CDRP does not prohibit second proceeding in respect of same domain name

Canada

In Bowring & Co Inc v Maddeaux (November 13 2008), a Canadian Internet Registration Authority (CIRA) panel has considered whether proceedings under the CIRA Domain Name Dispute Resolution Policy (CDRP) could be commenced and successful where the dispute involved a second complaint concerning the same complainant, registrant and domain name.

In May 2007 Bowring & Co Inc commenced a CDRP proceeding related to the registration by Eric Maddeaux of the domain name 'bowring.ca'. The only evidence submitted by Bowring to establish its rights in the trademark BOWRING was a certificate of registration issued by the Canadian Intellectual Property Office which listed Tereve Holdings Ltd as the owner. No subsequent assignment or other document evidencing the assignment of the mark to Bowring or otherwise was provided.
 
The panel made some additional comments on the Canadian Presence Requirements (CPR) under the CDRP. Analyzing the applicable sections, the panel stated that Bowring had the burden of proving that it was in compliance with the CPR in order for a complaint to go forward.
 
The panel dismissed the initial proceeding on the grounds that Bowring had failed to establish that:
  • it had any rights to the BOWRING mark; and
  • it was in compliance with the CPR. 
However, the panel did not go on to address any of the other substantive issues raised in the initial proceeding (for further details please see "CIRA panel rejects 'bowring.ca' complaint over technicalities").
 
In September 2008 Bowring commenced a new proceeding under the CDRP related to Maddeaux’s registration of the domain name 'bowring.ca'. As a preliminary matter, the panel wrestled with the question of whether Bowring was entitled to continue with the second proceeding since the domain name and registrant at issue were the same as in the initial proceeding, which a CIRA panel had rejected.
 
The panel decided that it was entitled to rule on the complaint in spite of the initial proceeding. The panel noted that there is nothing under the CDRP that prohibits a second action in respect of the same domain name registration. In addition, the panel observed that the initial proceeding had not addressed the substantive merits of Bowring’s claim, but was decided on the grounds that Bowring had not provided evidence to demonstrate that it had rights in the BOWRING mark.
 
The panel found that the “procedural defects” had been corrected in the second proceeding and went on to review the claim on the merits. However, the panel stated that it believed that there may be cases in which a complainant may be barred from initiating a second complaint in respect of the same domain name registration where a complainant uses the CIRA process in order to harass or intimidate a registrant.
 
In respect of the specific substantive issues related to this proceeding, the panel concluded that Bowring had established its entitlement to a remedy under the CDRP. The panel found that:
  • 'bowring.ca' was confusingly similar to the BOWRING mark; and
  • Maddeaux had registered the domain name in bad faith and without legitimate interest. 
The panel thus ordered that the domain name be transferred to Bowring.
 
Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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