Registrant has legitimate interest if domain name is descriptive of goods’ place of origin

Canada

In Patagonia Inc v Netnic Corp (DCA-1398-CIRA, September 7 2012), the Canadian Internet Registration Authority (CIRA) has dismissed the complainant’s request for the transfer of the domain name 'patagonia.ca'.

Patagonia Inc is a California-based company that makes and sells clothing, sportswear, footwear and sports bags for a variety of outdoor activities. Patagonia Inc has two registered Canadian PATAGONIA trademarks: PATAGONIA (TMA325,274) and PATAGONIA and design (TMA 325,074).

On February 9 2005 Daniel Mullen registered 'patagonia.ca'. The website was managed by Netnic Corporation under a contract with Mullen. Mullen claimed that he registered the mark to develop a line of products for sale under the name Patagonia. There was a short period where the website was 'parked'. During this period the website featured advertisements of various companies selling goods similar to those sold by Patagonia Inc.

In 2007 Mullen was authorised by the Patagonia Brewery to use its PATAGONIA trademarks in Canada. Max de Hoop Carter, owner of the Patagonia Brewery, has a trademark for PATAGONIA that has been registered in Europe since 1995. Among the products being sold or promoted by Mullen and Patagonia Brewery is a water product - Aguas de la Patagonia Premium Artesian Still Spring water. The water is bottled in the Patagonia region of Argentina. 

On May 25 2012 Patagonia Inc filed a complaint under the CIRA Domain Name Dispute Resolution Policy requesting that the domain name 'patagonia.ca' be transferred to it.

The purpose of the CIRA Domain Name Dispute Resolution Policy is to provide a forum to deal with situations where a '.ca' domain name has been registered in bad faith. Under the policy, there is a presumption that a domain name was registered in good faith.

For a complainant to succeed, Paragraph 4.1 of the policy places an onus on the complainant to prove on a balance of probabilities that:

  1. there is a confusing similarity between a mark owned by the complainant and the disputed domain name;
  2. the registrant has registered the disputed domain name in bad faith as described by the policy in Paragraph 3.5; and
  3. the registrant has no legitimate interest in the disputed domain name as described by the policy in Paragraph 3.4.

If a complainant is able to prove the first two elements of 4.1 and provide some evidence of the third element, a registrant may still succeed if the registrant proves that it has a legitimate interest in the domain name as described by Paragraph 3.4 of the policy.

Patagonia Inc was able to prove the first two elements of Paragraph 4.1 of the policy. Patagonia Inc established that there is a confusing similarity between its trademarks and 'patagonia.ca' and that Mullen registered the disputed domain name in bad faith. The fact that the domain name was 'parked' with paid advertising and directed to related goods of the complainant was sufficient to establish that the disputed domain name was registered in bad faith.

However, Mullen was able to demonstrate that he had a legitimate interest in the disputed domain name at the date of the filing of the complaint. Paragraph 3.4(c) provides that, if the domain name is clearly descriptive in English or French of the place of origin of the goods, then the registrant has a legitimate interest in the domain name. Mullen was able to prove that 'patagonia.ca' was used in association with Aguas de la Patagonia Premium Artesian Still Spring Water Product, which was clearly descriptive of the place of origin of the water contained in the product; therefore, Mullen proved he had a legitimate interest in 'patagonia.ca' as described in Paragraph 3.4(c) of the policy.

Patagonia Inc’s request to transfer the domain name 'patagonia.ca' was thus dismissed.

Karl Strimbold, Macera & Jarzyna - Moffat & Co, Ottawa

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