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Pacific Industries Inc. v. Dhalla, British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00009 - by Eric Macramalla

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Domain Name: saveonfoods.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: W.A. Derry Millar, Elizabeth Cuddihy, Q.C. and R. John Rogers

The Complainant operated Save-On-Food stores since 1982. The Complainant operated thirty-nine Save-On-Food stores across British Columbia and fourteen in Alberta. It was the third largest retailer of groceries in British Columbia and the fifth largest in Alberta.

The Complainant relied on its rights arising from the adoption of its trade name on June 1, 1982, as well as its registered trade-marks for SAVE-ON-FOODS. The Complainant was the owner of the domain name saveonfoods.com, which received an average of 700,000 unique visitors per year. The domain name saveonfoods.com resolved to a website advertising the Complainant's grocery-related products and services.

The Registrant's domain name saveonfoods.ca was registered on November 8, 2000. The Complainant submitted that the web page for saveonfoods.ca was comprised of a single page displaying the headline "saveonfoods portal", followed by the statement "under construction: future site for savings on food, groceries, restaurants, organic food delivery, bulk purchase". The web page also provided the Registrant's contact information.

The Complainant issued correspondence to the Registrant on two occasions. The Registrant did not respond to either correspondence, and alleged that it did not receive the first letter. The Registrant stated that the business plan for the website called for a portal providing savings on foods and that the site would offer coupons to customers and future advertisements to generate revenue similar to saveonfoods.net, a website which is not affiliated with the Complainant. The Registrant was also the owner of the domain name hockeynightincanada.ca.

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 marks.

In finding that the Registrant had engaged in a pattern of bad faith registrations, the Panel noted that given that the Registrant resided in British Columbia, it was inconceivable that the Registrant was not aware of the Complainant. Further, the registration of hockeynightincanada.ca, which corresponded to a mark owned by the Canadian Broadcasting Corporation, was evidence that the Registrant had engaged in a pattern of bad faith registrations. Finally, the inactivity of the website associated with the disputed domain name, which was nearing two and a half years, further reinforced a finding of bad faith. The Registrant's submission that it did not intend to use the domain name for an additional three to five years did not assist its case.

The Complainant also relied upon subparagraph 3.7(c) of the CDRP, namely that the Registrant was a competitor of the Complainant and as such the domain name was registered in bad faith. The Panel noted that the Registrant's future site would provide savings on foods and groceries, and as such there was overlap with the Complainant's business. Accordingly, the Panel concluded that the two parties were competitors and the fact that the Registrant did not intend to use the domain name for three to five years did not deter a finding of bad faith. Further, the Panel held that the domain name was likely to "disrupt" the business of the Complainant, as it was likely to "interrupt the flow of customers to the Complainant". As well, the Panel noted that the headline on the Registrant's website, "saveonfoods portal" would likely indicate to users that the subject website was somehow connected or affiliated with the Complainant. As such, the Panel concluded that there "is no legitimate purpose that we can see for the use of this name in connection with this website".

The Panel held that the Registrant did not have a legitimate interest in the domain name. In particular, the Panel noted that the Registrant must use a domain name "in good faith in association with any wares, services or business". In this regard, the Panel stated that "this phrase should be interpreted as meaning a present offering of wares, services or business and not a future offering of these some three to five years in the future. In other words, this provision would not apply to permit a Registrant to "park" a domain name to be used for a business to be carried on at some time in the future."

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

As with the radiocanada.ca case, Canadian Broadcasting Corp. v. Quon (BCICAC, CIRA Dispute No. 00006), the Panel held that two domain name registrations constitutes evidence of a pattern of bad faith registrations. The prospect of infringing use undermined the Registrant's claim of legitimacy.

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