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Coca-Cola Ltd. v. Hennan, British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00014 - by Eric Macramalla

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Domain Name: cocacola.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Stefan Martin

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

The Complainant was the owner of trade-mark registrations for COCA-COLA.

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 key 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 domain name was inactive at the time of the Complaint. By way of correspondence dated December 4, 2000, the Complainant gave notice to the Registrant of the Complainant's rights and requested the transfer of the disputed domain name. In discussing the issue of confusion, the Panel confirmed the holding in Canada v. Bedford (BCICAC, CIRA Dispute No. 00011), namely that the Complainant must prove on a balance of probabilities that a person, as a matter of first impression, knowing the Complainant's mark only, and having only imperfect recollection of it, would likely mistake the domain name for the corresponding mark based upon appearance, sound or the ideas suggested by the mark.

Except for the omission of a hyphen, the disputed domain name was found to be identical to the Complainant's marks. The Panel confirmed that the absence of a punctuation mark is not relevant to the evaluation of similarity between a domain name and a trade-mark. Accordingly, the Panel held that the domain name was confusingly similar to the Complainant's marks.

The Panel held that the Registrant did not have a legitimate interest in the domain name, particularly given that the domain name was not used in connection with any wares, services or business.

With respect to bad faith registration, the Panel noted that the Registrant offered to sell the domain name to the Complainant for $10,000.00. Relying on Canadian Broadcasting Corp. v. Quon , the Panel confirmed that the purpose behind a domain name registration may be determined by common sense inferences from the Registrant's conduct and other surrounding circumstances. In this regard, the Panel held that the following factors supported a finding of bad faith registration: (i) the domain name was not associated with an active website, (ii) the fame of the Complainant's trade-marks, leading to the Registrant having actual knowledge or constructive knowledge of the Complainant's marks, and (iii) the Registrant's failure to agree to cancel the domain name after agreeing to do so.

This case confirmed that the purpose behind a domain name registration may be determined by common sense inferences and an examination of the surrounding circumstances.

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