#236 - empiretheatres.ca - TRANSFER GRANTED

The complainant is Empire Theatres Limited of New Glasgow, NS. The registrant is Michael Morgan of 15 Lorna Court, Elmsdale, NS. The disputed domain name is <empiretheatres.ca>

The registrant did not file a response.  The panel found that the Complainant owned the EMPIRE THEATRES trade-mark and further found that the Domain Name in question, which was identical to the Mark, was confusingly similar. The panel also held that the Registrant had no legitimate interest in the Domain Name because the respondent’s use of the Mark long predated registration of the subject Domain Name and the Registrant was using the Mark to attract customers and re-direct them to competing products. Finally, the panel found the registrant had registered the Domain Name in bad faith since it was aware of the renown of the Mark and registered the Domain Name to attract and mislead internet users.

You can read the decision here.  

#235 - designfirst.ca - COMPLAINT DISMISSED

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-1^st.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.