Scope of CIRA Domain Name Dispute Resolution Policy clarified

In a dispute involving the domain name 'candystand.ca', a Canadian Internet Registration Authority (CIRA) panel has issued a ruling under the CIRA Domain Name Dispute Resolution Policy (CDRP) which expands the scope of evidence that will be accepted to establish use of a trademark. The panel interpreted a provision of the CDRP to clarify what use of a trademark by persons other than a complainant will allow that complainant to assert rights in the mark on which to ground a complaint.

The complainant, Wrigley Canada Inc (Wrigley Canada), is a licensee of the trademark CANDYSTAND, owned by its parent company, Wm Wrigley Jr Company (Wrigley US). Wrigley US acquired rights in the trademark in 2005, following an assignment.

Although there was no Canadian trademark registration covering the mark, the predecessor in title of Wrigley US had used the trademark since 1997 in association with a website at 'candystand.com' which provided articles, puzzles and games for adults and children.

The domain name 'candystand.ca' was registered by Brain Wave Holdings Inc in July 2002. The domain name was not used in association with an active website, but rather resolved to a site which featured links to other websites.

In order to succeed in a CDRP proceeding, a complainant must establish that the registrant's '.ca' domain name is "confusingly similar" to a "mark" in which the complainant had "rights" prior to the date of registration of the domain name at issue.

The CDRP defines a 'mark' to include an unregistered trademark, provided that it has been used in Canada by a person for the purpose of distinguishing the goods, services or business of that person from those of another. Accordingly, since the trademark was not subject to a registration in Canada, Wrigley Canada was required to show that the trademark had been so used in Canada.

The evidence disclosed that the website is extremely popular and receives over 4 million hits per month. In addition, the evidence showed that the trademark is prominently displayed on the website. Although Wrigley Canada submitted evidence of a great number of individual users of the website, and that the website was accessible by Canadian internet users, Wrigley Canada had failed to file any evidence that any persons situated in Canada had actually visited the website.

However, the panel concluded that, since the website would have been readily accessible by Canadian internet users, it was a reasonable inference that at least a few of these internet users were based in Canada. It is important to note that although the CDRP requires use of a mark in Canada, it sets no quantitative limits to qualify as such use.

The panel was then required to consider whether Wrigley Canada had "rights" in the trademark prior to the date of the registration of the domain name. Wrigley Canada would have rights in the Trademark if it could establish that it has been used in Canada by it, its predecessor in title or its licensor or predecessor.

It was clear that, pursuant to the CDRP, Wrigley Canada had rights as a licensee of Wrigley US since 2005. It was also clear that the CDRP expressly recognizes rights in a mark which stem from use by a predecessor in title. For example, if Wrigley US were claiming rights in the mark, it would be entitled to rely on the use by the predecessor in title. However, in this dispute, the complainant was Wrigley Canada, not Wrigley US.

In this case, if Wrigley Canada could not rely on use by its licensor's predecessor in title, it could not succeed in the proceeding because its rights would not predate the registration of the domain name. In effect, this would require reading into the CDRP a provision that would enable a complainant to rely on use by a predecessor in title of its licensor. The panel concluded that extending the recognition of a claim of rights in a mark in this way was a necessary reading of the CDRP in order to give effect to the policy and purposes evident in reading the section of the CDRP related to "rights".

Turning next to each of the branches of the three-part test under the CDRP, the panel found that:

• the domain name was "confusingly similar" to Wrigley Canada's trademark since the trademark was identical to the domain name;
  
  
• the registrant had no legitimate interest in the domain name, and
  
  
• the registrant had registered the domain name in bad faith. In considering the bad faith test, the panel accepted evidence that the registrant had been engaged in a pattern of registering domain names to prevent persons who have rights in marks from registering those marks as domain names.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto