CIRA Dispute No. 00182 (March 21, 2012)
Overview
Version 1.3 of the CIRA Domain Name Dispute Resolution Policy, which came into effect in August 2011, amended the provisions dealing with bad faith registration of a domain name to add a fourth circumstance describing bad faith, and to make the list of bad faith circumstances non-exhaustive. The Panel in this case applied the non-exhaustive language of the current Policy to find that the factual circumstances at issue, while not described precisely under any enumerated circumstances, fell "within the spirit" of the provision. On this basis, the Panel ordered that the disputed domain name be transferred to the complainant. This decision is one of the first under the current Policy where a complainant has succeeded because of the switch to a non-exhaustive list of bad faith factors.
Abstract
The disputed domain name – cadillacxts.ca – was registered on February 11, 2010. The complainant owns many trademark registrations containing the term CADILLAC. At the time of the registration of the domain name, the complainant had a pending Canadian trademark application for CADILLAC XTS, filed on October 16, 2009. The key issue in this case was whether the registrant had registered the domain name in bad faith. The complainant alleged bad faith under two of the enumerated bad faith factors, but neither fit the factual circumstances of the present case. Nevertheless, the one-member Panel concluded that the registrant's conduct, including a total lack of use of the registered domain name, constituted bad faith "within the spirit" of the current CIRA Domain Name Dispute Resolution Policy ("CDRP Policy"). Accordingly, the request for transfer was granted.
Case summary
Facts. The registrant, Tony Wilson, had registered the domain name cadillacxts.ca on February 11, 2010. The complainant, General Motors LLC, is an American automotive manufacturing company that owns hundreds of national registrations for the trademark CADILLAC and related marks. The complainant has owned Canadian registrations for CADILLAC in Canada since 1926. At the time of the registration of the domain name, the complainant had a pending Canadian trademark application for CADILLAC XTS, filed on October 16, 2009, which had since issued.
The registrant failed to file a response to the complaint and so the Panel rendered its decision solely based upon the facts and arguments submitted by the complainant.
Analysis. For the complainant to succeed, it had to establish the three factors set out in the CDRP Policy, namely that: (a) the domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name and continues to have such rights; (b) the registrant had registered the domain name in bad faith; and (c) that the registrant had no legitimate interest in the domain name. The Panel's decision turned primarily on the second factor, whether the registrant had registered the domain name in bad faith.
The complainant easily satisfied the first factor. The Panel held that the registrant's addition of the letters XTS to the famous trademark CADILLAC did not avoid a finding of confusing similarity between the complainant's mark and registrant's domain name.
The complainant had greater difficulty establishing the second factor that the registrant had registered the domain name in bad faith. In this respect, the Panel first considered the enumerated bad faith ground in paragraph 3.5(c) of the CDRP Policy, which required the complainant to prove that the domain name had been registered primarily for the purpose of disrupting the complainant's business and that the complainant was a competitor of the registrant. The Panel found that the domain name was registered primarily to disrupt the complainant's business. However, given that the domain name was entirely inactive, the Panel refused to find that the registrant was a competitor of the complainant, even for Internet traffic.
The Panel then considered the enumerated bad faith ground in paragraph 3.5(d) of the CDRP Policy. This provision required the complainant to demonstrate that the registrant had intentionally attempted to attract, for commercial gain, Internet users to the registrant's website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website.
While finding that paragraph 3.5(d) did not apply directly to the facts at hand, the Panel noted that the list of situations enumerated in paragraph 3.5 of the CDRP Policy are merely "illustrations of situations where bad faith can be found and serve only as guidance for panels' decisions." The Panel found that the fact that the registrant chose to adopt a domain name with the complainant's "world famous" trademark as a prominent component was, in itself, an indication that the registrant was intentionally attempting to attract, for commercial gain, the attention of Internet users. The Panel took further notice of the fact that the registrant had registered the domain name cadillacxts.ca after the complainant's Canadian application for CADILLAC XTS had been filed and despite the complainant's successful registrations for the same mark in other countries. Accordingly, the Panel concluded that the registrant's conduct fell "within the spirit" of paragraph 3.5(d) and was registered in bad faith.
For reasons including those discussed above, the Panel also found that the registrant had established the third factor that the registrant had no legitimate interest in the domain name.
Conclusion
Under paragraph 3.5 of the current CDRP Policy, the Panel is no longer restricted to the enumerated circumstances establishing bad faith registration. The inclusion of the phrase "in particular but without limitation" indicates that the enumerated circumstances are now merely "illustrations of situations where bad faith can be found and serve only as guidance for panels' decisions." Accordingly, the Panel may find bad faith where the conduct merely falls "within the spirit" of one of the enumerated bad faith factors. It is expected that new circumstances constituting bad faith will emerge from future CDRP decisions.
Daniel M. Anthony, Ottawa
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