Red Robin wins first cybersquatting case under new procedures

Canada

The Canadian Internet Registration Authority (CIRA) has released its first decision under the new CIRA Domain Name Dispute Resolution Policy (CDRP), which came into effect in June.

The case Red Robin International Inc v Greg Tieu involved the domain name 'redrobin.ca', registered by Tieu, an individual residing in British Columbia. Red Robin, a US company, is the owner of a chain of popular burger restaurants throughout the United States and parts of Canada. It owns three Canadian trademarks for RED ROBIN.

The proceeding was administered by the British Columbia International Commercial Arbitration Centre, one of two service providers approved by CIRA to oversee complaints under the CDRP.

Although the CDRP normally requires a three-member panel, the fact that Tieu did not file a response entitled Red Robin to request a single-member panel. The sole panellist was James Redmond.

Redmond determined that Red Robin has rights in the RED ROBIN trademarks and that the disputed domain name was confusingly similar to those marks.

Although Tieu did not submit a response to the complaint, Redmond referred to a series of letters exchanged between the parties to determine whether or not Tieu had a legitimate interest in the domain name (pursuant to Section 3.6 of the CDRP). Redmond concluded that he did not.

Redmond also found (pursuant to Section 3.7) that Tieu had registered the domain name in bad faith because he did not use the domain name, offered to sell it to Red Robin, and implied that he would sell it to someone else if Red Robin did not buy it. The fact that Tieu owned other domain names such as 'virginatlanticairways.ca' and 'virgin-atlantic.ca' was further evidence of bad faith.

As a result of these findings, Redmond ordered that 'redrobin.ca' be transferred.

John Macera, Macera & Jarzyna, Ottawa

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