Volume IV

Issue : 1: January 12, 2006

• CIRA Transfers Domain Name to Complainant
• Court Finds Law Firms Use of Someone elses Password not to be Hacking
• Standard Life Wins Domain Name Dispute Against Registrant of standard-life.ca
• Canadian "Rootkit" Class Action Lawsuits Launched Against Sony
• New Mexico Supreme Court Decision Allows State to Levy Income Tax on Out of State Corporations
• UK Businessman Wins Landmark Spam Suit
• Priceline.com Successful in Dispute over Priceline.ca
• SEC Fines McAfee $50 Million
• To Fight Counterfeits Pfizer Inserts RFID Tags in Viagra Packages

Home > Volume IV > Issue 1: January 12, 2006 > Standard Life Wins Domain Name Dispute Against Registrant of standard-life.ca

Standard Life Wins Domain Name Dispute Against Registrant of standard-life.ca

The Standard Life Assurance Company of Canada (“Standard Life”) was recently successful in having the registration of the domain name ‘standard-life.ca’ transferred to it. The domain name was registered on May 24, 2005 by Hank Morin and used for a website that provided visitors with links to sites selling various insurance products.

Denis Magnusson, acting as sole panellist for Resolution Canada, considered the complaint which required Standard Life to prove, under the CIRA Domain Name Dispute Resolution Policy: first, that the domain name was confusingly similar to one or more of Standard Life’s registered trade-marks; second, that Morin registered the domain name in bad faith; and third, that Morin had no legitimate interest in the domain name.

With respect to the first element, Magnusson held that the resemblance of the domain name to the mark ‘Standard Life’ (one of the four marks owned by Standard Life) was so close that the domain name was likely to be mistaken for the mark and therefore was confusingly similar. In coming to this conclusion, Magnusson upheld the proposition that differences in syntax or punctuation have little or no impact on whether or not a domain name is confusingly similar. With respect to the second element, Magnusson held that Morin had registered the domain name in bad faith. By using the domain name to link visitors to insurance companies other than Standard Life’s, Morin was disrupting Standard Life’s business. Further, Morin was found to be a competitor of Standard Life, as, although he was not an actual competitor, he linked visitors to actual competitors through ‘Sponsored Links’, which indicated that Morin received compensation for featuring the specific insurance links. With respect to the third element, Magnusson concluded that Morin did not have a legitimate interest in the domain name as he failed to display any of the six specified interests set out in the Policy.

For a copy of the decision, visit:

http://www.cira.ca/en/dpr-decisions/00046-standard-life.ca.pdf