CIRA Dispute No. 00152 (June 2, 2010)
Under the Domain Name Dispute Resolution Policy, the complainant must prove that the domain name is confusingly similar to a mark in which the complainant has rights and that such rights existed prior to the registration date of the domain name.
The disputed domain name, scion.ca, was registered in March 2003 by an individual and operated as a holding page with links to automotive products and services. The complainant (Toyota) had applied for the trademark SCION in 2001, operated a website at scion.com since 2002, sold SCION-branded cars in the U.S. since June 2003, and conducted pre-launch publicity in Canada for the brand since June 2003. Toyota changed its plans and did not ultimately market SCION-branded cars in Canada at the time. Toyota filed new proposed-use applications for the mark SCION in 2008. The arbitrator confirmed that to establish rights in the mark within the meaning of the Domain Name Dispute Resolution Policy ("Policy"), a complainant must show that the rights existed prior to the registration date of the domain name and must continue to exist at the time of the proceeding. Rights are based on use of the mark and merely making known is not sufficient. The complaint was dismissed.
Facts. The domain name scion.ca was registered by an individual, Ken Sproul, on March 4, 2003. In August 2005, the content of the website provided a link to Ken Sproul's blog, which contained entries discussing search engine optimization techniques. As of November 2005 and up to the date of the proceeding, the website consisted of a holding page with various links to automotive products and services, including some belonging to competitors of Toyota.
Toyota had operated a website at scion.com since 2002 and had sold SCION-branded cars in the U.S. since June 2003. Toyota alleged that it had used the mark SCION in Canada since June 2003 in association with its pre-launch publicity for SCION-branded cars in Canada and with maintenance and repair services for vehicles originally sold in the U.S. but subsequently brought to Canada. Toyota also alleged that it had used the mark on the scion.com website in a teaser web page as early as March 2002 and in broadcast and print advertising that were accessible in Canada. It also argued that there was spill-over use of the mark SCION in Canada as a result of significant use of the mark in the U.S. since June 2003.
In 2001, Toyota had filed trademark applications based on proposed use for the mark SCION in association with wares only. These applications were abandoned due to changes in Toyota's plans for the launch of the SCION-branded automobiles in Canada. In 2008, new trademark applications based on proposed use were filed in association with wares only and were allowed in 2009. Toyota plans to commence sales of SCION-branded cars in Canada in 2011.
Analysis. For Toyota to succeed, it had to establish the three conditions set out in paragraph 4.1 of the Policy, namely that: (a) the domain name is confusingly similar to a mark in which the complainant (Toyota) has rights as of the date of registration of the domain name and continues to have such rights; (b) the registrant has registered the domain name in bad faith; and (c) the registrant has no legitimate interest in the domain name.
The decision turned entirely on whether Toyota had rights in the mark SCION prior to the date of registration of scion.ca on March 4, 2003. The arbitrator examined the meaning of "mark" and "right" as defined in paragraphs 3.2 and 3.3 of the Policy respectively. He found based on the facts that to qualify as a mark in which Toyota had rights, Toyota needed to show that the mark was used in Canada by Toyota or its predecessor and that such use predated the registration of the domain name.
Based on the evidence, the arbitrator considered whether Toyota had established "use" as defined in paragraph 3.5 of the Policy. Pursuant to paragraph 3.5(a), a mark is in use or used in association with wares where transfer of the property in or possession of the wares in the normal course of trade, or exportation from Canada of the wares bearing the mark, has occurred. The arbitrator found no evidence of such transfer or exportation and held that the display of the mark SCION as a teaser advertisement on a website did not meet the requirement of use for wares. Pursuant to paragraph 3.5(b), a mark is in use or used in association with services when it is used or displayed in the performance or advertising of those services. The arbitrator held that mere assertion that the mark SCION had been used in association with maintenance and repair services by Toyota's authorized dealers was not sufficient evidence. In addition, the arbitrator pointed out that Toyota's trademark applications were based on proposed use and were in association with wares only.
The arbitrator also confirmed that paragraph 4.1(a) required that rights to a mark must exist prior to the registration of the domain name at issue. Almost all of Toyota's evidence post-dated the relevant date of March 4, 2003. The arbitrator noted that making known in Canada was not sufficient to establish that a person has rights in a mark under the Policy.
Having found that Toyota had no rights to the mark under the Policy prior to the registration date of the domain name, the arbitrator chose not to analyze the remaining two conditions of bad faith and legitimate interest.
For a complainant to be successful in a CIRA Dispute Resolution Policy ("CDRP") proceeding under the Policy, the complainant must prove that the domain name is confusingly similar to a mark in which the complainant has rights and that such rights existed prior to the registration date of the domain name. This is a key difference from a Uniform Domain Name Dispute Resolution Policy proceeding in which rights in the mark are not required to predate the registration of the domain name. If a party intends to secure a dot-ca domain name corresponding to a proposed-use mark, a defensive registration is recommended since third-party registration of the domain name before the mark is used in Canada cannot be remedied under the CDRP.