Registrant Loses saveonfoods.ca

The Complainant in this action, Great Pacific Industries Inc., filed a complaint with the British Columbia International Commercial Arbitration Centre against Mr. Ghalib Dhalla (the "Registrant"), with respect to the registration and use of saveonfoods.ca, registered in 2000 by the Registrant. The Complainant operates 39 Save-On-Foods Stores across British Columbia and 14 similar stores in Alberta. The Complainant filed a registration for the Save-On-Foods mark in 2001 and registered the domain name saveonfoods.com in 1997. The Complainant alleged that the Registrant's domain name was confusingly similar to their trade-mark. A three member panel held that the Complainant had met their onus of establishing that the domain name was confusingly similar. The Complainant also alleged that the domain name had been registered in bad faith and that the Registrant had engaged in a pattern of registering domain names to prevent entities with rights in the marks from registering the trade-mark as domain names. The Registrant had registered six domain names including hockeynightincanada.ca. The Panel held that the Registrant's admission that he did not intend to actively carry on business from his website for an extended period of time demonstrated bad faith and the Panel concurred with the Complainant's allegation that the domain name had been registered to prevent the Complainant from registering its mark as a dot-ca domain name. The Panel also looked at the issue of the Registrant's alleged disruption of the Complainant's business. The Panel held that the fact that the Registrant did not intend to use the website for some time did not preclude him from being a competitor. The Panel noted that the Registrant was from British Columbia and therefore had knowledge of the Complainant's business and use of the mark, thereby meeting the bad faith test. Finally, the Complainant's assertion that the Registrant had no legitimate interest in the domain name was accepted by the Panel. The Panel held that, according to the CIRA policy, a registrant would have a legitimate interest in a domain name if the domain name was used "in good faith in association with any wares, service or business". The Panel interpreted this as meaning the present offering of goods, services, or business. The Registrant had not demonstrated a legitimate interest since it did not intend to use it for an extended period of time For a copy of the decision, visit: http://cira.ca/en/dpr-decisions/00009_Great_Pacific-Dhalla-April_212003.pdf Summary by: Kiran Sah