Domain name identical to mark cannot act as a gripe site

In a dispute involving the domain name 'mckeehomes.ca', a Canadian Internet Registration Authority (CIRA) panel, under the CIRA Domain Name Dispute Resolution Policy (CDRP), has considered whether the right of a registrant to express herself freely outweighed the rights of a complainant in its mark.

The complainant, McKee Homes Ltd (MHL), is a residential construction company in the province of Alberta, Canada. MHL is the owner of the common law trademark MCKEE HOMES, which has been used in Canada since 1990 in association with "home design and construction services and residential home sales". MHL promotes its services through a website associated with the domain name 'mckeehomes.com'.

The disputed domain name 'mckeehomes.ca' was registered on February 12 2007 by Gerlinde Honsek. The domain name resolved to a website comprised of a single page with a headline that read "McKee Homes Customer Experience". Below the headline was a disclaimer which indicated that the website was not affiliated with MHL.

Honsek was a dissatisfied owner of a home built by MHL who wanted to set up a customer complaint site directed at MHL. The stated intent of the site was to provide a forum for customers to detail their buying experience "from a customer point of view". MHL filed a complaint against Honsek with CIRA.

The CIRA panel recognized that the CDRP provides for protection of unregistered or common law trademarks and had no trouble in finding that MHL had rights in MCKEE HOMES which pre-dated the registration of the disputed domain name.

The panel reviewed the evidence and concluded that Honsek had registered the domain name in bad faith. In doing so, it noted that the domain name is identical to the mark MCKEE HOMES. Under the circumstances, the panel concluded that the use of the domain name was likely to mislead or confuse internet users into believing that Honsek was somehow affiliated with, or endorsed by, the complainant. As a result, internet traffic properly destined for MHL could be misdirected to Honsek's website. The panel concluded that this would cause disruption to MHL and its commercial interests. In addition, by adopting a domain name identical to MHL's trademark, the panel concluded that Honsek was competing with MHL for internet traffic by capitalizing on consumer confusion. This competition for internet traffic was enough, in the eyes of the panel, to find that Honsek was a competitor of MHL for the purposes of the proceedings.

It is interesting that the panel did not appear, in its analysis of bad faith, to consider what effect, if any, the disclaimer on the website associated with the disputed domain name would have on internet users.

The final element of the test under the CDRP is to determine whether or not the registrant has a legitimate interest in the disputed domain name. The definition of 'legitimate interest' is very narrowly prescribed under the CDRP and provides an exhaustive list of six factors. The focus of the panel in this case was on Paragraph 3.6(d) of the CDRP, which provides that a 'legitimate interest' may be found where a domain name is used in Canada "in good faith in association with a non-commercial activity including, without limitation, criticism, review or news reporting".

The panel concluded that although Honsek has a right to express herself, the right did not extend to allow her to "represent herself as the complainant, or represent that she is somehow connected to the complainant". It concluded that the right to freedom of expression does not confer upon a registrant the right to register a domain name that is identical to a third-party mark which, on its face, suggests an affiliation with, or endorsement by, a mark owner. The panel also opined that the fact that the nature of the website is apparent as soon as one arrives to it does not legitimize the registration. Accordingly, the disclaimer did not assist the registrant since, in the opinion of the panel, damage had already been done as an internet user would be exposed to a misrepresentation inherent in the domain name.

Having so concluded, the panel ordered the transfer of the domain name to MHL.

The panel noted that Honsek can achieve her objective of criticism by adopting a domain name that is not identical to MHL's mark, or that does not otherwise suggest some type of connection with MHL.

The panel's findings raise the issue of how close a domain name can be to a trademark and still take advantage of the 'criticism' exception in the CDRP. One of the main points of a gripe site is that it does suggest some type of connection to the subject matter of the critique. A plain reading of the CDRP would suggest that even a domain name that is identical to a trademark can enjoy the protection of Paragraph 3.6(d) of the CDRP.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto