CIRA orders transfer of 'zantac.ca' to Johnson & Johnson

Canada

In Johnson & Johnson v Globe Media International Corporation (March 11 2008), a Canadian Internet Registration Authority (CIRA) three-member panel has unanimously ordered the transfer of the domain name 'zantac.ca' to Johnson & Johnson.

Johnson & Johnson holds a Canadian registration for the trademark ZANTAC in association with a pharmaceutical product to control stomach acid. The mark was registered in 1983. The evidence showed that annual sales of ZANTAC-branded products in Canada exceeded C$8 million since 2002. Johnson & Johnson brought a complaint under the CIRA Domain Name Dispute Resolution Policy (CDRP) against Globe Media International Corporation regarding the domain name 'zantac.ca'.

Under the CDRP, Johnson & Johnson had to establish that:

  • the domain name 'zantac.ca' is confusingly similar to marks in which Johnson & Johnson had prior rights;

  • Globe Media registered the domain name in bad faith; and

  • Globe Media had no legitimate interest in the domain name.

With regard to the first requirement, the panel concluded that:

  • Johnson & Johnson had pre-existing rights dating back to 1983 (Globe Media registered the domain name in 2003); and

  • the marks were confusingly similar, as the domain name without the '.ca' suffix is identical to the ZANTAC mark.

Under the CDRP, there are three explicit criteria for bad faith. In this case, Globe Media offered to sell the domain name to Johnson & Johnson for an amount in excess of registration costs. According to the panel, this "is precisely the test in Paragraph 3(7)(a) [of the CDRP] and, accordingly, the complainant has established bad faith". The panel did not have to decide on the other criteria of bad faith under Paragraphs 3(7)(b) or (c).

The panel also found that Johnson & Johnson had provided some evidence of lack of legitimate interest. Therefore, the burden shifted to Globe Media to prove, on a balance of probabilities, that it had a legitimate interest in the 'zantac.ca' domain name. Globe Media argued that it was providing vanity email services using the 'zantac.ca' domain name, together with a portfolio of other names (eg, 'versace.ca', 'movada.ca', 'smirnoff.ca' and 'fendi.ca').

Globe Media pointed to decisions of the World Intellectual Property Organization (WIPO) in which the provision of vanity email services was accepted as a legitimate interest under the Uniform Domain Name Dispute Resolution Policy (UDRP) (see F Hoffman La Roche AG v Domain Admin Tucows.com Co (Case D2006 1488) and Buhl Optical Co v Mailbank.com, Inc (Case D2000-1277)). However, the panel distinguished the present case on the basis that the registrants in the WIPO cases had extremely large portfolios of vanity addresses. In Hoffman La Roche, for example, the registrant had acquired "tens of thousands" of domain names to serve as vanity addresses. In the Buhl Case, the panel observed that the registrant claimed to have approximately 100,000 registered customers and in excess of 15,000 registered domain names.

In the present case, however, the panel doubted the legitimacy of Globe Media's business: there was no evidence of any subscribers to the vanity email service and the number of domain names was comparatively small (evidence was provided with respect to four domain names only). Consequently, the panel found that Globe Media had failed to prove that it had a legitimate interest in the domain name.

Yuri Chumak, Cameron MacKendrick LLP, Toronto

Get unlimited access to all WTR content