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Acrobat Construction/Enterprise Management Inc. v. 1550507 Ontario Inc., Resolution Canada, CIRA Dispute No. 00013 - by Eric Macramalla

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Domain Name: acrobat.ca
OutCome: Transfer Denied
Response Filed: Yes
Panellist: Jacques A. Leger, Q.C., Ross Carson, and Daria Strachan

The Complainant, Acrobat Construction, was a construction management company in Toronto, Ontario. The Complainant was the owner of acrobat.ca. The registration, however, had lapsed for non-payment of the renewal fees.

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.

With regard to confusion, the Complainant did not submit sufficient evidence to establish that the trade name "Acrobat" had been used in Canada for the purpose of distinguishing its wares, services, or business. At the very best, the Panel held that the Complainant had presented evidence showing use of "Acrobat Construction/Entreprise Management Inc." In this regard, the Panel noted that when using a composite mark, one does not use only a part of it. Accordingly, given that the Complainant did not establish rights in "acrobat", it failed to establish that the domain name was confusingly similar to a mark in which it had rights.

Despite its finding that the Complainant failed the first branch of the test, the Panel did go on to discuss bad faith and legitimate interest. In this regard, the Panel found that there was no evidence of bad faith on the part of the Registrant, as the Registrant was not a competitor of the Complainant. In this regard, the Panel accepted the broad interpretation of "competitor" as discussed in previous decisions, noting that a competitor "is a person or entity in competition with a Complainant for the provision of goods or services, and not merely any person or entity with any interest appositional to that of a mark holder". Finally, the Panel was of the view that the Registrant did have a legitimate interest in the domain name.

Accordingly, the Complaint was dismissed.

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