CIRA panel expands scope of rights under CDRP

Canada

If a recent decision of a panel under the Canadian Internet Registration Authority's Domain Name Dispute and Resolution Policy (CDRP) is followed, the ability of trademark owners to establish 'rights' in a trademark sufficient to succeed in a CDRP proceeding will be greatly expanded. The scope of a trademark owner rights was considered in a case involving Twenga SA and an unidentified registrant relating to the domain name 'twenga.ca'.

Complainant Twenga is a French company which operates a website that provides an open shopping platform offering, among other things, price comparison services. The website, associated with the domain name 'twenga.com' has been operating since at least 2006. Twenga filed no evidence in the proceeding demonstrating use of TWENGA in Canada. The evidence disclosed that Twenga owned trademark registrations around the globe for TWENGA. However, its Canadian trademark registration for TWENGA issued only on October 25 2011.

This became relevant since the domain name 'twenga.ca' had been registered by the unidentified registrant on October 5 2010, or over a year earlier. Since that time, the disputed domain name had resolved to a parked website which provided links to various goods and services.

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.

Effective August 22 2011, the CDRP was amended. Among the amendments was the deletion of the definition of 'Rights'. However, the test for succeeding in a CDRP proceeding, as set out above, continues to use the term 'Rights', with a capitalised letter 'R'. It is assumed that this was a typographical error by CIRA when amending the CDRP.

The definition of 'Rights' under CDRP as it existed prior to August 22 2011 was confined to an exhaustive list of factors, including use of a trademark in Canada by a complainant, or registration of a trademark with the Canadian Intellectual Property Office (CIPO) by a complainant. However, in all cases, those 'rights' needed to pre-date the date of the registration of the domain name at issue.

By deleting the definition of 'Rights' from the CDRP, it is now open to a complainant to put forth any evidence that it has 'rights' in a trademark. Since neither 'Rights' nor 'rights' is defined under the CDRP, it must be assumed that CIRA intended that the CDRP now encompass trademark rights which may arise under the Trademarks Act but which were excluded under the definition of 'Rights' under the old policy. For example, under the old policy, it was not possible for a complainant to establish that it had rights in a trademark which had been made known in Canada, for example due to the fact that advertisements featuring the trademark had circulated in Canada, even if the goods or services of the trademark owner where not available to Canadians.

What was interesting in this case is that Twenga chose to submit no evidence to show that it had used its TWENGA mark in Canada prior to the registration of the disputed domain name. Rather, Twenga chose to rely solely on its trademark registration, which was not based on any use in Canada. This should have been the end of the matter and the complaint should have been dismissed, at least on a plain reading of the CDRP. However, in this case the panel chose to ignore the established line of cases under the old policy which held that, if the complainant’s 'Mark' is an unregistered trademark or a trademark registered with CIPO after the domain name registration date, the complainant must establish that the trademark was used in Canada by the complainant or its predecessor for the purpose of distinguishing the goods, services or business of the complainant or its predecessor prior to the domain name registration date.

Instead, the panel found that “once a trademark is registered, its owner has rights in the mark from the date of the [trademark] application”, regardless of when the trademark registration issued and whether there had been prior use of the mark in Canada as it relates to the disputed domain name. The panel reasoned that, since 'rights' are not defined in the CDRP, the panel was not limited to the classic test of prior use for unregistered marks. The panel was also swayed by the fact that the website associated with the disputed domain name offered the same “class of goods and services” as Twenga.

The panel was also influenced by two other factors:

  • The fact that the registrant of the disputed domain name did not oppose the TWENGA application before CIPO; and
  • Section 14 of the Trademarks Act - specifically, the panel took hold of the wording of Paragraph 14(1)(b) of the act, which notes that a trademark is registrable in Canada if it is not without distinctive character, having regard to, among other things, the length of time during which it has been used in any country. The panel noted that the TWENGA trademark registration in France had issued in 2004. With respect to the panel, Section 14 should not have applied in this case since (i) Twenga did not claim the benefit of Section 14 during prosecution of its application, and (ii) Paragraph 14(1)(b) is meant to address situations where a mark is unregistrable in Canada (eg, where it is descriptive) but the applicant can demonstrate through evidence that the mark is “not without distinctive character in Canada” to overcome that objection. That was not an issue in this proceeding or during the prosecution of the TWENGA trademark application before CIPO.

The panel also concluded that the registration of the disputed domain name was in bad faith and that the registrant had no legitimate interested in the domain name. It thus ordered a transfer of the domain name to Twenga.

Trademark rights in Canada generally arise from use. Under traditional Canadian trademark law, a pending application with CIPO, absent use in Canada, does not provide the applicant with any substantive rights, other than priority within CIPO as it relates to later-filed applications, and the potential to succeed in a trademark opposition against a later-filed application for a confusing trademark which has no use in Canada, or use which post-dates the adoption date of the earlier filed application. This case would appear to expand the scope of 'rights' under the CDRP beyond the trademark rights provided under the act and the common law.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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