CDRP panel rules that personal names can be trade names

Canada

Two recent related decisions of a panel under the Canadian Internet Registration Authority Domain Name Dispute and Resolution Policy (CDRP) have considered the extent to which an individual’s name can serve as a basis for a successful complaint (Ahmadi v Hannah; Thompson v Hannah).

The respondent in both cases, Scott Hannah, was a customer of Manulife Financial Affinity Markets. He was unhappy with certain decisions made by Manulife which had allegedly cost him a sum of money. While unhappy generally with the company, Mr Hannah had a particular focus on Wallace Thompson, one of the complainants and a vice-president client relationships and business development at Manulife, for his response to the registrant’s complaints with the company. 

At some point, the other complainant, Giulia Ahmadi, a lawyer at Manulife, became involved in attempting to resolve Mr Hannah’s dispute with the company. In the course of dealing with Mr Thompson and Ms Ahmadi, Mr Hannah registered the domain names 'wallythompson.ca' and 'giuliaahmadi.ca'.

In discussions with the complainants after they discovered the registrations for the domain names, the registrant made insinuations that he planned to use the domain names to damage the reputations of the complainants. A number of the threats also took on a personal tone. In November 2013 the complainants commenced proceedings under the CDRP to secure transfer of the domain names.

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

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

As a general rule, the name of an individual is not within the definition of 'mark'. However, if an individual uses his or her name as a trademark or trade name in Canada for the purpose of distinguishing his or her goods, services or business, the name may qualify, especially where the name is registered as a trademark. This is important to keep in mind when dealing with a '.ca' dispute relating to a celebrity or other public person. Although that person may be well known in Canada, such a reputation may not translate into trademark rights.

In this case, the panel found that both complainants had promoted their respective names in the insurance industry for some time and developed goodwill in their names. The panel found that the complainants had developed their respective “brands” through marketing, through a web presence and on social networks, through association with new products, services and business developments and through involvement with professional associations. This was held to accord with current practice and expectations in many professions in which professionals use personal names as their business identifiers, where these names and reputations go to distinguish the quality and nature of the professional services offered. As a result, the complainants’ personal names were held to be, in effect, trade names.

The panel found that the registrant had made it clear that the registration of the disputed domain names was meant to, and would, cause harm to the complainants, which the panel found was “plain and simple” bad faith. The panel also concluded that the registrant had no legitimate purpose in registering the domain names.

In the context, it is understandable that the panel wanted to find in favour of the complainants, especially given the registrant’s comments and belligerent attitude towards the complainants. However, on balance the decision appears incorrect on the letter of the CDRP and may open the doors to individuals asserting rights under the CDRP.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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