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Even After Forty Decisions the CIRAs "Confusingly Similar" Test is Still Unclear
The Canadian Internet Registration Authority (“CIRA”), in its fortieth decision under the CIRA Domain Name Dispute Resolution Policy, ordered the transfer of the domain name
The Complainant established its rights in the LEE VALLEY trade-mark, both through Canadian trade-mark registrations and applications, as well as, through common law rights. With respect to the issue of whether the domain name was “confusingly similar” to the Complainant’s trade-mark, the Panellist discussed a divergence on the interpretation of this test under the CIRA policy. The policy states that a domain name is “confusingly similar” to a trade-mark if the domain name so nearly resembles the trade-mark in appearance, sound or ideas suggested, as to be likely mistaken for the trade-mark.
The Panellist pointed out that, although the wording of the Policy suggests that a narrower and non-contextual comparison test is appropriate, other Panellists have used the broader “likelihood of confusion” test. However, given that the Complainant focused almost entirely on the similarity between the domain name at issue and its various trade-marks, the Panellist used the narrower test without taking a position on which test was more appropriate. Using this test, the domain name was clearly “confusingly similar” to the Complainant’s trade-marks and trade names.
The Panellist also found that the Registrant had registered the domain name in bad faith. Firstly, the Complainant gave evidence that the Registrant had engaged in a pattern of behaviour of registering domain names in order to prevent persons who had trade-mark rights from registering their trade-marks as domain names. In this case, the Registrant had been the subject of two prior “.ca” domain name disputes (and possibly the subject of one other dispute). Secondly, because the Registrant used the domain name to link to the Complainant’s competitors, the Registrant was essentially a competitor itself and had, therefore, registered the domain name primarily for the purpose of disrupting the Complainant’s business.
Finally, the Panellist found that there was ample evidence that the Registrant had no legitimate interest in the domain name.
Since the Complainant had met its burdens under the CIRA policy with respect to all three aspects of the test, and the Registrant had not replied to the complaint and therefore, had not met its burden, the Panellist ordered that the domain name be transferred to the Complainant
For a copy of the decision, visit:
http://www.cira.ca/en/dpr-decisions/00040-leevalleytools.ca.pdf
For a copy of the Act, visit:
http://laws.justice.gc.ca/en/T-13/106520.html
For a copy of the Policy, visit: