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Biogen, Inc. v. Xcalibur Communication, Resolution Canada, CIRA Dispute No. 00003 - by Eric Macramalla

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Domain Name: biogen.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Roger P. Kerans

The disputed domain name pointed to a website offering domain names for sale. 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.

When first contacted by the Complainant, the Registrant did not provide any immediate answer or reply. Further inquiry by the Complainant determined that the fax and telephone numbers listed in the Registrant information were not those of the Registrant, and that the postal address was a "Mailboxes" address. No record of a telephone number in the name of the Registrant could be found. The Registrant did reply to an email from the Complainant indicating that it would look into the Complainant's claim, but never did.

In ordering the domain name transferred, the Panel held that biogen.ca was confusingly similar with the Complainant's BIOGEN registered mark. In addressing whether the Registrant had a legitimate interest in the domain name, the Panel concluded that the Registrant's sole purpose for registering the domain name was to offer it for sale, and that it did not appear that the Registrant was carrying on business in connection with the domain name. In view of the foregoing, the Panel held that the Registrant did not have a legitimate interest in the domain name.

As the Registrant did not offer any substantive response to the Complainant when initially contacted, there was little evidence to establish bad faith registration. However, the Panel held that given (i) the total lack of evidence of any legitimate interest in the domain name on the part of the Registrant, (ii) the fact that the domain name contained a coined (and inherently distinctive) word, and (iii) the Registrant's failure to reply to the Complainant, the "only reasonable inference" was that the Respondent was aware of the existence of the Complainant's use before registering the domain name in question, and was at the time of the registration guilty of at least one of the three criteria of bad faith registration, if not all three. The Panel also held that the Registrant's failure to respond to the Complainant after being told that the Complainant had rights in the domain name further supported the position that the domain name was registered in bad faith.

This decision highlights the importance of examining the surrounding circumstances when considering whether bad faith registration exists. In this case, factors such as the Registrant's constructive or actual knowledge of the Complainant's rights, the failure to provide a substantive response to the Complainant's inquiries, the inherent distinctiveness of the Complainant's mark, and the provision of false contact information supported a finding of bad faith registration.

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