Volume VIII

Issue : 5: March 4, 2010

• Domain Name Transferred to Canadian Security Association After Ruling by Panel
• Google Buzz Target of New Class Action Lawsuit
• Class Action Filed Against Yelp for Business Reviews Site
• U.S. Court Says Comments on Facebook Protected by Freedom of Speech
• Italy Convicts Google Executives for Privacy Violations
• High School Accused of Webcam Spying
• Xerox Alleges Patent Infringement by Google and Yahoo!
• Facebook Obtains News Feed Patent

Home > Volume VIII > Issue 5: March 4, 2010 > Domain Name Transferred to Canadian Security Association After Ruling by Panel

Domain Name Transferred to Canadian Security Association After Ruling by Panel

The complainant, the Canadian Security Association (“CSA”), a non-profit organization advocating for suppliers of commercial and residential alarm systems, filed a complaint under the Canadian Internet Registration Authority (“CIRA”) against the registrant of the disputed domain name, 1687734 Ontario Inc., o/a Trademark Protection (“TMP”). The CIRA Panel found that the domain name in question, CANASA.CA, was confusingly similar with the complainants’ registered trade-mark CANASA and that its rights predate the registration of the disputed domain name. The CSA registered the mark CANASA with the Canadian Intellectual Property Office in 1998 and provided evidence that it had used CANASA in Canada since 1977. The domain name CANASA.ORG was approved in 1996. TMP registered the disputed domain name in 2005.

As per the requirements for ordering a transfer of a domain name, under Paragraph 3.1 of the Domain Name Dispute Resolution Policy, the complainant established on a balance of probabilities that: (a) TMP’s registration of CANASA.CA was confusingly similar to CANASA, a mark which the CSA had rights to prior to the date of registration of the domain name. The Panel noted that “it is clear that the domain name is identical to the Complainant’s registered trade-mark. Since CANASA is a coined word that has been used by the Complainant since 1977, the Registrant’s use of an identical mark is likely to be mistaken for the Complainant’s mark.”; (b) TMP had no legitimate interest in the domain name because the CSA did not consent to or license the use of the mark by the registrant and there was evidence that for some time the disputed domain name pertained to a website providing links to various security related products or services to divert users from searching the CSA’s site; and (c) The domain name had been made “in bad faith” by TMP, as there was evidence that TMP owned a large number of .ca domain names with third party marks and that the registration had been done to disrupt the business of the CSA.

Given the findings, the Panel ordered the disputed domain name to be transferred to the CSA.

For a copy of the decision, visit:

http://www.cira.ca/assets/Uploads/00132-canasa.ca.pdf