The
Complainant is Design First Kitchen & Bath Interiors Inc. and the
Registrant is Stone Beach Design Inc, both of Ottawa, Ontario.
The
complainant has used DESIGN FIRST as an unregistered mark since its founding in
1986 but only registered DESIGN FIRST as a trademark on November 5, 2012. The
Registrant has been using the business name “Design First Creation and
Development Inc.” since March 2001 and registered the domain name DESIGNFIRST.CA on April 5, 2001.
The
registrant conceded that the domain name is confusingly similar to the
complainant’s mark; however, the panel found that the registration was not made
in bad faith since the two businesses are not competitors and service different
markets. Furthermore, there was no evidence of any link between the services
offered by the parties and/or actual confusion caused by the similarity of the Domain
Name to the complainant’s mark.
Furthermore,
the panel concluded that the complainant had failed to show that the Registrant
did not have a legitimate interest in the domain. The panel found that the
Domain Name was registered and advertised to the Registrant’s customers and
therefore no link to the Complainant in that regard.
Finally,
the panel found that the Complaint did not bring the complaint in good faith
and instead commenced the complaint for the purpose of, unfairly and without
colour of right, cancelling, or obtaining a transfer of the domain. The
Complainant conceded that it registered the design-1st.ca trade-mark
to essentially trench on the Registrant’s rights. The panel therefore awarded the Registrant
$5000 in costs—the maximum allowable under the dispute resolution policy.
You can read the decision here.
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