CIRA panel rejects 'bowring.ca' complaint over technicalities
In Bowring & Co Inc v Maddeaux, a three-member panel under the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy (CDRP) has held that Bowring & Co Inc had failed to prove ownership of the BOWRING trademark and to show a Canadian presence.
The 'bowring.ca' domain name was registered by Erik Maddeaux after the previous registration had lapsed. Bowring brought a complaint before Resolution Canada, one of the two service providers that deal with '.ca' complaints.
Under the CDRP, Bowring had to establish that:
- the domain name 'bowring.ca' is confusingly similar to the BOWRING mark (in which Bowring had prior rights);
- Maddeaux registered the domain name in bad faith; and
- Maddeaux has no legitimate interest in the domain name.
The complaint did not withstand the first part of the test. Bowring filed a certified copy of the trademark registration for the BOWRING mark. The registration set out that the mark is owned by Tereva Holdings Ltd, not Bowring. Bowring alleged, however, that the trademark rights were assigned to it following bankruptcy, but no agreements were provided to the panel. Bowring was given an extra opportunity (by letter) to provide argument and evidence of this transfer, but the documents provided were not determinative. The panel stated that "[Bowring] has not shown a chain of title that would indicate that it is the current owner of the mark". Moreover, one of the panellists was of the view that the ownership specified on the Trademark Register was binding (regardless of any agreements transferring title).
The panel also commented on whether a complainant must demonstrate or merely warrant compliance with the Canadian Presence Requirements (CPR). Despite the CDRP omitting the requirement of Canadian presence as an explicit criterion for success, the panel read the CPR as placing a burden on Bowring to show or demonstrate (and not merely warrant or satisfy) compliance with the requirements. In this case, proof of the place of incorporation was not offered by Bowring.
Although CDRP decisions such as this are not binding precedent, they illustrate potential difficulties that may arise when bringing complaints.
Yuri Chumak and Scott MacKendrick, Cameron MacKendrick LLP, Toronto
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