Can a domain name registrant attack the distinctiveness of a trademark?

A panel under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP) has rendered its decision in Vessel Assist Association of America Inc v MacKenzie (Decision 00080, July 31 2007). The decision dealt with several interesting issues under the CDRP, including whether a registrant can attack the distinctiveness of a mark being relied on by a complainant.

The Vessel Assist Association of America Inc is a US corporation which provides on-the-water assistance to boat owners, including boat towing. It registered the domain name 'vesselassist.com' in 1998 and began offering its services in Canada in 2000. In 2003 the Vessel Assist Association secured a Canadian trademark registration for the mark VESSEL ASSIST.

Michael MacKenzie is the sole proprietor of Marine Assist International, which has offered emergency towing, salvage and non-emergency services to commercial and recreational boaters on the west coast of Canada since 1986. In 2001 MacKenzie registered the domain name 'marineassist.ca'. On September 10 2003 MacKenzie also registered the domain name 'vesselassist.ca'. At all relevant times an internet user attempting to access the website associated with the domain name 'vesselassist.ca' was redirected to the website associated with the domain name 'marineassist.ca'. The home page of this website allowed users to access a video clip which was critical of the Vessel Assist Association.

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

• the domain name at issue is similar to a trademark in which it has rights which predate the registration date of the domain name;
  
  
• the registrant registered the domain name in bad faith; and
  
  
• the registrant does not have a legitimate interest in the domain name.

The panel had no trouble in finding that:

• the Vessel Assist Association had rights in the trademark VESSEL ASSIST, which pre-dated the registration of the domain name 'vesselassist.ca'; and
  
  
• the domain name was identical to the trademark.

With respect to bad faith, the panel found that MacKenzie had registered the domain name primarily for the purpose of disrupting the business of the Vessel Assist Association, which was a competitor of his business. Accordingly, the registration of the domain name 'vesselassist.ca' was found to be in bad faith.

With respect to legitimate interest, MacKenzie submitted that he had a legitimate interest in the domain name 'vesselassist.ca' as the generic name of his business services or that the domain name was clearly descriptive of his business services. However, the panel was not convinced that MacKenzie could establish that he had used the domain name in good faith as the generic name of his business services or as a clear description of his business services. The panel was specifically concerned with the video clip, which it viewed as an attack on the Vessel Assist Association.

In addition, two of the panellists held that MacKenzie had failed to establish legitimate interest because the trademark VESSEL ASSIST was registered in Canada. Therefore, agreeing with MacKenzie's assertions on legitimate interest would be akin to finding that the registration was invalid.

However, the third panellist (the chair of the panel) disagreed with this analysis. Although he agreed that in the vast majority of CDRP disputes, there is little or no scope or legal power for the panel to consider the validity of trademark registrations, this case might have fallen within the narrow class of disputes in which the validity of a trademark registration could be challenged under a CDRP proceeding. However, the presence of the video on the website undermined MacKenzie's case.

In any event, the chair felt that the presence of a trademark registration should not serve as a bar to the ability of a registrant to allege that the trademark is clearly descriptive. The chair noted that the burden of proof of any claim in this regard would be on the registrant of the domain name and that it would be a heavy burden to satisfy. In addition, any finding would not affect the registration of the trademark and would allow the registrant only to hold onto the domain name.

Consequently, the domain name 'vesselassist.ca' was transferred to the Vessel Assist Association. However, the decision may open an avenue for a registrant to attack a complainant's trademark registration in the context of the CDRP.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto