| Red Robin International, Inc. v. Tieu, British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00001 - by Eric Macramalla |
Domain Name: redrobin.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: J.E. Redmond, Q.C.
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In the first decision rendered pursuant to the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a single-member Panel ordered the domain name redrobin.ca transferred to the Complainant trade-mark owner. The domain name had not been used by the Registrant prior to being contacted by the Complainant.
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 CDRP, Complainants must establish three elements. Firstly, the disputed domain name must be confusingly similar to a mark in which the Complainant had, and continues to have, rights. Secondly, the domain name must have been registered in bad faith. Finally, the Registrant must have no legitimate interest in the domain name.
The Panel held that the impugned domain name, redrobin.ca, was "identical"
to the Complainant's Canadian trade-mark registration for RED ROBIN, and accordingly, made a finding that the subject domain name was confusingly similar to the Complainant's trade-mark.
The Panel also held that the domain name was registered in bad faith, finding that the Registrant had engaged in a pattern of registering domain names containing third party trade-marks to which the Registrant was not entitled. These registrations included virginatlanticairlines.ca, virgin-atlantic.ca, and virginatlanticairways.ca.
The Panel also held that a series of exchanges between the Registrant and the Complainant supported a finding that the Registrant had registered the domain name with the intention of selling it for a profit. In particular, when the Registrant rejected the Complainant's offer to purchase the domain name for an amount equal to his out-of-pocket expenses, he replied by indicating that the Complainant could buy his "beautiful bird" from him.
In light of the foregoing, the Panel also held that the Registrant did not demonstrate a legitimate interest in the domain name, and ordered the domain name transferred to the Complainant.
The finding that the Registrant did not use the domain name prior to receiving correspondence from the Complainant would suggest that "notice" includes receipt of a demand letter. While this is practically sound, such an interpretation is contrary to paragraph 3.6 of the CDRP, which provides that a Registrant can demonstrate a legitimate interest in a domain name at any time prior to receiving notice that a Complaint has been filed. The interpretation of this paragraph in this case is consistent with the approach taken under the Uniform Domain Name Dispute Resolution Policy. |
