'scoutscanada.ca' decision reminds CDRP complainants to "be prepared"


The recent decision in Scouts Canada v Morland (CDRP decision No 276 (Resolution Canada), January 22 2015), under the Canadian Internet Registration Authority (CIRA)’s Dispute Resolution Procedure (CDRP), confirms the importance of pleading all relevant grounds for each element to be proved and of submitting supporting evidence. The case also involved a criticism site, and confirms that operation of such sites, per se, does not implicate the owner of the domain name of bad-faith registration.

CIRA is the organisation responsible for administering domain names for the '.ca' Canada-specific top-level domain. The CDRP is a summary arbitration procedure to transfer domain names registered in bad faith by another party with no legitimate interest in the domain name. To succeed, a CDRP complainant must satisfy three elements:

  1. ownership of a 'mark' that is confusingly similar with the disputed domain name;
  2. that the domain name was registered in bad faith; and
  3. that the registrant lacks a legitimate interest in the domain name.

The dispute in Scouts Canada arose from the February 2009 registration of the domain name 'scoutscanada.ca'. The complainant, Scouts Canada, is the Canadian branch of the world-wide Scouts movement, formerly known as the Boy Scouts. Scouts Canada alleged that Morland, a former registered Scouts Canada volunteer, was using the domain name to host a criticism website, and registered it in bad faith without a legitimate interest. Scouts Canada claimed the domain name was confusingly similar to Scouts Canada’s Mark, SCOUTS CANADA. Although Scouts Canada holds published official marks under Section 9(1)(n) of the Trademarks Act, the complainant only sought to rely on its SCOUTS CANADA mark that was approved and listed on the Trademark Register pursuant to special federal legislation incorporating Scouts Canada. While both parties filed arguments, neither submitted any evidence aside from a WHOIS search showing that Morland had registered the domain name.

The panel found the complaint failed on all three elements, primarily because no evidence had been filed to support Scouts Canada’s allegations. The panel held that, in general, adoption of the complainant’s mark in the domain name is not per se "bad faith", and that operation of a criticism website is not "bad faith" and can in fact constitute a "legitimate use" under the policy. In any event, no inference could be made about the domain name’s use, since neither party submitted evidence showing the website’s content, and the panel refused to go to the website to "forage for evidence the parties should have provided".

Oddly, the panel also found Scouts Canada owned no "mark" from which to assess "confusing similarity". The CDRP defines a 'mark' as:

  1. a trademark or trade name used in Canada to distinguish the wares, services or business of that person from others;
  2. a certification mark;
  3. a trademark registered with the Canadian Intellectual Property Office; or
  4. any mark protected as an official mark under Section 9(1)(n) of the Trademarks Act.

Scouts Canada pled that it had an exclusive right to use the mark SCOUTS CANADA by virtue of provisions in the federal Scouts Canada Act. Somewhat oddly, Scouts Canada did not also plead rights based on its official marks, possibly because the requirements for official mark protection have evolved and may only be properly asserted by organisations subject to a significant degree of government control.

The panel held that marks "Protected by a Federal Act of Incorporation", like the SCOUTS CANADA mark, are a sui generis right not recognised a "mark"under the policy. To claim rights in SCOUTS CANADA, the panel held that Scouts Canada should have demonstrated that it at least used the name: "a trade name which has been used enjoys goodwill, [while] an unused statutory right does not". Since Scouts Canada did not plead such grounds and submitted no evidence, the panel was precluded finding any common law trademark rights attached to the mark. 

The panel held that despite Scouts Canada’s failure to establish the first CDRP element, it nevertheless had a "colour of right" to the mark that established no attempted reverse domain name hijacking.  

The decision highlights the importance of making thorough pleadings, relying on multiple grounds and submitting supporting evidence when bringing a CDRP complaint, especially with respect to establishing rights in a mark. Further, it demonstrates that, even if a mark is protected by law, it may not be enforceable through the CDRP without corresponding evidence of use - unlike a registered trademark or certification mark, which clearly fall under the CDRP’s definition of a 'mark'. Prospective complainants should be well reminded that the burden is on them in a CDRP to establish a confusing bad-faith registration, and that evidence of actual use and reputation of their mark, as well as evidence supporting all the other elements, is critical to success in such a procedure. 

Tamara Winegust, Bereskin & Parr LLP, Toronto

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