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Air Products Canada Ltd. v. Index Quebec Inc., Resolution Canada, CIRA Dispute No. 00007 - by Eric Macramalla

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Domain Name: airproducts.ca
OutCome: Transfer Denied
Response Filed: Yes
Panellist: Jean G. Bigras, Denis M. Magnusson, and Daria Strachan

The Complainant had carried on business as Air Products Canada Ltd. since at least October, 1997, and was the owner of the trade-mark AIR PRODUCTS & Design. The Complainant served customers in technology, energy, healthcare and industrial markets worldwide with a portfolio providing atmospheric gases, process and specialty gases, performance materials and chemical intermediates. The Complainant's parent corporation acquired the domain name airproducts.com on July 6, 1995, and operated a website at this domain name.

The Registrant offered domain name-related services, including the sale of advertising space at theme-based Internet portals. The Registrant submitted a list of fourty-four other domain names which he owned, each containing generic or descriptive terms coupled with the word "products", such as foodproducts.ca.

Prior to receiving notice of the Complaint, the domain name resolved to the Registrant's default page located at adsindex.com. Following receipt of notice of the Complaint, the domain name was made to resolve to an active website featuring advertisements dealing with air conditioning and air purifying products. The Registrant offered to rent the domain name to the Complainant at a monthly fee of $1,400.00.

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 Registrant took the position that "AIR PRODUCTS" was clearly descriptive of the products offered in association with the Complainant's mark, and noted that the Complainant had disclaimed the right to the exclusive use of the words "AIR PRODUCTS".

The Panel held that the domain name was not confusingly similar to the Complainant's registered trade-mark, or to the Complainant's trade name Air Products Canada Ltd.:

[F]or the ordinary Internet user the words "AIR PRODUCTS", whether as part of the Complainant's marks or the Registrant's domain name, in the constrained context of Internet domain name use, are not adapted to and do not distinguish one business from other businesses, nor are they adapted to and do not distinguish the products of one business from the products of other businesses, but simply describe a type of business and a type of product which could originate from any one of many businesses.

Rather than dismiss the claim, the Panel considered alternative interpretations of "confusingly similar". For example, by focusing on the mere objective similarity of the mark vis-à-vis the domain name, the Panel held that the domain name was confusingly similar to the Complainant's mark.

On the issue of bad faith registration, the Panel was of the view that the Registrant had not registered the domain name with the Complainant specifically in mind and noted the Registrant's surprise in discovering that the Complainant was a business in Canada. Given the Complainant's failure to establish bad faith registration, the Complaint failed.

In addressing the issue of reverse domain name hijacking, (i.e., whether the Complaint was brought "unfairly and without colour of right"), the Panel noted that the Complainant had prior legal rights, namely trade-mark rights which were deemed relevant to the proceedings. This was sufficient to defeat a claim for reverse domain name hijacking.

Subsequent to the Decision, an Addendum was issued (http://www.cira.ca/en/dpr-decisions/00007A_AirProductsAddendum-en.pdf), wherein it was held that the domain name airproducts.ca was not confusingly similar to the Complainant's trade name or trade-mark, and as such the Complaint was dismissed upon this basis alone.

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