'Browne.ca' transferred in default decision

Canada

In Browne & Co Ltd v Bluebird Industries, Resolutions Canada, one of two domain name dispute resolution providers in Canada, has released its first decision, ordering the transfer of 'browneco.ca'. This is only the second decision issued to date under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy.

Browne & Co Ltd is the registrant of the domain name 'browneco.com' and has operated under its trade name since 1991. Bluebird Industries, one of Browne's competitors in the Canadian cookware/kitchenware industry, subsequently registered the domain name 'browneco.ca'. Browne filed a claim with Resolutions Canada to obtain the transfer of the domain name. As Bluebird failed to respond, Browne opted for a single-member panel.

Despite finding that the trade name Browne & Co Ltd is inherently non-distinctive, panellist Denis Magnusson attributed distinctiveness to the mark on the basis of secondary meaning. This, combined with evidence of prior use of the mark, led Magnusson to conclude that:

  • Browne had rights to the mark prior to the date of Bluebird's registration of the disputed domain name;

  • Bluebird had no legitimate interests in the domain name;

  • 'browneco.ca' and the trade name Browne & Co Ltd were confusingly similar; and

  • Bluebird had registered 'browneco.ca' in bad faith as it should have known that its use of the domain name would mislead customers.

As a result, Magnusson ordered that the disputed domain name be transferred to Browne.

For discussion of the first decision issued under the CIRA Domain Name Dispute Resolution Policy, see Red Robin wins first cybersquatting case under new procedures.

Gordon J Zimmerman, Borden Ladner Gervais LLP, Toronto

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