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The Men's Warehouse Inc. v. Traversy, Resolution Canada, CIRA Dispute No. 00023 - by Eric Macramalla

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Domain Name: menswarehouse.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: David Allsebrook

The Complainant was a large U.S. clothing retailer who actively promoted its products to the Canadian market and purported to have a large Canadian customer base. As it did not meet the Canadian Presence Requirements for Registrants, the Complainant was granted standing to bring the arbitration proceedings based on its Canadian trade-mark registration for THE MEN'S WAREHOUSE and MENSWAREHOUSE.COM.

The disputed domain name resolved to a website providing descriptions of menswear along with several pictures of clothing. It was not possible to order directly from the website, but the clothing descriptions were hyperlinked to the websites of third party clothing retailers. Internet users who clicked on the links were first directed through a Commission Junction website, an intermediary which measured referral traffic from one website to another.

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"), 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.

Without much difficulty, the Panel found the disputed domain name to be confusingly similar to the Complainant's marks. There was a strong similarity in meaning, appearance and pronunciation. Additionally, the goods sold by the Registrant were of the same kind as those of the Complainant.

The Panel also made a finding of bad faith registration. In reaching this conclusion it considered the Registrant's offer to sell the domain name for CDN$12,000, the alleged value of one year's revenue. In the view of the Panel, the only way the domain name could generate such a high return from referral fees was if the name was confusingly similar to the Complainant's mark.

Finally, the Panel held that the Registrant had no legitimate interest in the disputed domain name, in part because its Internet business had no connection with any warehouse despite implying otherwise.

In light of the foregoing, the Panel ordered the domain name transferred to the Complainant.

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