Linking to competitor of complainant may be bad faith, says panel

In a dispute involving the domain name 'godaddy.ca', a Canadian Internet Registration Authority (CIRA) panel, ruling under the CIRA Domain Name Dispute Resolution Policy (CDRP), has concluded that use of a domain name that is similar to the complainant's trademark and which resolves to a website offering competing services can constitute bad faith under the CDRP.

The complainant, GoDaddy.com Inc, is one of the largest ICANN (Internet Corporation for Assigned Names and Numbers) accredited domain name registrars in the world. GoDaddy began operating in 1999 offering domain name registration services, web hosting services, and other products and services needed for an online presence. GoDaddy is also the owner of a Canadian trademark registration for GODADDY.COM, which was registered on April 19 2006.

The registrant, Jan Ladwig, registered 'godaddy.ca' in December 2001, but did not use it in association with an active website. Rather, it redirected visitors to a site used in association with the domain name 'namecow.com', which offers services that compete directly with those of GoDaddy.

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 that 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.

With respect to whether the disputed domain name was similar to a trademark in which GoDaddy had rights, GoDaddy had to establish that Ladwig's domain name was "confusingly similar" to a "mark" in which it had "rights" prior to the date of registration of the domain name at issue.

GODADDY.COM was not registered in Canada until almost five years after the disputed domain name was registered. Accordingly, GoDaddy was required to establish that it had rights in GODADDY prior to 2001 at common law. The CDRP defines a 'mark' to include an unregistered trademark, provided that it has been used in Canada by a person for the purpose of distinguishing the goods, services or business of that person from those of another.

The panel found the evidence supported a finding that GoDaddy had rights in the trademark which predated the registration of the disputed domain name by almost two years and concluded that the 'godaddy.ca' domain name was confusingly similar to GoDaddy's mark. In addition, the panel held that Ladwig had no legitimate interest in the domain name.

Turning next to the issue of bad faith, the panel noted that 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.

Here, the panel found that Ladwig, by registering a domain name identical to GoDaddy's mark and linking it to a business that offers goods and services that can compete with and rival those of GoDaddy, is disrupting the business of GoDaddy. There was no evidence that Ladwig benefited in any way from having the disputed domain name redirect to the namecow.com site. However, the panel concluded that Ladwig was competing with GoDaddy for internet users.

Antonio Turco, Blake, Cassels & Graydon LLP, Toronto