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Elysium Wealth Management Inc. v. Driscoll, Resolution Canada, CIRA Dispute No. 00005 - by Eric Macramalla

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Domain Name: ceofunds.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: David Allsebrook

The Complainant was the owner of the Canadian trade-mark registration CEO FUND. The Registrant was a competitor of the Complainant. 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.

In ordering the domain name transferred, the Panel held that the domain name ceofunds.ca and the trade-mark registration for CEOFUNDS were identical, and accordingly confusion was established.

The Panel held that a claim of legitimacy could be undermined in cases where the use of the domain name would infringe the rights of the Complainant:

[The Registrant] cannot have rights in the domain name as against the Complainant so long as the domain name is confusingly similar to registered trade-mark owned by the Complainant. The Complainant would normally have the right to have a court enjoin further use of the domain name under the Trade-marks Act... The Registrant cannot have rights in a trade-mark which it cannot lawfully use.

The Panel also held that the domain name was registered in bad faith, as it was registered primarily for the purpose of disrupting the business of the Complainant. The Registrant was the director of a competing mutual fund operator, and registered the domain name ceofunds.ca in connection with the promotion of mutual funds.

The Panel noted that establishing a case for trade-mark infringement may be sufficient to support a finding of bad faith:

In my view it is sufficient "purpose" to constitute bad faith under the [CIRA Domain Name Dispute Resolution Policy ("CDRP")] to knowingly use or permit the use of a domain name, when the result of the use is trade mark infringement within the meaning of section 19 of the Trade-Marks Act . It is not necessary to specifically intend to usurp the goodwill in the Complainant's Mark.

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