Acrobat Construction sent tumbling by CIRA panel
In Acrobat Construction/Enterprise Management Inc v 1550507 Ontario Inc, a Canadian Internet Registration Authority (CIRA) panel has refused to order the transfer of 'acrobat.ca' to the complainant. The panel held that the respondent (i) has a legitimate right to use the domain name to host a search engine providing results for a search of the word 'acrobat', and (ii) had not registered or used it in bad faith.
Acrobat Construction, a construction management company, registered the domain name 'acrobat.ca' on November 6 2000. As Acrobat Construction failed to renew the registration, CIRA released the domain name to the general public. A company that operates under the number 1550507 Ontario Inc registered the domain name and was using it to direct internet users to a search engine providing results for a search of the word 'acrobat'. At the time of registration, Ontario Inc did not have any knowledge of the existence or activities of Acrobat Construction.
Acrobat Construction filed a complaint against Ontario Inc under the CIRA Domain Name Dispute Resolution Policy (CDRP). It argued that it had trademark rights in the term 'acrobat' as a result of its use of the term in its trade name and that Ontario Inc's registration of 'acrobat.ca' infringed these rights.
The panel rejected the complaint and refused to order the transfer of 'acrobat.ca'. It found that Acrobat Construction had not shown that its use of the term 'acrobat' in its trade name had created any trademark rights, particularly as there are several other businesses located in the same city that operate under the name Acrobat. On the other hand, the panel held that Ontario Inc is using 'acrobat.ca' as a trademark, and therefore has rights and a legitimate interest in the domain name. It reasoned that Ontario Inc's commercial use of 'acrobat.ca' commenced well before the date that the complaint was filed. It also held that Ontario Inc uses the domain name to further its business objectives and to provide its services.
The panel concluded that there was no issue of bad faith because Ontario Inc had not attempted to sell the disputed domain name and had not registered it in order to prevent Acrobat Construction from registering a trademark as a domain name or disrupt its business. Further, as Acrobat Construction is in the construction management business and Ontario Inc provides internet information services, the panel found that the parties are not competitors.
Glen A Bloom and Samantha J Gervais, Osler Hoskin & Harcourt LLP, Ottawa
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