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Canada v. Bedford, British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00011 - by Eric Macramalla

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Domain Name: governmentofcanada.ca, gouvernementducanada.ca, canadiancustoms.ca, ecgc.ca, publicworkscanada.ca, statcanada.ca, statscanada.ca, theweatheroffice.ca, transportcanada.ca, weatheroffice.ca
OutCome: Transfer Granted (except for canadiancustoms.ca)
Response Filed: Yes
Panellist: Bradley J. Friedman, Stephan Martin, and Patrick Flaherty

The Complainant had initiated proceedings pursuant to the Uniform Domain Name Dispute Resolution Policy against the Registrant with respect to similar domain names in the dot-com space. The Complainant had been successful in securing thirty-one of these domain names.

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 Complainant was the owner of a number of Official marks corresponding to the disputed domain names. The Registrant's use of the domain names varied. At times, the domain names resolved to domainbaron.com, which offered domain names for sale and displayed banner advertisements. As well, the domain names resolved to websites promoting atheism or criticizing U.S. foreign policy.

The Panel engaged in an important discussion concerning the issue of confusion. If a Complainant's mark was an unregistered trade-mark, the Complainant would then need to establish that the trade-mark was used in Canada by the Complainant prior to the domain name registration date. This also applies to a mark that matured to registration after the domain name registration date.

On the other hand, if the Complainant's trade-mark matured to registration before the domain name was registered, the Complainant is not required to establish distinctiveness or use; the mere registration of the trade-mark is sufficient to establish "Rights" in the "Mark" within the meaning of the CIRA Domain Name Dispute Resolution Policy ("CDRP").

The Panel further noted that the test for "confusingly similar" as per subparagraph 3.4 of CRDP is a test of resemblance based upon first impression and imperfect recollection, rather than a test of confusion as applied in cases of trade-mark infringement under the Canadian Trade-marks Act or passing off. Accordingly, for each domain name, the Complainant must prove on a balance of probabilities that a person, on a first impression, knowing the Complainant's corresponding mark and having an imperfect recollection of it, would likely mistake the domain name "without the .ca suffix for the Complainant's corresponding mark based upon appearance, sound or by the ideas suggested by the "Mark"."

The Panel also noted that distinctiveness is an appropriate consideration in determining whether a Complainant has rights in a mark within the meaning of the CDRP.

In all of the cases except for canadiancustoms.ca, the domain names were found to be confusingly similar with the Complainant's marks.

As noted in the CDRP, a Registrant has a legitimate interest if it can show inter alia that "the domain name was a mark, the Registrant used the mark in good faith, and the Registrant had rights in the mark". The Panel noted that the term "good faith" is not defined by the CDRP and notes that "good faith" is not necessarily the opposite of bad faith as defined by the CDRP.

The evidence demonstrated that the Registrant had used the domain names for websites, the content of which had no apparent nexus or relationship with the domain names themselves. In particular, there was no reasonable connection between the domain names and the asserted objects of the Registrant's criticism. After considering all of the circumstances, including the prior disputes between the parties, the Panel found that the non-commercial content of the Registrant's websites, including the criticism of religion and the promotion of atheism, was "a contrived attempt to avoid the application of the [CDRP]". The Panel held that on a balance of probabilities, the Registrant had not established a legitimate interest in the domain names.

The Complainant alleged that the Registrant registered the domain names primarily with the intent of selling them for profit. By the Registrant's own admission, the domain names were offered for sale for a price of $300.00. Accordingly, the Panel held that the domain names were registered primarily with the intent of selling them for a profit.

The Panel also held that the Registrant had engaged in a pattern of abusive registrations, relying on the ten dot-ca domain name registrations involved in this case. Given that ten domain names was sufficient to constitute a pattern, the Panel did not deem it necessary nor appropriate to make any determination as to whether dot-com registrations could be relied upon to establish a pattern.

Accordingly, all of the domain names, except for canadiancustoms.ca, were ordered transferred to the Registrant.

The confusion discussion in this case is an important one, as it clarifies the relevant factors when considering this prong of the test. However, according to the analysis, marks that are the subject of proposed use applications would not be protected even upon crystallization of the relevant rights.

The condition that a complainant be the owner of prior rights should not be a prerequisite to success for a trade-mark owner.

It is also noteworthy that a strict reading of the CDRP would suggest that dot-com registrations may not be a relevant consideration in establishing a pattern of bad faith registrations. Given the 'borderless' nature of the Internet, and the ease with which domain names may be registered in numerous spaces, including the generic spaces, these domain names should be considered.

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