First Canadian Ruling of Reverse Domain Name Hijacking

May 29, 2009

· FORSALE.CA was registered with the University of British Columbia Registry by Mr. Sohail Kahn on October 20, 2000

· On January 21, 2005 the Complainant, Globe Media International Corporation trade-marked WWW.FOR-SALE.CA

· In 2006 the Complainant tried to acquire FORSALE.ca from the then current holder, Mr. Sohail Kahn. This attempt failed because the trade-mark rights to WWW.FOR-SALE.CA did not precede the October 20, 2000 domain name registration date.

· On January 3, 2009 FORSALE.CA lapsed and came up for re-registration and was immediately registered that day by Tom Brown – who worked for BareMetal.com – Requests from the Complainant about the domain availably (made that day, January 3, 2009) were ignored.

· On January 12, 2009 the domain was purchased by Bonfire Development, Inc. for $29,900.

· On January 12, 2009 the Complainant emailed Bonfire, citing his trade-mark, offering to purchase the domain name for $5000, stating that he would file a complaint to protect his trademark if they did not comply with his offer.

· On February 11, 2009 the Complaint was filed with Resolution Canada, and additional filings were allowed on March 16, 2009.

· After establishing that WWW.FOR-SALE.CA was trade-marked prior to the registration of FORSALE.CA the Panel proceeded with the CIRA Domain Name Dispute Resolution Policy which states that the Complainant must prove:

1. The domain name in question is confusingly similar to the trade-mark?

2. Was the domain registration made in bad faith?

3. Does the registrant have legitimate interest in the domain name?

· The Panel concluded that:

1. The domain name FORSALE.CA was indeed “Confusingly Similar” to the registered trade-mark.

2. Although related parties to the Registrant was found in the past to have engaged in the practice of “cyber-squatting,” the domain name has not infringed on the rights of the current trade-mark as “for sale” is a commonly used, generic saying used by many businesses. Therefore the Panel concluded that the Registrant did not acquire the domain name under bad faith

3. Finally, because of the generic use of the term “For Sale” the Panel concluded that the Registrant did have a legitimate interest in the domain name FORSALE.CA

· The Respondent asked the Panel to make a finding of Reverse Domain Name Hijacking, stating that the Complainant was knowingly trying to obtain the domain name without colour of right, as it is a generic domain name. This also comes with his previous attempt to acquire the domain from the prior legitimate registrant of FORSALE.CA.

· The Panel also considered past activities in which the Complainant registered and filed trade-marks for domains such as: WWW.VERSACE.CA, WWW.MENTOS.CA, and WWW.ZANTAC.CA, all well-known trademarks.

· The Panel concluded that the Complainant registered these trade-marks under bad faith, abusing the trade-mark regime and registrations.

· The "alarming" behaviour on the part of the Complainant, coupled with the current circumstances forced the Panel to deny the Complaint and find that the Complainant did in fact engage in Reverse Domain Name Hijacking – First ever ruling in Canadian history.

· This ruling awards the Respondent up to $5000 to defray his costs from the entire matter.

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