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Franchizit Corporation v. 984308 Ontario Inc. , Resolution Canada, CIRA Dispute No. 00021 - by Eric Macramalla

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Domain Name: expressfitforwomen.ca, expressfit4women.ca, expressfit.ca
OutCome: Transfer Granted (except for expressfit.ca)
Response Filed: No
Panellist: David Lametti
Response Filed:

Fitness Link Inc. was an Ontario business that operated fitness facilities for women known as EXPRESSFIT FOR WOMEN. Robert Fulton was a former officer and minority shareholder of Fitness Link Inc., while his brother, John Fulton, was the current minority shareholder of Fitness Link Inc. At some point prior to November 21, 2003, a change in the management direction of Fitness Link Inc. occurred, relieving Robert and John Fulton of the custody and management of the firm.

Fitness Link Inc. subsequently sold the trade-mark EXPRESSFIT FOR WOMEN to the Complainant, Franchizit Corporation. John Fulton opposed the sale of the trade-mark to the Complainant.

Since the acquisition of the trademark, the Complainant had been using the mark in connection with facilities designed for women. Robert Fulton was President of the Registrant, 984308 Ontario Inc., an Ontario business corporation.

In early 2004, the impugned domain names were registered by 984308 Ontario Inc. and identified John Fulton as the contact on the registration.

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.

The Panel held that expressfitforwomen.ca and expressfit4women.ca were confusingly similar to the Complainant's EXPRESSFIT FOR WOMEN trade-mark. However, the Panel found that expressfit.ca was not confusingly similar to the Complainant's trade-marks. As a result, the Panel went on to consider if the Complainant had established bad faith registration and an absence of legitimate interest on the part of the Respondent in connection with two of the three domain names.

In finding bad faith registration, the Panel held that the Respondent registered the domain names expressfitforwomen.ca and expressfit4women.ca primarily for the purpose of disrupting the Complainant: "the purpose was uniquely and directly to hurt the Complainant's goodwill without advancing what one might consider some other legitimate business interest".

The Panel also found that the Respondent did not have a legitimate interest in the domain names expressfitforwomen.ca and expressfit4women.ca. The fact that the Respondent was a former officer of the predecessor-in-title undermined a claim of legitimacy:

the Registrant...not only knew of the sale of the trademark to the Complainant, but opposed it. This knowledge and opposition, coupled with the evidence of the legitimate transfer of the mark, is sufficient for the Complainant to show some evidence of no legitimate interest in the domain name on the part of the Registrant.

Accordingly, the Panel ordered expressfitforwomen.ca and expressfit4women.ca transferred to the Complainant while denying the claim for expressfit.ca.

The Panel's decision appears well reasoned, although arguably it was too strict in not finding confusion with respect to expressfit.ca, which is a coined term and arguably represents the formative and distinctive element of the Complainant's mark.

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