Pay-per-click use issues resolved in domain name dispute

In Canadian Broadcasting Corporation/Société Radio-Canada v Dhalla, a panel under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP) has rendered a decision which dealt with several interesting issues under the CDRP, including whether use of a domain name in association with a pay-per-click service is a legitimate interest under the CDRP.

The complainant, the Canadian Broadcasting Corporation/Société Radio-Canada (CBC), is a federal Crown corporation and Canada's national public broadcaster. Since the 1950s CBC has used the trademark HOCKEY NIGHT IN CANADA in association with a television programme. Over time, CBC's use of the trademark has extended beyond television programming to include merchandise and promotional materials. In 1978 CBC secured a Canadian trademark registration for the mark. In 1998 the trademark was also recognized as a mark protected by Paragraph 9(1)(n)(iii) of the Trademarks Act.

The domain name registrant, Ghalib Dhalla, registered the domain name 'hockeynightincanada.ca' on November 8 2000. The domain name displayed a page which stated that it was "under construction" for some time. It was subsequently resolved to a site which featured links to other websites - a pay-per-click service.

Dhalla initiated contact with CBC, seeking to transfer the domain name to it. In his initial correspondence with an employee of CBC, Dhalla indicated that he had initially registered the domain name for use in association with a website dedicated to hockey pools (a game of chance, resembling a lottery, in which the contestants put staked money into a common fund that is later paid to the winner). However, Dhalla indicated that those initial plans were no longer viable and he was prepared to transfer the domain name to CBC.

Negotiations were not fruitful and CBC initiated a proceeding under the CDRP on December 13 2006. No response was filed by Dhalla.

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 predate the registration date of the domain name;
  
  
• the domain name was registered in bad faith; and
  
  
• that the registrant does not have a legitimate interest in the domain name.

The panel had no trouble in finding that CBC had rights in the HOCKEY NIGHT IN CANADA trademark, which pre-dated the registration of the domain name and that the domain name is identical to the trademark.

'Bad faith' is narrowly prescribed under the CDRP 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 Dhalla "could not seriously ignore" that, by registering the domain name, he would benefit from the notoriety of the HOCKEY NIGHT IN CANADA mark and interfere or disrupt CBC's activities. However, the panel did not find that Dhalla was a "competitor" of CBC, as required by the CDRP. Nonetheless, the panel concluded that Dhalla had registered the domain name in bad faith.

The panel also found that Dhalla had no legitimate interest in the disputed domain name. It concluded that the use of the domain name to generate traffic for a pay-per-click service was "a clear indication" that Dhalla had no legitimate interest other than to gain revenue. The panel concluded that this purpose is not legitimate given the objectives of the CDRP to thwart cybersquatting.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto