'Airproducts.ca' panel says registering generic domain names is not evidence of bad faith

As only a few contested decisions have been released to date under the Canadian Internet Registration Authority's (CIRA) Dispute Resolution Policy (CDRP), the scope of the CDRP is still very much to be determined. The panel's decision in Air Products Canada Ltd v Index Quebec Inc takes a broad approach to the determination of 'confusingly similar' and a liberal view of bona fide business plans, which may negate accusations of bad faith, helping to clarify the CDRP's scope.

Index Quebec registered 'airproducts.ca' and 43 other domain names containing generic or descriptive terms coupled with the word 'products' because its business plan is to offer space and links on its websites to advertisers whose products match a particular domain name. Air Products Canada has operated under its trade name since 1997 and is the registered owner of the AIR PRODUCTS trademark. It submitted a complaint requesting transfer of the domain name.

In order to be successful under the CDRP, the complainant must show that:

• the '.ca' domain name is confusingly similar to the rights being asserted;
  
  
• the registrant does not have rights or legitimate interests in the domain name; and
  
  
• the domain name was registered in bad faith.

The panel adopted a broad test of 'confusingly similar', finding that 'airproducts.ca' is not confusingly similar to either Air Products' trade name or its trademark because the words 'air products' were not adapted to distinguish and do not distinguish one business from another. However, because the CDRP has not yet been extensively interpreted, the panel acknowledged that a narrower interpretation of 'confusingly similar' (ie, based on a 'reasonableness' test) might be appropriate in other circumstances.

The panel also found that the fact that Index Quebec had registered many generic and descriptive domain names did not constitute bad faith. Rather, the company's bona fide business plan regarding the registration of such names negates Air Products' accusations of bad-faith registration. As a result, the panel dismissed the complaint.

For discussion of other decisions that examine the scope of the CDRP's 'bad-faith' test, see 'RadioCanada.ca' panel considers surrounding circumstances to determine bad faith and CDRP 'bad-faith' test wider than first thought.

Samantha Gervais, Osler Hoskin & Harcourt LLP, Ottawa