Absence of bad-faith intention precludes relief in default case

A Canadian Internet Registration Authority (CIRA) panellist has refused to transfer the domain name ‘forestercollege.ca’ in undefended proceedings despite evidence of actual confusion and deliberate piggybacking on the reputation of the complainant, Independent Order of Foresters (IOF). The case highlights the high evidentiary onus that rests on a complainant seeking relief under the CIRA Domain Name Dispute Resolution Policy (CDRP), with respect to what constitutes confusing similarity and bad faith.

IOF, which owns three registered trademarks incorporating the word ‘forester’, has provided insurance and other services to its members in Canada for over 125 years. Since 1966 its head office has been located in Toronto in a building that has a large illuminated sign at the top bearing the word ‘foresters’. IOF alleged that its building is a landmark and that it is commonly referred to as ‘the Foresters building’.

Noredu Enterprises Canada Inc leased space in IOF’s building. Sometime after becoming a tenant, it (i) adopted the name Forester College of Technology, and (ii) registered the domain name ‘forestercollege.ca’. IOF repeatedly demanded that Forester College cease use of the name Forester, or any name or mark confusingly similar to that name. Forester College informed IOF that it would change its name to York College. However, it persisted in (i) using the name Forester College on its webpage and in promotional materials, and (ii) displaying photographs of the Foresters building, including the Foresters sign. IOF filed a complaint with CIRA.

CIRA panellist Denis Magnusson refused to order the cancellation of ‘forestercollege.ca’, even though Forester College did not respond to the complaint. Magnusson found that IOF’s marks made no reference to colleges, education or teaching and bore no resemblance in appearance, sound or ideas with the disputed domain name. Accordingly, he concluded that IOF had failed to meet the ‘confusing similarity’ requirement set out in Paragraph 3.4 of the CDRP.

Further, Magnusson held that IOF’s evidence did not establish that Forester College had acted in bad faith, as required by Paragraph 4.1 of the CDRP. Paragraph 3.7 provides that a registrant has acted in bad faith if it registered the domain name:

• primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the complainant for a price in excess of the registration costs;
  
  
• in order to prevent the complainant from registering its mark as a domain name, provided that the registrant has engaged in a pattern of such registrations; or
  
  
• primarily for the purpose of disrupting the business of the complainant.

Magnusson held that in the circumstances of this case, only Paragraph 3.7(c) was pertinent. He distinguished between purpose and effect and said that “bad faith must be strictly construed”. Here, he found that Forester College’s primary purpose when registering ‘forestercollege.ca’ had been to promote its own business rather than disrupt IOF’s, although this may well have been the effect. This finding was made despite Magnusson’s observations (with respect to confusing similarity) that there was “uncontroverted evidence that [Forester College] is using the domain name … in a manner [that] falsely suggests that [its] business is connected to [IOF]’s business”.

In the absence of a finding of bad faith, Magnusson dismissed IOF’s complaint.

Andrea Rush and Andrew Brunton, Heenan Blaikie, Toronto