRP, namely, the domain name was registered primarily to disrupt the business of the Complainant, a competitor. As the disputed domain name had no apparent connection to the Registrant, yet was identical to the Complainant's "widely used and famous trade-mark" and was used in association with services similar to those offered by the Complainant, the Panel held that the domain name was registered in bad faith.

The Panel also concluded that the Registrant had no legitimate interest in the contested domain name, as it had no prior relationship with the Complainant, no relevant Canadian trade-mark rights and failed to demonstrate an interest under paragraph 3.6 of the CDRP.

In light of the foregoing, the Panel ordered the disputed domain name transferred to the Complainant. Given the outcome, the Panel declined to award the Registrant his requested legal costs.

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