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In the last issue of the TeleMark, we presented you with a summary of some of the decisions rendered under the CIRA Domain Name Dispute Resolution Policy. This week, we have prepared a summary of the 7 remaining decisions that have been rendered to this date.

DCA 681-CIRA

Panellists: David Wotherspoon (chairman), Jacques A. Léger Q.C., Harold Margles

8 April 2003

Domain name in dispute: www.radiocanada.ca

Created in 1936 by Act of Parliament, the complainant is recognised as Canada’s public broadcaster and has become one of Canada’s largest cultural institutions, providing Canadians from coast to coast with a national resource of Canadian radio and television programming. It has also established a significant Internet presence through the use of its well-known websites such as CBC.CA and RADIO-CANADA.CA. It is also the owner of the Official Mark, Radio Canada International.

The registrant is an independent technology consultant providing services to the financial, media and entertainment sectors and assisting in the design, implementation and support of network infrastructures. The domain name was registered on November 8, 2000 and is associated to a modest website, comprised of a single page, indicating that the site is "Under Construction" and providing an e-mail address for contact. There is no relationship between the complainant and the registrant. The registrant alleges that the domain name is the generic name for such business or services with which it is associated.

The panel finds that the domain name is confusingly similar to the complainant’s trade marks, that the registrant has no legitimate interests in respect of the domain name and that the domain name has been registered in bad faith. The domain name is transferred to the complainant.

00008

Panellist: Hugues G. Richard

23 April 2003

Domain name in dispute: www.transunion.ca

The complainant is a corporation having a principal place of business in Illinois, U.S.A. It is a diverse corporation with a global presence that serves a broad range of industries. It owns two registered trade-marks in Canada for TRANS UNION in association with various wares and services.

No information has been provided regarding the registrant’s activities other than the fact that it operates a commercial website that offers subscription-based pornographic entertainment services, which makes no reference to the domain name nor to the complainant.

The panel finds that the domain name is confusingly similar to the complainant’s trade-marks. However, the complainant has failed to demonstrate that the domain name was registered in bad faith. The complaint is dismissed.

00009

Panellists: W.A. Derry Millar (chairman), Elizabeth Cuddihy Q.C., R. John Rogers

21 April 2003

Domain name in dispute: www.saveonfoods.ca

The complainant or its predecessor has operated Save-On-Food Stores since 1982. Save-On-Food is the third largest retailer of groceries in British Columbia and the fifth largest in Alberta. The trade mark SAVE-ON-FOODS was registered in 1985. The complainant also owns a web site, "saveonfoods.com", which receives an average of 700,000 visitors per year.

The registrant’s web site was registered on November 8, 2000. The site, which indicates "under construction", also indicates that it will be a portal for savings on food – groceries, restaurants, organic food delivery, bulk purchase…"

The panel is of the opinion that the domain name is confusingly similar to the complainant’s trade-mark. The panel also agrees that the registrant has registered the domain name in order to prevent the complainant from registering the trade-mark as a domain name at the ".ca" TLD and that the registrant has not demonstrated a legitimate interest in the domain name. The domain name is transferred to the complainant.

03-0303

Pane List: René Lagacé

13 May 2003

Domain name in dispute: www.quebecreservation.ca

The complainant is an individual doing business under the name Québec Réservation. He is also the owner of the domain name "quebecreservation.com".

The registrant does not actively use the domain name "quebecreservation.ca". It only uses it to redirect the clientele to the other website it owns, "hospitality-canada.com".

Both parties offer the same type of services.

The panel finds that the domain name is confusingly similar to the complainant’s trade-mark and that it was registered in bad faith. The domain name is transferred to the complainant.

Panellists: Bradley J. Freedman (chairman), Stefan Martin, Patrick Flaherty

27 May 2003

Domain names in dispute: www.governmentofcanada.ca; www.gouvernementducanada.ca; www.canadiancustoms.ca; www.ecgc.ca; www.publicworkscanada.ca; www.statcanada.ca; www.statscanada.ca; www.theweatheroffice.ca; www.transportcanada.ca; www.weatheroffice.ca

The complainant is the Government of Canada and the registrant is an individual resident of Burnaby, British Columbia, who, between January 1999 and May 2000 registered numerous domain names in the .com and .org TLD that incorporated or were similar to marks or names in which the complainant asserts rights. The domain names were used for the registrant’s principal site where he offered domain names for sale and displayed banner advertisements.

The registrant alleges that the trade-marks are descriptive and/or that the complainant has not used them.

The panel reviews each of the domain names and each trade-mark and orders the transfer of the domains names with the exception of the "canadiancustoms.ca" domain name.

DCA-689 CIRA

Panellist: Edward C. Chiasson

6 June 2003

Domain name in dispute: www.albertagovernment.ca

The complainant is the Government of Alberta, owner of the Official Mark ALBERTA GOVERNMENT. The registrant registered the domain name in November 2000 and uses it in connection with a pornographic website which attracts Internet users intending to contact the Alberta Government. The panel orders that the domain name be transferred to the complainant.

BAT-030303-001016

Panetons: Jacques A. Léger, Q.C., (chairman), Ross Carson, Daria Strachan

16 June 2003

Domain name in dispute: www.acrobat.ca

The complainant is a construction management company located in Toronto, Ontario. It was incorporated in 2000 and has been operating continuously since then. On November 6, 2000, it registered the domain name "acrobat.ca" but failed to attend to a timely renewal.

The registrant carries on the business of operating a web site under the domain name "pool.com" which provides up-to-date information to Internet users as well as a search engine. The registrant alleges that the complainant has not shown trade-mark rights in the word "acrobat". It also alleges that the nature of the wares, services and business of the parties differs dramatically and that, as a result, an Internet user would not likely conclude that the services offered by the registrant under the domain name "acrobat.ca" are offered by the same person who offers construction management services under the trade name Acrobat Construction/Enterprise Management Inc.

The panel concludes that the complainant did not submit sufficient evidence in order to establish that the trade name "acrobat" per se has been used in Canada for the purpose of distinguishing its wares, services or business from the ones of another person. The complaint is denied.