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LLC v. 1491070 Ontario Inc., Resolution Canada, CIRA Dispute No. 00008 - by Eric Macramalla

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Domain Name: transunion.ca
OutCome: Transfer Denied
Response Filed: No
Panellist: Hughes G. Richard

The Complainant was a diverse corporation with a global presence that served a broad range of industries including financial, banking and brokerage services, insurance providers, mortgage and real estate services, direct marketers and retailers, collection agencies, communication and energy companies and healthcare facilities.

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 two registered trade-marks in Canada for TRANS UNION, both marks having matured to registration no later than 1975. The TRANS UNION trade-marks were licensed for use in Canada to the Complainant's subsidiary, Trans Union of Canada, Inc. The Complainant was also the owner of transunion.com.

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.

The disputed domain name was registered on May 17, 2002. No information was provided regarding the Registrant's activities other than the fact that the Registrant operated a commercial website offering subscription-based pornographic entertainment services at dvdera.com.

At the time the decision was rendered, the Panel noted that the website was composed of a blank white page with the following notice posted: "A trans-sexual union for Canadians coming soon. This website will feature an online dating site and promote the union of trans-sexual people within Canada".

In discussing confusion, the Panel noted that the test is not one of confusion as normally found in Canadian trade-mark jurisprudence, but one of resemblance. As such, given that the domain name was identical to the Complainant's trade-marks, the Panel found that the domain name was confusingly similar to the TRANS UNION marks.

With respect to bad faith registration, the Complainant took the position that the Registrant was disrupting the Complainant's business and that the Registrant was a " competitor" of the Complainant. In this regard, the Complainant relied upon the Uniform Domain Name Dispute Resolution Policy ("UDRP") cases, wherein a competitor was defined as someone who simply acts in opposition to another, including competing for the attention of Internet users. As such, there is no requirement that the Registrant be a commercial business competitor or that the parties sell competing products. In support of its assertion that the Registrant was a competitor, the Complainant noted that the Registrant was attempting to entice its customers and potential consumers to purchase the Registrant's pornographic wares and/or services.

The Panel, however, opted for a narrower interpretation, namely, that a "competitor" is one who offers goods and services that can compete with or rival the goods or services offered from the trade-mark owner. The Panel concluded that "it is difficult to conceive that the "competitor" in paragraphs 3.7(a) and 4(b)(i) of the CIRA Domain Name Dispute Resolution Policy ("CDRP") could be simply "one who acts in opposition to another" without any requirement that the transferee be a commercial business competitor of the Complainant or someone that sells competing products".

The Panel also noted that a narrower interpretation of the CDRP was warranted given that it was adopted subsequent to the UDRP, and had intentionally adopted stricter language. The Panel concluded by stating that there was "no room under the [CDRP] for a broad interpretation".

In light of the foregoing, the Panel found that the Complainant did not satisfy the burden imposed upon it to prove that the domain name was registered in bad faith and accordingly the domain name was not ordered transferred.

The Panel's interpretation of "competitor" was quite narrow. This case is important because it demonstrates that even in the absence of a Response, a case will be evaluated on its merits. The Panel does not indicate that the Complainant relied on subparagraph 3.7(a), namely, that the domain name was registered primarily to sell for profit to the Complainant. One must query whether relying on subparagraph 3.7(a) would have resulted in a more favourable response, particularly in view of the decision in Canadian Broadcasting Corp. v. Quon (BCICAC, CIRA Dispute No. 00006, radiocanada.ca), where the surrounding circumstances were considered germane.

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