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Alberta v. Advantico Internet Solutions Inc., British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00012 - by Eric Macramalla

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Domain Name: albertagovernment.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Edward C. Chiasson

The Complainant has used the ALBERTA GOVERNMENT mark to distinguish itself from all other Canadian provincial governments. It has developed a well-known reputation and acquired substantial goodwill in this mark. In particular, it had used the mark ALBERTA GOVERNMENT extensively in association with its services since September 1, 1905, when the Complainant was created by a Federal Act of Parliament. The Complainant was the owner of Official marks containing the elements "ALBERTA" or "GOVERNMENT".

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 the domain name was confusingly similar to the Complainant's mark.

The domain name was registered on November 9, 2000. The Registrant used the domain name in connection with a pornographic website. In the view of the Panel, the Registrant's sole use of the mark was to direct Internet users to its pornographic website. The website offered services for a fee and also provided links to other sites which also charged fees.

The Panel held that while the operation of a pornographic website did not in and of itself lead to the conclusion that the Registrant did not have a legitimate interest in the domain name, the lack of use of the name in issue and its relationship to the mark of another were factors which supported such a finding.

The Panel held that a finding that the Registrant had no legitimate interest in the domain name that was confusingly similar to a mark of the Complainant did not automatically lead to a conclusion of bad faith. However, the facts that supports the finding may be relevant to the issue of bad faith registration.

The Panel held that given the notoriety of the Complainant's mark, and the Registrant's likely knowledge of same, the use of the domain name to attract users to a pornographic website under the circumstances constituted bad faith registration. Although the operation of such a site is not per se bad faith, according to the Panel, the context of the use in this case (the Complainant's notoriety, confusion, non-use, etc.) warranted a finding of bad faith. The impact of the registration of ontariogovernment.ca by the Registrant was not discussed.

Accordingly, the domain name was ordered transferred to the Complainant.

Once again, the Panel turned its attention to the context surrounding the domain name registration, which seems to be critical in a process where discoveries and cross examinations are unavailable.

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