CIRA Dispute No. 00177 (January 23, 2012)
Version 1.3 of the CIRA Domain Name Dispute Resolution Policy, which came into effect in August 2011, removed the definitions of "rights" and "use" of a mark for the reason that those definitions were seen to improperly narrow what rights qualify for protection. This is the first decision under the current Policy expanding the grounds upon which a complainant can establish "rights in the mark." Specifically, the Panel found that where the complainant's trademark registration is for use with the same goods or services as the domain name, then that registration is evidence of the complainant's rights in the mark as of the date of filing of the application. However, where the goods and services are not the same, the registration can still only be used as evidence of rights in the mark as of the date of registration.
The disputed domain name, twenga.ca, was registered on October 5, 2010. The complainant is a French company who owned several national registrations for the mark TWENGA for use in association with an online shopping website, including a French registration issued November 18, 2004, and a Canadian registration that issued on October 25, 2011, from an application filed May 12, 2008. No evidence was filed in the proceeding of use or reputation of the mark TWENGA in Canada. The central issue in this case was whether the complainant could establish "rights in the mark" in Canada prior to the date of registration of the domain name based on a trademark registration that issued more than a year afterwards. The one-member Panel concluded that the phrase "rights in the mark," a term which is not defined in version 1.3 of the CIRA Domain Name Dispute Resolution Policy ("CDRP Policy"), must be given a broad reading. Where the complainant's Canadian registration is for use in association with the same goods or services as the domain name, that registration can serve as evidence of the complainant's rights as of the filing date of the application. However, where the parties use the mark in association with different classes of goods or services, considerations of reverse domain hijacking arise such that a more strict interpretation of "rights in the mark" should be applied, and the registration will serve as evidence of the complainant's rights only as of the registration date.
Facts. The complainant, Twenga, S.A., is a French company with several national registrations for TWENGA for use in association with an online shopping website that allows consumers to compare prices for various goods. The original French registration issued November 18, 2004, and the Canadian registration issued on October 25, 2011, with a filing date of May 12, 2008. The Canadian application was based on use and registration in France.
The registrant's name and contact information were privacy protected (hereinafter referred to as "John Doe"). The registrant did not participate in the proceeding, nor respond to any communications.
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 (Twenga) had rights as of the date of registration of the domain name and continues to have such rights; and (b) the registrant (John Doe) 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 first factor, rights in a relevant mark as of the date of registration of the domain name.
With respect to the first factor, the mark and domain name were identical. Therefore, the only issue was whether the complainant could establish that its rights in the mark TWENGA in Canada existed prior to the date of registration of the domain name, October 5, 2010. As noted above, the complainant's registration issued a year after the domain name was registered. In dealing with the issue, the one-member Panel noted that the case raised the possibility of reverse-domain hijacking whereby a complainant obtains a trademark registration for an existing well-known domain name, and then tries to use the trademark registration to assert entitlement to ownership of the domain. Typically in these situations, the trademark is registered for use in association with the same goods or services offered under the domain name.
The Panel then referred to CDRP Decision No. 004 (January 31, 2003), Cheap Tickets and Travel Inc v. Emall.ca Inc., which involved similar circumstances. In that case, it was held that a trademark registration establishes rights in a mark only from the date of registration. In order to show rights at an earlier date, the complainant must rely on common law rights arising through use of the mark in Canada. It is noted that Cheap Tickets was decided under a previous version of the CDRP Policy, which included the restrictive definitions of "rights" and "use." The Panel agreed with the finding in Cheap Tickets that prior use of the mark may establish rights as of the date of use. However, the Panel departed from the finding in Cheap Tickets that a trademark registration is only sufficient to establish rights from the date of registration. Instead, the Panel held that the trademark owner may assert rights in a registered mark from the filing date of the application in situations where the domain name and trademark are used with the same class of goods.
The Panel justified a departure from the Cheap Tickets decision on the basis that the phrase "rights in the mark" is not defined in version 1.3 of the CDRP Policy and a broad reading requires that the definition of "rights" provide for a fair balance between the rights of a domain name holder and that of a trademark registrant. It was noted that trademark applications may be opposed during prosecution, and if so, the earlier filed trademark application would enjoy entitlement over a later filed domain name, assuming there was no evidence of use or reputation. Therefore, the decision of the Canadian Trademarks Office to grant a registration to one claimant ought to be taken as clear evidence of which of the competing claimants have entitlement to or "rights in the mark."
The Panel cautioned that where the competing claimants seek to use the marks in association with different classes of goods or services, then considerations of reverse domain name hijacking arise, and the balance between the rights of the domain name holder and that of the trademark registrant require a more strict interpretation, such that "rights in the mark" ought to flow from the date of registration of the mark.
In applying the above principle to the present case, the Panel found that the complainant's registration for the mark TWENGA was sufficient to support a claim for rights in the mark as of the date of application, namely May 12, 2008. As such, the complainant was found to have met the first factor.
It is noted that the above analysis of the first factor would generally be considered irrelevant under ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP"), since the UDRP does not contain any requirement that the complainant establish rights in a relevant mark prior to the registration of the domain name.
With respect to the second factor, based on a finding that the registrant's website contains links to various competitors of the complainant, it fell within the explicit language of sub-paragraph 3.5(d) and thus satisfied the bad faith requirement.
With respect to the third factor, namely whether the registrant had any legitimate interest in the domain name, the Panel considered the six enumerated grounds in paragraph 3.4 of the CDRP Policy that may establish a legitimate purpose and concluded that none of them were met.
Under previous versions of the CDRP Policy, a complainant was required to show use or registration of a relevant trademark in Canada in order to establish "rights in a mark" to which the domain name is confusingly similar. Further, such rights had to exist prior to registration of the domain name. The definition of "rights" under the current version 1.3 of the CDRP Policy is less restrictive and should be read broadly in order to provide for a fair balance between the rights of a domain name holder and that of a trademark registrant. In this regard, where the complainant's mark and registrant's domain name are used in association with the same class of goods or services, a registered mark may be sufficient to establish rights since the date of filing of the application. However, where the goods and services are different, the registered mark will continue to establish rights only as of the date of registration.
The effect of this decision is that complainants may in the proper circumstances use the CDRP Policy to recover dot.ca domains registered by third parties in bad faith after filing of a Canadian trademark application, but before use of the mark commences or the registration issues. This closes a loop-hole in the previous versions of the CDRP Policy whereby cyber squatters could try to register domain names corresponding to proposed use trademark applications with the intention of profiting from the current or future goodwill associated with those domains.
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