EMusic fails to obtain transfer of 'emusic.ca'


In EMusic.com Inc v Mogul Arts Inc (November 4 2008), a Canadian Internet Registration Authority (CIRA) panel has refused to order the transfer of the domain name 'emusic.ca' to EMusic.com Inc on the grounds that it had failed to demonstrate that the disputed domain name was registered in bad faith.

EMusic is the operator of an online music store in association with the domain name 'emusic.com', which was originally launched in 1995. EMusic is also the owner of a Canadian trademark registration for EMUSIC, which was issued in Canada in 2005. 
The registrant, Mogul Arts Inc, registered the domain name 'emusic.ca' on January 17 2001. From 2001 to 2007 the domain name was used only intermittently in association with an active website. However, in 2008 the website associated with the domain name was active and displayed content and news items related to the e-commerce industry.
In order to be successful under the CIRA Domain Name Dispute Resolution Policy (CDRP), a complainant must establish that:
  • the domain name at issue is confusingly similar to a trademark in which it has rights which predate the registration date of the domain name;
  • the registrant does not have a legitimate interest in the domain name; and
  • the registrant registered the domain name in bad faith.
The panel found that EMusic had rights in the trademark EMUSIC which predated the registration of 'emusic.ca'. Specifically, the panel noted that the website attached to 'emusic.com' has been operational since 1998 and was accessible to Canadians.
With respect to similarity, the panel concluded that consumers would likely mistake the domain name 'emusic.ca' for EMusic's trademark, since they are identical. 
With respect to legitimate interest, the panel found that Mogul Arts had no legitimate interest. The panel found that the use of the domain name 'emusic.ca' did not fall within any of the enumerated categories under the CDRP pursuant to which legitimate interest may arise.
Under the CDRP, bad faith is narrowly prescribed by an exhaustive list of three factors. A domain name is registered in bad faith if - and only if - at least one of the three following factors is established:
  • The registrant registered the domain name primarily for the purpose of transferring it to the complainant, or its licensor or licensee, or a competitor thereof, for an amount in excess of the registrant’s actual costs in registering the domain name;
  • The registrant registered the domain name in order to prevent the complainant, or its licensor or licensee, from registering the domain name, provided that the registrant has engaged in a pattern of registering domain names to prevent others who have rights in marks from registering those marks as domain names; or
  • The registrant registered the domain name primarily for the purpose of disrupting the business of the complainant, or its licensor or licensee, who is a competitor of the registrant.
The panel found that EMusic had not established that Mogul Arts had acquired the disputed domain name in bad faith. Specifically, the panel noted that, when contacted by EMusic, Mogul Arts had refused to entertain any offer to sell the domain name. There was no evidence that Mogul Arts knew of EMusic at the time of registering the domain name. The panel noted that, at the time, EMusic was not as well known as it is today. Further, the EMUSIC mark was not registered as a trademark in Canada and the generic expression 'emusic' could belong to anyone.
An additional interesting point was raised by concurring reasons issued by one of the panellists. The panellist noted that, in analyzing whether a domain name is confusingly similar to a trademark, the CDRP dictates that a panel must have reference to the registration date under the CIRA regime of the domain name in question. However, the panellist argued that the spirit underlying the CDRP requires a panel to consider a first '.ca' registration under the regime which preceded CIRA and was administered by the University of British Columbia (UBC). Many of those registrations were re-registered with CIRA and given priority as part of the regime shift. The panellist noted that, had the panel in this dispute taken account of the prior registration of the disputed domain name under the system administered by UBC, EMusic may not have been able to establish rights in the mark which predated the registration of the domain name under the UBC system. Accordingly, EMusic would have failed to establish that the disputed domain name was confusingly similar to its trademark.
Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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