Canadian government wins case against '.ca' cybersquatter

Canada

In Government of Canada v Bedford, a British Columbia International Commercial Arbitration Centre panel has ordered the transfer of nine '.ca' domain names to the Canadian government. Applying the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP) the three-member panel found that, under a test of resemblance based on first impression, the domain names were confusingly similar to official and common law marks in which the government has rights.

David Bedford registered the following domain names between November 2000 and May 2002: 'canadiancustoms.ca', 'ecgc.ca', 'governmentofcanada.ca', 'gouvernementducanada.ca', 'publicworkscanada.ca', 'statcanada.ca', 'statscanada.ca', 'transportcanada.ca', 'theweatheroffice.ca' and 'weatheroffice.ca'. The Canadian government claimed that the domain names were confusingly similar to (i) its official marks GOVERNMENT OF CANADA, TRANSPORT CANADA, WEATHER OFFICE and WEATHEROFFICE.CA, and (ii) its common law trademarks 'Canada Customs and Revenue Agency', 'ec.gc.ca', 'Public Works and Government Services Canada', 'Public Works Canada' and 'Statistics Canada'. The government brought a complaint under the CDRP requesting the transfer of the domain names. It had already obtained the transfer, under the Uniform Domain Name Dispute Resolution Policy (UDRP), of 31 top-level generic domain names registered by Bedford.

The panel found that the government had met the three-prong test set out in the CDRP for nine of the disputed domain names. Firstly, when looking at whether the government has rights in the marks that were the basis for the claim, the panel found that the government had rights in its official marks pursuant to Paragraph 3.3(c) of the CDRP, which provides that public notice of the adoption and use of an official mark under the Canadian Trademarks Act is sufficient to create rights in that mark. Further, the panel is not required or permitted to look beyond the evidence provided by the register to determine the validity of a mark based on lack of distinctiveness or non-use where rights are based on either registered Canadian trademarks or official marks.

The panel also confirmed the government's claims in its common law trademark rights, finding that, as a non-commercial organization, the government had used the marks to carry out, promote and advertise its non-commercial activities, as required by the CDRP.

Secondly, the panel applied a test of resemblance based upon first impression and imperfect recollection to determine whether the domain names were confusingly similar to the marks. It found that all the domain names, except 'canadiancustoms.ca', were confusingly similar to the government's marks.

Lastly, the panel had no trouble (i) inferring a lack of legitimate interest on Bedford's part, and (ii) finding that he had registered the domain names in bad faith.

Accordingly, the panel ordered the transfer of nine of the 10 disputed domain names.

Of greatest significance is the fact that the panel used a 'first impression' test to determine confusing similarity, rather than a test of confusion as applied in cases of trademark infringement under the Canadian Trademarks Act. This is also contrary to the decision of the panel in Air Products Canada Ltd v Index Quebec Inc (see 'Airproducts.ca' panel says registering generic domain names is not evidence of bad faith). The net result is that, if followed, this new test will give Canadian trademark owners very broad rights as it will be based on the word elements of the mark and domain name without any reference to the wares, services or business associated with the mark or domain name.

For a discussion of the main differences between the CDRP, the UDRP and other policies, see Domain name dispute resolution policies compared.

Marc Davis and R Scott MacKendrick, Ogilvy Renault, Toronto

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