CIRA Dispute No. 00173 (November 15, 2011)
Overview
Version 1.3 of the CIRA Domain Name Dispute Resolution Policy, which came into effect in August 2011, expanded the circumstances in which a complainant can show that a domain was registered in bad faith by adding a fourth enumerated circumstance and making the list of circumstances non-exhaustive. The Panel in this case found bad faith under the fourth enumerated circumstance and also held that the actions of the registrant can be seen as contrary to the general nature of the bad faith impugned by the Policy. This is the first decision of the Panel to consider the new policy.
Abstract
The disputed domain name, sunbrella.ca, was registered on June 6, 2011, by Tomislav Kotarac, a Toronto area real estate agent. The complainant, Glen Raven Inc., was the owner of the Canadian trademark, SUNBRELLA, which it had used in Canada (and elsewhere) since at least as early as 1961. The registrant claimed that he had registered the domain name for use in association with a new consumer product, which he had yet to develop. The registrant had made no commercial use of the domain name, but the domain name resolved to a parked page created by the registrar with links to both the complainant's products and competing products.
The Panel noted that under the new Version 1.3 of the CIRA Domain Name Dispute Resolution Policy ("CDRP Policy") bad faith may be presumed where the registrant uses the domain name for the purpose of commercial gain by creating a likelihood of confusion with the complainant's mark. The Panel concluded that the registrant ought to have been aware of the complainant's rights in the mark SUNBRELLA, since the complainant's was the only owner of valid Canadian trademarks using the word "sunbrella." The Panel then concluded that even though the registrant had not yet set up a website, the intention to establish a website for commercial gain, through association with the complainant's mark, was sufficient to meet the fourth enumerated circumstance for bad faith. In addition, the Panel also held that the actions of the registrant can be seen as contrary to the general nature of the bad faith impugned by the CDPR Policy.
Case summary
Facts. The complainant, Glen Raven Inc., had used the mark SUNBRELLA in the United States since 1959, and in Canada since 1961, in association with awning and marine fabrics, and over time, with fabric umbrellas and garden furniture, draperies, bedding products, clothing and bags. The complainant registered the mark SUNBRELLA in Canada in 1972, and had registered four additional marks containing the term "sunbrella" by the time of the dispute. The complainant established that it had used the mark SUNBRELLA extensively in association with its products and in advertising in Canada.
The registrant, Tomislav Kotarac, is a Toronto area real estate agent. He had registered the disputed domain name on June 6, 2011. The registrant gave evidence that he conceived the name as a brand name for a new consumer product, although no evidence was given as to the nature of the product or its stage of development. The registrant further indicated that he had registered the domain name as a prelude to filing an application for registration of a proposed mark in Canada, though no evidence was given to indicate that such an application had yet been filed. Since the date of registration, the domain name resolved to a standard parked page created by the registrar, which included links to vendors of both the complainant's products and competing products.
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 (Glen Raven Inc.) had rights as of the date of registration of the domain name and continues to have such rights; and (b) the registrant (Tomisloav Kotarac) has registered the domain name in bad faith as described in paragraph 3.5. In addition, the complainant must provide some evidence that (c) the registrant has no legitimate interest in the domain name. The decision turned primarily on the third factor, bad faith.
With respect to the first factor, the Panel noted that Glen Raven Inc. had a Canadian trademark registration for the mark SUNBRELLA and that the disputed domain name was identical to the registered mark. Thus, the panel found the domain name to be confusingly similar to a mark in which Glen Raven Inc. had rights as of the date of registration of the domain name and continues to have such rights.
With respect to the second factor, the only evidence that Mr. Kotarac had a legitimate interest in the domain name was a bald statement, submitted in his Response, that he had conceived the name as a brand name for a new consumer product and that he had registered the domain name as a prelude to filing an application for registration of a proposed mark in Canada. In considering the evidence, the Panel noted the new Version 1.3 of the CDRP Policy had expanded the circumstances to show legitimate interest to be non-exhaustive. Yet, even under this broadened language, the Panel concluded that Mr. Kotarac had failed to prove any such legitimate interest in the domain name and relied entirely on bald statements.
With respect to the third factor, the Panel considered the four enumerated circumstances of bad faith in the CDRP Policy. The most relevant was newly added fourth circumstance:
3.5(d) the Registrant has intentionally attempted to attract, for commercial gain, Internet users to the Registrant's website or other on-line location, by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the Registrant's website or location or of a product or service on the Registrant's website or location.
Though the Registrant had not actually established a website, and therefore did not fall within the strict language of the provision, the Panel considered that it was entitled to go beyond a strict interpretation of the provision considering that the circumstances of bad faith are non-exhaustive under the new CDRP Policy. The Panel concluded, first, that the Registrant ought to have been aware of the complainant's rights since the complainant was the sole owner of a registered Canadian trademark using SUNBRELLA, and second, that the registrant's intention to establish a website for commercial gain through association with the complainant's mark was sufficient to bring the registrant's actions within the general nature of CDRP Policy 3.5(d). Further, due to the non-exhaustive language for finding bad faith under the new CDRP Policy, the Panel held it was able to find bad faith where the actions of the registrant can be seen as contrary to the general nature of the bad faith impugned by the Policy.
In the result, the domain name was ordered transferred from the registrant to the complainant, Glen Raven Inc.
Conclusion. An allegation of bad faith may now be established absent an explicit violation of the four enumerated circumstances in the CDRP Policy where the registrant's actions are found to be contrary to the general nature of the bad faith impugned by the Policy.
Daniel M. Anthony, Ottawa
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