Panel highlights importance of legitimate interest under CDRP

A recent decision of a panel under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute and Resolution Policy (CDRP) highlights the importance of the legitimate interest element of the CDRP, as well as the obligation on complainants to conduct due diligence on a registrant and provide some evidence that a registrant lacks a legitimate interest in a '.ca' domain name. It also highlights the pitfalls in not seeking to identify an individual registrant.

The complaint related to the domain name 'americangirl.ca', which had been registered in 2004. The complainant, American Girl LLC, is a company based in California and is in the business of marketing and selling dolls and related toys and accessories under the AMERICAN GIRL trademark, which has been registered and used in Canada since at least 1999.  

The registrant was an individual resident of Canada, who did not file a response to the complaint. Pursuant to the CIRA privacy policy, the registrant’s identity is not available in the CIRA WHOIS database and he or she was identified in the decision only by the initials GLP. The website associated with the disputed domain name resolved to a parked page which contained a listing of 'sponsored links' to a variety of third-party websites related to dolls and toys, including those of competitors of the complainant.

After the proceeding was commenced, the identity of the registrant was disclosed to the complainant. Despite an invitation from the panel to file further evidence or argument as a result of the disclosure of the registrant’s identity, especially on the issue of legitimate interest, the complainant declined to do so. 

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 which pre-date 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.

In this case, the panel concluded that the dispositive issue was whether the complainant had met its evidentiary onus regarding the registrant’s alleged lack of legitimate interest. Pursuant to Paragraph 4.1(c) of the CDRP, a complainant is required to provide “some evidence” that a registrant has no legitimate interest in the domain name which is the subject of the complaint. Paragraph 3.4 of the CDRP provides a non-exhaustive list of six circumstances that demonstrate that a registrant has a legitimate interest.

In considering whether the complainant had met what the panel characterised as a “relatively light” burden of providing some evidence of the registrant's lack of legitimate interest, the panel noted that the complainant’s submissions on this issue were comprised of submissions that closely followed the criteria of Paragraph 3.4 of the CDRP.

The panel noted that, at the time the complaint was filed, the identity of the registrant was not known to the complainant. In light of the complainant’s lack of knowledge regarding the identity of the registrant, the panel found that the assertions regarding some of the legitimate interest factors were merely unsubstantiated allegations that did not satisfy the “some evidence” requirement. Specifically, the complainant had asserted that AMERICAN GIRL was not a legal name, surname or other reference by which the registrant was commonly identified. Further, the complainant had asserted that AMERICAN GIRL was not the geographical name of the location of the registrant’s non-commercial activity or place of business. The panel concluded that, since the complainant knew nothing about the registrant at the time it made those assertions, they were nothing more than unsubstantiated allegations. Accordingly, the panel concluded that the complainant had not established its claim and was not entitled to any remedy.

The panel noted that, although the CDRP was intended to provide a forum to deal with cases of bad-faith registration in a relatively quick and inexpensive manner, the CDRP nonetheless required a panel to consider all the evidence and submissions and render a decision in accordance with the CDRP and its related rules.

In light of the findings on legitimate interest, the panel made no findings as to whether the disputed domain name was confusingly similar to the complainant’s AMERICAN GIRL trademark or whether the registration had been made in bad faith.

The decision highlights the risks of taking for granted elements of a CDRP complaint. A complainant should always strive to put its best foot forward in terms of evidence. This includes taking every opportunity to attempt to discern the identity of a registrant, and any other relevant information about his or her activity in respect of the domain name at issue.

Perhaps the most interesting aspect of the decision relates to how much evidence is required to satisfy that there is “some evidence” that the registrant has no legitimate interest in the domain name at issue. In this case, the panel found that the complainant had provided some evidence for 4 of the 6 listed legitimate interest factors. If the obligation on a complainant is merely to provide “some evidence” that the registrant does not have a legitimate interest, it would stand to reason that evidence that relates to any one of the listed factors, or any other legitimate interest factor, should be enough to shift the burden to the registrant. If we take the panel’s rationale to its logical conclusion, and bearing in mind that the potential legitimate interest factors are unlimited, query whether a complainant is required to provide “some evidence” that the registrant had no legitimate interest with respect to the factors listed in the CDRP as well any other potential circumstances which could lead to a finding of legitimate interest. This cannot be the case. 

The decision certainly makes it clear that, if a complainant pleads a lack of legitimate interest based on a particular factor, it must lead some evidence related to that factor. To be safe, a complainant may wish to at least lead some evidence that the registrant has no legitimate interest as it relates to the six factors listed in the CDRP.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto