CIRA Dispute No. 00164
Overview
Under the Domain Name Dispute Resolution Policy, in order to establish that a domain name was registered in bad faith, the complainant can rely on the fact that the registrant has engaged in a pattern of registering domain names confusingly similar to well-known trademarks. This is especially relevant where bad faith cannot be shown through any other means.
Abstract
The disputed domain name, jockey.ca, was registered in 2003 and used by the registrant to provide links redirecting customers to third-party providers of adult-oriented products and services. The complainant's trademark JOCKEY was the subject of 1935 and 1960 registrations and had been used in Canada since 1934 in association with underwear, and since 1960 in association with other articles of clothing. The panel readily found that the registrant had rights in a mark that was confusingly similar to the domain name and that the registrant had no legitimate interest in the domain name. With respect to the factor of bad faith, the panel found no clear evidence of bad faith based upon the use of the domain name by the registrant or the conduct between the parties. However, bad faith was found based upon a pattern of conduct by the registrant of securing domain names confusingly similar with other well-known trademarks, e.g., warlmart.ca and timhortens.ca. The disputed domain name was ordered to be transferred to the complainant.
Case summary
Facts. The complainant, Jockey International, Inc. ("Jockey"), is a U.S.-based company founded in 1876 as a hosiery business, which has since expanded into underwear and other clothing for both men and women. The JOCKEY brand had become established and well-known in many countries outside the U.S., including Canada. Jockey held two Canadian trademark registrations obtained in 1935 and 1960 for the mark JOCKEY in association with undergarments and clothing. Jockey also used the marks on its website, www.jockey.com, which received six million hits in 2010.
The registrant, Ingenuity.Net Services Corp. ("Ingenuity.Net"), had registered the domain name jockey.ca on February 26, 2003. Ingenuity.Net used the disputed domain name in association with a website providing links that redirected customers to third-party providers of sex toys, alternative dating websites, lingerie, sexual accessories and other adult-oriented products and services. Jockey made no offer to buy the domain name and Ingenuity.Net made no offer to sell it.
Analysis. For Jockey to succeed, it had to establish the three factors set out in the Canadian Domain Name Dispute Resolution Policy ("CDRP Policy"), namely that: (a) the domain name is confusingly similar to a mark in which the complainant (Jockey) has rights as of the date of registration of the domain name and continues to have such rights; (b) the registrant (Ingenuity.Net) has no legitimate interest in the domain name; and (c) the registrant has registered the domain name in bad faith.
The panel readily concluded that the domain name was confusingly similar to a mark in which it had pre-existing rights. The panel accepted that Jockey's rights predated the date of registration of the disputed domain name by nearly 70 years and that the disputed domain name was identical to the complainant's trademark.
The panel also concluded that the registrant had no legitimate interest in the domain, applying the six enumerated bases for legitimate interest set out in the CDRP policy. In particular, the registrant was found not to have used the mark JOCKEY as a trademark and the word JOCKEY itself was found not to bear a natural connection with or be clearly descriptive of any of the wares or services advertised on the site.
The most contentious factor was whether the domain name had been registered in bad faith. There was no immediately apparent evidence of bad faith since the registrant had owned and used the domain name for eight years without directly competing with the complainant or trying to sell the domain to the complainant. However, the panel relied on evidence that the registrant also owned a number of other domain names related to well-known trademarks, such as aeoplan.ca, airecanada.ca, timhortens.ca and warlmart.ca. The panel deemed this as proof that the registrant had engaged in a pattern of registering domain names to prevent rightful owners of marks from registering them as domain names, which is an enumerated ground of bad faith under paragraph 3.7(b) of the CDRP Policy.
Having found all three factors on the balance of probabilities, the panel ordered transfer of the domain name to the complainant.
Conclusion
When considering a CDRP proceeding, trademark owners should evaluate whether other domain names owned by the registrant show a pattern of conduct of registering domains names confusing with well-known trademarks. This may be especially important where there is no clear evidence of bad faith in a CDRP proceeding when considering the use of the domain name, the identity of the registrant or the conduct of the registrant. The Canadian Internet Registration Authority provides a simple and inexpensive procedure for requesting a list of all dot-ca domains owned by a registrant. Unfortunately there is no similar procedure for most other top-level domains, such as dot-com, dot-net and dot-org.
Daniel M. Anthony, Ottawa
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