| RGIS Inventory Specialists v. AccuTrak Inventory, British Columbia International Commercial Arbitration Centre, Case No. 00053 - by Eric Macramalla
Domain Name: rgis.ca
OutCome: Transfer Granted
Response Filed: No
Kenneth A. Gamble (Chair),
Jacques A. Leger,
Gowlings represented the Complainant in this case.
The Complainant was the owner of the registered RGIS trade-mark. The Complainant and the Registrant were competitors, as both offered inventory-related services.
The Registrant registered the domain name rgis.ca on May 29, 2001 and pointed it to a website promoting the inventory services of Totals Inventory Professionals of Canada, a related company of the Registrant that operated in the South Eastern United States under the name AccuTrak.
Under the CIRA Domain Name Dispute Resolution Policy ("Policy"), a successful Complainant must establish that the disputed domain name is confusingly similar with a mark in which it had rights, that the name was registered in bad faith and that the Registrant does not have a legitimate interest in the domain name.
Although the Registrant did not file a Response to the Complaint, the Complainant did not elect to convert from a panel of three to a single arbitrator, as it was entitled under CIRA Domain Name Dispute Resolution Rules ("Rules"), Rule 6.5.
On the issue of confusion, the Panel held that the Complainant had rights in the RGIS trade-mark by virtue of being the owner of the corresponding Canadian trade-mark registration. The Panel also held that the Complainant had rights in the RGIS trade-mark that preceded that May 29, 2001 registration of rgis.ca, given that the RGIS application matured to registration in 1988.
Accordingly, the Panel concluded that the rgis.ca domain name was confusingly similar with the RGIS trade-mark as per the Policy.
The Panel also held that the domain name had been registered in bad faith. In particular, the Panel found that the domain name was registered primarily for the purpose of disrupting a competitor given that the parties were in fact direct competitors. The Panel also noted that bad faith will be found where the use of a domain name causes a likelihood of confusion with respect to source or sponsorship.
The Panel held that the surrounding circumstances supported a finding of bad faith, including the Registrant's wholesale incorporation of the RGIS trade-mark in the domain name and the false contact information provided in the Registrant information for rgis.ca.
Finally, the Panel held that the Registrant did not have any legitimate interest in the domain name as per paragraph 3.6 of the Policy
The Panel ordered the domain name rgis.ca transferred to the Complainant as per paragraph 4.3 of the Policy.