Comfort-inn.ca Complaint Allowed

The Canadian Internet Registration Authority (“CIRA”) allowed a complaint over the disputed domain name comfort-inn.ca. In making its decision, CIRA’s three-member panel accepted that the complainant, a global lodging company, is the owner of the registered trade marks COMFORT INN, since 1983, and COMFORT INN & design, since 1991. The panel further observed that the disputed domain name, comfort-inn.ca, was only registered on March 30, 2006, that the domain name remained inactive since its registration, that the online registrant information invited offers to be made on the domain name, and that the registrant had offered to sell the domain name to the complainant for $30,000.00.

Pursuant to paragraph 4.1 of CIRA’s Domain Name Dispute Resolution Policy (the “Policy”), a complainant will only succeed where it proves, on a balance of probabilities, that (1) the disputed domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name, and to which such rights still exist; (2) the domain name was registered in bad faith; and (3) there is evidence the registrant had no legitimate interest in the domain name.

The complainant satisfied the CIRA on all three bases. First, the domain name, comfort-inn.ca, was found to be confusingly similar to the complainant’s trade mark COMFORT INN. The .ca is to be ignored in assessing a domain name. The presence of a “dash” was not considered a sufficient differentiating factor. Second, pursuant to paragraph 3.7 of the Policy, the domain name was considered to be registered in bad faith since the registration was primarily for the purpose of selling the domain name to the complainant in excess of the actual cost of registration. Third, pursuant to paragraph 3.6 of the Policy, the registrant was found to have no legitimate interest in the domain name. Specifically, the domain name was not a mark used by the registrant, nor a mark to which the registrant had rights in; it was not used in good faith in association with any wares, services or business, or in association with a non-commercial activity; it did not represent the legal name or other identifier belonging to the registrant; and it was not a geographical name of a location of the registrant’s non-commercial activity or place of business. Consequently, the panel ordered that the disputed domain name, comfort-inn.ca, be transferred from the registrant to the complainant.

This entry first appeared in the October 19, 2006 edition of lawsof.com. For a copy of the CIRA decision, click here.

Forsale.ca Complaint Dismissed

The Canadian Internet Registration Authority (“CIRA”) dismissed a complaint over the disputed domain name forsale.ca. In making its decision, CIRA’s three-member panel accepted that the complainant, owner of the domain name for-sale.ca, had registered its domain name in April 2003, applied for a trade-mark in that name on April 7, 2003, and obtained a formal trade-mark registration in January 2005. The panel further acknowledged that the disputed domain name, forsale.ca, was first registered on October 20, 2000.

Pursuant to paragraph 4.1 of CIRA’s Domain Name Dispute Resolution Policy, a complainant will only succeed where it proves, on a balance of probabilities, that the disputed domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name, and to which such rights still exist; the domain name was registered in bad faith; and there is evidence the registrant had no legitimate interest in the domain name. CIRA dismissed the complaint solely on the basis that the complainant’s rights in the mark, for-sale.ca, existed as early as April, 2003, but did not exist prior to October 20, 2000, the date the disputed domain name, forsale.ca, was registered. The panel did not find it necessary to address the issues of bad faith or legitimate interest.

This entry first appeared in the October 5, 2006 edition of lawsof.com. For a copy of the CIRA decision, click here.