'niagararegion.ca' domain name falls from registrant's hands

A Canadian Internet Registration Authority (CIRA) panel has ordered that the registration of the domain name 'niagararegion.ca' be transferred to the Regional Municipality of Niagara (NIA-092007-00144, November 7 2007).

The registrant, John Vail, was a real estate and brokerage agent who used the 'niagararegion.ca' domain name to redirect internet traffic to a website that advertised his real estate and brokerage business.

CIRA resolves '.ca' disputes through its Domain Name Dispute Resolution Policy, which is very similar to the Uniform Domain Name Dispute Resolution Policy. Under the CIRA policy, a complainant wishing to dispute a registered domain name must establish the following criteria:

• The registrant's '.ca' domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration and continues to have such rights;
  
  
• The registrant has no legitimate interest in the domain name; and
  
  
• The domain name was registered in bad faith.

In this instance, the panel found that the registrant met all three criteria.

With regard to the issue of confusing similarity, the panel held that the municipality had used the trade name Niagara Region in association with its businesses and services long before the registration of 'niagararegion.ca'. The panel reaffirmed that the test of the first impression and imperfect recollection of the average internet user is useful when determining if a mark is confusingly similar to a domain name. In this case, the domain name was identical to the trade name of the municipality and the panel held that an internet user searching for information about the Niagara region could reasonably mistake and associate Vail's domain name with the NIAGARA REGION mark.

With regard to the issue of legitimate interest, the panel found that although redirecting internet traffic constitutes use of a domain name, Vail did not demonstrate any legitimate use under the CIRA policy. The policy lists a number of legitimate uses, including:

• use of the mark in good faith;
  
  
• use of a clearly descriptive domain name in good faith;
  
  
• use of a generic domain name;
  
  
• use in good faith in association with a non-commercial activity;
  
  
• use of a registrant's name, surname or other reference by which he or she is commonly identified; and
  
  
• use of a geographical name of the location of the place of business.

Vail failed to demonstrate any legitimate use of the 'niagararegion.ca' domain name mainly because the business to which traffic was redirected was based outside of and had no connection to the Niagara region.

Finally, with regard to the issue of bad faith, the panel noted that the registrant had engaged in a pattern of registering domain names in order to prevent persons with rights in marks from registering the marks as domain names. There are numerous CIRA decisions in which the registration of two domain names containing third-party marks was sufficient to establish a pattern.

This decision is noteworthy because it provides insights into CIRA's assessment of each of the three criteria required to overturn the registration of a '.ca' domain name.

Mark Gustafson, Fasken Martineau, Vancouver