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Independent Order of Foresters v. Noredu Enterprises Canada Inc., Resolution Canada, CIRA Dispute No. 00017 - by Eric Macramalla

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Domain Name: forestercollege.ca
OutCome: Transfer Denied
Response Filed: No
Panellist: Denis N. Magnusson

The Complainant operated an insurance business for over 125 years, with a head office located in the Don Mills area of Toronto in a twenty-four story building bearing an illuminated sign at the top, "Foresters". The Complainant was the owner of trade-mark rights in FORESTER GROWTH PLUS, IOF FORESTERS and CANADIAN FORESTERS.

The Respondent was a tenant in the Complainant's building and adopted the business name Forester College of Technology and the impugned domain name, forestercollege.ca. The Complainant provided evidence of actual confusion concerning the use of the FORESTER mark.

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.

In finding that the Complainant had failed to establish that the domain name was registered in bad faith, the Panel held that the Respondent had not registered the domain name "primarily" for the purpose of disrupting the Complainant's business, but rather for the purpose of advancing its own business interests. The fact that the Complainant's business was disrupted was an "effect" of the Respondent's reason for registering the impugned domain name, but that such disruption was not the Respondent's primary goal.

The Panel did not need to consider the issue of legitimate interest, as the Complainant must establish all three prongs of the test to be successful. However, the Panel noted that it would have found that the Respondent had no legitimate interest in the domain name.

Accordingly, the Complaint failed.

The Complaint was dismissed despite the absence of a legitimate interest on the part of the Respondent. The finding that the domain name was not confusingly similar to the Complainant's marks is also a contentious point, given that the domain name incorporates the formative and distinctive element of the Complainant's marks, namely, FORESTER. As has been held in countless Uniform Domain Name Dispute Resolution Policy decisions, the addition of descriptive terms in a domain name does not obviate a finding of confusion. It is submitted that the interpretation of the bad faith criteria, registering a domain name primarily to disrupt a competitor, was far too narrow, as the position could be taken that many registrations that could qualify as disruptive were registered to also further a Registrant's business interests. This "effects" analysis is simply wrong and impractical.

In addition, denying a Complaint where the registration is so clearly abusive in nature undermines the efficacy of the CDRP. While one of the reasons for the implementation of the CDRP was to avoid flooding the Courts with 'minor' administrative matters, trade-mark owners have reason to doubt the efficacity of the CDRP and whether it will yield commercially relevant decisions.

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