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Browne & Co. Ltd. v. Bluebird Industries, Resolution Canada, CIRA Dispute No. 00002 - by Eric Macramalla

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Domain Name: browneco.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Denis N. Magnusson

The Complainant and Registrant were competitors. The Complainant operated a website at browneco.com, and submitted evidence indicating that the Registrant had used browneco.ca to redirect traffic to its own website.

The Complainant asserted rights in the trade name Browne & Co. Ltd., which had been registered as an Ontario business name. The Complainant also relied upon its unregistered trade-mark BROWNE, which according to the Complainant had been in use since at least as early as 1991, a date which predated the impugned domain name registration.

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.

The Panel found that the Complainant had rights in the trade name Browne & Co. Ltd. prior to the registration date of the domain name browneco.ca, and continued to have such rights. Further, the Panel held that the disputed domain name was confusingly similar to the Complainant's trade name, given that it greatly resembled the trade name in appearance, sound, and in the ideas suggested by the trade name.

The Panel found that the Registrant was a competitor of the Complainant and that the domain name was registered primarily with the intent of disrupting the Complainant. As such, the Panel held that the domain name was registered in bad faith.

In finding that the Registrant did not have a legitimate interest in the domain name, the Panel concluded that in light of the Complainant's reputation, the use of the domain name by the Registrant would likely cause confusion. The Panel noted that "in ordinary passing off jurisprudence, the Complainant could legally restrain the Registrant's use of the domain name as a trade name", and as such, the Registrant could not have rights in the mark or in the domain name browneco.ca.

In light of the foregoing, the Panel ordered the domain name transferred to the Complainant.

Three important points emerge from this decision. Firstly, unlike the Uniform Domain Name Dispute Resolution Policy ("UDRP"), which does not expressly provide protection for trade names, the CDRP provides such protection. In this regard, subparagraph 3.2(a) of the CDRP defines a "Mark" as, inter alia , a trade name. Secondly, the proposition that a Registrant cannot use infringement as a way to legitimize its registration is also noteworthy. Thirdly, this case adopts a narrow interpretation of what constitutes a "competitor". In particular, a "competitor" is interpreted as one who offers goods and services that can compete with or rival the goods or services offered by the trade-mark owner. The alternative broader definition of a competitor includes anyone who acts in opposition to another without any requirement that the Registrant be a commercial business competitor of the Complainant or someone that sells competing products. The discussion of what constitutes a "competitor" has been the subject of extensive discussion under the UDRP and is likely to attract considerable attention under the CDRP, particularly given that the indicia of bad faith registration under the CDRP are exhaustive.

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