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Glaxo Group Limited v. Defining Presence Marketing Group Inc. (Manitoba) , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00020 - by Eric Macramalla

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Domain Name: zyban.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Elizabeth Cuddihy, Q.C.

(Gowlings acted on behalf of the Complainant in these proceedings)

In the first case of its kind in the dot-ca space, a Panel has ordered the transfer of an online pharmacy's domain name registration.

The Complainant was the owner of a Canadian trade-mark registration for ZYBAN in association with its highly successful ZYBAN product.

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 Registrant had registered the domain name zyban.ca, and was pointing it to a website advertising the online sale of pharmaceutical products, which included the Complainant's ZYBAN product, as well as competitor products. The Panel made findings of bad faith registration on all three prongs of the CDRP. In concluding that the Registrant had registered the impugned domain name with the purpose of disrupting the Complainant's business, who was a competitor of the Registrant, the Panel held that (i) the Registrant's website at zyban.ca offered educational and informational services in connection with the ZYBAN product, which rivalled the Complainant's offering provided at the zyban.com website, (ii) the Registrant was selling pharmaceutical products of companies that were directly in competition with the Complainant, and (iii) by using a domain name which was identical to the Complainant's mark, the Registrant was likely to confuse Internet users who would assume that zyban.ca would connect them to the Complainant's website, or that the Registrant's website was endorsed by, or affiliated with, the Complainant.

Relying on the Registrant's offer to sell the domain name for CDN$2,400.00, which followed an understanding whereby the Registrant would assign the subject domain name in exchange for its out-of-pocket expenses (i.e., $24.00), the Panel concluded that the Registrant had acquired the domain name with the bad faith intent of selling it for a profit.

In its third finding of bad faith, the Panel held that the Registrant had engaged in a pattern of registering domain names to which it was not entitled, noting that the Registrant's extensive dot-ca domain name portfolio included at least twelve domain names that contained, or were comprised of, third party trade-marks.

In concluding that the Registrant did not have a legitimate interest in the domain name, the Panel stated that the Registrant was not entitled to register the ZYBAN trade-mark as a domain name without the Complainant's consent even if it was selling the ZYBAN product, given that such use went beyond what was required to describe the goods and services offered by the Registrant.

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