'RadioCanada.ca' panel considers surrounding circumstances to determine bad faith
In Canadian Broadcasting Corporation v Quon, a three-member panel of the Canadian Internet Registration Authority (CIRA) has opened the way for trademark owners to point to surrounding circumstances in cases where the domain name registrant's activities may not fall squarely within one of the three bad-faith factors expressly mentioned in CIRA's Dispute Resolution Policy (CDRP).
In order to be successful under the CDRP, a complainant trademark owner must show that:
- the '.ca' domain name is confusingly similar to the rights being asserted;
- the registrant does not have rights or legitimate interests in the domain name; and
- the domain name was registered in bad faith.
Unlike its '.com' counterpart, the Uniform Domain Name Dispute Resolution Policy, the CDRP's indications of bad faith are exhaustive. A domain name will be found to have been registered in bad faith if and only if:
- the domain name was registered primarily with the intent of selling it for a profit;
- the domain name is part of a pattern of registrations containing third-party trademarks to which the registrant has no entitlement; or
- the registrant is a competitor of the complainant and the domain name was registered to disrupt the complainant's operations.
The three-member panel in this case expressly agreed that it was appropriate to consider surrounding circumstances when making a determination that the registrant, William Quon, had registered the domain name 'RadioCanada.ca' in bad faith. Namely, the panel considered the facts that:
- Quon's site remained inactive for over two years;
- Quon had had constructive knowledge of the Canadian Broadcasting Corporation's rights;
- Quon failed to respond to the corporation's correspondence; and
- Quon's domain name portfolio contained a number of unrelated domain names containing third-party trademarks.
Earlier this year, two other CIRA panels clarified and broadened the CDRP's 'bad-faith' test. For discussion of these decisions, see CDRP 'bad-faith' test wider than first thought.
Eric Macramalla, Gowling Lafleur Henderson LLP, Ottawa
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