CIRA orders transfer of 'formica.ca'
The Diller Corporation, the owner of the registered mark FORMICA and other trademarks including the word 'formica', brought a complaint against an individual, Lorenzo Salvalaggio, regarding the domain name 'formica.ca'.
The three-person panel from the British Columbia International Commercial Arbitration Centre (a recognized arbitration provider under the CIRA Domain Name Dispute Resolution Policy) determined that there was a confusing similarity between Diller's registered trademarks and the domain name 'formica.ca'. The panel found that the domain name was in fact identical to some of the trademarks (the '.ca' suffix was disregarded for this analysis) and, based on a test of first impression and imperfect recollection, was likely to cause confusion among the public. The panel noted that Diller's trademarks were presumed to be valid for the purposes of the CIRA arbitration.
The panel then considered whether Salvalaggio had a legitimate interest in the domain name. No goods were associated with Salvalaggio's website and a review of the site revealed that it merely redirected web traffic, in contradiction to Salvalaggio's claims that the website was designed for educational purposes. The domain name did not correspond to Salvalaggio's legal name or to a geographical term. Moreover, it was not being used in association with non-commercial activities (eg, criticism, reviews or news reporting). With no links between Salvalaggio and the domain name, the panel determined that Salvalaggio had no legitimate interest in 'formica.ca'.
Finally, the panel examined Salvalaggio's alleged bad faith in registering Diller's trademark as a domain name. Evidence adduced demonstrated that Salvalaggio had registered 206 domain names that conflicted with other third-party registered trademarks. When offered the chance to rebut this evidence, Salvalaggio failed to provide a tenable explanation as to these other 206 domain name registrations.
In conclusion, the panel determined that, on a balance of probabilities, Diller had proved that:
- the domain name was confusingly similar to its trademarks;
- Salvalaggio had no legitimate interest in the domain name; and
- the domain name was registered in bad faith.
As a result, the panel ordered that the domain name 'formica.ca' be transferred to Diller.
John Macera, Macera & Jarzyna - Moffat & Co, Ottawa
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