CIRA orders transfer of 'abelsoft.ca'
Abelsoft, a provider of computer software for healthcare professionals, is the owner of the trademark ABELSOFT, which was registered with the Canadian Intellectual Property Office on August 25 1999. The registrant, Gabi Fish (who did not respond to the complaint), registered the domain name 'abelsoft.ca' on August 24 2007. Fish subsequently created a website located at the disputed domain name which featured the words "Coming soon!" under a printed reproduction of the 'abelsoft.ca' domain name at the top left of the webpage.
In accordance with the CIRA Dispute Resolution Policy (CDRP), Abelsoft had to prove that:
- the domain name 'abelsoft.ca' was confusingly similar to a mark in which it had prior rights;
- Fish had acquired the domain name in bad faith; and
- Fish did not have a legitimate interest in using the domain name.
In light of the relative registration dates, the panellist had no difficulty in finding that Abelsoft had acquired rights in its registered trademark prior to the registration of the domain name. In assessing the similarity between the domain name and the mark, the panellist noted that the '.ca' suffix of the domain name should be ignored. Consequently, because Abelsoft's trademark and the domain name without the suffix were identical apart from capitalization, the panellist held that the domain name was likely to be mistaken for the ABELSOFT trademark and was thus confusingly similar under Section 3(4) of the CDRP.
In addition, the panellist found that bad-faith use was proven under Section 3(7)(c) of the CDRP - namely, that the registration was intended to disrupt Abelsoft, a competitor of Fish. In finding that Fish had registered the domain name with a view to disrupting Abelsoft's business, the panellist provided an interesting discussion of bad-faith use in such circumstances:
"When a registrant registers a domain name more or less identical to a complainant's business name and the registrant uses that registered domain name for a website unconnected to the complainant's business, the complainant's business has been disrupted. The Internet has become so established as an expected mode of marketing for established businesses that customers of such businesses will expect to find websites linked to the businesses that the customers are seeking at domain names which are identical to the distinctive trademarks or trade names of such businesses. When such customers are frustrated in finding the businesses they seek at such domain names, the businesses of the trademark and trade name owners have been disrupted."
Relying on earlier cases decided under the CDRP for the proposition that the purpose of a registrant in registering a domain name can reasonably be inferred from the necessary and likely effects of the registrant's domain name registration and the uses to which the registrant puts the registered domain name, the panellist held that it was reasonable to infer that Fish intended to disrupt Abelsoft's business through its registration of the domain name 'abelsoft.ca'. Further, the panellist found that since Fish was the chief executive officer of a company offering business solutions for healthcare providers, Fish was accordingly in direct competition with Abelsoft for the purposes of Section 3(7)(c) of the CDRP.
Finally, the panellist concluded that Fish had no legitimate interest in the domain name as registered. In doing so, he noted that Abelsoft's submissions, in light of the facts of the dispute and the grounds upon which a registrant's legitimate interest can be based pursuant to Section 3(6) of the CDRP, were sufficient to satisfy its burden of providing "some evidence" that Fish had no legitimate interest in the domain name. There was no further discussion on this point.
Based on the foregoing, the panellist ordered that the disputed domain name be assigned to Abelsoft's nominee.
This decision should be viewed positively by trademark owners seeking to protect their brands under the CDRP, as it appears to put forward a somewhat lower threshold approach as to what constitutes bad-faith use.
Christina Capone Settimi, Cameron MacKendrick LLP, Toronto
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