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Ford Motor Company of Canada, Limited v. Canadian Model Trains Inc. , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00036 - by Eric Macramalla

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Domain Name: fordcanada.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: W.A. Derry Millar

The Complainant was the well-known car manufacturer and the registered owner of numerous trade-mark registrations consisting, or comprised of, the element FORD. Prior to the date of the disputed domain name registration, the Complainant was the owner of the registered trade names Ford of Canada and Ford du Canada and stated that it was commonly known by Canadians and by the media as FORD CANADA in both English and French speaking Canada. The Complainant was also the owner of the ford.ca domain name and the user of the fordcanada.com domain name, registered for its benefit by its parent company in the United States.

The Registrant was an Ontario corporation involved in the sale of model trains. It actively promoted its business on the Internet at modeltrains.com. Upon registering the disputed domain name, fordcanada.ca was parked with its Registrar, Internic.ca Corp.

Upon becoming aware of the Registrant's registration, the Complainant attempted to contact the Registrant, but encountered difficulty as it had provided the WHOIS database with an incorrect address. Ultimately, the Complainant was able to contact the Registrant. Its President stated that the Registrant had no interest in using the domain name and acknowledged that Ford Canada referred to the Complainant. The President offered to sell the name and when the Complainant refused to purchase the name, he offered to transfer it for $1000 to be paid to a local sports association of which he was a member. Several months after this correspondence, the Registrant renewed its registration of the domain name and resolved it to a customized portal, which included links that competed with the Complainant. The site appeared to be the Registrar's default site.

The Registrant did not file a Response to the Complaint, and accordingly the Complainant elected as per Rule 6(5) of the CIRA Domain Name Dispute Resolution Rules to reduce the three member Panel to a single member Panel.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a successful Complainant must establish that the disputed domain name is confusingly similar with a mark in which it had rights, that the name was registered in bad faith and that the Registrant does not have a legitimate interest in the domain name.

With respect to confusing similarity, the Panel began by assessing whether the Complainant had rights in the FORD CANADA mark. It found that the Complainant had rights in the FORD mark, although it was unclear when the trade name Ford Canada was adopted by the Complainant, as it was registered as a trade name three years after the domain registration. Given the longstanding commonplace use of FORD CANADA as well as the Complainant's rights in fordcanada.com, the Panel held that on a balance of probabilities, FORD CANADA qualified as a mark in which the Complainant has rights under the CDRP.

The Panel then applied the test enunciated in Canada v. Bedford (BCICAC, CIRA Dispute No. 00011). It found that a person knowing the Complainant's marks FORD, FORD DU CANADA, FORD OF CANADA and FORD CANADA, and having an imperfect recollection of them, would likely mistaken the domain name fordcanada.ca as being associated with the Complainant.

Next, the Panel held that the disputed domain name was registered in bad faith under paragraph 3.7(a) of the CDRP. This finding was based on several factors. Firstly, the domain name was parked until the Registrant was contacted by the Complainant. Secondly, the President of the Registrant had acknowledged that Ford Canada referred to the Complainant. Thirdly, the Registrant had offered to sell the name for a price significantly higher than the cost of registering or transferring the name and when informed the Complainant would not purchase the name, offered to transfer it for a donation to a local sports association with which the President was associated. Lastly, upon renewal, the domain name was made to point to a customized portal displaying competitor links.

The Panel held that the Registrant had no legitimate interest in the domain name as its use does not satisfy any of the criteria set out in paragraph 3.6 of the CDRP.

Accordingly, the Panel ordered the domain name transferred to the Complainant.

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