Domain name transfer ordered in dispute between non-profit safety groups

Canada
In Canada Safety Council v 3132102 Nova Scotia Ltd (October 8 2009), a Canadian Internet Registration Authority (CIRA) three-member panel has ordered the transfer of the domain name 'nationalsafetycouncils.ca' to the Canada Safety Council (CSC), a non-profit corporation, under the CIRA Domain Name Dispute Resolution Policy (CDRP).
 
In its complaint, CSC, a provider of safety information through media and volunteer channels in Canada, asserted two 'official' marks, CANADA’S NATIONAL SAFETY COUNCIL and CANADA SAFETY COUNCIL. The registrar of trademarks had given public notice of CSC’s adoption and use of these official marks in 1994. The CIRA panel focused on the first of these official marks as being the closest to the disputed domain name.
 
The domain name resolved to a website operated by the registrant on behalf of the Canadian Association of Provincial Safety Councils (CAPSC). CAPSC is an organization of local (provincial) safety councils. The registrant, an e-learning company with ties to several non-governmental and not-for-profit organizations, such as CAPSC and St John Ambulance, registered 'nationalsafetycouncils.ca' in 2005.
 
Under the CDRP, CSC had to establish that:
  • the domain name 'nationalsafetycouncils.ca' is confusingly similar to marks in which it had prior rights;
  • the registrant had registered the domain name in bad faith; and
  • the registrant had no legitimate interest in the domain name.
With respect to the first element, the panel concluded that:

  • CSC had pre-existing rights dating back to 1994; and
  • CSC's closest official mark - CANADA’S NATIONAL SAFETY COUNCIL - and the domain name were confusingly similar.
The panel held that the differences in spacing and pluralisation between the mark and the domain name were to be assigned little weight. Moreover, it found that the omission of 'Canada's' in the domain name was made up for by the '.ca' suffix. Whether CSC actually used the mark was not considered relevant by the panel.
 
On the second element, the panel concluded that:
  • the registrant and CSC were competitors; and
  • the domain name was registered “primarily for the purpose of disrupting the business of [CSC]” pursuant to Paragraph 3(7) of the CDRP.
On this issue, the panel took a negative view of the registrant’s admission that its use of the domain name since 2006 was part of a “search optimization strategy”. The panel inferred that the registrant, which had worked with individual provincial safety councils between its founding in 1999 and the registration of the domain name in 2005, must have been aware of CSC in 2005. The panel stated that:
 
the registrant sought to occupy, through the disputed domain name and web search engines, the chief space on the web for a national Canadian safety council, knowing this space was at least notionally occupied by [CSC].”
 
On the third element, the panel rejected all possible grounds of legitimate interest by the registrant. In particular, the panel was convinced that the registrant had no rights in the mark forming the domain name: CSC’s official marks would trump any rights that the registrant may have had. Moreover, the panel dismissed the registrant’s argument that the domain name was clearly descriptive of its services or business. The panel stated that on a grammatical reading of the domain name, the term 'national' is an adjective modifying the term 'councils', a misnomer and therefore not clearly descriptive. In the words of the panel, the domain name is “not actually descriptive of the several provincial councils composing [CAPSC], nor of the association itself”.
 
Based on these findings, the panel ordered the transfer of 'nationalsafetycouncils.ca' to CSC.

Yuri Chumak, Cameron MacKendrick LLP, Toronto

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